§ 8. Trademarks distinguished from patents and copyrights. While trademarks to a degree partake of the nature of both patents and copyrights, and the three have many governing legal principles in common, there are wide differ ences separating each from the others. As stated by Mr. Justice Miller in Trademark Cases,30 "the ordinary trademark has no necessary relation to invention or discovery. The trademark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden. invention. It is often the result of accident rather than design, and when under the act of congress it is sought to establish it by registration, neither originality, invention, discovery, science or art is in any way essential to the right conferred by that act. If we should endeavor to classify it under the head of writings of authors, the objections are equally strong. In this, as in regard to inventions, originality is required. And while the word writings may be liberally construed. as it has been, to include original designs for engravings, prints, etc., it is only such as are original, and are founded in the creative powers of the mind." And in the House of Lords, in 1882, Lord Blackburn said,31 "trademarks have sometimes been likened to letters patent and sometimes to copyrights. from both of which they differ in many respects. And I think. to borrow a phrase used by Lord Ellenborough in Waring v. Cox,32 with reference to a different branch of the law, 'much confusion has arisen from similitudinary reasoning on the subject.'" "The trademark statute takes no account of the origin of a mark. 731a § 9. Function.-The function of a trademark is to convey to the purchaser knowledge of the origin, source, ownership or manufacture of the article to which it is applied.33 The 30-100 U. S. 82, 94; 25 L. Ed. 550. See also Taylor v. Carpenter, 2 Sandf. Ch. 603; 11 Paige, 292; Cox, 45; Cox, Manual, Case No. 84; Levy v. Waitt, 21 U. S. App. 294; 61 Fed. Rep. 1008; 10 C. C. A. 227; Hoyt v. Hoyt, 143 Pa. St. 623; 24 Am. St. Rep. 575; Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624, 626; 35 C. C. A. 496. A trademark "may be, and usually is, wholly destitute of originality." Mr. Justice Brown, in Duer v. Corbin Cab inet Lock Co., 149 U. S. 216, 223; 37 L. Ed. 707. To the same effect, see Wm. J. Moxley Co. v. Braun & Fitts Co., 93 Ill. App. 183. 31-Johnston v. Orr Ewing, 7 App. Cas. 219, 228. 31a-Smyth, C. J., in Proctor & Gamble Co. v. Eney Shortening Co., 267 Fed. Rep. 344, C. A. D. C. 32-1 Camp. 369. 33-"The function of a trademark is to indicate to the public trademark need neither indicate the manufacturer or the place of the article's manufacture,34 but may indicate either a natural product of the earth, or the handling or selection of the goods, or some labor that has been performed in connection therewith. It serves solely to guide the public to the goods it wants to buy, acting as a perpetual means of identification and advertisement of goods of repute. § 10. Nature of the right to a trademark. The right to a trademark is a right of property,35 which the state may, in the exercise of its police power, protect by appropriate penal legislation. This right of property is, in the United v. Thomas Mfg. Co., 94 Fed. Rep. 651, 656. the origin, manufacture or ownership of articles to which it is applied, and thereby secure to its owner all benefit resulting from his identification by the public with the articles bearing it. No person other than the owner of a trademark has a right, without the consent of such owner, to use the same on like articles, because by so doing he would in substance falsely represent to the public that his goods were of the manufacture or selection of the owner of the trademark, and thereby would or might deprive the latter of the profit he otherwise might make by the sale of the goods which the purchaser intended to buy. Where a trademark is infringed the essence of the wrong consists in the sale of the goods of one manufacturer or vendor as those of another, and it is on this ground that a court of equity protects trademarks. It is not necessary that a trademark should on its face show the origin, manufacture or ownership of the articles to which it is applied. It is sufficient that by association with such articles in trade it has acquired with the public an understood reference to such origin, etc." Bradford, J., in Dennison Mfg. Co. "The sign, symbol or mark may be purely fanciful, and convey no information as to the name of the producer. But the essential thing is that it shall be designed and used to indicate the origin of the article and that all articles having the same mark come from a common source." Lurton, J., in Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 91 Fed. Rep. 376, 380; 33 C. C. A. 558; affirming Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 86 Fed. Rep. 764. "A trademark is a trademark because it is indicative of the origin of the goods." Denison, J., in Merriam v. Saalfield, 198 Fed. Rep. 369, 372; 117 C. C. A. 245, 248; followed in DeVoe Snuff Co. v. Wolff, 124 C. C. A. 302; 206 Fed. Rep. 420, 423. 34 It is not essential to property in a trademark that it should indicate any particular person as the maker of the article to which it is attached." Danforth, J., in Godillot v. Harris, 81 N. Y. 263. "The identity of the source need not be known. Indeed the whole law of 'secondary meaning' is based upon that presupposition." Learned Hand, J., in Bayer Co. v. United Drug Co., 272 Fed. Rep. 505, 509. 35-Derringer v. Plate, 29 Cal. 292; 87 Amer. Dec. 170; R. Cox, 324; Seb. 249; Bass, Ratcliff & States, treated as a common-law right, and in no wise dependent upon statutory law for its inception.36 "Property in trademarks is recognized at common-law, and may be and has been made the subject of legislation in the states. It does not owe its existence as a right to any act of congress. Legislation, therefore, by congress, is the mere regulation of a pre-existing right, and is based upon the in terstate character of the act." 37 Lord Cranworth referred to this right as "a right which car be said to exist only and can be tested only by its violation." 