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prescribe forms for the transfer of the right to use such trademarks, conforming as nearly as practicable to the requirements of the law respecting the transfer and transmission of copyrights.

SECTION 82.32 And be it further enacted, that any person who shall procure the registry of any trademark, or of himself as the owner thereof, or an entry respecting a trademark, in the Patent Office under this act, by making any false or fraudulent representations or declaration verbally or in writing, or by any fraudulent means, shall be liable to pay damages in consequence of any such registry or entry to the person injured thereby, to be recovered in an action on the case in any court of competent jurisdiction within the United States.

SECTION 83.33 And be it further enacted, that 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 trademark might have had if this act had not been passed.34

SECTION 84.35 And be it further enacted, that no action shall be maintained under the provisions of this act by any person claiming the exclusive right to any trademark which is used or claimed

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& Co. v. Blackwell, 19 Off. Gaz. 481; and see Ex parte Strasburger & Co., 20 Id. 155, and Jacoby & Co. v. Lopez & Co., 23 Id. 342. And in Yale Cigar Mfg. Co. v. Yale, 30 Id. 1183, it was decided that a declaration of interference is authorized by section 3 of the Act of 1881. In such cases the only duty of the office is to decide whether the opponent has or has not a better title than the applicant, not to decide any further question. Ibid. If, on

an interference between an appli-
cant and a registered owner with
respect to the same mark, the
right to registration is adjudged to
the applicant, notwithstanding the
opposition of the registered owner,
the result is, while strictly giving
the applicant merely the right to
register, practically to displace the
registered owner, though his mark
is not removed from the register.
Ibid. For the present rule as to
interferences see note 7 to sec. 3
of the Act of 1881; and see sec. 7,
Act of 1905.

32-See Act of 1881, sec. 9.
33-See Act of 1881, sec. 10.

34-See Osgood v. Rockwood, 11 Blatchf. 310; Fed. Cas. No. 10605; United States v. Roche, 1 McCreary, 385; Fed. Cas. No. 16180.

35-See Act of 1881, sec. 8.

in any unlawful business or upon any article which is injurious in itself, or upon any trademark which has been fraudulently ob tained, or which has been formed and used with the design of deceiving the public in the purchase or use of any article of merchandise.30

36-It seems that this act provided no means for removing from registration a mark which was wrongfully registered, e. g., a mark which did not contain any of the essential particulars. See Armi

stead v. Blackwell, 1 Off. Gaz. 603; McElwee v. Blackwell, 15 Id. 658; Wright v. Simpson, 15 Id. 968; Yale Cigar Mfg. Co. v. Yale, 30 Id 1183.

SECTION B.

LABEL ACT OF JUNE 18, 1874.

(18 Statutes at Large, 78.)

An act to amend the law relating to patents, trademarks
and copyrights.

SECTION 3. That in the construction of this act the words "engraving, ""cut" and "print" shall be applied only to pictorial illustrations or works connected with the fine arts, and no prints or labels designed to be used for any other articles of manufacture shall be entered under the copyright law, but may be registered in the Patent Office. And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels, in conformity with the regulations provided by law as to copyright of prints, except that there shall be paid for recording the title of any print or label not a trademark, six dollars, which shall cover the expense of furnishing a copy of the record under the seal of the Commissioner of Patents, to the party entering the same.1

1-This law can be sustained only under the constitutional delegation of authority to congress to legislate upon copyrights.

The provision quoted has reference only to such writings as are the result of intellectual labor and are founded in the creative powers of the mind.

"It does not have any reference to labels which simply designate or describe the articles to which they are attached, and which have no value separated from the articles, and no possible influence upon science or the useful arts." Justice Field in Higgins v. Keuffel, 140 U. S. 428, 35 L. Ed. 470.

Mr.

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whom it was taken out;" thus, "Copyright, 18—, by A. B." Higgins v. Keuffel, 140 U. S. 428, 35 L. Ed. 470.

It is manifest that under this decision the act affords no protection to labels, and registration under it is idle. Luby, Patent Office Practice, p. 121. But until there is a decision declaring the law unconstitutional the Patent Office is open for this class of registration. Ex parte H. J. Heinz Co., 62 Off. Gaz. 1064. It is held, however, that a label will not be admitted to registry unless it has the same degree of artistic excellence as would entitle it to copyright in the office of the Librarian of Congress. Ex parte Palmer, 58 Off. Gaz. 383. And labels containing or consisting of matter constituting trademarks will not be registered until such trademark matter has been registered as trademark. Ex parte Diamond Laboratory Co., 44 MSS. Dec. 19; Ex parte Ruckstuhl, 56 Off. Gaz. 927. A label bearing the name and address of the owner, the name of the article to which it is applied, with the price and directions for use, exhibiting no attempt at artistic or literary merit, will not be registered. Ex parte Eldredge Co., 55 Off. Gaz. 1278. The same ruling has been made as to a label purely descriptive of the articles to which it is intended to be applied. Ex parte C. G. Hainline & Co., 58 Off. Gaz. 947.

