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       *       *       *       *       *




  THINGS TO KNOW ABOUT TRADE-MARKS

  A MANUAL OF

  _Trade-Mark Information_

  [Illustration]

  PUBLISHED BY

  J. WALTER THOMPSON COMPANY

  44 EAST 23rd STREET

  NEW YORK

  _Branch Offices_

  CHICAGO  CLEVELAND   ST. LOUIS  TORONTO

  BOSTON   CINCINNATI  DETROIT    LONDON

       *       *       *       *       *

COPYRIGHT, 1911

BY J. WALTER THOMPSON COMPANY

       *       *       *       *       *

[Illustration:

  J. WALTER THOMPSON COMPANY
  Est. 1864

]




The Purpose of This Book


Our idea, in preparing this little book, is to set forth, in clear and
simple language, the main features of the law relating to trade-marks
and to illustrate its application by specific examples of well-known
trade-marks now in use.

To an advertiser who has had but little experience in registering
trade-marks, the law, with a congested mass of precedents surrounding
it, seems to be a legal maze.

But its intricacy is more apparent than real. The law is quite clear
and explicit when one has the patience and experience in such matters
to get to the bottom of it. We have endeavored to write this book in
language so clear that any business man will understand it, and we feel
sure that it will give any one a good working knowledge of trade-mark
requirements.

It has not been our intention to produce an exhaustive treatise on the
subject. Such a treatment of the law of trade-marks and its allied
subject of unfair trade would require a large volume, and the long and
intricate discussion of minor points necessary in a work of that kind
would be wearisome and perhaps unintelligible to the lay reader.

Nor have we discussed the origin of the custom of identifying
merchandise by trade-marks. This phase of the subject--trade-marks in
their historical aspect--is interesting in an academic sense, but it
has little or no bearing on the trade-mark situation of to-day.

For further study of the trade-mark law and the allied subject of the
law of unfair trade, we advise the reading of Hesseltine's "Law of
Trade-Marks and Unfair Trade" (Little, Brown & Co., 1906); and Nims
on "Unfair Business Competition" (Baker, Voorhis & Co.). Both of
these works are legal in their treatment of the subject and in their
phraseology. Another work containing much information on this subject
is Clowry Chapman's "Law of Advertising and Sales", in two volumes,
published by the author.

  J. WALTER THOMPSON COMPANY

  [Illustration: J. Walter Thompson]

  PRESIDENT.




Table of Contents


  Chapter                                                     Page

       Introduction                                              7

    I. Digest of The Trade-Mark Law                             13

         Property in Trade-Mark Rests Upon Common Law           13

         Conditions of Registration                             14

         Ten-Years Clause                                       16

         How to Apply for Registration                          17

         Procedure of the Patent Office                         20

         Registration in Foreign Countries                      23

         Classification of Merchandise                          23

         State Trade-Mark Laws                                  25

   II. Essentials of a Valid Trade-Mark                         26

         Portrait of a Living Individual--When it may be
           Registered                                           27

         Trade-Mark Must not be Descriptive                     28

         Trade-Mark Must not Misrepresent                       31

         Trade-Mark Must not Resemble Previously
           Registered Mark for Same Class of Merchandise        32

         A Geographical Name is not Registrable                 34

         Trade-Mark Must not Contain Red Cross Insignia         36

         Restrictions as to Registering Names                   37

         Trade-Mark Must not be Fraternal Society Emblem        39

         Trade-Mark Must not Consist of Flag or Coat-of-Arms    40

         A Form, Color, a Shape, or a Material Not Registrable  40

         Trade-Mark Must not be Against Public Policy           42

         Affixation                                             43

  III. Advertising Characters                                   45

   IV. Infringement                                             52

    V. Assignment                                               69

   VI. Trade-Marks in Canada                                    73

  VII. How to Devise a Trade-Mark                               76




Introduction


If you were to ask any dozen men among your acquaintances, or any
hundred men, to name the greatest writer that has ever lived, the odds
are perhaps as great as a hundred to one that every man would say
"Shakespeare."

This virtual unanimity of opinion would not have its origin in a
conscious comparison of authors and their works, for we might as well
be frank with each other and admit that not more than one of us in a
thousand has ever read enough of Shakespeare to form any opinion that
would be worth listening to.

We take Shakespeare on faith.

We have been taught that Shakespeare was a transcendent genius, the
greatest man that ever put pen to paper, and we believe it.

Shakespeare is in evidence on every hand. We quote him every day. He
is well advertised. And, needless to say, his reputation as a writer
is far greater to-day than when he lived over a wig-maker's shop in
London, or even when his fortune had been made, and he had retired with
his jig-saw coat-of-arms to the "lordly mansion" on the hill back of
Stratford.

He has been advertised for three centuries with praise originating from
a thousand sources, and his reputation is now steeped head and ears in
Cumulative Results.

Shakespeare's name has become a sort of trade-mark of good literature.
If a meddling antiquarian should thoughtlessly add to the afflictions
of the intellectual life by unearthing a doggerel sonnet of Thomas the
Rhymer to which some clerkly scribe had affixed, in error, the name of
William Shakespeare, learned men would read it, and nodding wisely,
would doubtless say, "Pretty good stuff"--or the scholarly equivalent
of that phrase.

The force of _recognized distinction_ is tremendous, not only in
literature, but in business, in science--in short, it is one of the
most valuable assets in every field of human endeavor.

A commodity may attain a height of distinction, in the public's
estimation, that places it, among other commodities of its class, on
the level attained by Shakespeare in literature.

Apollinaris among table waters; Heinz "57" among pickles; Hartshorn
rollers among window shade appliances; Coca-Cola among soda fountain
drinks; Huyler's among candies; Uneeda Biscuit among soda crackers;
Horlick's among malted milks--each of these products has become, by
reason of advertising combined with intrinsic merit, the standard of
quality in its own class.

It is interesting and easy to make practical tests to ascertain what
advertised commodities have made a genuine and far-reaching impression
on the buying public.

Take talcum powder, for example.

Ask your wife, daughter, sister, stenographer--and as many other women
as are necessary to strike a general average--to write down the name of
what each of them considers the standard talcum powder. Then, when all
the returns are in, figure up the result. There are hundreds of brands
of talcum powder sold in the United States; but you will find in your
canvass that only three or four are mentioned at all, and that one of
them leads all the rest by a decisive majority. We could tell you what
the figures produced by your experiment would show the leading brand to
be, but a modest reserve in self-assertion forbids us to say more than
that its name begins with the letter M.

The enviable position of this particular talcum powder is the sum total
of many years' advertising and trade-mark publicity. It has become a
permanent feature of our commercial life; a sort of Bunker Hill in the
history of advertising. The natural result is that its trade-mark is
enormously valuable.

Advertising capitalizes human faith, and faith is a mental impression.
It is a quality of the human mind that the most _profound impressions
are made by things_--not by abstract ideas. Consequently, successful
advertising must be tied hard and fast to a name (or trade-mark) and
this trade-mark must be distinctive, and not easy to confuse with
something else. It must be easy to remember, _and it must identify the
advertised product_.

The functions of a trade-mark in advertising may be concisely stated as
follows:

  1st. As a certificate of genuineness of the product to which it is
  affixed. _This protects the public._

  2nd. As an identifying mark, owned by the manufacturer, and in the
  ownership of which the law protects him in order that no competitor
  may reap the advantage of the selling effort and advertising
  put forth by the owner of the trade-mark. _This protects the
  manufacturer._

In its legal aspect, a trade-mark is therefore a device for protecting
both the manufacturer and the public from fraud. In this connection,
we quote the legal definition of a trade-mark as given by the Federal
Court in the case of _Shaw Stocking Company vs. Mack_:

  "Broadly defined, a trade-mark is a mark by which the wares of the
  owner are known in trade. Its object is twofold; first, to protect
  the party using it from competition with inferior articles; and
  second, to protect the public from imposition.... The trade-mark
  brands the goods as genuine, just as the signature of a letter stamps
  it as authentic."

The law of trade-mark usage, reinforced by a vast array of legal
decisions, is a growth of the last sixty years.

When trade was restricted within narrow geographical limits by
formidable conditions; when both goods and news traveled slowly;
when selling effort was principally made by word of mouth, there was
no genuine need in the commercial world for the legal regulation of
trade-marks, or for laws designed to repress unfair trade.

In the days of our forefathers manufacturers made goods; they did not
sell them. Goods sold themselves. And, consequently, the expanding
circle of a manufacturer's trade rippled out with exceeding slowness.
A national sale of any product was the result of perhaps several
generations of slowly expanding effort--and when once established,
it was generally entrenched far beyond the reach of competitors or
substitutes. People lived simply, and manufactured articles were few.
It is true that trade-marks existed then--as they have since the
beginning of organized commerce--but they were few in number, compared
with their multiplicity to-day, and their owners were adequately
protected by their ordinary common law rights.

Quickly moving transportation and highly developed methods of
distribution and sale have changed these conditions.

To-day the swift shuttle of commerce flies to the ends of the world.
Advertising has arisen, and has become, in a generation, the most
important of selling forces. People read and believe the printed
word, and they buy goods manufactured a thousand miles away by some
advertiser of whom they had never heard until they read of him and his
wares. Society has become intricate and complicated. Thousands are
striving to do what one man strove to do a hundred years ago.

From this criss-cross of human activities has been woven the fabric
of the law of unfair trade, which is the progenitor of the trade-mark
statutes. The intent of this body of law is to give the widest possible
freedom to the play of individual energy in business consistent with
justice to others in trade, and to the public.

The trade-mark is the connecting link between the manufacturer and
the ultimate consumer. By the use of trade-marks, widely advertised,
manufacturers are able to build up a trade that becomes, to a great
degree, independent of jobber, wholesaler, and retailer. In the public
mind a trade-mark grows, in time, to mean a certain standard of
quality, workmanship and material.

Advertised products are generally higher in quality than similar
products that are not advertised. The reason is that an investment
in enough advertising space to make any commodity known nationally
requires a considerable outlay of money, besides a well-developed
selling organization to coöperate with the advertising, and harvest its
results. And this must be done continuously, and that means that the
combined advertising and selling effort must be permeated with a sense
of stability and permanency.

The manufacturer who is investing money in advertising, year after
year, feels that he has too much at stake to endanger his possibilities
by putting out inferior goods. Advertising is a systematic method of
creating Good Reputation--but when Reputation is only an empty form of
words, with nothing tangible behind it, the chances of its lasting are
rather slight.

The manufacturer of inferior goods is not looking very far into
the future. He is not trying to build permanently on the basis of
reputation, but to squeeze out Right Now every cent of possible profit.
The result of this attitude of mind is that he does not advertise.

Consequently it is not surprising to find that the best merchandise
on any retailer's shelves consists of advertised goods, and that,
moreover, concerns that advertise have the most efficient sales
organizations, as well as the most enlightened relations with retailers
and the public.

The best trade-mark ever devised is not worth a cent until it has
become known as an identifying mark of a commodity. A trade-mark has
no inherent, natural value. Whatever it is worth is the result of
advertising in some form, plus the desirable qualities of the goods
that it represents.

       *       *       *       *       *

Some trade-marks are words which have a natural affinity for the
language, and they slide into common speech as easily as a cupful of
water melts into the ocean.

A notable instance of this is "Cracker Jack." This word has become an
integral part of our common language, and is used to mean a hustler,
a thing of excellence, a fellow who gets there, a machine that runs
smoothly, a well-played game, and in other senses. But it is probable
that not one person in a hundred who uses this word knows that it is a
registered trade-mark, and that it is a name applied to a mixture of
popcorn and peanuts, combined with molasses, or some other sweetening.
It is a delicious concoction, as any reader of this book may ascertain
for himself.

The owners of Cracker Jack have not advertised. They have allowed
the immense asset of their trade-mark--a by-word on the tongues of
millions--to go to waste.

The word "Celluloid" is protected by the trade-mark law. The article
celluloid can be manufactured by any one who cares to go into the
business of making it, but only the owners of the trade-mark can call
their product celluloid. This is not generally known, probably not
even by the well-informed class of readers among whom this book will
circulate--a state of public ignorance due to lack of advertising.

"Kodak," an artificial word--a registered trade-mark--widely
advertised, has grown into common use, and is now used by many persons
to mean a small hand camera of any make, though (as every reader of
this book knows) a real Kodak is made only by the Eastman Company.

In this case the owners of the trade-mark have made their advertising
keep pace with the diffusion of the word.

  +---------------------------------------------+
  |         "KODAK"                             |
  |                                             |
  | Is our Registered and                       |
  | common-law _Trade-Mark_                     |
  | and cannot be rightfully                    |
  | applied except to goods                     |
  | of our manufacture.                         |
  |                                             |
  | If a dealer tries to sell you a camera      |
  | or films, or other goods not of             |
  | our manufacture, under the Kodak            |
  | name, you can be sure that he has an        |
  | inferior article that he is trying to       |
  | market on the Kodak reputation.             |
  |                                             |
  | _If it isn't an Eastman, it isn't a Kodak._ |
  |                                             |
  |     EASTMAN KODAK CO.,                      |
  |                                             |
  | ROCHESTER, N. Y., _The Kodak City_.         |
  +---------------------------------------------+
  _Special advertising to counteract the
  indiscriminate use of the word "Kodak."_

It is easier to say Kodak than it is to say "portable camera". There is
a real need in the language for such a word, and "Kodak" has come to
supply it.

Trade-marks of this character, which seem to supply a genuine
linguistic need, are, in a sense, _too good_. The indiscriminate
application of "Kodak" to a certain class of cameras, irrespective
of origin, has caused the Eastman Kodak Company to publish many
advertisements with the special purpose of calling attention to the
correct use of the word.

The word "O'Sullivan" is another instance of a trade-name acquiring a
secondary meaning through advertising. It instantly brings to mind the
thought of rubber heels. In a popular play an actor says, "I got away
from there on my O'Sullivan's" and every one in the audience knows that
he means to say that he left as quietly as he could.

       *       *       *       *       *

There comes a time, in the history of every manufacturer who advertises
extensively and successfully for a long period, when his trade-mark,
and the name of his product (in many cases they are the same), become
by-words of common speech, known to all men, and incorporated into our
fluid and elastic language. When an advertiser reaches this point, he
has generally attained the highest possible advertising success. In
other words, advertising has done for him all it can do, and he has
only to keep the stream of advertising going to hold what he has.




CHAPTER I

A Digest of the Trade-Mark Law


In February, 1905, Congress passed an act entitled "An act to authorize
the registration of trade-marks used in commerce with foreign nations
or among the several states or with Indian tribes, and to protect the
same."

This act went into effect on April 1, 1905. With its amendments it is
known as the United States Trade-Mark Law. Its provisions should be
known by every manufacturer or advertiser who is using, or who intends
to adopt, a trade-mark.


Property in Trade-Marks Does Not Rest upon the Statute, But upon the
Common Law.

It should be stated here that ownership in a trade-mark is a property
right resting in the common law. This right is, therefore, not a
creation of the statute. The purpose of the statute (or Act of 1905)
is to systematize the registration of trade-marks, and to provide a
definite procedure both for recording and protecting them. A trade-mark
may be legally valid without having been registered, and on the other
hand, a registered mark may be proved legally invalid. Registration is
prima facie evidence of validity, but it is not conclusive evidence.

Upon this subject the Supreme Court of the United States has said, "The
right to adopt and use a symbol or device to distinguish the goods or
property made or sold by the person whose mark it is, to the exclusion
of use by all other persons, has been long recognized by the common
law and the chancery courts of England and of this country. It is a
property right for the violation of which damages may be recovered in
an action at law, and the continued violation of it will be enjoined
by a court of equity with compensation for past infringements. This
exclusive right was not created by the act of Congress and does not
now depend upon it for its enforcement."

The common law rights of the owner of a trade-mark are the same now as
they were before the passage of the act. In fact, the statute itself
contains this provision: "Nothing in this act shall prevent, lessen,
impeach or avoid any remedy at law, or in equity, which any party
aggrieved by any wrongful use of any trade-mark might have had if the
provisions of this act had not been passed". (Section 23 of Act of
1905.)

The advantages of registration are readily apparent, however. In
an action at law against infringement, the owner of a registered
trade-mark can produce at once the record of its _adoption and legal
registration_. Without registration, it would be necessary for him to
go through an involved legal process to prove his rights in the matter.

Registration in the United States Patent Office brings any litigation
involving the right to use the trade-mark within the scope of the
Federal court, with a judiciary trained in such cases. When a
trade-mark is not registered under the Federal law a suit pertaining to
it cannot be heard in the United States courts, unless the amount in
dispute exceeds two thousand dollars, and the parties on the opposing
sides are not citizens of the same state.

Under the Act of 1905 about 39,000 trade-marks had been registered, up
to September 1, 1911.


Conditions of Registration

An individual or a corporation has a right to register a trade-mark
under the United States law if the trade-mark for which registration is
sought belongs to the applicant and is used by him:--

  1st. In commerce among the several states;

  2nd. Or, in commerce with foreign nations;

  3rd. Or, in commerce with the Indian tribes;

  Provided the owner of the trade-mark resides within the territory of
  the United States (which includes all territory under United States
  control), or has a manufacturing establishment situated in United
  States territory, or resides in any foreign country which affords, by
  treaty, similar privileges to citizens of the United States.

The law states, as a condition of validity, in explicit terms that the
trade-mark must not only belong to the applicant, but must be "_used
by him_." A trade-mark cannot be registered until it has actually been
used on goods, and the use must be continued long enough, and must be
of such a nature as to indicate a genuine intention on the part of the
owner to adopt the trade-mark as a permanent accessory of his business.

The reason for this is evident. If any citizen could appropriate and
sequester a trade-mark by paying the registration fee of ten dollars,
without an intention of using it for its legitimate purpose, it does
not take much imagination to foresee a Trade-Mark Trust, with most of
the desirable trade-marks in the hands of a monopoly, to be farmed out
at a profit.

=To be Registrable A Trade-Mark Must Be:=

  1st. An arbitrary symbol, or word, or words, or a combination of a
  device and wording, not obviously descriptive of the commodity to
  which it is to be applied.

  2nd. Unlike any other trade-mark, already in use, and applied to
  the same class of goods. It must not resemble the trade-mark of a
  competitor, or of a potential competitor, to such an extent that the
  buying public is likely to be deceived or confused by the resemblance.

  3rd. Used in lawful trade.

  4th. Of such a character that it may be affixed, printed upon, woven,
  sewed, branded or otherwise impressed upon the product with which it
  is used, or upon the package or container of the product.

=A Trade-Mark Must Not Be:=

  1st. A portrait of a living individual unless the application for
  registration is accompanied by the written consent of the individual
  whose portrait is used.

