TRADE=MARKS AND NAMES
342. Trade=Marks in General. Persons are permitted to place marks on goods manufactured or sold by them, which indicate their origin or ownership. By this means, they are able to obtain the benefit of any superiority which their goods have over goods of other manufacturers or sellers. These marks placed on goods by owners or manufacturers are called trade-marks. A court has defined a trade-mark to be "A word, symbol, figure, form or device, or a combination thereof adopted or devised and used by a manufacturer or seller of goods to designate the origin or ownership of the goods, and used by him to distinguish the goods from those sold or manufactured by others."
A manufacturer or seller of an article is not permitted to appropriate as a trade-mark a name commonly used to describe the article. Flour is manufactured and sold by many persons. Anyone has the right to manufacture and sell flour by that name. No one is permitted to appropriate to himself as a trade-mark the name Flour. A person may, however, apply an arbitrary term, not describing the thing produced, for the purpose of designating his brand of flour as distinguished from other brands of flour. While a manufacturer of flour is not permitted to appropriate as a trade-mark to be used on flour the name Flour, he may be permitted to use the term Ideal. The person first adopting the name Ideal as a trade-mark in the sale of flour, acquires a property right in the name. The law will protect him in the use of this name in connection with the sale and manufacture of flour.
Any arbitrary name, sign, mark, symbol, letter or number used for the purpose of designating the origin or ownership of goods may be appropriated as a trade-mark by the person first adopting and continuing its use. A person is not permitted to adopt as a trade-mark anything which indicates the grade or ingredients, or which is descriptive of the article sold or manufactured. The reason for this rule is that otherwise a person adopting the name would have a monopoly on the production of such articles. Crack-Proof Rubber Goods, as applied to rubber goods; A1 Honey, as applied to honey, are terms descriptive of quality of goods and cannot be appropriated.
A proper name of a person is not the subject of a valid trade-mark. Persons of the same name are permitted ordinarily to use their name in the manufacture of goods of the same nature. A party is not permitted, however, to manufacture or sell his goods as the goods of another. He may not be permitted to use his own name in the sale of certain goods if another has long made and sold goods under the same name, and if purchasers are defrauded thereby, or if confusion results. This is not by reason of a person having a trade-mark in his own name, but by reason of unfair trade. This is discussed under the section on Unfair Trade.
343. Trade=Marks (Continued). A name of a place or locality cannot be appropriated as a trade-mark. Any person is permitted to use the name of a place or locality to designate the origin of the goods and it is the common property of all as much as any descriptive name. A geographical name cannot be appropriated as a trade-mark. A common example of this principle is the use of the term, Lackawanna. This is the name of a district in Pennsylvania. A coal company endeavored to appropriate the name, but was not permitted to use it as a trade-mark. Others, mining coal in the Lackawanna district have an equal right to designate their coal by the same name. Any fanciful or arbitrary name not describing the article, may, however, be adopted as a trade-mark. A person first using such an arbitrary mark in the manufacture or sale of a particular class of goods acquires a trade-mark. He may use the mark without any intention of acquiring a trade-mark therein. If another person attempts to use the mark, no matter if without intent to defraud, he may be enjoined from its use. The owner of a trade-mark has no greater right than any other person to use the trade-mark on classes of goods different from the class on which it has been acquired. A trade-mark used on flour may also be used on stoves by another person. This principle is subject to the limitations that one person is not permitted to deceive purchasers in leading them to believe that they are purchasing the goods of another. This question is discussed under the section on Unfair Trade.
A trade-mark is acquired by the person first using it in connection with the sale or manufacture of goods. It is not necessary that it be adopted with the intention of being used as a trade-mark. A trade-mark may be lost by discontinuance. A trade-mark will not be allowed on an article which it is against public policy to manufacture. An example of this principle is adulterated food or medicine. A trade-mark which does not indicate that the goods manufactured or sold are the result of the personal skill of a particular person, may be sold with the business in connection with which the trade-mark is used.
344. Trade Names. A person is permitted to use a name other than his own for the purpose of trade. For example, John Smith may use the name The John Smith Co., The Eureka Co., The L. X. Co., or any arbitrary or fanciful name he may choose, so long as it does not conflict with the rights of others. Such names are called trade names. Their adoption and use are governed by the same legal principles as trade-marks. Trade names, however, are applied to a business, while trade-marks are brands applied to articles of manufacture or sale. As in the use of trade-marks, a person is not protected in the use of trade names which describe the article manufactured or sold. The use of the name, Cleveland Fertilizer Co. by John Smith, does not prevent others from using the same name. The law does not permit one party to monopolize the use of the term fertilizer; neither does it permit him to monopolize the geographical term, Cleveland. The party first adopting a trade name other than a descriptive geographical, individual, or proper name, acquires the right to use it as a trade name.
While a person cannot acquire such a right in a geographical or descriptive name, he may, by long use of it, acquire the right to prevent others from using it in such a manner as to deceive purchasers. A person is not permitted to sell his goods as the goods of another. This right to prevent others from using a name which deceives the public is not by reason of any trade name acquired, but by reason of a person unfairly making others believe they were purchasing the goods of one person, when, in reality, they are purchasing the goods of others.
