Infringement by Foreigners Through Importation
Manufacturers are protected against infringement by foreigners sending goods bearing infringing trade-marks and labels to the United States by Section 27 of the Act of 1905, which is as follows:
"That no article of imported merchandise which shall copy or simulate the name of any domestic manufacture, or manufacturer or trader, or of any manufacturer or trader located in any foreign country which, by treaty, convention, or law affords similar privileges to citizens of the United States, or which shall copy or simulate a trade-mark registered in accordance with the provisions of this act, or shall bear a name or mark calculated to induce the public to believe that the article is manufactured in the United States, or that it is manufactured in any foreign country or locality other than the country or locality in which it is in fact manufactured, shall be admitted to entry at any custom-house of the United States; and, in order to aid the officers of the customs in enforcing this prohibition, any domestic manufacturer or trader, and any foreign manufacturer or trader, who is entitled under the provisions of a treaty, convention, declaration, or agreement, between the United States and any foreign country to the advantages afforded by law to citizens of the United States in respect to trade-marks and commercial names, may require his name and residence, and the name of the locality in which his goods are manufactured, and a copy of the certificate of registration of his trade-mark, issued in accordance with the provisions of this act, to be recorded in books which shall be kept for this purpose in the Department of the Treasury, under such regulations as the Secretary of the Treasury shall prescribe, and may furnish to the Department facsimiles of his name, the name of the locality in which his goods are manufactured, or of his registered trade-mark; and thereupon the Secretary of the Treasury shall cause one or more copies of the same to be transmitted to each collector or other proper officer of customs."
Within This Circle
Eighty-five millions of people live within this circle. It is the great battle-ground on which advertising campaigns are won or lost.
In this area are 42 cities of 100,000 or more inhabitants, and 167 other cities with populations between 25,000 and 100,000.
The J. Walter Thompson Company knows this territory from actual contact with the buying public that lives in it.
Our branch offices in the great mercantile centers, as shown on the map, have been established for the purpose of studying at first hand the conditions of distribution and merchandising that must necessarily figure with great weight in any national advertising campaign. We have better facilities for acquiring practical selling information than any other agency in America.
Most of the national advertisers in the United States and Canada are within thirty minutes of one of our eight offices. Ninety per cent of national advertisers are within two hundred miles of a J. W. T. office.
J. WALTER THOMPSON COMPANY
New York: 44 East 23rd Street
Boston: 201 Devonshire Street
Cincinnati: First National Bank Bldg.
St. Louis: Odd Fellows Bldg.
Chicago: The Rookery
Cleveland: Swetland Bldg.
Detroit: Trussed Concrete Bldg.
Toronto: Lumsden Bldg.
London: 33 Bedford St., Strand
CHAPTER V
Assignment
It is a fixed principle of the law that a trade-mark cannot be assigned, or transferred, without a transfer of the business with which it is associated.
Trade-marks indicate origin. They are intimately associated with the merchandise for which they are registered. This being a fundamental principle of trade-mark law, it can be understood that a trade-mark cannot pass from hand to hand, and transferred as a separate thing, without losing its real function as a trade-mark.
The Act of 1905 (Section 10) provides that any registered trade-mark may be assigned "in connection with the good-will of the business in which the mark is used."
In the case of MacMahan Pharmacal Co. v Denver Chemical Mfg. Co. (113 Fed. R. 468), the court said:
"A trade-mark cannot be assigned, or its use licensed, except as incidental to a transfer of the business or property in connection with which it has been used. An assignment or license without such a transfer is totally inconsistent with the theory upon which the value of a trade-mark depends and its appropriation by an individual is permitted. The essential value of a trade-mark is that it identifies to the trade the merchandise upon which it appears as of a certain origin, or as the property of a certain person.... Disassociated from merchandise to which it properly appertains, it lacks the essential characteristics which alone gives it value, and becomes a false and deceitful designation."
There is a silk fabric bearing a "Radium" trade-mark, and known in the trade, and among consumers as "Radium Silk." The manufacturers of this fabric, The Gilbert Manufacturing Company, assigned this trade-mark in 1905 to another concern (Eiseman & Company). With the trade-mark they turned over to Eiseman & Company all the manufactured and labeled goods then in their possession. Thereupon the Gilbert Company ceased to use the trade-mark, but did not stop manufacturing the goods, which they put upon the market under the name "Electra". It seems to have been understood by Eiseman & Company, according to the evidence, that the Gilbert Company was to continue making the goods, provided they gave their product some other name than "Radium". As soon as Eiseman & Company obtained the assignment of the trade-mark they, too, began to manufacture the fabric, and sell it under the "Radium" trade-mark.
