14

courts. As against a citizen of the same state, a registrant under that act had not even the right to sue in a court of the United States, unless it could be shown that both the original and infringing marks were being used in commerce with foreign nations or the Indian tribes.15

The certificate of registration is only prima facie evidence of ownership of the trademark registered, and is not conclusive or binding upon the courts as to the right of a party to its exclusive use.16

No right is created by the registration of a generic name,17 nor by the registration of a mark unrestricted as to form or color, as "a colored streak applied to or woven in a wire rope.

18

Obviously, a trademark applied to a patented article during the life of the patent, can not be saved, by registration,

& Co., 89 Fed. Rep. 664-668. Quoted and followed in Sleepy Eye Milling Co. v. C. F. Blanke Tea & Coffee Co., 85 Off. Gaz. 1905. To the same effect see Einstein v. Sawhill, 65 Off. Gaz. 1918; Sherwood v. Horton, Cato & Co., 84 Off. Gaz. 2018.

15-Ryder v. Holt, 128 U. S. 525; 32 L. Ed. 529; Luyties v. Hollender, 22 Blatchf. 413; Schumacher v. Schwenke, 26 Fed. Rep. 816; Gravely v. Gravely, 42 Fed. Rep. 265; Prince's Metallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493.

16-Hennessy V. Braunschweiger, supra; Brower v. Boulton, 53 Fed. Rep. 389; Glen Cove Mfg. Co. v. Ludeling, 22 Fed. Rep. 824-826.

In the latter case Judge Wallace observed: "The act of congress makes the registration of the mark only prima facie evidence of ownership. $ 7. The inquiry is therefore always open as to the validity of the title to

a trademark evidenced by the registration. The registration could not confer a title to the trademark upon the complainant if some other corporation or individual had acquired a prior right by adoption and use; nor could it vest defendant with a title as against the complainant's common law title. In this view the only office of a registration is to confer jurisdiction upon the court to protect a trademark when the proprietor has obtained the statutory evidence of title, and the only function of the commissioner of patents is to determine whether an applicant has a presumptive right to the trademark." Το the same effect see Deitsch v. Geo. R. Gibson Co., 155 Fed. Rep. 383.

17-Liebig's Extract of Meat Co. v. Walker, 115 Fed. Rep. 822-826.

18-A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 134 Fed. Rep. 571; 67 C. C. A. 418; 201 U. S. 166; 50 L. Ed. 710.

from becoming publici juris upon the expiration of the patent.19

The certificate of registration is only prima facie evidence of an admission on the part of the government that the applicant for registration is the owner of a valid trademark, is not a grant of any right or privilege, and does not, therefore, conclude a third party; 20 but it is conclusive as against the registrant, as limiting and restricting what he can claim as his trademark.21 Notwithstanding its registration under the act, the trademark of an insolvent will be conveyed by a general assignment for the benefit of creditors, and it has been held under all the various bankruptcy and insolvency laws that all trademarks of the bankrupt or insolvent pass to the trustee or assignee.23

22

High authority has held that the rights which a person obtains by registration of his trademark under the federal statutes "are coterminous with the territory of the United States.'' 23a

$165. The disadvantages of registration.-As indicated in the preceding section, registration under the act was held to "operate as evidence tending to show what was really claimed." 24 Judge Acheson has said, "it would be a perversion of the right to registration under the Act of Congress, and would amount to a fraud on other traders, to permit the plaintiff now to assert broader rights in the anchor as a trade symbol than his public registry in 1885 disclosed. * Section 10 gives no countenance to the idea that a person, availing himself of the benefits of the act, may register as his trademark a peculiar representation of a emblem, exhibiting special and distinguishing features and a particular combination, and yet afterwards claim the emblem pure and simple, without regard to such features or combi

19-Sternberg Mfg. Co. v. Miller, Du Brul & Peters Mfg. Co., 161 Fed. Rep. 318; 88 C. C. A. 398.

20-United States v. Braun, 39 Fed. Rep. 775.

21-Kohler Mfg. Co. v. Beeshore (2), 59 Fed. Rep. 572; Richter v. Reynolds, 59 Fed. Rep. 577; 8 C. C. A. 220; Adams v. Heisel, 31 Fed. Rep. 279, 281; Kohler Mfg. Co. v. Beeshore (1), 53 Fed. Rep. 262, 264; Richter v. Anchor Remedy Co., 52 Fed. Rep. 455; Pittsburgh Crushed Steel Co. v. Diamond Steel Co., 85 Fed. Rep. 637.

22-Sarrazin v. W. R. Irby Cigar Co., 93 Fed. Rep. 624.

23-Warren V. Warren Thread Co., 134 Mass. 247; Wilmer v. Thomas, 74 Md. 485; 22 Atl. Rep. 403.

23a-Lacombe, J., in Standard Brewery Co. v. Interboro Brewing Co., 229 Fed. Rep. 543, 544, C. C. A. 2.

24-Shiras, Circuit Justice, in Kohler Mfg. Co. v. Beeshore, 8 C. C. A. 215; 59 Fed. Rep. 572, 576.

nation. To tolerate this would be to defeat the very purpose of the act.

