under this act, and affix the same to merchandise of substantially the same descriptive properties as those described in the registration,3+ shall be liable to an action on the case for damages for the wrongful use of said trademark at the suit of the owner thereof; and the party aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of such trademark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court having jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases without regard to the amount in controversy.35

SECTION 8. That no action or suit shall be maintained under the provisions of this act in any case when the trademark is used in any unlawful business, or upon any article injurious in itself, or which mark has been used with the design of deceiv ing the public in the purchase of merchandise, or under any certificate of registry fraudulently obtained.36

SECTION 9. That any person who shall procure the registry of a trademark, or of himself as the owner of a trademark, or an entry respecting a trademark, in the office of the Commissioner

34-As to what is "merchandise of substantially the same descriptive properties," see Air-Brush Mfg. Co. v. Thayer, 84 Fed. Rep. 640; Mass, Ratcliff & Gretton (Ltd.), v. Feigenspan, 96 Fed. Rep. 206.

Blanks and envelopes used by a telegraph company are not "merchandise" within the meaning of this section. Postal Tel. Cable Co. v. Netter, 102 Fed. Rep. 691.

35-Registration of a mark common to the trade does not confer an exclusive right to its use. Stachelberg v. Ponce, 128 U. S. 686, 32 L. Ed. 569. Registration of a mark is not conclusive. Its use may be restrained at the suit of one who has a prior right to its use. Glen

Cove Mfg. Co. v. Ludeling, 22 Fed.
Rep. 824, 826; Schumacher V.
Schwenke (2), 36 Off. Gaz. 457;
Hennessy V. Braunschweiger, 89
Fed. Rep. 664.

The registrant will not be protected in the use of his trademark if it is found to contain a material false representation. Seabury v. Grosvenor, 14 Blatchf. 262.

Jurisdictional amount. The amount in controversy is the value of the trademark. Symonds v. Greene, 28 Fed. Rep. 834; Hennessy v. Herrmann, 89 Fed. Rep 669.

36-This provision is merely in declaration of the common law. See Act of 1870, § 84, ante.

of Patents, by a false or fraudulent representation or declaration, orally or in writing, or by any fraudulent means, shall be liable to pay any damage sustained in consequence thereof to the injured party, to be recovered in an action on the case.37

SECTION 10. 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 the provisions of this act had not been passed.38

SECTION 11. That nothing in this act shall be construed as unfavorably affecting a claim to a trademark after the term of registration shall have expired; nor to give cognizance to any court of the United States in an action or suit between citizens of the same state, unless the trademark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe.39

SECTION 12. That the Commissioner of Patents is authorized to make rules and regulations and prescribe forms for the transfer of the right to use trademarks and for recording such transfers in his office.40

SECTION 13. That citizens and residents of this country wishing the protection of trademarks in any foreign country, the laws of which require registration here as a condition precedent to getting such protection there, may register their trademarks for that purpose as is above allowed to foreigners, and have certificate thereof from the Patent Office.41

37-See Act of 1870 $ 82, ante. 38-See Act of 1870, § 83, ante. "The present act does not abridge or qualify the common law right, but by the express term of sec. 10 preserves it intact." Wallace, J., in LaCroix v. May, 15 Fed. Rep. 236.

39-See Act of 1870. $78, ante. Where both parties are citizens of the same state the averments of the complaint must show that both the parties are using the mark in commerce with foreign nations or with the Indian tribes. Ryder v. Holt, 128 U. S. 525, 32 L. Ed. 529; Luyties v. Hollender (1), 21 Fed. Rep. 281; Schumacher v. Schwenke, 26 Fed. Rep. 818; Luyties V. Hollender (2), 30 Fed. Rep. 632; Gravely v. Gravely, 42 Fed. Rep. 265; Prince's Mettallic Paint Co. v. Prince Mfg. Co., 53 Fed. Rep. 493. Such an averment is necessary only where the proceeding is between citizens of the

same state. It is not necessary where the complainant is an alien. Hennessy V. Braunschweiger, 89 Fed. Rep. 664.

40-See Act of 1870, § 81. This section provides for transfers only being registered. An instrument affecting the use of a trademark, but not amounting to a transfer or assignment thereof, can not legally be registered in the Patent Office. Waukesha Springs Co. v. Hygeia Water Co., 63 Fed. Rep. 438-442.

41-"One reading the section would infer that foreigners have been allowed under the preceding sections some privilege; but a careful reading of the act fails to disclose that a foreigner is entitled to any other or further rights than those given to citizens of the United States. The phrase 'as is above allowed to foreigners' renders the section meaningless." Duell, Commissioners, in Ex parte Buffalo Pitts Co., 89 Off. Gaz. 2069.