  2nd. Scandalous or immoral matter of any description.

  3rd. The flag or coat of arms of the United States, or of any state,
  or of any municipality, or any of the insignia thereof.

  4th. The insignia of the American National Red Cross Society.

  5th. The flag or coat of arms of any foreign nation.

  6th. Any design or picture which has been adopted by a fraternal
  society as its emblem.

  7th. A design or wording identical with a registered or known
  trade-mark owned and in use by another, and appropriated to
  merchandise of the same descriptive qualities, or which so nearly
  resembles a registered or known trade-mark owned and used by another,
  and appropriated to merchandise of the same descriptive qualities, as
  to be likely to cause confusion or mistake in the mind of the public,
  or to deceive purchasers.

  8th. Any mark which consists merely in the name of an individual,
  firm, corporation, or association, unless said name is written,
  printed, impressed or woven in some particular or distinctive manner,
  or is used in connection with a portrait of the individual.

  9th. Any arrangement of words or devices descriptive of the goods
  with which they are used, or of the character or quality of such
  goods. In other words, a trade-mark must not be an advertisement in
  the ordinary sense of the word.

  10th. Any geographical name or term.

  11th. A misrepresentation of the quality, composition, character,
  origin, or nature of the commodity with which it is used.

  +------------------------------------------------------------+
  |                    [Illustration]                          |
  |                    Jobber Retailer                         |
  |       Manufacturer Trade-Mark Consumer                     |
  |                    Advertising                             |
  |                                                            |
  | This looks like a problem in geometry, but it isn't.       |
  |                                                            |
  | This diagram shows at a glance how Trade-Mark              |
  | Advertising draws a straight line between the manufacturer |
  | and the consumer.                                          |
  |                                                            |
  | The manufacturer who doesn't advertise has to              |
  | depend on the jobber and the retailer. In the majority     |
  | of cases his name never reaches the consumer. His          |
  | trade is necessarily precarious, and he is constantly      |
  | in danger of the kind of cut-throat competition that       |
  | shaves the lowest margin of profit to nothing.             |
  |                                                            |
  | But the manufacturer who advertises has his name           |
  | and the name of his goods on the lips of millions of       |
  | people. The retailer who attempts to keep advertised       |
  | goods from selling is like the man who cuts off his        |
  | nose to spite his face. People will go elsewhere and       |
  | get what they want.                                        |
  |                                                            |
  | We would like to talk with you about advertising.          |
  | Among our clients are some of the largest and most         |
  | successful advertisers in the United States. It will       |
  | cost nothing to have a talk with us--and we may be         |
  | able to suggest an idea or plan that will simplify         |
  | your sales problem.                                        |
  |                                                            |
  |           =J. WALTER THOMPSON COMPANY=                     |
  |                                                            |
  |           =New York: 44 East 23rd Street=                  |
  |           =Boston: 201 Devonshire Street=                  |
  |           =Cincinnati: First National Bank Bldg.=          |
  |           =St. Louis: Odd Fellows Bldg.=                   |
  |           =Chicago: The Rookery=                           |
  |           =Cleveland: Swetland Bldg.=                      |
  |           =Detroit: Trussed Concrete Bldg.=                |
  |           =Toronto: Lumsden Bldg.=                         |
  |           =London: 33 Bedford St., Strand=                 |
  +------------------------------------------------------------+

A special provision of the Act of 1905 legalized all trade-marks that
had been in _exclusive use_ by the applicant for ten years prior to
the passage of the act, and this provision applies even to trade-marks
of ten years' standing that, because of their character, could not be
registered under the act. The language of the act dealing with this
subject is as follows:

  "Nothing herein (in the Act of 1905) shall prevent the registration
  of any mark used by the applicant or his predecessors, or by those
  from whom title to the trade-mark is derived, in commerce with
  foreign nations or among the several states, or with Indian tribes,
  which was in actual and exclusive use as a trade-mark of the
  applicant or his predecessors from whom he derived title for ten
  years next preceding the passage of this act." (Section 5, Act of
  1905.)

[Illustration:

    Red Cross Shoe

    "It Bends with your Foot."

  _The trade-marks of the Red Cross Shoe are the Red Cross shown below
  and the design shown above._

    KROHN FECHHEIMER & CO.

    CINTI. U. S. A.

]

There are many trade-marks registered under this ten years' clause.

Manufacturers are prohibited from using the insignia of the Red Cross
Society as a trade-mark, but there is a Red Cross Shoe, and the
products of the well-known druggists' specialty house of Johnson &
Johnson bear a Red Cross symbol. In both cases, their right is based on
long and continuous use antedating the act of 1905, which especially
exempts such cases.


How to Apply for Registration

The registration of trade-marks is under the supervision of the
Commissioner of Patents, and regular forms for registration are
prescribed. Copies of these forms may be obtained by applying to the
Patent Office.

In applying for trade-mark registration, the following provisions of
the law must be observed:

1st. The applicant must file a _Petition_ in the Patent Office,
addressed to the Commissioner of Patents. This petition must be in
regular form, and should be signed and dated.

[Illustration:

    B.V.D.

  _A valuable and widely advertised trade-mark. Can you guess what the
  three letters mean?_

]

[Illustration:

    TRADE MARK.

    =CRESCENT
    GOLD FILLED.=

  _A trade-mark of the Keystone Watch Case Co._

]

2nd. With the petition a _Statement_ must be forwarded. This document
must give the name, domicile, location and citizenship of the
applicant; the class of merchandise and the particular description of
goods comprised in such class to which the trade-mark is appropriated;
a statement of the mode in which the trade-mark is to be affixed to
the goods; and the length of time during which the trade-mark has
been used. It is not necessary to give a written description of the
trade-mark itself except when it contains colors not shown in the
drawing. This statement must be signed by the applicant. Where a
corporation is the applicant, the secretary should sign the statement.
When a partnership is the applicant, any partner can sign, but the
names of all the members of the firm must be given.

[Illustration:

    CHIFFONETTE

    VEILINETTE

    MALINETTE

  _Trade-marks applied to fabrics and registered by Theo. Tiedemann &
  Co._

]

3rd. There should also be forwarded to the Patent Office, at the same
time, a _Declaration_ of the applicant, sworn to before a notary
public, to the effect that he believes the statements made in his
application are true; that he believes himself to be the owner of the
trade-mark sought to be registered; and that said trade-mark is used by
him in commerce among the several states of the United States, with the
Indian tribes, or with foreign nations; and that the drawing sent with
the application truly represents the trade-mark sought to be registered.

4. With this application there must be filed a _Drawing_ of the
trade-mark, made according to the following specifications: The size of
the sheet on which the drawing is made must be exactly 10 x 15 inches,
and the sheet must be of pure white paper, corresponding in thickness
to two-sheet Bristol board. The surface of the paper must be calendered
and smooth. India ink must be used. One inch from its edges a single
marginal line must be drawn, as shown in the accompanying cut, leaving
the dimensions inside the border exactly 8 x 13 inches.

[Illustration: _The distinctive and eye-catching trade-mark of 20-Mule
Team Borax._]

Within this border, the drawing and signatures must be included. One of
the shorter sides of the sheet is regarded as its top, and measuring
downwardly from the marginal line, a space of not less than 1-1/4
inches is to be left blank for the heading of title, name, number
and date. All drawing must be made with the pen only. Every line and
letter, including signatures, must be absolutely black. The name of
the proprietor of the trade-mark, signed by himself, or his attorney
of record, must be placed at the lower right-hand corner of the sheet
within the marginal lines.

[Illustration:

    The size of the sheet must be exactly
    10 x 15 inches.

     +--------------------------------------+
     |                                      |
    T|                                      |
    h|                                      |
    i|                                      |
    s|                                      |
     |                                      |
    s|                                      |
    p|                                      |
    a|                                      |
    c|                                      |
    e|                                      |
     |                                      |
    m|                                      |
    u|                                      |
    s|              Victor                  |
    t|                                      |
     |                                      |
    b|                                      |
    e|                                      |
     |                                      |
    t|                                      |
    h|                                      |
    i|                                      |
    r|                                      |
    t|                                      |
    e|                                      |
    e|                                      |
    n|                                      |
     |                                      |
    i|                                      |
    n|                                      |
    c|                     Proprietor.      |
    h|                                      |
    e|           By.                        |
    s|                                      |
    .|                         Attorney.    |
     |                                      |
     +--------------------------------------+
      <--This space must be eight inches.-->

  =A Diagram Showing Method of Making Drawing=

  _The drawing that accompanies an application for registration of a
  trade-mark must be made exactly on this pattern. It is essential that
  these directions be followed._

]

[Illustration:

    Onoto

  _Coined word used as the name of a fountain pen._

]

[Illustration:

    Stork Baby

    TRADE  SHOES   MARK

  _The stork is the appropriate and suggestive trade-mark of the Stork
  Co. manufacturers of baby things._

]

5th. With the application five _Specimens_, or facsimiles, of the
trade-mark as actually used upon the goods, must be sent to the
Commissioner of Patents.

6th. The _Fee_ for registering a trade-mark is ten dollars, and this
amount should be sent with the application.

[Illustration:

    TRADE MARK

    _Tapestry Brick_
    REGISTERED IN U. S. PATENT OFFICE

  _Trade-mark moulded into the reverse side of every Tapestry Brick._

]

The foregoing is a brief resumé of the rules for registration. Those
intending to register trade-marks should obtain exact forms from the
Commissioner of Patents.

A certificate of registration remains in force for twenty years, and it
may be renewed from time to time, upon expiration, for like periods of
twenty years, upon payment of a renewal fee of ten dollars.

The owner of a trade-mark may prosecute his own application for
registration, but he is advised, unless familiar with such matters, to
employ a competent attorney. A register of attorneys is kept in the
Patent Office, on which is entered the names of all persons entitled
to represent applicants before the Patent Office in the prosecution
of applications for patents, and any registered attorney will be
recognized in the prosecution of applications for registration of
trade-marks.


Procedure of the Patent Office

The examiner in charge of trade-marks examines all applications for
registration. If, after examination, registration is refused, the
applicant will be notified, and the reasons for refusal stated, in
order that the applicant may judge of the propriety of prosecuting his
application further.

If, on examination of an application, it appears that a trade-mark is
entitled to registration, the mark will be published at least once in
the Official Gazette of the Patent Office. Such publication shall be at
least thirty days prior to the date of registration.

[Illustration:

    SW
    COVER THE EARTH

  _A Sherwin-Williams advertising symbol._

]

If no notice of opposition be filed within thirty days after such
publication, the applicant or his attorney will be notified of the
allowance of his application, and a certificate of registration will be
granted.

Under certain conditions amendments may be made in an application.

Every applicant whose mark has been twice refused registration by the
Examiner of Trade-marks for the same reasons upon grounds involving the
merits of the application, may appeal to the Commissioner, in person,
upon a payment of a fee of fifteen dollars.

From an adverse decision by the Commissioner of Patents an appeal may
be taken to the Court of Appeals of the District of Columbia.

[Illustration:

    TRADE MARK
    REG.
    U. S. PAT. OFF.

  _The well-known trade-mark of the National Lead Company._

]

If, upon examination of an application to register a trade-mark, the
examiner in charge finds that the mark for which registration is sought
is identical with, or essentially similar to, a trade-mark appropriated
to goods of the same descriptive qualities, for which a certificate of
registration has been already issued, an interference will be declared.

When an interference is declared, the matter in dispute is referred to
the Commissioner of Patents, who, under the rules of the Patent Office,
passes judgment upon the points at issue.

Any person who believes he would be damaged by the registration of a
mark may oppose the same by filing a written notice of opposition,
stating the grounds therefor, within thirty days after the publication
of the mark sought to be registered, which notice of opposition
shall be accompanied by the fee required by law ($10.00) and shall
be verified by the person filing the same before one of the officers
mentioned in Section 2 of the Act of February 20, 1905.[1] An
opposition may be filed by a duly authorized attorney, but such
opposition shall be null and void unless duly verified by the opposer,
within a reasonable time after such filing. A duplicate copy of
the notice of opposition must be filed, either with the notice of
opposition or within a reasonable time after the filing of the same.

[Illustration:

    TRADE E.&W. MARK

  _All men, and some women, know what this stands for._

]

Any person, deeming himself to be injured by the registration of a
trade-mark in the Patent Office, may, at any time, make application to
the Commissioner to cancel the registration thereof. Such application
shall be filed in duplicate, shall state the grounds for cancelation,
and shall be verified by the person filing the same, before one of the
officers mentioned in Section 2 of the Act of February 20, 1905.

If it shall appear, after a hearing before the examiner of
interferences, that the registrant was not entitled to the use of the
mark at the date of his application for registration thereof, or that
the mark is not used by the registrant, or has been abandoned, and the
examiner in charge of interferences shall so decide, the Commissioner
shall cancel the registration of the mark, unless appeal be taken
within the limit fixed.

[Illustration:

    F A
    TRADE MARK

  _A weak and unimpressive trade-mark._

]

In cases of opposition, and of applications for cancelation, the
examiner in charge of trade-marks shall forward the files and papers to
the examiner in charge of interferences, who shall give notice thereof
to the applicant or registrant. The applicant or registrant must make
answer at such time, not less than thirty days from the day of the
notice, as shall be fixed by the examiner in charge of interferences.

The law directs that the owner of a registered trade-mark print, or
impress, or affix, in legible letters, the words:

  =Registered in U. S. Patent Office
  or
  Reg. U. S. Pat. Off.=

upon such trade-mark wherever it is used, or sufficiently near it to
be discerned whenever the trade-mark is seen. The manner in which this
should be done is shown in connection with the "Fine-Form" Maternity
Skirt trade-mark on this page. When, from the character or size of
the trade-mark, or from its manner of attachment to the article, this
cannot be done, a label containing a like notice should be affixed to
the package or receptacle wherein the article is enclosed.

[Illustration:

    _Fine-Form
    TRADE MARK
    MATERNITY SKIRT
    Registered in US Pat Office_

  _Shows method of exhibiting registry notice in connection with a
  trade-mark._

]

It is important that this be done, otherwise, in a suit for
infringement by a party who has failed to give such notice of
registration no damages shall be recovered, except on proof that the
defendant was duly notified of infringement, and continued the same
after such notice.


Registration in Foreign Countries

American owners of trade-marks who expect to do business in foreign
countries should not neglect the registration of their trade-marks
abroad. A failure to observe this precaution has led, in some cases, to
a situation where the American owner, entering the foreign field, found
his trade-mark already appropriated. The trade-mark laws of various
foreign countries differ greatly, in some instances, from the United
States law. A manufacturer who desires to do business in a foreign
country should consult a trade-mark attorney who specializes in foreign
trade-mark registration and protection, and be guided by his advice.


Classification of Merchandise

The right to use a trade-mark is limited to the class of merchandise
for which it is registered, and to the goods, falling within that
class, on which it has been actually used.

For the purpose of classification the Patent Office has issued a list
of forty-nine general classes of merchandise. An applicant for the
registration of a trade-mark must specify the class of merchandise with
which his mark has been used, and must describe the particular goods
in that class on which it has been used. In case his application is
granted, his right to use the trade-mark is confined to the line of
products named in his application.

  The list follows:

   1. Raw or partly prepared materials.

   2. Receptacles.

   3. Baggage, horse equipments, portfolios, and pocket-books.

   4. Abrasive, detergent, and polishing materials.

   5. Adhesives.

   6. Chemicals, medicines, and pharmaceutical preparations.

   7. Cordage.

   8. Smokers' articles, not including tobacco products.

   9. Explosives, firearms, equipments, and projectiles.

  10. Fertilizers.

  11. Inks and inking materials.

  12. Construction materials.

  13. Hardware and plumbing and steam-fitting supplies.

  14. Metals and metal castings and forgings.

  15. Oils and greases.

  16. Paints and painters' materials.

  17. Tobacco products.

  19. Vehicles, not including engines.

  20. Linoleum and oiled cloth.

  21. Electrical apparatus, machines, and supplies.

  22. Games, toys, and sporting goods.

  23. Cutlery, machinery, and tools, and parts thereof.

  24. Laundry appliances and machines.

  25. Locks and safes.

  26. Measuring and scientific appliances.

  27. Horological instruments.

  28. Jewelry and precious-metal ware.

  29. Brooms, brushes, and dusters.

  30. Crockery, earthenware, and porcelain.

  31. Filters and refrigerators.

  32. Furniture and upholstery.

  33. Glassware.

  34. Heating, lighting, and ventilating apparatus, not including
      electrical apparatus.

  35. Belting, hose, machinery packing, and non-metallic tires.

  36. Musical instruments and supplies.

  37. Paper and stationery.

  38. Prints and publications.

  39. Clothing.

  40. Fancy goods, furnishings, and notions.

  41. Canes, parasols, and umbrellas.

  42. Knitted, netted, and textile fabrics.

  43. Thread and yarn.

  44. Dental, medical, and surgical appliances.

  45. Beverages, non-alcoholic.

  46. Foods and ingredients of foods.

  47. Wines.

  48. Malt extracts and liquors.

  49. Distilled alcoholic liquors.

  50. Merchandise not otherwise classified.

  (Note: Class 18 was abolished Feb. 24, 1909.)

As a result of this feature of the law products in various
non-competitive lines sometimes bear the same names. There is, for
example, a Yale[2] lock and a Yale motorcycle, an Ideal hairbrush and
an Ideal fountain pen, a Packard piano and a Packard automobile, a
Skidoo soap and a Skidoo Marine engine.


State Trade-Mark Laws

Most states have some kind of a trade-mark law, many of them good ones,
and about a dozen have strong penal codes covering the subject, under
the term of counterfeiting, while others are able to do what the United
States courts cannot do--actually mete out imprisonment to those who
infringe. Pennsylvania's law in this respect is particularly thorough.

The Federal statutes concerning trade-marks apply to the entire
country. Few large concerns doing a national business register in
the states. Most of them go to the Patent Office and secure national
registration.

There is nothing in any of the state laws which make it safer to
register by states, since California's obnoxious law has been repealed,
but in some cases, where persistent infringers are at work, owners of
trade-marks secure state registration as an extra precaution.

FOOTNOTES:

[1] "The verification required by this section may be made before
any person within the United States authorized by law to administer
oaths, or when the applicant resides in a foreign country, before
any minister, chargé d'affaires, consul, or commercial agent holding
commission under the government of the United States, or before any
notary public, judge, or magistrate having an official seal and
authorized to administer oaths in the foreign country in which the
applicant may be, whose authority shall be proved by a certificate of a
diplomatic or consular officer of the United States."--(_Extract from
Section 2, Act of 1905._)

[2] The name Yale, or any similar name, can be registered as a
trade-mark only when the applicant can take advantage of the ten
years' clause. The word "Yale" as applied to hosiery has been refused
registration on the ground that it is a geographical term.