38 While it is true that the right can only be tested after it has been violated, or its violation has been threatened, it is certainly untrue that it exists "only by its violation," because there is no violation of a right not pre-existing. Judge Folger, speaking for the New York Court of Appeals, criticised this dictum, saying, "but its violation is when one adopts or imitates, and applies to an article of his manufacture the name or mark previously used by another as a designation for his production. It is a matter of property, and the profit able use of property. * 739 Much legislation has taken place tending to aid the common-law remedies and afford more effective redress against trademark piracy, but with the solitary exception of California 40 it has nowhere been held in the United States that Gretton (Ltd.) v. Feigenspan, 96 36-Trademark Cases, 100 U. S. 82; 25 L. Ed. 550; Derringer v. Plate, supra; Moorman v. Hoge, 2 Sawyer, 78, 85; Fed. Case No. 9783; L. H. Harris Drug Co. v. Stucky, 46 Fed. Rep. 624, 626; Battle v. Finlay, 50 Fed. Rep. 106; Hennessy v. Braunschweiger, 89 Fed. Rep. 664; Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624, 627; 35 C. C. A. 496. 37-Dickinson, J., in Louis Bergdoll Brew. Co. v. Bergdoll Brew. Co., 218 Fed. Rep. 131, 132. 38-Farina v. Silverlock, 6 DeG., M. & G. 214, 217. 39-Congress & Empire Spring Co. v. High Rock Congress Spring Co., 45 N. Y. 291. 40-Whittier v. Dietz, 66 Cal. 78. The evil effect of this decision has since been obviated by the enactment of the present section 3199 of the Political Code of California, which provides that "any person who has first adopted and used a trademark or name, whether within or beyond the limits of this state, is its original owner." compliance with a statute is a prerequisite to the acquisition of a trademark. The contrary rule obtains in England; registration being necessary to entitle the owner to sue for infringement.41 A peculiar element of the trademark right is that it must be used as an entirety.42 The owner of a trademark can not convey to others territorial rights to its use,43 and a partner's interest in the trademarks owned by the partnership can not be levied upon by or subjected to the payment of claims of his personal creditors.44 § 11. The test of exclusiveness.-The trademark right must be exclusive; by this test it stands or falls. As Judge Cochran has said, "what makes a mark affixed by a seller to goods produced or selected by him a technical trademark (i. e., one whose exclusive use by him in marking goods of the same or like character will be protected) is that when it is affixed to goods of that character it amounts to a representation that they are the goods of the person who has adopted it as his trademark. If it does not amount to such a representation, it is not a technical trademark. 45 § 12. Requisites of a valid trademark.-As seen in our definition, a trademark must (a) Be used in lawful commerce; (b) Be in some way applied or affixed to a subject of lawful commerce; (c) Be distinctive, identifying the character of the article to which it is so affixed. As comprehensive and concise a statement of the requisites of a valid trademark as can be found in the books is as follows: "The trademark must be used to indicate not the quality, but the origin or ownership of the article to which it is attached. It may be any sign, mark, symbol, word or 41-The Merchandise Marks Acts, 1887-1894 (50 and 51 Vict., c. 28). 42-Manhattan Med. Co. v. Wood, Fed. Case No. 9026; 4 Cliff. 461. 43-Snodgrass v. Wells, 11 Mo. App. 590. Per contra as to the title of a periodical publication (not a technical trademark), see Estes v. Williams, 21 Fed. Rep. 189. 44-Taylor v. Bemis, 4 Biss. 406; Cox, Manual, 132; Fed. Case No. 13779. 45-Bissell Chilled Plow Works v. T. M. Bissell Plow Co., 121 Fed. Rep. 357, 364. words, which others have not an equal right to employ for the same purpose. 46 These are fundamental conditions which are never varied, and to which there can be no exception. There are further conditions which we will examine in detail in a subsequent chapter. -- § 13. Perpetual existence. The life of a trademark is as long as its continuous use by the owner or his assignees. It is only terminated by abandonment, which we will deal with later. "A trademark may increase in value to its owners by use, and the law could not put a time limit on the owner's right to it any more than it could put a limit upon his right to use any other article of property." 47 The act of 1881 provided (§ 5) that a certificate of registry shall in the case of articles manufactured in this country remain in force for thirty years from its date, subject to renewal for a like period at any time during the six months prior to the expiration of the term of thirty years; so that all protection and benefit of that act will be lost by failure to renew within the period stated. But congress was careful to provide further (§ 11 act of 1881) that nothing in the act shall be construed as unfavorably affecting a claim to a trademark after the term of registration shall have expired. By the act of 1905 (§ 12), the force of the certificate is limited to twenty years' duration with renewal privileges, and § 23 provides that nothing in the act "shall prevent, lessen, impeach, or avoid any remedy at law or in equity which any party aggrieved by any wrongful use of any trademark might have had if the provisions of this act had not been passed." 47a § 14. Territorial limitation.-Subject to the doctrine of the "Tea Rose" case, it has always been recognized that, unlike a patent, a trademark knows no territorial limitation.47b 46-Earl, Commissioner of Appeals, in Newman v. Alvord, 51 N. Y. 189, 193. 47-Hoyt v. Hoyt, 143 Pa. 623, 22 Atl. Rep. 755. 47a-Hanover Star Milling Co. v. Allen & Wheeler Co., 240 U. S. 403; 60 L. Ed. 713. "A trademark can not travel to markets where there is no article to wear the badge and no trader to supply the article." Howe, J., in Vermont Maple Syrup Co. v. Johnson Maple Syrup Co., 272 Fed. Rep. 478. 47b-Derringer v. Plate, 29 Cal. 292. |