345. Unfair Trade. A trade-mark, or a trade name cannot be descriptive of the articles sold or manufactured. Neither can a proper name or a geographical name be appropriated to a trade-mark or name. To enable a person to acquire a trade-mark or trade name, a mark or name must be adopted which in no way describes the article manufactured or sold. It must be one that is not taken from the place where the goods are manufactured or sold, or from the name of the inventor or manufacturer. It must be an arbitrary or fanciful name or mark. A manufacturer of flour may use as a trade-mark the name Beauty Flour, but not Minnesota Flour, or Pure Flour. A party may use as a trade-mark for men's collars the picture of a lion, but not the word linen. When a trade-mark or a trade name has once been used as such, the owner, unless he loses or transfers the right, acquires the sole right to its use, and may compel others to cease using it, regardless of actual damages or confusion. At the present time, the courts recognize a principle known as unfair trade. Even though a person has adopted a geographical name, or a name descriptive of the articles manufactured or sold as a trade name, he is permitted to enjoin others from the use of this name, if the use of the same enables the latter to sell his goods as the goods of the former. A person cannot use the name Cleveland Fertilizer Co., so as to acquire a trade name therein. But if the name Cleveland Fertilizer Co., is used by a person so long and so extensively as to acquire for its owner a broad reputation as a manufacturer of an excellent quality of fertilizer, another who adopts the name may be enjoined from its use, if purchasers are deceived thereby. This is on the ground of unfair trade.
346. Unfair Trade (Continued). The same principle applies in the use of individual names. A person may not acquire a trade-mark in his own or in any individual or proper name, since others have the right to the use of their own name. But a person may acquire such a reputation as a manufacturer of a particular article, that if others of the same name are permitted to use their name in the same connection without distinguishing features, the public will be deceived in making purchases. For the purpose of protecting the public from being deceived, the courts sometimes enjoin persons from the use of their own name in connection with the manufacture and sale of certain articles. For example, Thomas Edison has acquired fame as an inventor and manufacturer of Edison Batteries. A person by the name of Edison would not be permitted to manufacture and sell electric batteries under the name of Edison Electric Batteries, for the reason that the public would be deceived thereby. This would be what is known as unfair trade. The same principle applies to geographical names. A geographical, individual, proper, or descriptive name cannot be used as a trade name, or a trade-mark, but they can be so used as to prevent others from using them, by reason of violating the law of unfair trade.
347. Registration of Trade=Marks. In 1906 the United States Congress passed the present statute relating to the registration of trade-marks. The act provides that the owner of a trade-mark used in commerce with foreign nations, the several states, or the Indian tribes may register said trade-marks by filing the same with the Commissioner of Patents. A trade-mark is acquired in the same manner as at common law. The United States act does not change the method of acquiring trade-marks, nor does it designate what constitutes trade-marks. It simply permits a person to register a trade-mark already acquired. In case of dispute, the owner has the advantage of a public record of his claim, and until he has lost his right in the trade-mark to some one who proves to have a better right, the registration is prima facie evidence of ownership.
Before registering a trade-mark, the owner is required to file with the Commissioner of Patents at Washington, an application showing the nature of the trade-mark, on what goods used, and when acquired. A fee of $10.00 is required. The owner must file a verified statement that he is the owner of the trade-mark sought to be filed. Trade-marks which consist of the name of an individual, firm, or corporation, or words descriptive of the articles manufactured or sold, a geographical term, or a photograph of any living person, except with such person's consent, shall not be registered as trade-marks. When such application is filed, if the Commissioner of Patents finds that it is proper to register the same as a trade-mark, he publishes the mark in the official gazette. Anyone may oppose the registration by filing objections within twenty days after said publication. If no objection is filed, the trade-mark is registered, and a certificate of registration is furnished the applicant.
If objection to the registration of a trade-mark is made, the applicant is notified by the Commissioner of Patents. If the trade-mark interferes with another, or is descriptive of the article to which it is to be applied, the commissioner will refuse to register it. A person whose application for registration of a trade-mark has been refused by the Commissioner of Patents may appeal from the decision of the Commissioner of Patents by filing applications of appeal with the Court of Appeals of the District of Columbia.
Registered trade-marks may be assigned in connection with the good will of the business in which the trade-mark is used. Notice of such assignment must be filed with the Commissioner of Patents within three months from the time the assignment is made, to render it valid as against other innocent purchasers. Certificates of registration shall be effective for twenty years, and may be renewed for like periods upon payment of the registration fee.
After a trade-mark has been registered, anyone who considers himself injured by said trade-mark may file complaint with the Commissioner of Patents, and if the latter determines that there is an infringement, or that someone has a prior right to the trade-mark, the registration may be cancelled. Notice of registration of a trade-mark is given the public by publishing the words, Registered U. S. Patent Office, with the trade-mark.
Most of the states have statutes making it a crime falsely to use the trade-mark or brand of another company. The use of labels by trade unions is protected in this manner in several states.