CHAPTER II

Essentials of a Valid Trade-Mark


To a layman the trade-mark law seems, at first consideration, to be a
crystallized system of arbitrary rules without a fundamental underlying
principle.

A study of its application will show that this is a mistaken view of
the case. As a matter of fact, the law is excellently framed, and is
based on a broad principle which draws a just line of cleavage between
the rights of an individual and his encroachment upon the rights of
others.

[Illustration:

    TRADE MARK
    Thomas A Edison

  _An illustrious and valuable trade-mark._

]

In the practical workings of a law which deals with commercial
activities in their most highly developed phase, in a sphere where the
ingenuity of men is on fertile ground, in cases where the weight of a
hair would make the difference between yea and nay, it is inevitable
that many fine distinctions must be drawn.

The courts, by contradictory decisions, have here and there brought
confusion into the practice of the Patent Office, as applied to
trade-mark procedure, but, on the whole, the judicial interpretation of
the law has been fairly uniform and consistent.

It should be mentioned here, for the reader's information, that the
attitude of the Patent Office toward applications for the registration
of trade-marks has been criticized, on various occasions, by some
of those who have had dealings with it. Its rulings have been
characterized as narrow and illiberal, especially in the matter of
trade-marks alleged to be descriptive in their nature.

In the preceding chapter we laid down briefly the requisites of a valid
trade-mark. We shall now discuss these requirements more fully, using
specific and generally well-known examples of trade-marks to illustrate
our meaning.


A Portrait of a Living Individual Cannot be Registered as a Trade-Mark
Unless by Consent of the Individual Whose Portrait is Used, or, if a
Minor, by Consent of his Legal Guardian

This section of the law is based on the recognized right of any
person to prohibit the unauthorized reproduction of his portrait
for any advertising purpose. In some of the states--New York, for
example--there are state laws specifically forbidding such unauthorized
reproduction.

[Illustration: _Registered as a trade-mark by the Saturday Evening
Post._]

While the law prohibits the registration of a living individual's
portrait as a trade-mark, without that person's consent, it is
allowable to use the portrait of a historical character.

The trade-mark of the Robert Burns Cigar is a picture of the poet
Burns, with his facsimile signature.

Pictures of Franklin, Napoleon, Henry Clay, Bismarck, and many
other famous men are used as trade-marks. A cereal recently placed
on the market under the name of "Washington Crisps" carries George
Washington's portrait on the package.

Benjamin Franklin's face is registered as a trade-mark by the Curtis
Publishing Company, and is printed in this connection on the editorial
page of the Saturday Evening Post.

[Illustration:

    MENNEN'S BORATED TALCUM
    TRADE MARK

  _This face has been printed more times than any other portrait ever
  used in advertising._

]

A celebrated instance of a face used as a trade-mark is shown in the
picture of Gerhard Mennen on this page. Mennen's Talcum Powder was
produced by Gerhard Mennen, who had his own picture put on each package
as an identification to the purchaser. After years of use, his portrait
was formally registered in the Patent Office.

Another famous face is that of W. L. Douglas, shoe manufacturer and
Ex-Governor of Massachusetts.

A very effective trade-mark is a combination of Thomas A. Edison's
portrait and signature, used with the Edison Phonograph. Edison is
known by reputation to every American, and his picture and signature
used in connection with a mechanical device, give it the stamp of high
excellence. Imagine how much more difficult the selling effort of the
Edison Phonograph Company would have been if they had called their
instrument The Voltex Phonograph, for example, or some similar name.

Everybody has seen the Woodbury face, which is identified with
Woodbury's Facial Soap, and other preparations of the Andrew Jergens
Company of Cincinnati. This is a very valuable trade-mark, on account
of the extensive advertising, running through many years, that has
been given it. One of the striking features of this trade-mark is that
the head seems to be neatly decapitated just under the chin. This odd
appearance makes the memory of this picture stick in the reader's mind
longer than any ordinary portrayal of a human face.


A Valid Trade-Mark Cannot Be any Arrangement of Words or Devices
Descriptive of the Goods with which They are Used, or of the Character
or Quality of the Goods

The intent of the law here is to prevent the individual appropriation
of general terms descriptive of a class of goods. If it were allowable
to register and protect such phrases as "The Best Soap in the World",
applied to a certain brand of soap, for instance, it is easy to see
that all desirable superlatives and descriptive words would soon be
appropriated, to the detriment of other concerns in the same line of
trade. Therefore, the law makes strict provision that a trade-mark
shall not be descriptive in any sense.

Though this is the intent of the law, in its working out the line seems
to be finely drawn in some cases.

"Royal" has been held to be a valid trade-mark for a baking powder on
the ground that it has been long used as the name of the total output
of a factory, and that it has become to the public mind a designation
of origin. It seems difficult for a layman to reconcile this decision
with that of another court, which held that "Royal" is not a valid
trade-mark for flour, as it indicates "quality and is incapable of
exclusive appropriation."

The word "Ideal" is held to be a valid trade-mark for a fountain pen,
its use in this connection being fanciful and not descriptive.

The word "Naphtha", used as a name for a soap with naphtha as an
ingredient, was held to be descriptive, and therefore not registrable
as a trade-mark, to the exclusion of the goods of other manufacturers,
although the owners, Fels & Company, of Philadelphia, had advertised it
extensively throughout a considerable period of time.

"Fitmeeasy", as applied to corsets, was considered descriptive.

"Maltha" was refused registration for a brand of paving asphalt. It
appears that "Maltha" means liquid asphalt and is in general use in the
trade with that meaning.

"Elastic Seam", a name used to designate drawers having an elastic seam
at the side, is purely descriptive, and was so considered by the court
in the case of _Scriven v North_.

On the other hand, the word "Elastic", when applied to bookcases, is
held to be a fanciful word, not descriptive, and is a valid trade-mark.

Application was made by a brewer for the registration of the word
"Star", accompanied by a picture of a six-pointed star, as a trade-mark
for beer. Opposition by another brewer was filed, and it was shown that
both the word "Star" and the symbol had been used for ages in Germany,
the home of beer, as a general sign of the brewing business, in the
same sense that a striped pole denotes a barber. It was claimed, and
the claim was judicially sustained, that both the word "Star" and its
symbol are indicative of the brewing business in general and, as such,
are common to the trade, and cannot therefore be considered valid
trade-marks for beer.

[Illustration:

    THE ATLAS PORTLAND CEMENT CO
    PORTLAND
    ATLAS
    CEMENT
    30 BROAD ST. NEW YORK

    LEHIGH PORTLAND CEMENT COMPANY
    LEHIGH
    PORTLAND
    -WORKS-
    ORMROD LEHIGH CO
    PENNA.
    CEMENT
    ALLENTOWN, PA.

    · ALPHA · PORTLAND · CEMENT · COMPANY ·
    ALPHA
    PORTLAND
    GENERAL OFFICE
    EASTON.
    PENNA
    CEMENT
    · MANUFACTURERS ·

  _Some Portland Cement Trade-Marks._

]

A flour manufacturer conceived the idea of selling his product in
barrels made by staves of alternately light and dark wood--striped
barrels, in fact. He then desired registration for a trade-mark which
consisted of a pictorial representation of this form of barrel. It was
held that this mark was not registrable, as it was descriptive of the
barrel.

"Better than Mother's" Mince Meat was held to be invalid as a
trade-mark, as it is obviously indicative of quality.

[Illustration:

    "COLUMBUS"
    SANDUR
    SANITARY--DURABLE
    PATENTED

  _A complicated and involved trade-mark._

]

A descriptive word in a foreign language cannot be exclusively,
appropriated as a trade-mark. The word "Matzoon" in Armenian means
"fermented milk". It was held, in the case of _Dadirrian v Yacubian_
that this word, applied to a preparation of fermented milk, was not a
valid trade-mark.

Arbitrary symbols, numbers or words in common use in any line of trade
to designate grades, or varieties, of products, are held to have
become descriptive by usage. "Lake", "Cylinder", and "New York" are
trade names used to indicate qualities of glass. They were refused
registration on the ground that they were descriptive appellatives.
Note that one of the names, "New York", would have been considered
invalid on the ground of being a geographical term.

"A No. 1", "A X No. 1" and "No. 1", used by a plow manufacturer to
indicate size and shape of plows, were considered descriptive terms,
and, therefore, not valid trade-marks.

While descriptive numbers cannot be registered as trade-marks, it is
permitted to register numbers that are used as arbitrary symbols. A
celebrated instance of a number used as a trade-mark is "4711" used
to designate a line of toilet articles. When the manufacture of the
famous "4711" Perfume began, the owner's place of business was at 4711
Glockengasse, in Cologne. The street number "4711" was placed on the
label, and it is to-day one of the oldest trade-marks in existence,
having been used for about one hundred and twenty-five years. The house
at 4711 Glockengasse has long since disappeared, and "4711" is now only
an arbitrary symbol.

A manufacturer of hooks and eyes applied for registration of the phrase
"Rust? Never!" as a trade-mark. Registration was refused, as the mark
was held to be descriptive, indicating that the hooks and eyes would
never rust.

  +-----------------------------------------------------------------+
  |                          =The=                                  |
  |                         =J. W. T.=                              |
  |                        =Advertising=                            |
  |                         =Service=                               |
  |                                                                 |
  | An advertising agency's claim to an advertiser's                |
  | consideration must be based on the service that it              |
  | gives.                                                          |
  |                                                                 |
  | Service consists of:--                                          |
  |                                                                 |
  | 1st. Information as to advertising mediums, their circulations, |
  | rates and qualities.                                            |
  |                                                                 |
  | 2nd. Advice resting on actual experience.                       |
  |                                                                 |
  | 3rd. Knowledge of commodities, their composition,               |
  | prices and methods of sale.                                     |
  |                                                                 |
  | 4th. Knowledge of merchandising conditions.                     |
  |                                                                 |
  | 5th. Knowledge of the buying public, its needs, its habits      |
  | and its income.                                                 |
  |                                                                 |
  | 6th. The ability to plan advertising campaigns--that is,        |
  | to grasp the whole subject and work out its details             |
  | in conformity with a general principle.                         |
  |                                                                 |
  | 7th. Knowledge of trade-marks, their use in advertising,        |
  | and methods of protecting them from infringement.               |
  |                                                                 |
  | 8th. The ability to write advertising that will create a        |
  | desire for the advertised product.                              |
  |                                                                 |
  | 9th. The artistic ability to make advertising attractive.       |
  |                                                                 |
  | The service of the J. Walter Thompson Company                   |
  | covers all these functions of an advertising agency.            |
  |                                                                 |
  | We have had a continuous experience of forty-six                |
  | years in planning and carrying out advertising campaigns.       |
  |                                                                 |
  | We have reached the stage of development where                  |
  | we know advertising as a swimmer knows the water.               |
  |                                                                 |
  | Doesn't it seem good business to entrust your advertising       |
  | to an agency that really knows?                                 |
  |                                                                 |
  |             =J. WALTER THOMPSON COMPANY=                        |
  |                                                                 |
  |             =New York: 44 East 23rd Street=                     |
  |             =Boston: 201 Devonshire Street=                     |
  |             =Cincinnati: First National Bank Bldg.=             |
  |             =St. Louis: Odd Fellows Bldg.=                      |
  |             =Chicago: The Rookery=                              |
  |             =Cleveland: Swetland Bldg.=                         |
  |             =Detroit: Trussed Concrete Bldg.=                   |
  |             =Toronto: Lumsden Bldg.=                            |
  |             =London: 33 Bedford St., Strand=                    |
  +-----------------------------------------------------------------+

It should be noted that there are valid trade-marks that seem to be
descriptive, and which no doubt convey to the purchaser the suggestion
of quality, but which are not really descriptive, but merely
suggestive. An example of this is "Hydegrade" as applied to fabrics.
This word is a combination of "Hyde" (the name of the proprietor) and
"Grade". The word, by virtue of its sound, brings to the mind the idea
of "high-grade"--a very fortuitous circumstance, doubtless, in the
opinion of the owners.

[Illustration:

    Brenlin

  _Affixed by using perforated letters. Trade-mark appears on every
  yard of Brenlin window shades._

]

Names, descriptive in their nature, and therefore not registrable under
the Act of 1905, may, nevertheless, be protected by the law of unfair
competition, if the circumstances are such as clearly to indicate that
a new user of the name has adopted it for the purpose of trading upon
the reputation of an older or more widely known concern.


A Trade-Mark Must Not Misrepresent the Quality, Composition, Character,
or Origin of the Product

A fraud cannot be legalized, and a misrepresentation of any kind, made
by a trade-mark, renders it invalid.

"Syrup of Figs" was held to be invalid as a trade-mark, and not
protectable, in a case where the product was shown to have only a trace
of fig syrup.

The title "American Sardines", applied to fish which were not sardines,
was considered a misrepresentation, and was refused registration.

  (Note: Even if not a misrepresentation, it would be considered
  invalid, as it is descriptive.)

In the case of _Wrisley v Iowa Soap Company_, it was held that the name
"Old Country Soap" used on soap and advertised in such a way as to
lead people to believe that it was made in Europe, was deceptive and
protection to the name could not be given.

[Illustration:

    B

  _A trade-mark that may be considered good or bad, depending on the
  way you look at it._

]

An interesting case is that of _Memphis Keeley Institute v Leslie E.
Keeley Co._ (144 Fed. R. 628; 155 id. 964).

The Memphis Keeley Institute made a contract with the Leslie E. Keeley
Company to represent the Keeley Company in Tennessee in treating
inebriates. The Keeley Company agreed to sell the Keeley Cure to no one
in Tennessee except through the Memphis Institute.

After a while the Keeley Company claimed that the Memphis Institute had
violated its contract, and refused to furnish any more of the treatment
to the Memphis concern.

The Memphis Institute continued to advertise itself as the
representative of the Keeley Company, and to assert that its treatment
was that of the Keeley Company.

[Illustration:

    "STEERO"

  _A coined word used as a trade-mark._

]

Suit being brought, the Memphis Institute alleged that the
complainant's representations of the ingredients of its remedies were
untrue and misleading. The Keeley Company had extensively advertised
its treatment as the "Gold Cure". It was shown in court that it
contained no gold in any form; that in the beginning chloride of
gold had been used in one instance, and that it had almost killed
the patient; and that special bottles of the cure had been prepared
with gold in them in order that a chemist might be deceived; and that
this chemist's analysis of the spurious bottles had been extensively
advertised as showing that gold was in the remedy.

[Illustration:

    ARLINGTON MILLS
    SKILL WINS FAVOR

  _A simple and effective trade-mark._

]

On the evidence of these misrepresentations, the Court of Appeals
reversed the decision of the lower court, and dismissed the complaint.

The doctrine of law that misrepresentation is a bar to protection of
a trade-mark or a trade-name has been clearly established by many
decisions similar to the above.


A Trade-Mark Must Not Be Similar to a Trade-Mark previously Registered
for the same Class of Merchandise

When a pictorial or symbolic device has been registered, registration
is refused to any other mark, for the same class of merchandise,
composed of words describing the pictorial or symbolic device already
registered. Or, _vice versa_, if the wording has been registered
first, a symbol with the same meaning will be denied registration. For
example:--

A trade-mark consisting of the conventional representation of a fox,
unaccompanied by lettering, would not be a valid trade-mark if the word
"Fox" had already been registered for the same class of merchandise. In
either case the goods would be called the "Fox" brand.

The practice is to refuse registration of a mark in cases where,
although there may be no literal similarity, there is a similarity in
ideas.

"Edelweiss-Maltine" was refused registration on the ground that it
conflicted with "Maltine", a trade-mark already registered for goods of
the same description.

"Certosa" was refused registration as a trade-mark for flour on account
of its similarity to the word "Ceresota" already registered.

The Patent Office has held that in an interference between two
trade-marks, one consisting of the pictorial representation of a
bouquet of flowers, and the other consisting of the word "Bouquet",
applied to the same class of goods, that the marks were identical in
meaning.

"Nassac" having been registered as a trade-mark, the word "Nayassett"
was refused registration on the ground of similarity. Thereupon, the
owner of the "Nayassett" mark obtained the consent of the owners of
"Nassac" to the registration of "Nayassett". This did not alter the
case, in the opinion of the Commissioner of Patents, who held that the
law was mandatory, and was not affected by agreement among the owners
of conflicting marks.

In the case of _McLean Co. v Adams Co._ (136 Official Gazette, 440) it
was held that there was no conflict between "Victoria" and "Victor", a
mark already registered for the same class of merchandise. A picture
of Queen Victoria's head was shown on a medallion, associated with the
word "Victoria". The "Victor" trade-mark consisted of the words "The
Victor" with a device showing a knight on horseback. As the similarity
between the marks was obviously slight and superficial, and was
outweighed by the dissimilar features, it was held that the "Victoria"
trade-mark was entitled to registration.

It was held that there was no conflict between two trade-marks
for stove polish, one consisting of the word "Raven" with the
representation of a raven sitting on a limb of a tree, and the other
consisting of the word "Crow" associated with a picture of a crow, also
perched on a limb, but in a different position.

In case of conflicting marks the test of similarity is whether
the marks are sufficiently alike in sound or in appearance, or in
intention, to mislead the purchaser.


A Trade-Mark May Not Be a Geographical Name or Term

The object of this provision of the law is to prohibit the
appropriation of the name of a place by an individual to the detriment
of other manufacturers in the same locality, as well as to prevent a
misrepresentation of the place of origin of a trade-marked article.

This restriction does not apply to geographical names used in an
arbitrary or fanciful sense.

[Illustration:

    NAME
    DUPONT
    ON EVERY BRUSH

  _This shows how the reader's attention is called to the Dupont brush
  trade-mark in advertisements._

]

The Fleischman Company, well-known bakers of New York, bake and sell a
Vienna Bread. The term "Vienna" used in this connection was held, in a
test case, to be a valid trade-mark, although it is a geographical name.

In the decision bearing on the Vienna trade-mark for bread, the Court
said: "As a mark for bread it is purely arbitrary, and is in no manner
descriptive of the ingredients or the quality of the article. No
deception is practised, because the place of its manufacture is given,
and it is known that bread cannot be imported from abroad for use here."

"Durham", a name applied to tobacco, has been judicially held not to
be a valid trade-mark against another manufacturer located in the
town of Durham. While any tobacco manufacturer in Durham has a right
to call his tobacco "Durham Tobacco", he cannot imitate the label of
the original Durham tobacco, or use the advertising symbol of a bull,
without being liable to injunction and a suit under the law of unfair
competition.

