JlNE 1, 1914.] 



THE INDIA RUBBER WORLD 



475 



What a Trade-Mark Right Is and How to Obtain It. 



Til ERE is an almost general misapprehension as to the real 

 nicaning of a trade-mark rislit. It is generally heheved that 

 the obtaining of a trade-mark creates the right to the ex- 

 clusive use of the word, phrase, or symbol, as the case may be. 

 That is not at all the case. The registration of a trade-mark 

 creates no right whatever. The right to the exclusive use of the 

 mark, if it was a right, existed before the registration and entirely 

 distinct from it. It came entirely from the fact that the owner was 

 the lirst to use it. 'I'he registration of the trade-mark simply made 

 it easier to pursue the remedy against infringers. The owner of 

 the mark would have had precisely the same right to its ex- 

 clusive use if he had not registered it. The registration simply 

 makes it easier to prevent other persons from infringing upon it. 



Let us suppose that John Jones, a rubber manufacturer, wishes 

 to market a line of goods under a new name. He thinks "Jupiter" 

 a good name, and adopts that. If no one else has adopted 

 "Jupiter" as a brand name for rubber goods before him, Mr. 

 Jones, by the simple adoption of the name, acquires a right to it 

 which he may defend against all other persons. In order to ac- 

 quire and to enforce that right, he has no need whatever to 

 register the mark in Washington. What he gets by registration 

 is certain advantages in pursuing his remedy against infringers 

 which the trade-mark laws give him, and which are explained a 

 little further on. 



The above principles are repeated and reiterated because, as 

 already observed, there is general ignorance on the subject. 



Trade-marks are registered in the Patent Oflfice at Washington. 

 and all communications on the subject need to be addressed to 

 the Commissioner of Patents. The trade-mark law under which 

 the Patent Office now operates is the act of February 20, 1905, 

 as amended by the act of May 4, 1906. This act provides, gener- 

 ally speaking, that any name, phrase, mark or symbol may be 

 adopted as a trade-mark and registered, with the following excep- 

 tions: (1) It must not consist of immoral or scandalous matter; 

 (2) it must not consist of the flag or coat of arms of the United 

 States or any State or foreign nation; (3) it must not consist 

 simiily of the name of an individual firm, corporation or associa- 

 tion unless same be woven or printed in some distinctive man- 

 ner ; (4) it must not consist of words or devices which describe 

 the goods, or their quality; (5) it must not be a geographical 

 term : (6) it must not be a portrait except with the subject's 

 attested consent. 



Practically every other mark of whatever character may be 

 adopted and registered. 



The certificate of trade-mark, if granted, can be assigned to 

 another person, but only when the good will of the business rep- 

 resented by the article covered by the mark is assigned also. It 

 remains in force for twenty years only, but can be renewed. All 

 trade-mark articles must bear the words. "Registered in U. S. 

 Patent Oflice," which may be abbreviated thus : "Reg. U. S. Pat. 

 Off." 



We come now to the advantages in the way of suing an in- 

 fringer which the person who registers his trade-mark obtains 

 under the law. A summary of these advantages is as follows : 



1. The holding of a certificate of trade-mark registration is 

 considered prima facie evidence of ownership. That is, if not 

 contradicted by evidence to the contrary, it will be accepted by 

 the courts as evidence that the person holding it was the first per- 

 son to adopt the mark, and therefore is in position to defend it 

 against all other persons. 



2. The act gives a right to bring an action in damages against 

 any infringer, tho the owner would have had this right any- 

 way under the common law. The act gives the advantage, how- 

 ever, of authorizing the court, where the suit is decided against 

 the alleged infringer, to enter judgment for three times the 



amount of the verdict. This could not have been done in any 

 common law action. 



3. The owner of a trade-mark can sue in any circuit or terri- 

 torial court of the United States, or in the Supreme Court of 

 the District of Columbia, and the case can be appealed to any 

 circuit court of appeal, without regard to the amount in con- 

 troversy. This opens the United States courts to him, with the 

 advantage of being able to get service upon the defendant with- 

 out difficulty. 



4. The above courts can grant injunctions against an alleged 

 infringer of a trade-mark, and a verdict will lie against him at 

 the trial of the case for all profits he has made out of the illegal 

 use of the trade-mark, also for all damages the plaintiff has sus- 

 tained. These damages can be increased to three times the 

 actual amount, by way of penalty against the infringer. At the 

 trial of the case the plaintiff is required to prove only the sales 

 of the defendant under the illegal trade-mark. 



5. The court may also order the destruction of all labels, 

 signs, prints, packages, wrappers or receptacles which bear an 

 infringing trade-inark. 



6. .An injunction granted under the act may be served upon 

 and enforced against any infringer wherever he may be found. 



In applying for the registration of a trade-mark, three forms 

 are used : One known as the petition, the second as the state- 

 ment, the third as the declaration. Following is a proper set of 

 forms where the applicant is an individual. Where a partnership 

 or a corporation applies, the forms must be altered to suit : 



(1) PETITION 



To the Commissioner of Patents: 



The undersigned presents herewith a drawing and five 

 specimens of his trade-mark, and requests that the same, 

 together with the accompanying statement and declara- 

 tion, may be registered in the United States Patent 

 Office in accordance with the law in such cases made and 

 provided. 



John Jones. 



Dated June I, 1914. 



(2) ST.\TEMENT. 



To all whom it may concern: — 



Be it known that I, John Jones, a citizen of the United 

 States of America, residing at Philadelphia, county of 

 Philadelphia, State of Pennsylvania, and doing business 

 at Xo. 1300 Chestnut street, in said city, have adopted 

 for my use the trade-mark shown in the accompany- 

 ing drawing, the triangle being printed in red, for rubber 

 heels, in class ■ — . 



The trade-mark has been continuously used in mv 

 business since January 1. 1912. 



The trade-mark is applied or affixed to the goods, or 

 to the packages containing the same, by placing thereon 

 a printed label on which the trade-mark is shown. 



John Jones. 



(3) declaration. 



tate of Pennsylvania. I 

 ounty of Philadelphia, J 



John Jones, being duly sworn, deposes and says that he 

 is the applicant named in the foregoing statement; that 

 he believes the foregoing statement is true; that he be- 

 lieves himself to be the owner of the trade-mark sought 

 to be registered; that no other person, firm, corpora- 

 tion or association, to the best of his knowledge and 

 belief, has the right to use said trade-mark, either in the 

 identical form or in any such near resemblance thereto 

 as might be calculated to deceive; that said trade-mark 

 is used by him in commerce among the several States of 

 the United States; that the drawing presented truly 

 represents the trade-mark sought to be registered; and 