25

In a later case, Judge Adams held that by failing to include the letter S as part of a registered mark, the registrant "must be held to have abandoned this feature of its mark, if it had ever employed it, to the public, and thereby, to have disclaimed any exclusive right to it;"26 and a similar ruling has been made by the Court of Appeals of Kentucky.27 Judge Reed has very properly held that where certain parts of the mark shown and described in a registration are recited to be essential, the other parts will be held not to be a part of the trademark.28 It is consequently well established that registry of less than the whole trademark is tantamount to an abandonment of the remainder.29

By sec. 28 of the Act of 1905, it is provided, "That it shall be the duty of the registrant to give notice to the public that a trademark is registered, either by affixing thereon the words 'Registered in U. S. Patent Office,' or abbreviated thus, 'Reg. U. S. Pat. Off.,' or when, from the character or size of the trademark, or from its manner of attachment to the article to which it is appropriated, this can not be done, then by affixing a label containing a like notice to the package or receptacle wherein the article or articles are inclosed; and in any suit for infringement by a party failing so to give 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."

This section is directly modeled upon the corresponding section of the patent statute, which is as follows:

Sec. 4900. "It shall be the duty of all patentees, and their assigns and legal representatives, and of all persons making or vending any patented article for or under

25-Richter V. Anchor Remedy Co., 52 Fed. Rep. 455, 458; affirmed under the style of Richter v. Reynolds, 8 C. C. A. 220; 59 Fed. Rep. 577.

26-Pittsburg Crushed Steel Co. v. Diamond Steel Co., 85 Fed. Rep. 637, 638.

27-Geo. T. Stagg Co. v. Taylor, 95 Ky. 651; 27 S. W. Rep. 247. 28-L. H. Harris Drug Co. v. Stucky, 46 Fed. Rep. 624, 625. 29-P. C. Weist Co. v. Weeks, 177 Pa. 412; 35 Atl. Rep. 693.

them, to give sufficient notice to the public that the same is patented; either by fixing thereon the word 'patented,' together with the day and year the patent was granted; or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is enclosed, a label containing the like notice; and in any suit for infringement, by the party failing so to mark, no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued, after such notice, to make, use, or vend the article so patented."

Under the latter section, Mr. Justice Gray has said, "one of these two things, marking the articles, or notice to the infringers, is made by the statute a prerequisite to the patentee's right to recover damages against them.

*

"Each is an affirmative fact, and is something to be done. by him. By the elementary principles of pleading, therefore, the duty of alleging, and the burden of proving either of these facts is upon the plaintiff."' 30

Therefore, by registration under the Act of 1905, the registrant has this burden imposed upon him.30a

Registration has no effect as to either party in issue of infringement.-Plaintiff's failure to register in no way affects his rights, nor does the registration of his mark by defendant confer a right to infringe plaintiff's mark.30b

§ 166. Interferences.-The rules established by the decisions of the patent office in relation to interferences under the Act of 1881 are of value in like proceedings under the present Act. Sec. 3 of the Act of 1881 provided that "In an application for registration the commissioner of patents shall decide the presumptive lawfulness of claim to the alleged trademark; and in any dispute between an applicant and a previous registrant, or between applicants, he shall follow, so far as the same may be applicable, the practice of courts of equity of the United States in analogous cases."

§ 167. Between a registrant and an applicant, the burden of proof is on the applicant, for the reason that the certificate under section 16 of the act is prima facie evidence of ownership.31 In such a case, Allen, commissioner, has held that the applicant must establish "a date of use in the United States

30-Dunlap v. Schofield, 152 U. S. 244, 248: 38 L. Ed. 426, 427.

30a-Stark Bros. Co. v. Stark, 255 U. S. 50, 65 L. Ed. 496. 30b-Ansehl V. Williams, 267 Fed. Rep, 9, 14, C. C. A. 8.

31-Sherwood v. Horton, Cato & Co., 84 Off. Gaz. 2019; Sibley Soap Co. v. Lambert Pharmacal Co., 103 Off. Gaz. 2172. See § 7, Act of 1905, and Patent Office Rule 44, Appendix E.

prior to the date of the other party's registration," 32 and that registration by the applicant under the Act of 1870 "amounts to nothing more than a publication." 33

§ 168. The preliminary statement.-In patent interferences a formal preliminary statement is required from each of the parties. In trademark interferences the statement accompanying the application for registration performs the same functions and is treated as a preliminary statement.

The rule of the Patent Office in relation thereto formerly provided that each applicant and registrant would he held to the date of adoption alleged in the statement filed with his application. But even under that rule Duell, commissioner, held that evidence of use antedating that set up in the application of the party offering it may be considered and such weight given to it as "may be proper under the circumstances of the case." 34 Subsequently, on an application for leave to file an amended statement, Allen, commissioner, in denying the application held that an amendment could be filed after the determination of the question of priority.35

Manifestly, however, evidence offered to prove a date earlier than that set up in the statement must be regarded with some suspicion. In the language of Allen, commissioner, "it is to be presumed that this statement filed with the application for registration was made after proper inquiry, and while it is not binding upon the parties to an interference proceeding it is still entitled to considerable weight." 36

§ 169 The issues in interference, opposition and cancellation proceedings. The purpose of an interference is to determine the question of priority of adoption and use as between the parties to the interference. Evidence of prior use by a stranger to the interference will not be considered.27

32 Broderick & Bascom Rope Co. v. A. Leschen & Sons Rope Co., 100 Off. Gaz. 3011.

33-Auerbach & Sons v. Hall & Hayward Co., 111 Off. Gaz. 806. 34-Manitowoc Mfg. Co. v. Dickerman, 57 Off. Gaz. 1721.

35-Vanden Bergh & Co. v. Belmont Distilling Co., 99 Off. Gaz. 1624.

36-Auerbach & Sons v. Hall & Hayward Co., 111 O. G. 866.

37-Carey v. New Home Sewing Machine Co., 101 Off. Gaz. 449