"French", applied to paints, was considered a geographical name,
and not valid as a trade-mark. "French Tissue"--the name of a
court-plaster--was considered invalid, the first word being a
geographical term and the second a descriptive word.

The word "Celtic", however, has been considered valid as a trade-mark
for tea. The Commissioner of Patents, before whom the case went on an
appeal, decided that while "Grecian", "Roman" and "Oriental" had been
held to be geographical, as each of these terms refers to a certain
section of the globe, the word "Celtic" is not. There seems to be no
authority to sustain the popular opinion that "Celtic" refers only to
Ireland. The dictionary defines "Celtic" as "pertaining to the Celts",
of whom the Irish are only a branch. It has never been applied to any
specific locality.

"Yucatan" applied to leather; "Manhattan" as the name of
sewing-machines; and "Pittsburgh" as a trade-mark on pumps, have all
been held to be geographical, and therefore invalid.

In a recent decision of the Supreme Court, the exclusive right of the
Carthusian monks to use their well-known trade-mark for their Liqueur
Chartreuse, was upheld. This right was attacked on the ground that
Chartreuse is a geographical name, the liqueur having been made at a
monastery called for many centuries "La Grande Chartreuse".

In his opinion Mr. Justice Hughes said:

  "If it be assumed that the monks took their name from the region
  in France in which they settled in the eleventh century, it still
  remains true that it became peculiarly their designation. And the
  word 'Chartreuse', as applied to the liqueur, which for generations
  they made and sold, cannot be regarded in a proper sense as a
  geographical name. It had exclusive reference to the fact that it
  was the liqueur made by the Carthusian monks at their monastery.
  So far as it embraced the notion of place, the description was not
  of district, but of the monastery of the order--the abode of the
  monks--and the term, in its entirety, pointed to production by the
  monks."

While a geographical name may be upheld as a valid trade-mark, under
exceptional conditions--as shown in the Fleischman case--the safe
plan to follow is to avoid names of this character when selecting a
trade-mark.

Under the collection of legal precedents constituting the law of unfair
trade, the owner of a geographical trade-mark may successfully defend
his right to its exclusive use if he has acquired such a reputation
under it that it has grown to be, in the public mind, an arbitrary
designation of his goods.

The American Waltham Watch Company, manufacturing watches at Waltham,
Massachusetts, has legally prevented other manufacturers in Waltham
from calling their product "Waltham" watches unless the name is used
with some accompanying statement which clearly distinguishes these
watches from the original Waltham watch.

There is an Elgin Watch, a Kalamazoo Stove and a Bristol Fishing-Rod,
to single out a few examples of geographical terms used as trade-marks.
The exclusive use of these trade-marks by the makers of the well-known
articles which they represent can no doubt be legally sustained on the
ground that these names have become arbitrarily identified, through
years of use and extensive distribution, with the articles to which
they are applied, and that their indiscriminate use would cause
confusion in the public mind and loss to the original owners.

Their security as trade-marks rests, not upon the letter of the
trade-mark act, but upon the law of unfair trade.


A Trade-Mark Must Not Consist of the Insignia of the American National
Red Cross

The Act of 1905 (the trade-mark statute) is silent on the subject
of the Red Cross as a trade-mark. Its use as a trade-mark, or as an
advertisement, or in trade in any form, is prohibited by the act
incorporating the American National Red Cross, approved January 5,
1905. An extract from this act, bearing on this subject, is quoted here:

  "Nor shall it be lawful for any person or corporation, other than the
  Red Cross of America, not now lawfully entitled to use the sign of
  the Red Cross, hereafter to use such sign or any insignia  in
  imitation thereof for the purposes of trade, or as an advertisement
  to induce the sale of any article whatsoever. If any person violates
  the provisions of this section, he shall be guilty of a misdemeanor
  and shall be liable to a fine of not less than one nor more than five
  hundred dollars, or imprisonment for a term not exceeding one year,
  or both, for each and every offense. The fine so collected shall be
  paid to the American National Red Cross."

In the Official Gazette there is reported the case of an applicant
who applied for registration of a label for cough syrup, containing
the emblem of the Red Cross and the words "Red Cross". This label
having been refused registration, the applicant submitted it in an
amended form with the Red Cross emblem left out, but with the wording
left intact. It was contended by him that the Act of January 5, 1905,
prohibited only the use of the "sign of the Red Cross", and that by
implication the words "Red Cross" should be considered registrable.
This contention of the applicant was held by the Commissioner to be an
attempt to evade the spirit of the law, and registration was refused.

A trade-mark containing the Red Cross emblem does not fall within the
prohibition expressed in the statute if it has been in exclusive use by
the applicant for ten years prior to 1905.


A Trade-Mark Must Not Be Merely the Name of an Individual, Firm,
Corporation, or Association unless said Name is Written, Printed,
Impressed or Woven, in some Particular or Distinctive Manner, or is
Used in Connection with the Portrait of the Individual

A surname cannot be the exclusive property of an individual, because
there may be other persons who have an equal right to use the
same name. A man by the name of Jones may go into the business of
manufacturing cigars, for example, and he may call his product "Jones
Cigars" and, by his industry and ability, create a valuable business.

But any other Jones has a right to manufacture and sell cigars, if he
feels so inclined, and the first Jones cannot prevent it. It is true
that, under the law of unfair trade, he may compel all other Joneses
to mark their cigars in _some distinctive manner_, in order that
purchasers may not be misled into the belief that they are buying the
product of the original Jones, when such is not the case.

This principle is specifically illustrated in the famous Walter Baker
cases, of which a brief resumé is given in another chapter.

An obvious intent of the framers of the Act of 1905 was to discourage
the use of the names of "individuals, firms, corporations and
associations" as trade-marks.

Consequently, it was provided in the act that names of this character
should not be registered unless they were "written, printed, impressed
or woven in some particular or distinctive manner, or used in
connection with the portrait of the individual."

The ruling of the Patent Office, which has been sustained by the
courts, is that the particular or distinctive manner of presenting the
name must exhibit a peculiarity so pronounced that it dominates the
name, and throws it into relatively secondary importance. In other
words, a trade-mark of this character, to be registrable, must possess
more of the quality of a device than of a name.

It is conceded that an autograph signature, like "Wilcox's", shown on
this page, is entitled to registration.

Soon after the law went into effect a curious tangle developed in the
application of this feature of the act.

It was found that the Patent Office--and its stand was upheld by the
Court of Appeals of the District of Columbia--would not sanction the
registration of a name possessing all the technical requisites of a
valid trade-mark if it happened to be the name of the applicant, unless
it was written or printed in some particular and distinctive form.

[Illustration:

    Wilcox's
    TRADE MARK REGISTERED

  _Written in a "particular and distinctive manner" within the meaning
  of the law._

]

To a legal mind there may have been some good reason for this attitude
of the court, but a layman of ordinary common sense can find nothing
in the statute that would justify a refusal to register a trade-mark,
valid in other respects, merely because it happened to be the name of
the person, corporation, or firm making the application.

The name "Success", a valid mark in every essential respect, was
refused registration as a trade-mark for Success Magazine, because it
formed part of the name of the applicant, The Success Magazine Company.

The ruling of the court left the implication that if Success Magazine
had been published by John Brown & Co., or by any other concern other
than the Success Magazine Company, registration would have been
granted. It was held that a registration of the name "Success" would
be a violation of that provision of the law providing that a mark
consisting merely of the name of the applicant could not be registered.

The word "Champion", as a trade-mark for locks, was rejected by the
Patent Office on the ground that it formed part of the name of the
Champion Safety Lock Company. The word "Champion" is arbitrary and
fanciful, and could no doubt have been registered by any other firm
than the Champion Safety Lock Company.

Many other similar cases developed during the first six years of the
law's application. This situation led to the passage on February 8,
1911, of the following amendment of this section of the Act of 1905:

  "_Provided_, further that nothing herein shall prevent the
  registration of a trade-mark otherwise registrable because of its
  being the name of the applicant or a portion thereof."

It is now practicable to register the name of any individual,
firm, corporation or association--even if it is the name of the
applicant--provided it is "written, printed, impressed or woven, in
some particular or distinctive manner."

[Illustration:

    Stewart Hartshorn

  _This name turns up when the time comes to hang the window shades._

]

A familiar example of the name of an individual used as a trade-mark is
to be found on every Hartshorn shade roller, where the name "Stewart
Hartshorn", written as an autograph signature, has been used for many
years. The name "Huyler's", applied to confectionery, is another case
of the same kind.

The name "John Wanamaker" has, by long usage in connection with a
highly successful mercantile business, become the most valuable
trade-mark in the department store world.

"Stewart Hartshorn", "Huyler's", and "John Wanamaker" are all common
law marks, fully protected by the law of unfair trade.


A Trade-Mark Must Not Be any Design or Picture Adopted by a Fraternal
Society as its Emblem

The intent of the law is to prohibit any individual from trading on the
reputation of a fraternal order.

Registration was refused for the phrase "Knights of Labor" as a
trade-mark on whiskey.


A Trade-Mark Must Not Consist of, or Comprise, the Flag or Coat of Arms
or other Insignia of the United States, or any Simulation thereof, or
of any State, or Municipality, or of any Foreign Nation

It has been decided in one case where an application was made to
register the coat of arms of Maryland, that it could not be registered
even under the ten years' clause.

Simulations of the coat of arms of the United States, or of the United
States flag, have been denied registration.

The U. S. Sanitary Manufacturing Co. was refused registration for a
trade-mark consisting of the letters "U. S." with a background of a
shield similar to that of the conventional United States shield.

In the case of Popoff Frères, importers, registration of a mark
including the Russian coat of arms was refused, although proof was
shown that the Russian government had authorized the applicants to use
this coat of arms as their trade-mark. The Commissioner held that the
law could not be set aside by agreement.

The reader is doubtless familiar with the trade-mark of the United
Cigar Stores--a shield consisting of a background at the top with the
word "Cigars" on it, with the word "United" forming the lower part of
the design. The vertical lines form seven heavy strokes, corresponding
to the seven red stripes in the American flag. This design is
suggestive of the United States coat of arms, but it is so cleverly
worked out that it does not come within the prohibition expressed in
the law. Suggestive as this design is of the American shield, this
feature is secondary, after all, for the design is dominated by the
lettering "United" and "Cigars."


A Trade-Mark Must Not Be a Form, a Color, a Shape, or a Material

It is clear that a trade-mark must be a "mark"--not a box, or an
envelope, or container of any kind. In a case where it was sought to
register a drum-shaped box used to contain "Drum Collars", it was held
that, "if such claims were allowed, the forms and materials of packages
to contain articles and merchandise would be rapidly taken up, and
appropriated by dealers, until some one bolder than the others, might
go to the very root of things, and claim the primitive brown paper and
tow strings."

A product itself cannot be registered as a trade-mark, for the "mark"
must be different and separate from the thing marked.

[Illustration:

    No. 4711

  _One of the oldest trade-marks in existence. Used for generations as
  a trade-mark of Johann Maria Farina toilet preparations._

]

It would be unfair to give an exclusive right to use any particular
color to an individual, consequently a color is not a valid trade-mark.

A seed-grower, selling his product in bags, applied for registration of
a red bag as a trade-mark, but registration was refused.

A fountain pen manufacturer was refused registration for a trade-mark
for fountain pens, consisting of a red feed bar contrasted with a black
reservoir of hard rubber. The applicant stated that the feed bar was
 red in the manufacturing process, and that it was composed
of rubber made by a special formula. The Court of Appeals held that
registration of this device would give the applicant a virtual monopoly
of this feature.

The Underwood Typewriter Co. applied for registration of the face-plate
of their machine as a trade-mark. It is a principle of the trade-mark
law that a part of a machine, or the form of an article, cannot be
a valid trade-mark. Reporting this case, the Bulletin of the United
States Trade-mark Association for January, 1908, says:

  "The applicant, in the instance under adjudication, sought to
  avoid this principle of law, by contending that the case did not
  fall within that doctrine, for the reason that the plate which he
  sought to register was not really a part of the machine, since it
  could be removed without changing the shape of the machine, or
  interfering with its operation, or altering its structure. It was
  held, however, that while the plate performed none of the mechanical
  functions of the machine it was nevertheless a part of the machine
  as actually constructed, and was as essential as the frame itself
  to the production of a commercial article. It was necessary to give
  a finished appearance to the machine, which would not be salable
  without it. To recognize the applicant's right to a trade-mark in
  that feature of the machine, would enable the applicant to prevent
  the manufacture of its machines as constructed to-day, after all the
  patents covering it had expired, since no salable machine could be
  produced without infringing the trade-mark."


Trade-Marks Are Not Registrable if against Public Policy

The common good takes precedence of the rights of individuals. This is
a principle of equity which has run through the fabric of Anglo-Saxon
law for a thousand years. We find it developed into diverse and widely
separated forms. On one hand, it appears as the right of eminent
domain; in another form we find it appearing in a law prohibiting the
use of the national flag for advertising purposes.

This principle is observed by the Patent Office and the courts in
dealing with questions relating to trade-marks.

A trade-mark, otherwise registrable, and consisting of a device or
wording not prohibited by the statute, may be refused registration if
opposed to public policy.

The application of the _Banner Cigar Mfg. Co._ (138 Official Gazette,
528) for registration of the portrait and facsimile signature of
the late Ex-President Grover Cleveland as a trade-mark was refused,
the Commissioner of Patents holding that the use of a trade-mark of
this character would detract from the dignity of the high office of
President.

The portrait and facsimile signature of Thomas Jefferson was refused
registration on the same grounds.

It should be noted that there is no law to prevent any manufacturer
desirous of using the name and portrait of an Ex-President (not living)
as a trade-mark if he cares to do so, but _he cannot register such a
trade-mark_, and his ability to protect it in the courts in case of
infringement is conjectural.

The word "Copyright", the name of a brand of flour, was refused
registration on the ground that its registration would be opposed to
public policy, since its use in connection with the phrase "Registered
in the United States Patent Office" would be likely to impress buyers
with the idea that the flour had been approved officially. It was also
stated by the Commissioner, before whom the application went on appeal,
that its registration might be used to annoy other flour manufacturers,
who are obliged by law to give notice of copyright on their labels, by
using the word "Copyright" with the date and name of the owner.

The R. M. Rose Company was refused registration for the words "Ask the
Revenue Officer" as a trade-mark for whiskey. The objection is that
this trade-mark might lead purchasers to believe that the quality of
the whiskey thus branded has the approval of the government.

For the same reason the word "Government" was refused registration as a
trade-mark for loose-leaf binders.


Affixation

A trade-mark that is not affixed to the goods for which it is
registered cannot be protected in the courts.

_A mark, or design, or name, that is used only in advertising is not
a trade-mark but an advertising symbol._ Affixation is an essential
requisite of validity in trade-marks.

[Illustration:

    SIMMONS
    TRADE MARK
    CHAINS AND FOBS

  _The trade-mark word "Simmons" is affixed on chains by stamping it in
  minute letters on the swivel of the chain._

]

The trade-mark may be written, or printed, or pasted, or stenciled, or
branded, or woven, or sewed, upon the article with which it is used.

When it is not feasible to affix it to the article itself, as in case
of liquids and many other commodities, the trade-mark must be affixed
to the container.

Many ingenious devices are used by manufacturers in affixing
trade-marks. The trade-mark "Brenlin", on Brenlin window shades, is
placed upon every yard of the fabric in small perforated letters. The
name appears near the selvage on each side of the goods.

The name "Aurora", applied to portieres and similar hangings, is to
be found woven in the pattern of the fabric near the ends of each
piece. The trade-mark blends into the pattern in such a way that it is
inconspicuous, but may be readily found upon looking for it.

The London Feather Company's "London Plumes" trade-mark is cleverly
affixed, being in the shape of a diminutive celluloid label, to the
inside of the stem of each ostrich plume. The label is sewed on in such
a manner that if it is cut out the plume falls apart.

[Illustration:

    LOWELL DUCK

  _This trade-mark is stenciled on duck sail cloth._

]

Makers of clothing generally affix their trade-marks to each garment
in the shape of a sewed label. Manufacturers of rubber goods, such as
rubber tires, water bags, etc., mold the trade-mark into the article
itself. The "Lowell Duck" trade-mark, used on sail cloth, is stenciled
at regular intervals on the selvage. The Corticelli kitten, which is
the registered trade-mark of Corticelli Spool Silk, appears on the
label at the end of each spool.

Moet & Chandon, and other champagne producers, have adopted the unique
method of affixing their trade-marks to the bottom of the corks of
their bottles. The trade-mark is not seen, of course, until the bottle
has been opened. This method of affixation has been sustained by the
courts. The logic of it is that it prevents an unscrupulous retailer
from washing the label off a bottle of wine and pasting a spurious
label in its place, provided the purchaser knows where to look for the
trade-mark.




CHAPTER III

Advertising Characters


The main difference between a trade-mark and an "advertising character"
is in the matter of affixation. A trade-mark, to be valid, must be
affixed to the goods, while an advertising character is often used only
in the advertisements of the product, though most advertisers use their
trade-marks also in advertising.

But there is another difference. A trade-mark is inflexible. After
having been once adopted and registered, it cannot be changed in design
or wording. If changes are made in it, the validity of the trade-mark
is vitiated proportionately. On the other hand, all kinds of changes
are being constantly made in advertising characters, though advertisers
are careful to preserve the main features of a character, after having
adopted it, in order that it may be the touchstone of remembrance in
the reader's mind.

It has occurred to various advertisers, who have been impressed by
the infinite variety of pictures in advertising, that it would be a
good idea for them to put some permanent pictorial feature in their
advertisements. This feature--a human figure, or a decoration, or a
group of figures--serves as an identifying landmark to the voyager in
these weltering seas of change. With this principle established and
followed year after year in all advertisements of any product, it is
feasible to change the entire artistic treatment of the subject from
time to time, yet still hold to the symbolic figures which connect, in
the reader's mind, all the past advertising with the new series.

This line of reasoning underlies the adoption and use of advertising
characters.

An "advertising character"--this is a rather crude term, but it
seems to express the idea better than anything else--differs from
an advertising illustration in that the character is carried on
continuously in the advertising, in some form, while an illustration is
dropped for something new.

[Illustration: _Peter Henderson's famous gardener._]

For example, Peter Henderson's gardener appears, and has appeared,
in every advertisement of Peter Henderson's seeds for many years. In
most of the Peter Henderson advertisements, the gardener is the only
illustration.

