House Report No. 3147, Fifty-eighth Congress, third session.

Mr. BONYNGE, from the Committee on Patents, submitted the following

REPORT

[To accompany H. R. 16560.]

The Committee on Patents, to whom was referred House bill 16560, respectfully report that they have had the same under consideration. The subject of the revision and modification of the laws relating to trade-marks has been very carefully considered by your committee. A number of bills on this subject were referred to the committee. Numerous hearings were had and all parties having an interest in the proposed legislation were given full opportunity to present their views to your committee.

The subject-matter of the bill, which is herewith reported, has been in one form or another before the Congress of the United States at practically every session since 1870. At that time an act was passed entitled "An act to revise, consolidate, and amend the statutes relating to patents and copyrights." The said act sought to establish a regulation of trade-marks applicable to all trades, and was not confined in its terms to a regulation of commerce between the States, or with foreign nations or Indian tribes. At the time of the passage of the act in question it was apparently the opinion of Congress that protection to trade-marks was an exercise of the power granted to Congress by the eighth paragraph of section 8 of Article I of the Constitution, providing that Congress shall have power "To promote the progress of science and useful arts by securing, for limited times, to authors and inventors the exclusive right to their respective writings and discoveries."

In 1876 Congress passed another act, making certain violations of the trade-mark law penal offenses. Under these statutes indictments were found in different circuit courts of the United States, and the judges of two United States circuit courts made certificates of division of opinion as to the constitutionality of Federal legislation upon the subject of trade-marks. By this means the question was brought before

the Supreme Court of the United States in a case reported in the October term of that court, 1879, known as the trade-mark cases, 100 U. S., 82. In that case it was held by the court that the law in question could not be supported as an exercise of the power given to Congress by clause 8 of section 8 of Article I of the Constitution, for the reason that the exclusive right to a trade-mark does not depend upon novelty, invention, discovery, or any work of the brain, and that the right to the use of a trade-mark was founded solely on priority of appropriation. It was further held in the same case that the law could not be supported as an exercise of the power given to Congress to regulate foreign commerce, or commerce among the several States, or with the Indian tribes, because by its terms it was not so limited, and as the court was unable to separate the good from the bad without creating a new law, the whole statute was declared by the court to be uncon

stitutional.

The decision above referred to created great disturbance among manufacturers, and Congress was flooded with proposed new legisla tion on the subject, even including a resolution for an amendment to the Constitution of the United States granting to Congress express power to regulate the use of trade-marks. Finally the present act regulating the use of trade-marks was passed and approved March 3, 1881. The law, as it now stands, is confined in its provisions to commerce with foreign nations and with the Indian tribes. It does not seek to regulate the use of trade-marks used in interstate commerce. The report of the committee upon the present act shows that at that time Congress was of the opinion that the power to legislate upon the subject of trade-marks came within the treaty-making power, and was not based at all upon the power given to Congress by the commerce clause of the Constitution. For that reason the provisions of the act now upon the statute books relate solely to commerce with foreign nations and with Indian tribes.

The United States is a member of the union created by the conven tion for the protection of industrial property concluded at Paris, March 20, 1883, of which the other members are Belgium, Brazil, Denmark, Dominican Republic, France, Great Britain, Italy, Japan, Netherlands, Norway, Portugal, Spain, Servia, Sweden, Switzerland, and Tunis.

The United States has also made separate treaties, conventions, and declarations, relating in whole or in part to trade-marks, with Austria, Hungary, Belgium, Brazil, Denmark, France, Germany, Great Britain, Italy, Japan, Russia, Servia, and Spain. By these various conventions and treaties the United States has assumed certain obligations relating to the regulation of trade-marks, many of which we have not, up to this time, observed.

