to a trademark is created by registration. 24 Section 1 of the act of 1905 provides that owners of trademarks used in commerce may obtain registration of such trademarks by complying with the requirements stipulated in the act. The applicant must show that he, and no one else, has a right to use the mark; that he is actually using it in commerce with foreign nations or among the several states, or with Indian tribes; and that it is not so similar to the registered or known mark of another as to be calculated to deceive.25 So that registration under the act of congress is in no sense a means of acquiring the right to a trademark; 26 and indeed the actual

application of the trademark in commerce is so essential a prerequisite to registration under the act, that as between two applicants for registration of the same mark, one of whom had in fact used his mark in trade, while the other had the assignment of the mark, acquired by transfer from its inventor, but had never actually applied it, the commissioner of patents held that the actual prior use determined the right to the mark.27 But registration under the laws of the United States and under the laws of several of the states, while creating no new rights, confers remedies and special protection to the owner of a trademark which we will examine in another chapter.

It follows from what has been said in this section that the fraudulent registration of a trademark by one not its true owner will avail him nothing. In dealing with such a case Judge Ray has said: "The acts of the Consolidated Hoof Pad Company are but the unlawful appropriation of the tradename of the Revere Rubber Company, and an attempt to obtain the apparent sanction of the general government to the unlawful appropriation by clandestinely procuring such tradename belonging to Revere Rubber Company to be registered as the trademark of Consolidated Hoof Pad Company. When one manufacturer or dealer has used certain letters as a tradename until his goods have come to be known and called for generally by that name, a competitor in the same business can not gain any right, superior or otherwise, by procuring such letters (or such name, if it be a name). to be registered under the trademark laws as his, or its, trademark. Such larceny as this is neither encouraged, sanctioned, nor legalized." 28

The remedy in equity to cancel a fraudulent state registration is clear.28a

Registration can not give validity to a trademark otherwise invalid.28b

§32. Acquisition by assignment.-The assignment of trademarks is a subject of some difficulty and is discussed elsewhere in this book. It is sufficient in this connection to say that trademark rights are generally assignable, that quality being indispensable to the striking characteristic of perpetual exist

27-Schrauder v. Beresford & Co., Browne, Trademarks, 661.

28-Revere Rubber Co. v. Consolidated Hoof Pad Co., 139 Fed. Rep. 151, 154.

28a-Coca Cola Co. v. Stevenson, 276 Fed. Rep. 1010.

28b-Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S. 118; 40 L. Ed. 972.

ence possessed by trademarks, and that a proper assignment conveys to the assignee all the property rights in and to the trademark possessed by his assignor.29 The act of 1905, sec. 10 provides that a registered trademark and trademarks for the registration of which application has been made, shall be assignable in connection with the goodwill of the business in which it is employed; and any assignment of such mark shall be void as against a subsequent purchaser for value without notice unless recorded in the Patent Office within three months from its date. We need note at this time only the general restriction on the assignability of trademarks-that they can not be assigned save in connection with the goodwill of the business with which they are identified.30

It is true of trademarks as of other personal property that the great mark of ownership is possession, and contracts that the title to personalty shall be in one party and the possession in another can not be set up to the prejudice of a bona fide purchaser without notice. Accordingly, a contract that the right to use the mark shall revert to the assignor should the assignee sell his business, can not avail as against a bona fide purchaser from the assignee, buying without notice.31

§33. Acquisition by an alien.-In 1844 Chancellor Walworth announced that in the interposition of equity for the protection of trademark rights "there is no difference between citizens and aliens." 32 This is also the rule in England,33

29-Walton v. Crowley, 3 Blatch. 440; Cox, 166, Fed. Case No. 17,133.

30-Kidd v. Johnson, 100 U. S. 617-620; 25 L. Ed. 769; Grossman v. Griggs, 186 Mass. 275, 71 N. E. Rep. 560, 562; Spiegel v. Zuckerman, 175 Fed. Rep. 978; Independent Baking Powder Co. v. Boorman, 175 Fed. 448.

31-Oakes V. Tonsmierre, 49 Ted. Rep. 447-452.

32-Taylor v. Carpenter (3), 11 Paige Ch., 292-296; 3 Story, 458; 2 Wood. & M. I; Cox, 45. This is the general rule in the United States. La Croix v. May, 15 Fed. Rep. 236; Lemoine v. Ganton, 2

E. D. Smith, 343; Cox, 142; Coats v. Holbrook, 2 Sandf. Ch. 586; Cox, 20; Coffeen v. Brunton, 4 McLean, 516; Cox, 82; and under a criminal act against counterfeiting trademarks, a conviction was sustained by the Missouri Supreme Court where the defendant counterfeited the mark of an English manufacturer. State v. Gibbs, 56 Mo. 133.

33-Collins v. Cowen, 3 K. & J. 428; Collins Co. v. Brown, 3 K. & J. 423; Collins Co. v. Walker, 7 W. R. 222; Collins Co. v. Reeves, 28 L. J. Ch. 56; Howe v. McKernan, 30 Beav. 547.

34

36

Scotland, Canada,35 and India. But it has been held that a foreigner has no common-law right to a trademark in the United States as against a citizen who has adopted a similar mark, in good faith, before the alien has sold any goods in this country. The proviso "in good faith" is but poor protection for the foreign trademark owner.