The Lackawanna Railroad has used Phoebe Snow for many years in its
advertisements as its star passenger on the dirtless and dustless
road to Buffalo. The scheme of picturing this dainty white-clad girl
in connection with the advertising of a railroad is based on a very
clever idea. Railroad journeys are generally supposed to be dusty and
uncomfortable; but here is an attractive young lady who does not even
go to the trouble of changing her white dress when she makes a trip
on the Lackawanna. The use of Phoebe Snow as an advertising symbol is
suggestive of the cleanliness and comfort and safety of the road.

[Illustration: _The Dutch boy is taken out of the trade-mark and made
to do stunts._]

It sometimes happens that an advertising character is a figure or
a device that has been formally adopted as a trade-mark of the
advertiser's product. The National Lead Company's Dutch painter boy is
a device of this kind. While a trade-mark must not be changed, a human
figure, used as the trade-mark, may be put into another illustration,
and used separately. This has been done in the National Lead Company's
advertising. Their Dutch Boy has been depicted in the act of painting a
house, and in giving a lecture on paint.

The Gold Dust Twins have been engaged in laborious but joyous tasks of
various kinds since about 1880. Gold Dust was first made in 1883, but
the twins, not called at that time "The Gold Dust Twins" had been a
house trade-mark of the N. K. Fairbank Company for two or three years
before that.

[Illustration:

    THE
    PRUDENTIAL
    HAS THE
    STRENGTH OF
    GIBRALTAR

  _The trade-mark of the Prudential Insurance Company._

]

One of the most widely known symbols ever used in advertising is
the representation of the Rock of Gibraltar, which is a feature
of the Prudential Insurance Company's advertising. There is hardly
any doubt that pictures of the Rock have been printed more times in
connection with the Prudential advertising than in all other forms
of representation that have been issued since the art of printed
illustration began.

The conception of the Victor dog, with his head inclined in a curiously
suggestive listening attitude, before the mouthpiece of a phonograph,
with the caption, "His Master's Voice", under the picture, is an
idea that ought to rank among the productions of genius. It would be
interesting to know what the Victor Talking Machine Company thinks its
dog is worth.

[Illustration: _A lady with a smile as inscrutable as that of Mono
Lisa. The advertising symbol of Hubert's Malvina Cream._]

Hubert's Malvina Cream advertising carries a peculiar but strikingly
effective diamond-shaped device showing a woman's smiling face.

The American Bankers' Association, which issues travelers'
cheques, good in every part of the world, has adopted a couple of
travelers--evidently a young man and his wife on their honeymoon
trip--as advertising characters. This well-groomed couple is shown,
in the various advertisements, on the deck of a steamship, before the
Pyramids, in a Venetian gondola, buying curios in the Orient, and in
other places. Before they settle down they will have covered as many
leagues as the Wandering Jew.

The Dutch Cleanser woman, in her eternal chase of dirt, is one of
the best-known advertising characters in current use. This character
is also the trade-mark of the product, and appears on cans of Dutch
Cleanser.

It would be hard to beat this Dutch Cleanser woman as an eye-catcher.
She shows motion, energy in action, and the device has an attractive
simplicity.

[Illustration: _This striking figure of a mountain climber is Peter's
Chocolate Mountaineer. He has reached the summit of the Jungfrau and
is waving his hand to his friends in the valley to let them know he is
there, and that he is about to eat his chocolate._]

An Alpine mountaineer, used as an advertising character of Peter's
Chocolate, has become well-known to every magazine reader in the
country. The use of this figure harmonizes with the phrase "high as the
Alps in quality", which is used in the Peter's Chocolate advertising.

The advantage to be gained, in the long run, by adopting a catchy
and attractive advertising character, is shown by the nation-wide
popularity of the Campbell "Kids". Everybody knows them and their
rippling jingles, and they have no doubt become immensely valuable to
the concern that owns them.

The law of unfair competition protects an advertiser in the use of
an advertising character when the character is the advertiser's own
creation.

In cases where living models are used for this purpose, the advertiser
should remember that a model has a right to sell his services--that is,
to pose--for anybody he pleases. Some advertisers make a contract of
long duration with the models they intend to use, binding them to an
agreement not to pose for any other commercial purpose.

Catch-phrases used in advertising, like Ivory Soap's famous "It
Floats", and Bon Ami's "Hasn't Scratched Yet" are protectable against
infringement and unauthorized use by another than the owner, through
the same principle of law which gives protection to a manufacturer
against a competitor who has imitated his packages, labels and
circulars.

An advertiser's exclusive right to a catch-phrase is conditional on
its constant and persistent use by him. An intermittent use does not
establish a right to use it to the exclusion of others, nor does a use
of the phrase in varying forms of wording, even if the sense of it is
preserved, establish such a right.

It is hardly necessary to say that an exclusive right cannot be created
for a phrase that is not distinctive, such as "Your Opportunity", "Clip
the Coupon", etc. The common language is free to all, and an advertiser
cannot prevent others from using a phrase in their advertisements
merely because he used it in his advertisements first, unless he can
prove that they are using his language with the intention of misleading
the public.

  +-----------------------------------------------------------+
  |                    [Illustration]                         |
  |                      =The Owl=                            |
  |                    =And The Lamp=                         |
  |                                                           |
  | The owl is the symbol of wisdom--and wisdom               |
  | means experience, judgment, and knowledge, combined       |
  | with common-sense.                                        |
  |                                                           |
  | The lamp is the symbol of light and clearness of          |
  | vision. Used in its figurative sense it is as old as      |
  | civilization, for the ancients held the sign of a lamp to |
  | mean the power of imagination, illuminating the           |
  | future.                                                   |
  |                                                           |
  | The symbol of the owl and the lamp combined               |
  | means Light leading Wisdom.                               |
  |                                                           |
  | This is the advertising symbol of the J. Walter           |
  | Thompson Company. For many years it has been the          |
  | trade-mark of good advertising.                           |
  |                                                           |
  |          =J. WALTER THOMPSON COMPANY=                     |
  |                                                           |
  |          =New York: 44 East 23rd Street=                  |
  |          =Boston: 201 Devonshire Street=                  |
  |          =Cincinnati: First National Bank Bldg.=          |
  |          =St. Louis: Odd Fellows Bldg.=                   |
  |          =Chicago: The Rookery=                           |
  |          =Cleveland: Swetland Bldg.=                      |
  |          =Detroit: Trussed Concrete Bldg.=                |
  |          =Toronto: Lumsden Bldg.=                         |
  |          =London: 33 Bedford St., Strand=                 |
  +-----------------------------------------------------------+

[Illustration: _A clean and bright little fellow who adorns Swift &
Company's advertising._]

In the case of the unauthorized use of a well-known, extensively
advertised catch-phrase, this intention is virtually obvious. For
example, if any soap manufacturer should begin to print the N. K.
Fairbank Company's celebrated question, "Have You a little Fairy in
your Home?" in his advertisements and signs, the courts would doubtless
enjoin him summarily, without inquiry into his intentions. This phrase
has been used so long by the N. K. Fairbank Co., and so much money has
been expended in giving it publicity, that its owners have acquired a
valuable property right in it.

  "Money invested in advertising is as much a part of a business as
  if invested in buildings or machinery, and when the goods of a
  manufacturer have become popular, not only because of their intrinsic
  worth, but also by reason of the ingenious, attractive and persistent
  manner in which they have become advertised, the good-will thus
  created is entitled to protection against unfair competition."
  (_Hilson v Foster_, 80 Fed. R. 896--1897.)

[Illustration: _This is the advertising symbol used in Swift's Wool
Soap advertising. The little boy in the receding undershirt used
something "Just as good"._]

An interesting case of one concern attempting to profit by the
advertising of another, was in the courts in 1907.

Kellogg's Toasted Corn Flakes were extensively advertised in a series
of "blind" advertisements in newspapers on successive days. These
advertisements, which were of large size and striking in appearance,
showed the picture of a woman winking, with the admonition "Wink at
Your Grocer and See What You Will Get", followed by the letters "K. T.
C." in large type. The idea of the advertiser was to arouse curiosity
by this form of advertising, and particularly by the letters "K. T. C."
After considerable advertising of this kind he had planned to announce
that "K. T. C." meant "Kellogg's Toasted Corn Flakes", and that any
woman might get a package of this preparation free if she would wink at
her grocer.

[Illustration: _This young couple can get cash anywhere on "A. B. A."
Travelers' Cheques._]

But before the final explanatory advertisements appeared, another
concern selling "Cook's Flaked Rice", a similar product, caused
advertisements to be printed in the same newspapers, in which they
announced that "K. T. C." meant "Keep to Cook's".

[Illustration: _"La Belle Chocolatière," the trade-mark of Walter
Baker's Chocolate._]

The Kellogg firm obtained an injunction against this advertising
on the ground of unfair competition, in that the defendant was
misappropriating the good-will created by the Kellogg Company's
advertising.

The widely advertised phrase used in the Pompeian Massage Cream
advertisements, "Don't envy a good complexion; use Pompeian and have
one", is the result of a prize contest, in which many thousands of
people tried their skill at making phrases.

[Illustration: _The Corticelli kitten, the advertising symbol of the
Nonotuck Silk Co._]

The Central Railroad of New Jersey, in advertising its New York to
Philadelphia service, uses a phrase that is a complete advertisement of
its train service in six words. Trains leave New York for Philadelphia
every hour, leaving at ten o'clock, eleven o'clock, at noon, and so on.
Every train leaves exactly on the hour.

The road formerly used the phrase: "Trains every hour on the hour",
and this seemed to be pretty good, but it was thought that something
better might be devised. A great deal of thought was given to the
subject, and as a result the phrase "Your Watch Is Your Time Table" was
devised. This phrase tells the whole story. It is no longer necessary
to bother with time-tables when one goes from New York to Philadelphia.
Just look at your watch. To visualize this idea, the phrase is used in
the advertising in connection with the pictures of a fast train and a
watch.

A celebrated advertising phrase was "You press the button; we do the
rest", formerly used by the Eastman Kodak Company. This sentence
achieved a tremendous popularity, but it had the fundamental defect of
not containing any word which would connect it closely with the Eastman
Company's product. There is hardly a doubt that it was heard and
used by a vast number of people who did not receive any Kodak-buying
suggestion from it.

A short, incisive phrase which does not possess this defect is
"O'Sullivanize Your Walk", used in the advertising of O'Sullivan's
Rubber Heels. When you have a pair of O'Sullivan's Heels put on your
shoes you do not merely invest in a comfort-giving device. It is a
bigger transaction than that. You begin to walk like a man who means
business--you have the erect and confident bearing of success--in
short, you "O'Sullivanize Your Walk".




CHAPTER IV

Infringement


There is no intrinsic value in a trade-mark. Its worth in dollars is a
creation, and it depends upon the successful sale, or popularity, of
the commodity to which the trade-mark is applied, the distribution of
this commodity, the extent to which it has been advertised, and the
profit that there is in it.

Some widely-known trade-marks are worth millions of dollars, and many
are valued at a hundred thousand dollars or more.

The ownership of an advertised and favorably known trade-mark is,
therefore, a valuable property right. In estimating the assets of a
business, its trade-mark is included under the head of Good-Will, and
Good-Will is Reputation. The value of a trade-mark is the value of the
reputation of the goods it represents and identifies.

A valuable trade-mark--like other valuable things--becomes, sooner or
later, an object of envy on the part of those who want money without
troubling themselves about the manner of getting it. Sometimes this
leads to a more or less ingenious simulation of a trade-mark.

The remedy for the infringement of a registered trade-mark is covered
by sections 16 to 19, inclusive, of the Act of 1905. We quote these
sections of the law:

  "Sec. 16. That the registration of a trade-mark under the provisions
  of this act shall be prima facie evidence of ownership. Any person
  who shall, without the consent of the owner thereof, reproduce,
  counterfeit, copy, or colorably imitate any such trade-mark and
  affix the same to merchandise of substantially the same descriptive
  properties as those set forth in the registration, or to labels,
  signs, prints, packages, wrappers, or receptacles intended to be used
  upon or in connection with the sale of merchandise of substantially
  the same descriptive properties as those set forth in such
  registration, and shall use, or shall have used, such reproduction,
  counterfeit, copy or colorable imitation in commerce among the
  several states, or with a foreign nation, or with the Indian tribes,
  shall be liable to an action for damages therefor at the suit of the
  owner thereof; and whenever in any such action a verdict is rendered
  for the plaintiff, the court may enter judgment therein for any
  sum above the amount found by the verdict as the actual damages,
  according to the circumstances of the case, not exceeding three times
  the amount of such verdict, together with the costs.

  "Sec. 17. That the Circuit and Territorial Courts of the United
  States and the Supreme Court of the District of Columbia shall have
  original jurisdiction, and the Circuit Courts of Appeal of the
  United States and the Court of Appeals of the District of Columbia
  shall have appellate jurisdiction of all suits at law or in equity
  respecting trade-marks registered in accordance with the provisions
  of this act, arising under the present act, without regard to the
  amount in controversy.

  "Sec. 18. That writs of certiorari may be granted by the Supreme
  Court of the United States for the review of cases arising under
  this act in the same manner as provided for patent cases by the act
  creating the Circuit Court of Appeals.

  "Sec. 19. That the several courts vested with jurisdiction of cases
  arising under the present act shall have power to grant injunctions,
  according to the course and principles of equity, to prevent the
  violation of any right of the owner of a trade-mark registered
  under this act, on such terms as the court may deem reasonable; and
  upon a decree being rendered in any such case for wrongful use of a
  trade-mark the complainant shall be entitled to recover, in addition
  to the profits to be accounted for by the defendant, the damages
  the complainant has sustained thereby, and the court shall assess
  the same or cause the same to be assessed under its direction. The
  court shall have the same power to increase such damages, in its
  discretion, as is given by section sixteen of this act for increasing
  damages found by verdict in actions of law; and in assessing profits
  the plaintiff shall be required to prove defendant's sales only;
  defendant must prove all elements of cost which are claimed."

The legal remedies set forth in these sections of the Act of 1905 apply
only in case of infringements of registered trade-marks. In the case of
infringements of common law trade-marks, and in cases where packages,
labels and advertisements are imitated or counterfeited, actions to
restrain must be brought under the law of unfair trade.

_A coined word is the property, in a commercial sense, of the person,
or firm, or corporation, that makes it up and uses it._

This is indisputable. It is a principle of justice that is supported
consistently by the courts, but it needs no legal mind to acquiesce in
its fairness, for it appeals to everybody's common-sense.

How far the use of a coined word may be allowed, when applied by other
persons than its owners to goods of a different and non-competitive
class, is a question that has not been definitely settled. In England,
the court enjoined the use of the word "Kodak" as a name for bicycles.
There is little doubt that the unauthorized use of any widely-known
coined word, that has been nationally advertised, would be enjoined by
the courts, even if applied to a wholly different line of merchandise.

  +--------------------------------------------------------------------+
  |              =Advertising Symbols of Railroads=                    |
  |                                                                    |
  | [Illustration]                                                     |
  |     CANADIAN                                                       |
  |     PACIFIC                                                        |
  |     RAILWAY                                                        |
  |                                                                    |
  |     Burlington                                                     |
  |     Route                                                          |
  |                                                                    |
  |     NEW YORK                                                       |
  |     CENTRAL                                                        |
  |     LINES                                                          |
  |                                                                    |
  |     NORTHERN                                                       |
  |     PACIFIC                                                        |
  |                                                                    |
  |  A railroad cannot have a trade-mark in the true sense, inasmuch   |
  |  as the business of transportation produces no product to which a  |
  |  trade-mark can be affixed.                                        |
  |                                                                    |
  |  The advertising symbols of railroads stand in the relation of     |
  |  trade-marks, and are protected by the common law against          |
  |  infringement.                                                     |
  +--------------------------------------------------------------------+

A poorly-made and inferior article, even if it should belong to a class
of goods quite dissimilar to that of another article of the same name,
might indirectly bring discredit upon the latter.

The word "Educator" was refused registration as a trade-mark for fish,
on the ground that as it had already been registered as a trade-mark
for a brand of biscuits, its use by another might lead to confusion,
although fish and biscuits are quite dissimilar products.

There have been cases where a label, or a sign, or a trade-name, or
trade-mark, has been appropriated bodily by a concern not entitled to
use it. Some cases of infringement of this character are given in H. D.
Nims' instructive book on "Unfair Business Competition," from which the
following example is quoted:

  "The defendants accumulated in the St. Louis market stoves (not made
  by plaintiff) with the name 'Charter Oak' upon them, which they held
  for sale as 'Charter Oak Stoves.' They were aware of the plaintiff's
  proprietorship of the 'Charter Oak' trade-mark, and were proceeding
  to sell in defiance of the plaintiff's rights. Plaintiff had been the
  first to use 'Charter Oak' as a name of a stove and had used it for
  a long time when this suit was begun. The mark was not registered.
  Injunction granted." _Filley v Fassett_, (44 Mo. 168--1869).

Infringements are generally more subtle and clever than a mere bodily
adoption of a trade-mark. For instance, a piratical trade-mark may be
devised so nearly like a well-known mark that it will readily deceive
an unwary or careless or ignorant purchaser, and yet be so different
that a show of defending it may be made.

Or, an entirely different trade-mark may be used, while the size, shape
and color of the package may be imitated. The National Biscuit Company
uses distinctive packages for its products, and its trade-marks are,
in most cases, original, arbitrary, coined words, yet it has so far
prosecuted approximately five hundred suits for infringement of its
marks and packages.

"Uneeda Biscuit" has been infringed by "Iwanta Biscuit", "Uwanta
Biscuit" and "Ulika Biscuit", all of which were enjoined. In the
"Iwanta" case, the opinion of the court was, in part, as follows:

  "Defendants present the usual voluminous bundle of affidavits by
  persons in the trade to the effect that in their opinion no one is
  likely to mistake defendant's biscuit for complainant's. As has
  been pointed out before, it makes no difference that dealers in the
  article are not deceived. No one expects that they will be. It is
  the probable experience of the consumer that the court considers.
  Here, too, we have the manufacturer of the articles complained of,
  who explains, as usual, that in adopting a trade-name by which to
  identify his own product he has been most careful not to trespass
  upon any rights of complainant, and that, after considerable thought,
  he selected a name which should make the difference between his
  goods and complainant's distinct and plain, so that there could
  be no possibility of mistake. It is a curious fact that so many
  manufacturers of proprietary articles, when confronted with some
  well-advertised trade-name or mark of a rival manufacturer, seem
  to find their inventive faculties so singularly unresponsive to
  their efforts to differentiate. Thus, in one case, with the word
  'Cottolene' before him, defendant's best effort at differentiation
  resulted in 'Cottoleo'; and 'Mongolia' seemed to another defendant
  entirely unlike 'Magnolia'. The manufacturer of the articles which
  defendants in the case at bar are selling seems to have had no better
  luck, for, with the word 'Uneeda' before him, his device to avoid
  confusion was the adoption of the word 'Iwanta'. The incessant use
  of the personal pronouns in daily speech has associated in every
  one's mind the sounds represented by the letter 'I' and 'U', the two
  words are of precisely the same length; both end with the letter
  'A', and both express the same idea, namely, that the prospective
  purchaser's personal comfort would be promoted by the acquisition of
  a biscuit.... Both name and dress are clearly calculated to mislead,
  and the statements that both were adopted with an eye single to
  differentiation strain the credulity of the court beyond the breaking
  point."