Prints and labels defined.-"Registered labels or prints and trademarks are recognized by the terms of the law and decisions of the courts as applicable only to some kind of merchandise: labels, as giving the names of the manufac

turers, place of manufacture, nature or quality of goods, directions for use, and the like." Doolittle, Assistant Commissioner, in Ex parte Parker, 13 Off. Gaz. 323.

Long prior to the decision of Higgins v. Keuffel, 140 U. S. 428, 35 L. Ed. 470 (supra), Judge Blatchford had held that this section was purely a copyrighted act, and that under the general copyright regulation of congress (sec. 4956, R. S.) no person could claim protection for a label so registered unless "before publication" he had deposited a printed copy of the title of the article in respect of which copyright was claimed, in the Patent Office. Marsh v. Warren, 14 Blatchf. 263; 14 Off. Gaz. 678; Fed. Cas. No. 9121; 16 Fed. Cas 821.

the

It has been held that the mere fact that words or designs which appear upon the label might be used as trademarks does not prevent registration under this act. Ex parte Orcutt & Son, 8 Off. Gaz. 276; and in another early case the applicant's label was admitted to registry, but certain "arbitrary words" and "fanciful figures" were first refused or stricken out of the label, and the commissioner suggested that they should be registered as trademarks. Ex parte W. Simpson & Sons, 10 Off. Gaz. 334. But as indicated in the first portion of this note, the prevailing doctrine was that "the presence in a label of matter registrable as a trademark excludes the whole from registration." Ex parte Thaddeus Davids & Co., 16 Off. Gaz. 94. It has been held by the Supreme Court of the District of Columbia, however, that the Commis sioner of Patents has no discre tion to determine whether a par

ticular label should be classed as a trademark or as only a label. That his duties as respects this act are purely ministerial, and mandamus will lie to compel him to register any label properly presented for registration. United States ex rel. Wilcox & Gibbs Sewing Machine Co. v. Marble, 1 Mackey, 284; 22 Off. Gaz. 1366; United States ex rel. Schumacher

v. Marble, 3 Mackey, 32. And it is now settled that a print will not be refused registration "even though it may contain matter capable of sequestration as a trademark, not in fact registered as a trademark." Greeley, Commissioner, in Ex parte United States Playing Card Co., 82 Off. Gaz. 1209, 1210.

In regard to this act, the Patent Office has adopted the following rule: "These sections of statutes (referring to sections 3, 4 and 5 of the Act of June 18, 1874) are construed as authorizing the registry of 'prints' and 'labels.' A label is a device or representation not borne by an article of manufacture or vendible commodity. A print is a device or representation not borne by an article of manufacture or vendible commodity, but in some fashion pertaining thereto-such, for instance, as a pictorial advertisement thereof. Α label can not be registered if it bear a device capable of registration as a trademark, until after such device is registered as a trademark. Both labels and prints, in order to be entitled to registry, must be intellectual productions in the degree required by the copyright law."

The restriction contained in this rule as to the registration of la

bels containing a device capable of sequestration as a trademark does not apply to a print containing such a device, and it will be admitted to registration, even though it may contain a device so capable of sequestration as a trademark, and that device has not been registered. Ex parte United States Playing Card Co., 82 Off. Gaz. 1209.

The Patent Office has furnished the following information to applicants for the registration of prints and labels under this act, and forms for use in making application for such registration:

"The so-called print and label section of the copyright statute, approved June 18, 1874, is construed to provide for the registration of any print or label without examination as to its novelty.

"An adverse decision by the examiner who has charge of the registration of prints and labels, upon an applicant's right to have print or label registered, will be reviewed by the commissioner in person, on petition, without fee.

"The word 'print,' as used in this act, so far as it relates to registration in the Patent Office, is defined as an artistic representation or intellectual production not borne by an article of manufacture or vendible commodity, but in some fashion pertaining thereto such, for instance, as an advertisement thereof.

"The word 'label,' as used in this act, so far as it relates to registration in the Patent Office, is defined as an artistic representation or intellectual production impressed or stamped directly upon the articles of manufacture, or upon a slip or piece of paper or other material, to be attached in any man

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