By an act approved June 4, 1898, commissioners were appointed by the President to revise and amend the laws of the United States concerning trade and other marks, so far as the same relate to matters which are contained in or are affected by the convention for the protection of industrial property concluded at Paris, March 20, 1883, which is referred to above, and to the treaties of the United States and laws of other nations relating to trade or other marks, and trade or commercial names. The committee thus appointed by the President consisted of Mr. Francis Forbes, Mr. Peter Stenger Grosscup, and Mr. Arthur P. Greeley. They made a very elaborate and exhaustive report upon the

subject of trade-marks and patents, which was published as Document No. 20, Fifty-sixth Congress, second session. The commissioners thus appointed also prepared a bill, which was submitted with their report, revising and amending the trade-mark laws of the United States, but up to the present time there has been no amendment of the act approved in 1881.

Your committee has carefully examined the report of the commissioners above-named, and the provisions of the bill proposed by them, in connection with the provisions of the various bills on the same subject referred to your committee, and after such examination it is the unanimous opinion of your committee that the bill submitted herewith would be constitutional legislation, and would so amend the trademark laws of the United States as to conform to our treaty obligations with the other nations.

THE CONSTITUTIONAL QUESTION.

The first question presented to the Committee for its consideration was whether Congress has Constitutional power to regulate the use of trade-marks.

There is no express reference to trade-marks in the constitution of the United States, nor any express authority given by the constitution to legislate upon this subject. At the time of the adoption of the Constitution the subject of trade-marks was not recognized as one of importance to the commerce of the United States, either internal or foreign. There had been only three reported cases involving the right to the use of a trade-mark reported in Great Britain prior to that time. The first reported case in the United States upon the subject was in 1837. The first statute of Great Britain upon the subject was adopted in 1862. The law of trade-marks is therefore of recent origin and growth. Its growth has been very rapid within the past fifty years, and at the present time a large majority of the states in the union have statutes regulating the registration and the use of trade-marks. We have heretofore in this report given a brief reference to the legislation upon the subject of trade-marks passed by the Congress of the United States.

If Congress has the power to pass the legislation proposed, it must, in the opinion of your committee, be under the clause of section 8 of Article I of the Constitution, which gives to Congress power to regulate commerce with foreign nations, among the several States, and with the Indian tribes. Your committee, after careful study and investigation, are of the opinion that Congress has such power. This precise question has not been presented to the Supreme Court of the United States. In the trade-mark case above referred to (100 U. S., 82) the court expressly refused to pass upon this question. The exact language of the court was as follows:

The question, therefore, whether the trade-mark bears such a relation to commerce in general terms as to bring it within Congressional control, when used or applied to the classes of commerce which fall within that control, is one which, in the present case, we propose to leave undecided. We adopt this course because when this court is called on in the course of the administration of the law to consider whether an act of Congress, or any other department of the Government, is within the constitutional authority of that department, a due respect for a coordinate branch of the Government requires that it shall decide that it has transcended its powers only when that is so plain that we can not avoid the duty.

The act of 1881 has been before the courts of the United States in many cases, but the question of its constitutionality has never been raised or discussed. We therefore have no decision of the Federal courts settling the proposition now under consideration. We are consequently obliged to determine the question for ourselves upon an independent investigation, being governed in that investigation by decisions of the Supreme Court upon somewhat similar cases and the language used by the court in various cases involving the power given to Congress under the commerce clause of the Constitution.

While it is true that there is no express provision in the Constitution, giving this particular power to Congress, for the reason that the subject was one not then regarded as of importance, it does not follow that Congress has not this power. As was said in the Debs case (158 U. S., 564):

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Constitutional provisions do not change, but their operation extends to new matters as the modes of business and the habits of life of the people vary with each succeeding generation. * * The Constitution has not changed. The power is the same. But it operates to-day upon modes of interstate commerce unknown to the fathers, and it will operate with equal force upon any new modes of such commerce which the future may develop.