In the case of _Lever Bros. v Smith_ (112 Fed. R. 998), the complainant
had built up a large and profitable sale for "Welcome" soap. The
defendant, Welcome A. Smith, put on the market a soap similar in size
and shape to "Welcome" soap, and labeled it with his own name "Welcome
A. Smith", making the word "Welcome" on his labels large and prominent,
with "A" and "Smith" below it, and in much smaller type. On the ends of
the package the word "Welcome" alone appeared. It was held that while
Smith had a right to use his own name, he could not use it in such a
way that it would suggest an identity between these two products.

[Illustration:

    Dioxogen

  _The trade-mark of a widely advertised household necessity._

]

In the case of _Swift v Brenner_ (125 Fed. R. 826) it was held that
Swift & Company's "Old Mill Soap" which had a picture of an old mill on
the label, was infringed by "Old Stone Mill Soap", the label of which
also had a picture of an old mill.

In the interesting case of the _Welsbach Light Company v Adam_ (107
Fed. R. 463) it was shown that the infringing trade-mark had been
devised before the complainant's mark, but had not been used until
after the complainant's mark had been registered. On Feb. 20, 1900,
the complainant (The Welsbach Light Company) registered the coined word
"Yusea," as a trade-mark applied to gas mantles. Some months before
this, the defendant had conceived the name "U--C--A" with the idea of
using it in connection with gas mantles of his own manufacture. Its
actual use as a trade-mark was not begun, however, until after the
complainant's mark had been registered. On Oct. 23, 1900, the defendant
registered "U--C--A" as a trade-mark.

[Illustration:

    Huyler's

  _This mark stands for quality in confectionery._

]

The complainant based his action for an injunction against the use by
the defendant of the mark, "U--C--A" on the ground that its resemblance
in sound to "Yusea" was sufficient to confuse buyers and divert trade
from the complainant.

It was shown that "Yusea" is commonly pronounced "You see a"; that
purchasers, in asking dealers for these mantles, called them "You See
A" Mantles; and that the pronunciation of the name of defendant's
mantles was the same as the name of complainant's products.

The defendant contended that there was no similarity in appearance in
the two names; that the similarity in sound was only incidental; that
there was no infringement, because the name "U--C--A" had been devised
prior to the conception of "Yusea"; and that the registration of
"U--C--A", allowed by the Patent Office, was proof of dissimilarity.

The Court sustained the contention of the Welsbach Light Company, and
the use of "U--C--A" as a trade-mark for gas mantles was enjoined on
the ground that it was an infringement of "Yusea."

_Where there is a casual resemblance, not sufficiently marked to
deceive a person of ordinary judgment, there is held to be no
infringement._

A case in point was shown in the contention between the manufacturers
of the well-known "3 in 1" Oil and the owners of a similar product
called "Big Four". The "3 in 1" label bears a large figure "1" in red,
enclosing the figure "3" and the word "in". The defendant's label was
of different size, was printed partly in red and partly in black,
and was headed "Big Four". The figure "4" in black was displayed
prominently on a red background. No infringement.

_A trade-mark may be held to infringe another trade-mark already
established, even if it has no similarity in sound or to the eye, but
if there is a close similarity in ideas._

This is exemplified by a case recently, before the Federal court for
the Southern district of New York. The words "Beats-All" have been
used for a number of years as a trade-mark for pencils. The owners of
the "Beats-All" trade-mark applied for an injunction against the use
of "Knox-All" as a trade-mark for pencils sold by a rival concern. The
defendant contended that "Beats-All" was a descriptive term, indicating
superiority, and, as such, it could not be protected as a trade-mark.
The complainant proved that he had used the mark "Beats-All" for many
years, and that, while it was originally descriptive, long usage had
given it a secondary meaning. He also showed that he had registered
this trade-mark under the ten years' clause. The court held that the
registration of the mark under the ten years' clause removed it from
the class of descriptive phrases--in other words, that registration
under the ten years' clause was a _prima facie_ evidence of validity.
The defendant claimed, that in any case, "Knox-All" was so dissimilar
to the ear and eye, there was no infringement of "Beats-All". This view
was not sustained by the court, which held that a close similarity of
ideas was sufficient to constitute infringement.

_From these, and other cases, it may be seen that a question of whether
a trade-mark has been infringed is sometimes a question of psychology._

It is not necessary for the complainant to produce evidence that buyers
have been actually deceived. His case is established when he can show
that the marks, or symbols, or packages, or general "get-up" of the
goods are sufficiently similar to establish a strong probability of
deception.

The case of _Shaw Stocking Company v Mack_ (21 Blatch 1--1882. C. C.
N. Y.), cited by Mr. Nims, is an example of infringement that seems to
fall within the range of psychological analysis.

  "Complainant manufactured at Lowell hosiery of high reputation
  and designated one style by the figures '830'. The label bore the
  trade-mark 'Shawknit' in script with a flourish and the words
  'Seamless Half Hose,' with the name of the manufacturer and the
  figures '830.'

  "Defendants at Albany bought large quantities of complainant's goods
  and with complainant's consent, in effect, held themselves out to the
  public as selling agents of complainant's. They then began to buy
  of a Connecticut manufacturer goods similar to complainant's '830'
  style, but inferior, and sold them under a label generally resembling
  complainant's in appearance and bearing the word 'Seamless' in script
  of a similar style, including the flourish, followed by the words
  'Half Hose, Double Heels,' with defendant's name and address, and the
  figures '830.'

  "The court enjoined them from using the figures '830' to designate
  the Connecticut goods, and from using on the label the word
  'Seamless,' printed in imitation of Shawknit."

In the case given above there was no infringement of the actual
trade-mark. But the intent to deceive purchasers was shown by the use
of the style number 830 and by the careful imitation of the general
appearance. Well-informed customers, looking for the trade-mark
Shawknit, would not have been deceived, but the probability of
deceiving the uninformed and careless was sufficient to justify the
injunction.

_It should be kept in mind that the term "infringement" covers not
only the imitation of a technical trade-mark, in whole or in part, but
embraces all violations of the rights of others, in trade, no matter
whether such violations fall under the trade-mark law, or the law of
unfair competition._

The noted case of _McLean v Fleming_ (96 U. S. 245--1877) decided in
1877, is one of the cases that underlie the law of unfair competition.
In this case the Court said:

  "Nor is it necessary, in order to give a right to an injunction, that
  a specific trade-mark should be infringed; but it is sufficient that
  the court is satisfied that there was an intent on the part of the
  respondent to palm off his goods as the goods of the complainant, and
  that he persists in doing so after being requested to desist."

This is the gist of the whole matter of infringement. If an effort to
trade on the reputation of another can be proved, irrespective of the
form this effort may take, it is held to be an infringement.

"Chatter-Box" is an old-established publication for children, issued
in the form of an illustrated book, once a year. It was held that
"Chatter-Book", a publication issued for the same purpose, and of the
same general appearance, was an infringement.

A piano manufacturer by the name of Henshaw placed upon the market a
piano called the "Steinberg." It was held by the Court that the name
"Steinberg" was an infringement of the name "Steinway," which had been
long used as the name of famous pianos.

[Illustration: _A trade-mark that has achieved great renown._]

In the case of _Johnson & Johnson v Bauer & Black_ (82 Fed. R. 662,
reversing 79 Fed. R. 954) it was held that the complainant's mark of
a red Greek cross, used on plasters, was infringed by the defendant's
mark of a Greek cross with a red circle in the center, containing the
letters "B & B", and used on the same class of goods.

_A trade-mark adopted for a patented article during the life of the
patent, is held to be descriptive of the article, and the right to its
exclusive use expires at the expiration of the patent._

The import of this far-reaching trade-mark doctrine is illustrated in
the celebrated Singer case.

The Singer Manufacturing Company, when the patents on its sewing
machine were about to expire, adopted as a trade-mark the word "Singer"
blended with a device. The effect of this action, if the validity of
the trade-mark had been sustained, would have been to perpetuate the
right to the exclusive use of the word "Singer" as applied to sewing
machines. In this event, at the expiration of the patents, any person
would have had the right to manufacture Singer machines, but only
the Singer Manufacturing Company would have had the use of the name
"Singer."

It was held by the courts that the right to use the name "Singer", as
applied to machines of this particular design, became public property
when the patents expired. The court said, in the case of _Brill v
Singer Mfg. Co._ (41 Ohio St.):--

  "A patentee or his assignee, by incorporating into his trade-mark
  the distinctive name by which a patented machine has become known
  to the public during the existence of the patent, cannot, after the
  expiration of the patent, take away from the public the right of
  using such name. The trade-mark cannot be made a guise for extending
  the monopoly, or preventing the name from becoming, with the patent,
  the property of the public."

_But if the trade-mark is adopted and used before the article is
patented, the exclusive right to the trade-mark continues after the
patent expires._

In this case the patent is secondary to the trade-mark, and the
trade-mark is held not to be descriptive. The word "Gants" was used
as a trade-mark on corsets for several years before the article was
patented. At the expiration of the patent, another manufacturer began
to make corsets of this description, calling them "Gants". On the
showing of the plaintiff that the patent was subsequent to the adoption
of the trade-mark, the defendant was enjoined from using the name,
although there was nothing to prevent him from continuing to make
corsets of this description.

_An individual has a right to use his own name in business
transactions, but he cannot use it in a way that will deceive, directly
or by inference, those who buy his goods. He cannot use the likeness of
his name to that of another party of the same name for the purpose of
trading on the latter's established reputation._

This principle of equity is well illustrated by the legal contentions
over the name Baker, used as a trade-mark for chocolate.

For a hundred and thirty-one years the firm of Walter Baker & Co., and
its predecessors, have manufactured chocolate at Dorchester, Mass.
For more than a generation past, the firm has done business under its
present name. "Baker's Cocoa," as the principal product of the firm is
popularly called, has achieved great success. This national popularity
of the name "Baker" as applied to cocoa and chocolates, began, some
years ago, to attract other persons by the name of Baker. One of the
Bakers--a William H.--began to manufacture chocolate in Winchester,
Va., in 1894, and put it on the market, labeled "W. H. Baker & Co." At
that time the products of Walter Baker & Co. were labeled "W. Baker &
Co." It can be seen that the substitution of W. H. Baker & Co.'s goods
for those of Walter Baker & Co., was an easy matter for any retailer
who wanted to do it. The packages were much alike. The retailer made a
larger profit on the product of W. H. Baker & Co.

[Illustration:

    LA BELLE CHOCOLATIÈRE

  _The Walter Baker Package_
  (_Front_)

]

Walter Baker & Co. sued W. H. Baker in the Federal Court in Virginia,
and at the same time began a suit against W. H. Baker's New York agent,
Sanders, to prevent their use of the name "Baker" or the firm name,
"Baker & Co." In the Virginia suit, the opinion of the court was that
while W. H. Baker had a right to use the name "Baker," it being his
own name, he could not use it in connection with the sale of cocoa
or chocolate unless he made a distinction between it and the name of
Walter Baker & Co. which would be easily observed by customers. The
nature of the required distinction was not specified by this court.

In the suit in the Federal Court for the Southern District of New
York against Sanders, the New York agent of W. H. Baker, the court's
decision was essentially the same as that of the Federal Court in
Virginia. The New York court specified, however, that the defendant
should put in conspicuous lettering on his packages these words: "W.
H. Baker is distinct from and has no connection with the old chocolate
manufactory of Walter Baker & Company."

[Illustration:

    Established 1780
    WALTER BAKER & CO. LTD.

    BREAKFAST
    COCOA.
    DORCHESTER, MASS

  _The Walter Baker Package_
  (_Back_)

]

This suit had been settled a year or two, when in New York, another
Baker--William P.--began to sell a "Baker's Chocolate." Suit being
brought to enjoin him by Walter Baker & Co., it was decided by the
court that he must not use the name "Baker" alone, or "W. Baker." He
was allowed to use his own name if spelled in full, "William Phillips
Baker," or he might use a middle initial--"William P. Baker"--and he
was directed to state on his labels that his goods were made and sold
by "William P. Baker, of New York."

The contentions of the various Bakers were stilled and the mantle of
peace lay upon them for a short space. Then, as the record shows,
a William H. Baker, of Syracuse, felt the calling of chocolate
manufacturer stir within him.

The William H. Baker of Syracuse imitated the packages and labels of
the William H. Baker of Winchester, Va. His evident intention was to
make it appear that he was the William H. Baker who had been enjoined
by Walter Baker & Co., for he stated conspicuously on his label "W.
H. Baker is distinct from and has no connection with the old chocolate
manufactory of Walter Baker & Co."

William H. Baker, of Winchester, Va., brought suit against the Syracuse
Baker to prevent him from using the former's label. Injunction was
granted, but the defendant was permitted to use the name "William H.
Baker" if he printed the name "Syracuse" conspicuously in connection
with it.

The suit of _Royal Baking Powder Co. v Royal_ (122 Fed. 337--1903; 58
C. C. A. 499-506), deals with the controversy of this well-known baking
powder concern over the use of the name "Royal" on baking powder by an
individual by the name of "Royal." The court held that Royal could make
and sell baking powder under his own name, but to prevent confusion he
should not place his name on the front label, and that he should make
it inconspicuous.

[Illustration:

    JUSTICE BRAND
    COCOA

    WILLIAM H. BAKER
    SYRACUSE, INC.
    NEW YORK CITY

  _The package now used by William H. Baker, of Syracuse, Inc._

]

From a consideration of these cases, and many others where the same
issue was involved, the principle may be definitely established that,
while courts will not prevent an individual from using his name
altogether, they will restrict the manner of its use when there is
shown an intention to trade on another's reputation.

_It is a settled principle of law that a complainant must appear in
a court of equity with clean hands. In other words, an essential
misrepresentation of a complainant's goods, by means of his trade-mark,
or on his labels, or through advertisements, is a bar against his
action for relief from infringement._

One Flavel made and sold a stove under the name "Flavel's Patent
Kitchener." The defendant, Harrison, began to make and sell another
stove under the same name. Flavel sued to enjoin Harrison, but an
injunction was denied when it was shown that Flavel's stove was not
patented, although its name would lead one to believe that it was made
under a patent.

In another case, the makers of a toilet preparation known as "The
Balm of a Thousand Flowers" brought suit to enjoin another party from
selling a similar preparation under the name of "The Balm of Ten
Thousand Flowers." The complainant's motion to enjoin was denied, when
it was shown in court that his "Balm of a Thousand Flowers" did not
contain the balm of any flower whatsoever--in fact, was not a balm at
all, but a soap--and that its chief ingredients were oil and alcohol.
It was held that the trade-mark was deceitful and complainant's motion
was denied. _Fetridge v Wells_ (4 A 66 Pr. 144; B. How. Pr. 385).

The infringement of trade-names and trade-marks in most classes of
merchandise is relatively infrequent compared with the extensive
substitution, infringement and counterfeiting that are continually
going on in the liquor, wine, cigar and allied trades.

This had become an evil of such formidable proportions that in 1904
an organization under the title of the Trade-Mark Protective Company
was formed to run down and prosecute offenders. The clients of this
company are mostly importers and producers of whiskies, wines, olive
oils, cordials, cigarettes and cigars. The company has a staff of
skilled detectives, who are always at work looking for imitators and
counterfeiters of the goods of the company's clients. After securing
evidence of an infringement the company undertakes the prosecution of
the offenders.

The methods of the Trade-Mark Protective Company in prosecuting
infringers and counterfeiters are of the kind that inspire evil-doers
with terror as well as respect.

In many cases the bottles, or packages, and labels--including
trade-marks--have been counterfeited so perfectly, and in such detail,
that expert bottle-makers and lithographers were required as witnesses
to show the difference between the spurious and the genuine.

An account of a few of the cases prosecuted by the Trade-Mark
Protective Company are given here for the purpose of showing the
methods of this class of dealers in spurious goods.

One Young, doing business as the "Cincinnati Distilling Company"
was found using counterfeits of the labels of the Wilson Distilling
Company. He was tried, convicted, and sentenced to six months in the
workhouse and to pay a fine of $300.

A cigar dealer, when asked by customers for the well-known "Romeo and
Juliet" cigar, which bears a label reading "Romeo y Julieta", sold
an imitation bearing a label on which the words "Romeo, el Amante de
Julietta" appeared--the words "Romeo" and "Julietta" being in large
type. The cigars bearing this label were seized, and the dealer was
restrained from selling any "Romeo and Juliet" cigar which did not bear
the genuine label.

  +------------------------------------------------------------+
  | [Illustration]                                             |
  |     AWARDED FOR BOOTH'S                                    |
  |     OLD TOM                                                |
  |                                                            |
  |     BOOTH & CO.                                            |
  |                                                            |
  |     SUPERIOR                                               |
  |     OLD TOM                                                |
  |     GIN                                                    |
  |                                                            |
  |     LONDON                                                 |
  |                                                            |
  |   _Genuine Old Tom Gin_                                    |
  |                                                            |
  | [Illustration]                                             |
  |     BARTLETT & CO.                                         |
  |                                                            |
  |     SUPERIOR                                               |
  |     OLD TOM                                                |
  |     GIN                                                    |
  |                                                            |
  |     LONDON                                                 |
  |                                                            |
  |     BEWARE OF IMITATIONS                                   |
  |     NONE GENUINE EXCEPT WHEN IN GLASS STOPPER              |
  |     BOTTLES, AND WITH OUR SIGNATURE ON LABEL.              |
  |                                                            |
  |   _Spurious Old Tom Gin_                                   |
  |                                                            |
  | _Reproduced by courtesy of Trade-Mark Protective Company._ |
  +------------------------------------------------------------+

On this page are shown pictures of two bottles, each labeled "Old
Tom Gin". The bottle with the spurious label, shown on the right, is
identical in size and shape with the genuine bottle. The labels are
so much alike, in design and coloring, that one would easily pass for
the other on casual, careless inspection. Upon obtaining the requisite
evidence the spurious stock was seized, and the use of the imitation
label was enjoined.