CONTENTS.

Trademark laws of the United States:

Act approved February 20, 1905 (as amended), 549.

Act of May 4, 1906, 588.

Act of March 19, 1920, 589.

Extract from an act to incorporate the American National Red Cross, 588.

Rules governing the registration of trademarks under the trademark acts, 592:

Repayment of money, 608a.

Notice of registration, 608b.

Amendments of the rules, 608b.

Questions not specifically provided for, 608b.

Recording trademarks with collectors of customs, 609.

FORMS.

Petition and statement for an individual (A), 611.

for a firm (B), 611.

for a corporation (C), 612.

under 10-year proviso (D and E), 612, 613.

act of 1920 (F), 613.

foreigner manufacturing in United States (G), 613.

foreigner located abroad (II), 613.

power of attorney (J), 613.

Drawing, 619.

Separate power of attorney (K), 614.

Declaration for an individual (L), 614.

for a firm (M), 614.

for a corporation or association (N), 615.
for a foreigner located abroad (P), 615.

Notice of opposition (R), 616.

Application for cancelation (S), 617.

Petition for renewal (T), 617.

International bureau at Habana (W), 617.

Assignment of application (Y), 618.

Assignment after registration (Z), 618.

TRADEMARK ACT OF FEBRUARY 20, 1905.

(33 Stat. L., 728.)

SECTION 1. (As amended May 4, 1906, ch. 2081, 34 Stat. L. 168; February 18, 1909, ch. 144, 35 Stat. L. 627.) That the owner of a trademark used in commerce with foreign nations, or among the several states, or with Indian tribes,' provided such owner shall be domiciled within the territory of the United States, or resides in or is located in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, may obtain registration for such trademark by complying with the following requirements: First, by filing in the Patent Office an application therefor, in writing, addressed to the Commissioner of Patents, signed by the applicant, specifying his name, domicile, location, and citizenship; the class of merchandise and the particular description of goods comprised in such class to which the trademark is appropriated; a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trademark has been used; a description of the trademark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the commissioner. With this statement shall be filed a drawing of the trademark, signed by the applicant, or his attorney, and such number of specimens of the trademark as actually used as may be required by the Commissioner of Patents. Second, by paying into the Treasury of the United States the sum of ten dollars, and otherwise complying with the requirements of this act and such regulations as may be prescribed by the Commissioner of Patents.

The enactment of a law whose provisions should extend to the owners of trademarks used in interstate commerce was inspired by the omission of such a provision in the Act of 1881. Concerning that act, Mr. Chief Justice Fuller has said, that "Ob

1-There must be interstate use by the applicant himself, H. Kuhn & Sons v. Letts, 267 Fed. Rep. 748, C. A. D. C.

Use on advertising matter does not entitle user to registration. Ex parte Associated Mortgage Investors, Inc., C. D. 1922, 1.

Shipments to persons who have not ordered the goods and who do not pay for them, is not a use sufficient to support a registration. Phillips v. Hudnut, 263 Fed. Rep. 643; P. Lorillard Co. v. BeechNut Packing Co., C. D. 1922, 9.

viously the act was passed in view of the decision that the prior act was unconstitutional, and it is, therefore, strictly limited to lawful commerce with foreign nations and with Indian tribes. It is only the trademark used in such commerce that is admitted to registration, and it can only be infringed when used in that commerce, without right, by another than its owner.

Sec. 1 of the Act of 1881 was substantially identical with the above section in other respects, except that the above section requires specimens of the trademark as actually used to be filed, and reduces the government fee from twenty-five dollars to ten dollars.

Sec. 1 should be read in connection with the following sections of the Act of May 4, 1906, 34 Stat. L. 169:

Sec. 2. (Classes of merchandise to be established, etc.) That the Commissioner of Patents shall establish classes of merchandise for the purpose of trademark registration, and shall determine the particular descriptions of goods comprised in each class. On a single application for registration of a trademark the trademark may be registered at the option of the applicant for any or all goods upon which the mark has actually been used comprised in a single class of merchandise, provided the particular descriptions of goods be stated.

Sec. 3. (Rights of trademarks used on products of American factories.) That any owner of a trademark who shall have a manufacturing establishment within the territory of the United States shall be accorded, so far as the registration and protection of trademarks used on the products of such establishment are concerned, the same rights and privileges that are accorded to owners of trademarks domiciled within the territory of the United States by the act entitled: "An act to authorize the registration of trademarks used in commerce with foreign nations or among the several states or with Indian tribes, and to protect the same." Approved, February twentieth, nineteen hundred and five.

la-Warner v. Searle and Hereth Co., 191 U. S. 195, 204, 48 L. Ed. 147.