The real question to be determined is whether trade-marks bear such a relation to commerce in general as to bring them within Congressional control, and whether the law providing for the registration of trade-marks used in foreign and interstate commerce and commerce with the Indian tribes is a regulation of such commerce. That a trade-mark is generally accepted as bearing a very close relation to commerce is evident from its name, its origin, its history, and the legislation upon the subject of trade-marks in nearly all the States of the Union and the leading commercial nations of the world. The first suggestion for Federal legislation upon the subject was contained in a petition presented to the Second Congress by certain manufacturers of Boston, asking that they be given the exclusive right to the use of certain marks for the designation of their goods. Upon that petition Thomas Jefferson, then Secretary of State, made a report, in which he recommended the adoption of Federal legislation upon the subject, and used this language:

That it will, therefore, be reasonable for the General Government to provide in this behalf by law for those cases of manufacture generally, and those only, which relate to commerce with foreign nations and among the several States and with the Indian tribes

showing conclusively that he based his opinion that Congress had power to legislate upon the subject upon the commerce clause of the Constitution. There is no right to the use of a trade-mark which is separate and distinct from its application to goods used in commerce. There can be no ownership of a trade-mark which is not applied to goods and merchandise used in commerce. It bears in many respects a striking resemblance to the good will of a business. In all of the early cases upon the subject of trade-marks, commencing with the first case, that of Blanchard v. Hill, in 1742, the close relationship of trademarks to commerce has been recognized by all of the courts. Every commercial nation of the world of any importance has a law regulating the registration and protection of trade-marks. We conclude, therefore, that the use of a trade-mark bears a very close and intimate relation to commerce.

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We are then confronted with the next question, whether under the term commerce," as used in the Constitution, we can include trademarks. The Supreme Court of the United States has in many cases given a very liberal construction to the use of the term "commerce." The first and leading case upon the commerce clause of the Constitution is that of Gibbons v. Ogden, reported in 9 Wheaton, at page 1. In that case Mr. Daniel Webster was one of the attorneys, and in the course of his argument he recited the history of the commerce clause in the Constitution, and showed that one of the immediate objects of the convention to form a constitution was the necessity of having uniform regulations of commerce. The case itself involved the constitutionality of the law of New York granting to Robert R. Livingston and Robert Fulton the right to the exclusive navigation of all the waters within the jurisdiction of that State, with boats moved by fire or steam, for a term of years. Mr. Webster contended, and satisfied the court, that the people intended by the provision of the Constitution in question to transfer from the several States to a general government those high and important powers of commerce which, in their exercise, were necessary to maintain a uniform and general system.

Chief Justice Marshall delivered the opinion of the court, in which he held that the commerce clause of the Constitution should not have a strict or narrow construction which would cripple the Government and render it unequal to the objects for which it had been established. He further held that the object for which the power was given should be considered in determining its extent. We find in that opinion the following definition of "commerce:"

Commerce, undoubtedly, is traffic, but it is something more-it is intercourse. It describes the commercial intercourse between nations, and parts of nations, in all its branches, and is regulated by prescribing rules for carrying on that intercourse. * It has been truly said that commerce, as the word is used in the Constitution, is a unit, every part of which is indicated by the term. The power is to regulate-that is, to prescribe the rules by which commerce is to be governed.

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Mr. Justice Johnson delivered a separate opinion in the same case, in which he said:

Commerce, in its simplest signification, means an exchange of goods; but in the advancement of society, labor, transportation, intelligence, care, and various mediums of exchange, become commodities, and enter into commerce; the subject, the vehicle, the agent, and their various operations, become the objects of commercial regulation.

A few years later, in the case of Brown v. Maryland (12 Wheaton, 419), Chief Justice Marshall was again called upon to construe the commerce clause of the Constitution. In that opinion he expressed, even more strongly than in the previous case, the fact that one of the principal objects for the formation of a constitution was to give to one legislative body the power to regulate commerce with foreign nations and among the several States, and he used this language:

It is not, therefore, matter of surprise that the grant should be as extensive as the mischief, and should comprehend all foreign commerce, and all commerce among the States. To construe the power so as to impair its efficacy would tend to defeat an object, on the attainment of which the American public took, and justly took, that strong interest which arose from a full conviction of its necessity.

A number of other cases might be cited giving the judicial construction of the clause of the Constitution now under consideration; but we pass without reference to them to a very recent case, that of the