In the case of the owners of Edouard Pernod's Absinthe against John B.
Van Opstal and others it was shown that the defendants were selling an
imitation of Pernod's Absinthe under the fictitious name of "Aernod's"
Absinthe, relying upon the similarity in sound to deceive purchasers.
In this case the label of the genuine Pernod was closely imitated in
design and color, and second-hand Pernod bottles were used.

The defendants being brought into court, a judgment and injunction was
entered against them.

On the next page are two Chartreuse labels. The one on the right,
bearing the name "Garnier" is genuine. The labels were exactly the
same size and color. The infringing label was so clearly an imitation
that the offending party did not contest the case, but surrendered the
imitation labels to the Trade-Mark Protective Company, and agreed never
to use them again.

Since the expulsion of the Chartreuse monks from France, and their
settlement in Spain, they have adopted a new label, but the original
label as shown here is also still used by them.

They have established their right to the exclusive use of the name
"Chartreuse" in the United States by a suit recently decided by the
Supreme Court. Reference to this case has been made on page 35 of this
book.

In another case, where an infringement of Fernet Branca Bitters was
prosecuted, the defendant claimed that he had a right to use the name,
as his partner was named Branca, and that this partner was a skilled
worker in the preparation of bitters. He was, nevertheless, restrained
from using the Fernet Branca name on his labels.

Most of these prosecutions are based on the law of unfair trade, but
in one case, that of Petrotta, accused of selling counterfeit Martell
Brandy and other liquors, the complainant founded his case on the
charge of larceny. He held that in selling spurious goods for genuine
the defendant obtained money under false pretences, and in that respect
he is like a person who obtains money on a worthless check. This
argument was upheld by the court, and Petrotta was sent to prison for
two years.

  +-----------------------------------------------+
  |   _Labels reproduced by courtesy of_          |
  |    _Trade-Mark Protective Company._           |
  |                                               |
  | [Illustration]                                |
  |     LIQUEUR           FABRIQUEE               |
  |     A LA GDE          CHARTREUSE              |
  |                                               |
  |     _Pre Agostines  Pre Agostines_            |
  |                                               |
  |     Agent pour le Etats UNIS et CANADA        |
  |                                               |
  |     New York                                  |
  |                                               |
  |   _Infringement of Chartreuse Label_          |
  |                                               |
  | [Illustration]                                |
  |     LIQUEUR          FABRIQUEE                |
  |     A LA GDE         CHARTREUSE               |
  |                                               |
  |     L. Garnier       L. Garnier               |
  |                                               |
  |     FRANCE                                    |
  |                                               |
  |     Agents for United States H·A·BATJER & Co. |
  |     77, Water Street, NEW YORK                |
  |                                               |
  |     Trade Mark No. 3989                       |
  |     Registered Sep. 12th. 1876 in the U.S.    |
  |     Patent Office at Washington, D.C.         |
  |                                               |
  |   _Genuine Chartreuse Label_                  |
  +-----------------------------------------------+

This case is notable, in that it is the first case on record of a
conviction for larceny of money obtained on a sale of counterfeit goods.

The refilling of bottles is a specific offence, covered by statutes
in some of the states. It is needless to say that it is extremely
difficult to obtain evidence of refilling that will convict.

In the case of the _People v Luhrs_ (195 N. Y., 377), in which the
defendant Luhrs was charged with having refilled a Wilson Whiskey
bottle, he put in the unusual defence that although he refilled a
Wilson Whiskey bottle, he refilled it with Wilson Whiskey. But the New
York penal code states that it is unlawful to sell any goods which are
represented to be the manufacture of any other party than the seller,
unless such goods "are contained, in the original packages, and under
the labels, marks or names pasted thereon by the manufacturer."

The defendant contended that this law was unconstitutional, because it
prevented him from selling his legitimate property in any way he chose
to sell it, and thus deprived him of his property without due process
of law. The court did not accept this contention, as the defendant
obviously had the right to sell Wilson Whiskey any way he might
desire, and at any price, on the condition that he did not sell it in
a trade-marked package that had contained other goods. The trade-mark
certifies both to the manufacture and the packing of contents. By
refilling bottles, even with the same kind of goods, the dealer makes a
false representation, as the bottle would not contain, after refilling,
what was originally put in it.


Infringement by Foreigners Through Importation

Manufacturers are protected against infringement by foreigners sending
goods bearing infringing trade-marks and labels to the United States by
Section 27 of the Act of 1905, which is as follows:

  "That no article of imported merchandise which shall copy or simulate
  the name of any domestic manufacture, or manufacturer or trader,
  or of any manufacturer or trader located in any foreign country
  which, by treaty, convention, or law affords similar privileges
  to citizens of the United States, or which shall copy or simulate
  a trade-mark registered in accordance with the provisions of this
  act, or shall bear a name or mark calculated to induce the public
  to believe that the article is manufactured in the United States,
  or that it is manufactured in any foreign country or locality other
  than the country or locality in which it is in fact manufactured,
  shall be admitted to entry at any custom-house of the United States;
  and, in order to aid the officers of the customs in enforcing this
  prohibition, any domestic manufacturer or trader, and any foreign
  manufacturer or trader, who is entitled under the provisions of a
  treaty, convention, declaration, or agreement, between the United
  States and any foreign country to the advantages afforded by law
  to citizens of the United States in respect to trade-marks and
  commercial names, may require his name and residence, and the name of
  the locality in which his goods are manufactured, and a copy of the
  certificate of registration of his trade-mark, issued in accordance
  with the provisions of this act, to be recorded in books which shall
  be kept for this purpose in the Department of the Treasury, under
  such regulations as the Secretary of the Treasury shall prescribe,
  and may furnish to the Department facsimiles of his name, the name
  of the locality in which his goods are manufactured, or of his
  registered trade-mark; and thereupon the Secretary of the Treasury
  shall cause one or more copies of the same to be transmitted to each
  collector or other proper officer of customs."

  +---------------------------------------------------------------+
  |                     [Illustration]                            |
  |                                                               |
  |                  =Within This Circle=                         |
  |                                                               |
  | Eighty-five millions of people live within this circle.       |
  | It is the great battle-ground on which advertising            |
  | campaigns are won or lost.                                    |
  |                                                               |
  | In this area are 42 cities of 100,000 or more inhabitants,    |
  | and 167 other cities with populations between                 |
  | 25,000 and 100,000.                                           |
  |                                                               |
  | The J. Walter Thompson Company knows this                     |
  | territory from actual contact with the buying public          |
  | that lives in it.                                             |
  |                                                               |
  | Our branch offices in the great mercantile centers,           |
  | as shown on the map, have been established for the            |
  | purpose of studying at first hand the conditions of           |
  | distribution and merchandising that must necessarily          |
  | figure with great weight in any national advertising          |
  | campaign. We have better facilities for acquiring             |
  | practical selling information than any other agency in        |
  | America.                                                      |
  |                                                               |
  | Most of the national advertisers in the United                |
  | States and Canada are within thirty minutes of one            |
  | of our eight offices. Ninety per cent of national advertisers |
  | are within two hundred miles of a J. W. T.                    |
  | office.                                                       |
  |                                                               |
  |            =J. WALTER THOMPSON COMPANY=                       |
  |                                                               |
  |            =New York: 44 East 23rd Street=                    |
  |            =Boston: 201 Devonshire Street=                    |
  |            =Cincinnati: First National Bank Bldg.=            |
  |            =St. Louis: Odd Fellows Bldg.=                     |
  |            =Chicago: The Rookery=                             |
  |            =Cleveland: Swetland Bldg.=                        |
  |            =Detroit: Trussed Concrete Bldg.=                  |
  |            =Toronto: Lumsden Bldg.=                           |
  |            =London: 33 Bedford St., Strand=                   |
  +---------------------------------------------------------------+




CHAPTER V

Assignment


It is a fixed principle of the law that a trade-mark cannot be
assigned, or transferred, without a transfer of the business with which
it is associated.

Trade-marks indicate origin. They are intimately associated with the
merchandise for which they are registered. This being a fundamental
principle of trade-mark law, it can be understood that a trade-mark
cannot pass from hand to hand, and transferred as a separate thing,
without losing its real function as a trade-mark.

The Act of 1905 (Section 10) provides that any registered trade-mark
may be assigned "in connection with the good-will of the business in
which the mark is used."

In the case of _MacMahan Pharmacal Co. v Denver Chemical Mfg. Co_. (113
Fed. R. 468), the court said:

  "A trade-mark cannot be assigned, or its use licensed, except as
  incidental to a transfer of the business or property in connection
  with which it has been used. An assignment or license without such a
  transfer is totally inconsistent with the theory upon which the value
  of a trade-mark depends and its appropriation by an individual is
  permitted. The essential value of a trade-mark is that it identifies
  to the trade the merchandise upon which it appears as of a certain
  origin, or as the property of a certain person.... Disassociated from
  merchandise to which it properly appertains, it lacks the essential
  characteristics which alone gives it value, and becomes a false and
  deceitful designation."

There is a silk fabric bearing a "Radium" trade-mark, and known in the
trade, and among consumers as "Radium Silk." The manufacturers of this
fabric, The Gilbert Manufacturing Company, assigned this trade-mark
in 1905 to another concern (Eiseman & Company). With the trade-mark
they turned over to Eiseman & Company all the manufactured and labeled
goods then in their possession. Thereupon the Gilbert Company ceased
to use the trade-mark, but did not stop manufacturing the goods, which
they put upon the market under the name "Electra". It seems to have
been understood by Eiseman & Company, according to the evidence, that
the Gilbert Company was to continue making the goods, provided they
gave their product some other name than "Radium". As soon as Eiseman &
Company obtained the assignment of the trade-mark they, too, began to
manufacture the fabric, and sell it under the "Radium" trade-mark.

[Illustration:

    GENUINE
    "BULL" DURHAM
    SMOKING TOBACCO
    STANDARD OF THE WORLD

  _A trade-mark, or an advertising character, or a catch phrase, may
  be so thoroughly advertised that it becomes better known than the
  commodity to which it applies. A little New York girl, age six, who
  had hardly passed a day of her young life without seeing a ferocious
  Durham bull glaring from billboards and the fences of vacant lots,
  gravely said to her mother one day: "Mamma, is all tobacco made from
  bulls?"_

]

Now the matter comes into court through the suit of Eiseman & Company
to prevent a third manufacturer from using the "Radium" trade-mark.
They contended that the assignment of the mark to them by its original
owner, The Gilbert Mfg. Co., gave them the exclusive right to its use.

The court held that, in the first place, the assignment of the
trade-mark to Eiseman & Company was invalid, because it was not
accompanied by a transfer of the good-will; in the second place, the
fact that the Gilbert Company discontinued the use of the trade-mark,
constituted an abandonment. Injunction was denied.

In this case, the court said: "When a trader has sold some particular
article under a selected name to such an extent as to secure
registration, he has established a special business in which that
trade-mark is used, and if the trade-mark becomes so valuable as to
induce him to sell it, he must, as a condition of transfer under the
statute, assign that special business with the trade-mark of which it
was the parent. Eiseman & Company, therefore, acquired no rights under
the alleged assignment, which did not carry the special business."

[Illustration:

    DAVOL

  _While this trade-mark is simple, it lacks attractiveness and
  euphony. It is without distinction, and is easily overlooked and
  forgotten._

]

There are exceptions, however, to this rule. The nature of these
exceptions may be best shown by citing a case--that of _Witthaus v
Braun_ (44 Maryland--1875). In this case a tobacco dealer, who did
not manufacture goods himself, had special brands made for him by a
manufacturer. The tobacco dealer owned the brands, and merely hired the
manufacturer to make his goods. The dealer assigned to the manufacturer
"all his smoking tobacco brands", without transferring any other part
of his business. It was held that in this case the assignment was
valid, because the origin of the goods had not been changed by the
transaction. The same manufacturer continued to make the tobacco, the
only difference being that he now owned the business, instead of making
the goods on contract.

The right to use a trade-mark identified with a business location may
pass, under certain circumstances, to a purchaser of the building.

The purchaser of a hotel building, for example, buys with it the right
to use its name, unless a specific stipulation to the contrary is made.

A theatre building known as Booth's Theatre was owned and managed by
one Booth. After several years of occupancy, he leased the building to
another person, who proceeded to give theatrical performances there. In
his advertisements he referred to the place as Booth's Theatre, giving
his own name as lessee. Thereupon, Booth attempted to enjoin this use
of the name. The court held that the name passed with the lease of the
building.

In cases where the business is of such a personal nature that the
trade-mark or trade-name is identified in the public mind with the work
of some particular individual, it is obvious that deception would be
practised if the same identifying mark were used after that individual
had ceased his connection with the enterprise. In such cases, there can
be no valid transfer of the trade-mark even though the entire business,
including good-will, is sold. Such a trade-mark is personal. Its use on
goods indicates the special knack or skill of some one person.

The courts will protect the purchaser of a business in the use of its
trade-mark or trade-name against infringement by the former owner, even
though the trade-name is that of the former owner.

This principle is illustrated in the case of _Jergens Co. v Woodbury_,
given in the New York Law Journal (Nov. 1907). The Jergens Company was
the sales agent of John H. Woodbury, the celebrated dermatologist, in
the sale of "Woodbury's Facial Soap." In 1901 Woodbury assigned the
business to the complainant. Under the complainant's management a large
and profitable sale for the soap was established.

[Illustration: _The famous Woodbury trade-mark._]

In 1906, Woodbury started to manufacture soap again, calling his
product "Woodbury's New Skin Soap." This product, so far as the package
or wrappers were concerned, had no resemblance to the complainant's
soap, the only point of similarity being in the name.

In a suit brought in the New York Supreme Court it was held by the
court that there was ground for belief that the public would be misled
by defendant's use of the name Woodbury, and he was accordingly
enjoined.

This case went up to the Court of Appeals, and that court upheld the
decision of the lower court, in so far as the defendant was restrained
from using the name Woodbury in connection with the sale of soap in
such a way that the public would be led to believe that his product was
"Woodbury's Facial Soap" or a new brand thereof.

For the assignment of a trade-mark no particular form of assignment is
required except it must be in writing.

The law provides that assignments may be recorded in the Patent Office.
If any assignment is not recorded within three months after its date,
it will be held void as against a subsequent purchaser for valuable
consideration.




CHAPTER VI

Trade-Marks in Canada


Trade-marks are registered in Canada in the Department of Agriculture.

The Canadian law recognizes two kinds of trade-marks, viz.: General
Trade-marks and Specific Trade-marks. These two kinds of marks require
separate registrations.

A "general trade-mark" means a trade-mark used in connection with the
sale of various articles in which a proprietor deals in his trade,
business, occupation or calling generally.

A "specific trade-mark" means a trade-mark used in connection with the
sale of a class of merchandise of a particular description.

[Illustration:

    _Corticelli_
    SPOOL SILK

  _The Corticelli kitten is both a trade-mark and an advertising
  character._

]

In this respect the Canadian and American trade-mark laws differ
materially. The American law does not recognize a "general"
trade-mark--that is, a trade-mark applicable to any merchandise a
manufacturer may produce, irrespective of its class. An American
trade-mark is registered for use in connection with a specific product,
or for use in connection with a class of merchandise, all the units
of which have the same general descriptive qualities. The "specific
trade-mark" of Canada corresponds closely to the American trade-mark.

The Canadian definition of a trade-mark is as follows:

  "All marks, names, labels, brands, packages or other business
  devices, which are adopted for use by any person in his trade,
  business, occupation or calling, for the purpose of distinguishing
  any manufacture, product or article of any description manufactured,
  produced, compounded, packed or offered for sale by him, applied in
  any manner whatever either to such manufacture, product or article,
  or to any package, parcel, case, box or other vessel, or receptacle
  of any description whatsoever containing the same, shall, for the
  purposes of this Act, be considered and known as trade-marks."

The Trade-mark Act of Canada is more broad and liberal than the
American Act, as is shown by this definition of trade-marks. Not
only are marks, names, labels and brands considered trade-marks, but
"packages" and "other business devices" are also included.

An applicant who seeks to register a trade-mark must state in his
application whether the trade-mark is intended to be general or
specific. If specific, a description of the merchandise on which it is
to be used must be made a part of the application.

A general trade-mark, once registered, shall "endure without
limitation."

The registration of a specific trade-mark expires in twenty-five years,
but it may be renewed at the end of that period, and so on from time to
time.

The registration fee for a general trade-mark is $30.00; for a specific
trade-mark, $25.00.

The Minister of Agriculture may refuse to register a trade-mark for any
one of the following reasons:

  1st. If he is not satisfied that the applicant is undoubtedly
  entitled to the exclusive use of such trade-mark.

  2nd. If the trade-mark proposed for registration is identical with or
  resembles a trade-mark already registered.

  3rd. If it appears that a trade-mark is calculated to deceive or
  mislead the public.

  4th. If the trade-mark contains any immorality or scandalous figure.

  5th. If the so-called trade-mark does not contain the essentials
  necessary to constitute a trade-mark, properly speaking.

The "essentials necessary to constitute a trade-mark" are not defined
by the law, an omission which means that the English common law
definition of a valid trade-mark, as shown by the decisions of the
courts, must be the basis on which eligibility to registration is
based. No mark or symbol which has a designating or descriptive
quality may be registered.

When a descriptive word has been registered, through error of the
registrar, it does not give the owner of the mark exclusive right to
its use. As in the United States, registration is only _prima facie_
evidence of validity.

[Illustration:

    AMERICAN SHEET & TIN PLATE CO.
    APOLLO
    BEST BLOOM
    TRADE MARK REGISTERED
    PITTSBURGH

  _A trade-mark used on sheet tin. It is affixed by stenciling._

]

The right to a trade-mark belongs to the first user of the mark. If it
is registered by any other person than its first user, the registration
may be set aside as invalid upon the production of proof of its prior
use by any other person than the registrant.

The law states that "no person shall institute any proceeding to
prevent the infringement of any trade-mark, unless such trade-mark is
registered in pursuance of this act."

[Illustration:

    TRADE
    ELASTICA
    MARK
    FLOOR FINISH

  _A well-advertised trade-mark._

]

This provision of the law would seem to exclude actions based on the
common law, but in practice the Canadian courts take cognizance of the
doctrine of unfair trade. The prime requisite of registration before
infringement proceedings can be instituted merely makes the mode of
procedure different from that in the United States. The complainant
must get his trade-mark registered before he begins his suit against
the infringement. If the mark alleged to infringe has already been
registered, the plaintiff moves to set the registration aside as
invalid, and have his own mark registered instead of it.

A circular containing the full provisions of the Canadian law, with
directions and forms for making an application for registration, may
be obtained by any person who will write for it to the Minister of
Agriculture, Ottawa, Canada.