37

Under our treaty relations with Germany, a German subject has been granted protection in the use of the word "Kaiser" as a trademark, although the term was open to common use in Germany and Austria.38

An alien religious order having established trademark rights in the United States is not deprived of those rights by the confiscation of its property abroad, when it removes to another foreign country and continues the manufacture of its trademarked product.39

§ 34. Priority of appropriation.-In order to acquire a trademark, its claimant must be its first appropriator, as we have seen; for, as said by Finletter, J., "in no other way can a mark or device indicate 'true origin or ownership.' " 40 Indeed, Bouvier has defined the right of trademark in these terms: "The right of trademark is said to be best termed an exclusive right arising from first use;" 41 and it has been said by the United States Supreme Court that "The exclusive right to the use of a mark or device claimed as a trademark is founded on priority of appropriation; that is to say, the claimant of a trademark must have been the first to use or employ the same on like articles of production." 42 There

34-Singer Mfg. Co. v. Kimball & Morton, Ct. Sess. Cas. (3d ser.), XI, 267.

35-Davis v. Kennedy, 13 Grant, Up. Can. Ch. 523; Pabst Brewing Co. v. Ekers, Rap. Jud. Que. 21 C. S. 545.

36-Orr-Ewing V. Chooneeloll Mullick, Cor. 150; Orr-Ewing v. Grant, Smith & Co., 2 Hyde 185.

37-Richter v. Anchor Remedy Co., 52 Fed. Rep. 455; Richter v. Reynolds, 59 Fed. Rep. 577, 8 C. C. A. 220; Eiseman v. Schiffer, 157 Fed. Rep. 473, 475; Walter Baker & Co. v. Delapenha, 160 Fed. Rep. 746, 748 (in which the above text is quoted and approved); Gorham Mfg. Co. v. Weintraub, 196 Fed.

Rep. 957, 961; United Drug Co. v.
Reetanus Co.. 248 U. S. 90, 100; 63
L. Ed. 147: LeBlume Import. Co. v.
Coty, 293 Fed. Rep. 344, 350, C. C.
A. 2.

38-J. & P. Baltz Brew. Co. v. Kaiserbrauerei, Beck & Co., 20 C. C. A. 402, 74 Fed. Rep. 222, 224.

39-Baglin v. Cusenier Co., 156 Fed. Rep. 1016; affirmed, 221 U. S. 580; 55 L. Ed. 863.

40--Sheppard v. Stuart, 13 Phil. 117; Price & Steuart, 193-200. 41-Bouvier, Dict., title "Trade

marks."

42-Columbia Mill Co. v. Alcorn, 150 U. S. 460; 37 L. Ed. 1144. See also Manitowoc Mfg. Co. v. Dickerman, 57 Off. Gaz. 1721.

must necessarily be such a use as qualifies the mark as an indication of the origin and ownership of the goods to which it is applied. If the same mark had been in prior use by another at the same place or another locality near enough to start a similar right, the second user could have no trademark right to it.43 "In order that the claimant of the trademark may primarily acquire the right of property in it, it must have been originally adopted and used by him—that is, the assumed name or designation must not be one that was then in actual use by others; and such adoption and use confer upon him the right of property in the trademark." 44 A trademark having no necessary relation to invention or discovery,45 it is the party who first actually uses a mark, and not the one who first thought of it or designed it, that is entitled to protection in its use as a trademark.46 A mere declaration of intention to use a certain mark in the future does not create a right to its use as a trademark, for such right can only originate with the actual use of the mark in commerce.47 And it has been held in England, by Lord Justice Cairns, that there can be no right of trademark until the goods bearing the mark are actually upon the market, and that it can not be protected before that time, even though the goods to which it is to be applied are in the course of manufacture, and the claimants of the mark have made expenditures in advertising it.48 The right to the mark must relate back to its first use. 49 A mark once abandoned is open to appropriation by another who adopts it subsequently in good faith.50

43-Tetlow v. Tappan, 85 Fed. Rep. 774; Hyman v. Solis Cigar Co., 4 Colo. App. 475.

44-Derringer v. Plate, 29 Cal. 292; Cox, 324.

45-Trademark Cases, 100 U. S. 82; 25 L. Ed. 550.

46-George v. Smith, 52 Fed. Rep. 830; Trisdorfer & Co. v. Estate of Bassett, 60 MSS. D. Sept. 1896.

"The right to a trademark does not depend upon originality, even as against the originator of the characteristic use." Holmes, C. J., in Burt v. Tucker, 178 Mass. 493;

59 N. E. Rep. 1111; citing Monson v. Boehm, L. R. 26 Ch. D. 398, 407, 408; Levy v. Waitt (2), 10 C. C. A. 227; 61 Fed. Rep. 1008; 25 L. R. A. 190; Julian v. Hoosier Drill Co., 78 Ind. 408, 412.

47-Schneider v. Williams, 44 N. J. Eq. 391; 14 Atl. Rep. 812; 44 Off. Gaz. 1400; Welsbach Co. V. Adam, 107 Fed. Rep. 463.

48-Maxwell v. Hogg, L. R. 2 Ch. 307; 36 L. J. Ch. 433; 16 L. T. N. S. 130; Seb. 264.

49-O'Rourke V. Central City Soap Co., 26 Fed. Rep. 576-578.

50-Brower v. Boulton, 53 Fed. Rep. 389; Cohen v. Nagle, 190

Mass. 4.