CHAPTER VII

How to Devise a Trade-Mark


A Trade-mark may be a word, or words; or a device; or a device combined
with a word or words.

It is often considered desirable to register the name of a product as
a trade-mark. Consequently, in the case of new products, the selection
of a trade-mark often means the selection of a name for the merchandise
with which the trade-mark is to be used.

[Illustration:

    CREX
    Grass Furniture
    TRADE MARK

  _A familiar and excellent example of a coined word used as a
  trade-mark._

]

A trade-mark, to be valid, should not have any meaning obviously
descriptive of the goods for which it is registered. The word "Crex",
to illustrate our meaning, is an arbitrary coined word. As such it
is registrable, and besides its undoubted validity, it has some of
the best qualities that a trade-mark can possess, in that it is
short--of one syllable--easy to pronounce and remember, and its sound
is not displeasing to the ear. Note that in the name "Crex Grass
Furniture", the word "Crex" is alone registrable. "Grass Furniture" is
a descriptive term.

Coined words, like Karo, Onoto, Chiclets, Crisco, Uneeda, <DW61>-a-lac,
Sapolio, are virtually infringement proof. The ownership of a coined
word, as applied to the commodity with which it is associated, rests
absolutely in the individual or concern that first uses it.

Many of these coined words are only fortuitous combinations of letters,
arrived at after divers experiments. Such a word is "Onoto", applied
to a fountain pen. It was selected from a list of hundreds of similar
names, in which all sorts of curious arrangements of letters were set
down.

In the creation of an artificial or "coined" word, a mere misspelling
of a word or phrase does not make it registrable, if it would not be
so otherwise. "Bestok", a misspelling of "Best Stock", was refused
registration, as it is plainly descriptive.

"Omo" is the trade-mark of a dress shield; "Persil"--a coined word--is
a washing compound; and "Steero" is the trade-mark and the name of
bouillon cubes.

"Sealpackerchief" is a name made up of "Sealed", "Package" and
"Handkerchief". It is the trade-name of a brand of handkerchiefs that
are sold in clean sealed packages.

"Nabisco" is a name made by joining together the first syllables of the
three words "National Biscuit Co."--Na-Bis-Co--Nabisco.

  +---------------------------------------------------------------+
  |            =The Porto Rico Seal of Quality=                   |
  |                                                               |
  | [Illustration]                                                |
  |   PORTO RICO ASSOCIATION                                      |
  |   DISINTERESTED                                               |
  |   INSPECTION                                                  |
  |   HONESTY                                                     |
  |   PURITY EFFICIENCY ENERGY EXCELLENCE                         |
  |   PROGRESS                                                    |
  |   ON THE SQUARE                                               |
  |   GUARANTY                                                    |
  |                                                               |
  | The Government of the Island of Porto Rico has                |
  | given its encouragement and material support to the           |
  | formation of an association among the large planters,         |
  | shippers and manufacturers of the Island. This organization,  |
  | known as the Porto Rico Association, is active in promoting   |
  | the sale of Porto Rican products in the United States. As a   |
  | guaranty of the quality of the goods, each member of the      |
  | Association--after his shipment has been inspected and        |
  | approved--has the right to use the "Porto Rico seal of        |
  | quality", shown here. This seal is not a trade-mark in the    |
  | technical sense, but it is affixed to Porto Rican merchandise |
  | of high quality, sold at the New York store of the Porto      |
  | Rico Association at 510 Fifth Avenue, New York, and           |
  | elsewhere, and in that relation it is a common law            |
  | trade-mark, with ownership vested in the Porto Rico           |
  | Association.                                                  |
  +---------------------------------------------------------------+

The name "Roxonia", a registered trade-mark, applied to hosiery and
underwear, is an evolution of the name Roxburghe. When the goods were
first put on the market the Duke of Roxburghe was on a visit to the
United States, "taking notice" of an heiress, and was, in virtue of
this situation, much in the public prints. A manufacturer of underwear
thought Roxburghe sounded pretty good, and he applied for registration
of the name as a trade-mark. His application was refused on the ground
that Roxburghe was the name of a person. Abandoning "Roxburghe",
another cogitation of the subject brought to light the word "Saxonia",
this name having been suggested by the fact that Saxony is one of the
great centers of hosiery production. "Saxonia" was refused registration
because it is a geographical term. The addition of two letters to the
word "Saxon" does not make sufficient change to remove it from the
prohibited class of geographical terms. With these two rejections
before him, it occurred to the manufacturer that he could unite the two
words, and get rid of the objectionable feature of each. This was done,
and the result is "Roxonia", which is not only a valid trade-mark, but
a very good one.

[Illustration:

    REG. US ARCO PAT OFF
    SPOTZOFF

  _The clever trade-mark of a cleaning fluid._

]

A trade-mark may consist of a coined word which is suggestive, but
not descriptive. An example of this is shown in the "Arco Spotzoff"
trade-mark. This is the name, as well as the trade-mark, of a cleaning
fluid. "Spots Off", spelled in any way whatsoever, suggests cleaning
and cleanliness, but it does not describe the cleaning fluid. This
is a very ingenious trade-mark. With a slight variation it would be
unregistrable. For instance, "Spot Remover" would not be valid, because
it is an ordinary descriptive term--an advertisement, in short.

[Illustration:

    RUBEROID
    (Trade Mark. Reg. U. S. Pat. Office)

  _Susceptible of mispronunciation._

]

Two other examples of coined words, suggestive but not descriptive, are
"Sealpackerchief"--mentioned above--and "Hydegrade".

In some instances, there is a sort of tangential, or left-handed
suggestiveness, about a trade-mark which gives it a significance quite
different from the idea that was in its owner's mind when he adopted
it. This is a defect in any trade-mark. An example of this is the
"Ruberoid" trade-mark, applied to a high-quality, ready-to-lay roofing,
sold in rolls. It is pronounced "Rue-ber-oid". The owners of this
product state, in their advertising, that Ruberoid does not contain
any rubber. It is not a rubber roofing. But a large percentage of the
public pronounces the word "Rubber-oid", and many people have the
impression that Ruberoid is a rubber roofing. The name is suggestive of
rubber. This effect is not an intentional one, as is plainly shown by
the widely advertised statement of the owners that Ruberoid contains no
rubber, as well as by their taking the trouble to indicate the correct
pronounciation in their advertisements.

[Illustration:

    WILBUR
    TRADE MARK
    Reg. in U. S. Pat. Off.

  _The trade-mark of H. O. Wilbur & Sons._

]

A trade-mark name should not be easily susceptible of mispronunciation.

An arbitrary symbol may be a valid trade-mark. The Wilbur Chocolate
trade-mark, showing a Cupid stirring a cup with a large spoon, is an
example of an arbitrary symbol used for this purpose.

[Illustration: _The McCutcheon trade-mark. Suggestive of fine linen._]

The McCutcheon trade-mark, consisting of the representation of an
old-fashioned spinning wheel, is arbitrary in the sense of not being
descriptive, but it is suggestive of flax and fine linen, which is a
specialty of the McCutcheon store.

The trade-mark of Domino sugar is the picture of a red domino or mask.

Initials, like "E. & W."--used on Earl & Wilson collars; "G.E."--the
trade-mark of the General Electric Company; and "R & G"--used on
corsets, are valid as trade-marks.

[Illustration:

    SONOR

  _A trade-mark in which the defects predominate._

]

A trade-mark may be the name of a fictitious person, like "Buster
Brown", used in connection with hosiery, and "Dorothy Dodd" used as a
trade-mark for shoes.

A famous example of initials used for this purpose is the "B.V.D."
trade-mark.

[Illustration:

    RUBDRY
    BATH TOWEL

  _An excellent, distinctive trade-mark._

]

Good trade-marks are simple and distinctive. The mark should be of such
a character that it can be easily retained in the purchaser's memory,
and it is apparent that this is not readily done when it is complicated
and commonplace.

Look at the "Sonor" trade-mark, reproduced on this page, as an
illustration of this point. The lettering is so involved that it is
difficult to read, and it looks like a pattern of some intricate fancy
work. Compare it with the simple, clear-cut "Rub-dry" trade-mark.

[Illustration:

    BIRD
    NEPONSET
    PRODUCTS
    TRADE MARK
    Reg. U. S. Pat. Off.

  _A trade-mark cluttered up with too much detail._

]

The "Neponset" trade-mark has so much in it, including the picture
of a child in a rainstorm, that it loses its character when it is
reduced to any practical, small size for advertising purposes. The
single word "Neponset", enclosed in a simple design, would be much more
effective--or the child holding the piece of roofing over her head
would be equally effective, if shown alone, without a background.

An example of a commonplace trade-mark is the big "P" surrounded by
a circle. This mark lacks distinction and originality. It makes but
little impression upon a reader's mind, and is soon forgotten.

[Illustration:

    p
    TRADE MARK

  _A trade-mark that bears a startling resemblance to a soda-water
  check._

]

Compare the big "P" with the admirable "Pacific" Mills trade-mark.
The Pacific Mills emblem is graceful, simple, distinctive, and has a
swing and a whirl to it that suggest motion. When a symbol is used as a
trade-mark it is always advisable to put the suggestion of motion into
it, if this can be done without the sacrifice of some other essential
quality. A thing in motion arrests the eye, and holds the attention,
much better than a still figure. Evidence of this is seen in the
well-known Dutch Cleanser trade-mark, where the motion of the lady in
wooden shoes dominates every other quality of the symbol.

An arbitrary number may be a valid trade-mark. The number "830" has
been judicially held to be a good trade-mark for a brand of hosiery.
The number "4711"--an arbitrary arrangement of figures--has been in use
since 1792 as a trade-mark for toilet preparations. The numerals "1"
to "35" are valid trade-marks, as applied to Humphrey's Homeopathic
Remedies.

A numeral indicating quality or composition cannot be protected against
infringement.

[Illustration:

    TRADE
    PACIFIC
    MARK

  _This design is very attractive. A fine example of a symbol with
  wording._

]

A trade-mark may be the name of a mythological character, like Juno,
Venus--there is a Venus lead pencil--Hercules, or Apollo, this last
name being used in connection with a player-piano. It may be the
name of an historical character, like Voltaire, Buckingham, Mazarin,
Napoleon--used with a brand of flour--or Champlain; or Samson, used
as a name of a clothes-line sold in a package. It may be the name
of a character in fiction, like Hamlet, David Copperfield, Hypatia
or Portia. "Pequot", the name of an extinct Indian tribe, is the
trade-marked name of a brand of sheets and pillow cases. The name of
an existing Indian tribe is not valid as a trade-mark, as it has a
geographical significance.

A phrase in common use may be registered as a trade-mark, provided it
has none of the qualities prohibited by the Act of 1905. For example,
"Yours Truly" is the registered trade-mark of an article of food.

A word in common use may be valid as a trade-mark if it has no defects
under the act. There is, for instance, an "Arrow" collar, a "Lion"
collar, and a "Velvet" smoking tobacco. If careful consideration is
given to the selection, it is sometimes possible to find an ordinary
word that may be very effective as a trade-mark. There is, for
example, the word "Rainbow", used as a name for dyes. This word is not
descriptive of the dyes, but it is tremendously suggestive of their
quality and their wide range of colors.

"Gold Cross" is the trade-mark of a brand of condensed milk.

"Skidoo" is the particularly happy name of a rough-and-ready soap,
and this is also used as the trade-mark of a marine engine. "Flash"
is the name of a soap. "Bread Winner" is the trade-name of a line of
children's suits.

There are many trade-marks made up of two or more words, such as
"Bachelor's Friend", for hosiery; "Iron-Clad", also a hosiery
trade-mark, and "Porosknit"--a coined word made up of "Porous" and
"Knit".

The portrait and name of a living person may be registered as a
trade-mark, provided the application is accompanied by the written
permission of the person whose name and portrait are shown. There is a
"Maxine Elliott Soap", and a "Mrs. Rorer's Coffee".

The name of a natural object used in a fanciful sense, may be
registered. There are many examples of this usage, such as "Beech-Nut"
bacon, "Ivy" corset, "Hawkeye" camera, and "Eagle" condensed milk.

A trade-mark may consist of a fanciful combination of words, like "Blue
Jay", applied to corn plasters; "Red Devil", "Silver Moon", and "Flying
Cat".

[Illustration:

    IPSWICH
    HOSIERY

  _A well-balanced and handsome design._

]

When a design and wording are used in combination, care should be taken
to make them fit together without discord. Attractiveness is a quality
that is desirable in a trade-mark if it can be attained without a
sacrifice of more virile features. The Ipswich Hosiery trade-mark is
eye-catching and attractive. It contains as much in lettering and in
illustration as the Neponset trade-mark shown on page 80, and it is
much more attractive. This trade-mark--as shown in the accompanying
engraving--is descriptive, as it contains the word "hosiery", and it
contains a geographical term--"Ipswich". These features would probably
prevent its registration under the general Act of 1905, but not under
the ten years' clause of that act, provided it could fulfil the
requirements of that clause.

[Illustration:

    COPYRIGHT 1903

  _Swift & Co.'s trade-mark._

]

The trade-mark of Swift & Company, of Chicago, is unusually
distinctive. Its symbolism is interpreted in a circular issued by Swift
& Company, of which the following is an excerpt:

"Four factors intimately combined enter into the symbol. They are: (1)
the 'S', (2) the dart, (3) the circle, (4) the pivot.

"The 'S', combined with the dart in one piece, is a personality symbol,
serving to set forth the name 'Swift', both accurately and generally,
since the dart is an ancient and world-wide symbol of swiftness.

"The dart by itself is a humanity symbol, carrying the thought of speed
and directness. In its position in the symbol it indicates high aim and
rectitude.

"The circle is a humanity symbol, carrying the thought of universality,
and everywhere recognized as the perfect form.

"The pivot symbol is beautifully developed by the 'S' which centers in
the circle, and is itself a form of the pivot symbol.

"The black and red color scheme accentuates the pivot and gives the
thought of day and night, of life and death, of heaven and hell--in
short, the thought of dualism in life."

This design is simple, graceful, distinctive, and appropriate. In a
business as far-reaching and as complex as that of Swift & Company,
the quality of adaptability in a trade-mark is highly desirable.
This trade-mark is of such a character that it may be used with
appropriateness upon merchandise, stationery, packages, boxes, sides of
cars, and in advertisements.

[Illustration: _No. 1._]

The engravings Nos. 1, 2, 3, and 4, illustrate the various steps taken
in devising the trade-mark of the W. H. McElwain Company, of Boston.
The fundamental idea was to incorporate the initials of the firm, W.
H. M., into the design in some effective way. From a large number of
suggestions the design marked No. 1 was selected. It can be seen that
the three bars shown in No. 1 make the initials W. H. M.--but somebody
has to tell you before you see it.

[Illustration:

    THE
    McELWAIN
    MARK

  _No. 2._

]

The next step, shown in No. 2, was to put in the sole of a shoe, as the
trade-mark is intended for shoes, and to letter "The McElwain Mark"
across the face of the bars.

The design shown in No. 2 lacks cohesion and finish. To hold it
together, a border was put around it and a Ben Day background thrown
in. This produced the figure shown in No. 3.

[Illustration:

    THE
    McELWAIN
    MARK

  _No. 3._

]

The design marked No. 3 is quite striking, but if you look at it awhile
you begin to see defects in it. The black initial bars are too strong
and glaring. They push the rest of the design out of the picture. This
defect was cured by putting the initial bars in white with the sole of
the shoe in black, and making the background darker. By doing this,
the proper balance between white and black was obtained.

[Illustration:

    THE
    McELWAIN
    MARK

  _No. 4._

]

The design shown in No. 4 is the finished trade-mark.

In devising a trade-mark, any one who does not clearly keep the
requirements of the law in mind is likely to fall into one or another
of three classes of errors.

First, there is a natural tendency to make a trade-mark descriptive, to
insert in the wording some phrase like "Best Quality", "Sold the World
Over", or "Fits the Figure" or "Good for Children"--all of which are
descriptive phrases. You cannot register or protect an advertisement
used as a trade-mark, and such phrases are advertisements. A trade-mark
is a thing to be advertised. It must not be an advertisement itself.

Second, there is a tendency on the part of many advertisers to
incorporate their own names into their trade-marks. This often leads to
interminable and costly litigation.

Third, there is a tendency among manufacturers to select geographical
terms as their trade-marks, to use the name of the towns or cities
where their plants are located, or the names of states, or of rivers or
oceans. The trade-name, "Baltimore" hosiery, has a good sound, and the
word "Baltimore" is easily remembered, simple and euphonious. But if
you are a hosiery manufacturer, and adopt it, you do so at your peril,
even if you do business in Baltimore. You cannot protect it against
any other manufacturer of hosiery who has a plant in Baltimore, even
on the grounds of unfair competition, unless you have used the name
exclusively, and for such a long period of time, that it has lost most
of its geographical sense in the hosiery trade, and has developed into
a word of restricted meaning in that line of business.

       *       *       *       *       *

  P.S. A manufacturer who intends to apply for the registration of
  a new trade-mark should take the precaution to have the files of
  the Patent Office searched to ascertain if a trade-mark like his,
  or similar to it, has been already registered for the same class of
  merchandise. This should be done before application for registration
  is made.

  When application to register a trade-mark is filed, the trade-mark
  must be already in use. This use may be limited to affixation upon a
  small consignment of goods, but it must be a genuine and actual use
  of the trade-mark.

  This being so, it is worth while to ascertain if the proposed
  trade-mark has already been registered. There are 39,000 registered
  trade-marks in existence, divided among forty-nine classes of
  merchandise. Thousands of trade-marks have been registered for
  some classes. It is not unusual for an applicant to find that the
  trade-mark he has intended to use has been adopted by someone else.

       *       *       *       *       *

Transcriber's Notes:

Footnotes have been moved to the end of each chapter and relabeled
consecutively through the document.

Illustrations and sidebars have been moved to paragraph breaks near
where they are mentioned.

Punctuation has been made consistent.

Variations in spelling and hyphenation were retained as they appear in
the original publication.

The wording of the chapter section titles in the Table of Contents
differs from the actual section titles in many cases.

There is no Chapter I section title corresponding to the Table of
Contents entry "Ten-Years Clause."

p. 29: The "ORMROD" is not completely legible in the original
publication and may not be exactly correct. (ORMROD LEHIGH CO)

p. 68: The Chapter IV section title "Infringement by Foreigners Through
Importation" is not included in the Table of Contents.

p. 82: The 3 in 1903 in the "Swift & Co.'s trade-mark" figure on this
page is not completely legible in the original publication and may not
be correct. (COPYRIGHT 1903)






End of the Project Gutenberg EBook of Things to Know About Trade-Marks, by 
J. Walter Thompson

*** 