A trade-mark, or an advertising character, or a catch phrase, may be so thoroughly advertised that it becomes better known than the commodity to which it applies. A little New York girl, age six, who had hardly passed a day of her young life without seeing a ferocious Durham bull glaring from billboards and the fences of vacant lots, gravely said to her mother one day: "Mamma, is all tobacco made from bulls?"
Now the matter comes into court through the suit of Eiseman & Company to prevent a third manufacturer from using the "Radium" trade-mark. They contended that the assignment of the mark to them by its original owner, The Gilbert Mfg. Co., gave them the exclusive right to its use.
The court held that, in the first place, the assignment of the trade-mark to Eiseman & Company was invalid, because it was not accompanied by a transfer of the good-will; in the second place, the fact that the Gilbert Company discontinued the use of the trade-mark, constituted an abandonment. Injunction was denied.
In this case, the court said: "When a trader has sold some particular article under a selected name to such an extent as to secure registration, he has established a special business in which that trade-mark is used, and if the trade-mark becomes so valuable as to induce him to sell it, he must, as a condition of transfer under the statute, assign that special business with the trade-mark of which it was the parent. Eiseman & Company, therefore, acquired no rights under the alleged assignment, which did not carry the special business."
While this trade-mark is simple, it lacks attractiveness and euphony. It is without distinction, and is easily overlooked and forgotten.
There are exceptions, however, to this rule. The nature of these exceptions may be best shown by citing a case—that of Witthaus v Braun (44 Maryland—1875). In this case a tobacco dealer, who did not manufacture goods himself, had special brands made for him by a manufacturer. The tobacco dealer owned the brands, and merely hired the manufacturer to make his goods. The dealer assigned to the manufacturer "all his smoking tobacco brands", without transferring any other part of his business. It was held that in this case the assignment was valid, because the origin of the goods had not been changed by the transaction. The same manufacturer continued to make the tobacco, the only difference being that he now owned the business, instead of making the goods on contract.
The right to use a trade-mark identified with a business location may pass, under certain circumstances, to a purchaser of the building.
The purchaser of a hotel building, for example, buys with it the right to use its name, unless a specific stipulation to the contrary is made.
A theatre building known as Booth's Theatre was owned and managed by one Booth. After several years of occupancy, he leased the building to another person, who proceeded to give theatrical performances there. In his advertisements he referred to the place as Booth's Theatre, giving his own name as lessee. Thereupon, Booth attempted to enjoin this use of the name. The court held that the name passed with the lease of the building.
In cases where the business is of such a personal nature that the trade-mark or trade-name is identified in the public mind with the work of some particular individual, it is obvious that deception would be practised if the same identifying mark were used after that individual had ceased his connection with the enterprise. In such cases, there can be no valid transfer of the trade-mark even though the entire business, including good-will, is sold. Such a trade-mark is personal. Its use on goods indicates the special knack or skill of some one person.
The courts will protect the purchaser of a business in the use of its trade-mark or trade-name against infringement by the former owner, even though the trade-name is that of the former owner.
This principle is illustrated in the case of Jergens Co. v Woodbury, given in the New York Law Journal (Nov. 1907). The Jergens Company was the sales agent of John H. Woodbury, the celebrated dermatologist, in the sale of "Woodbury's Facial Soap." In 1901 Woodbury assigned the business to the complainant. Under the complainant's management a large and profitable sale for the soap was established.
The famous Woodbury trade-mark.
In 1906, Woodbury started to manufacture soap again, calling his product "Woodbury's New Skin Soap." This product, so far as the package or wrappers were concerned, had no resemblance to the complainant's soap, the only point of similarity being in the name.
In a suit brought in the New York Supreme Court it was held by the court that there was ground for belief that the public would be misled by defendant's use of the name Woodbury, and he was accordingly enjoined.
This case went up to the Court of Appeals, and that court upheld the decision of the lower court, in so far as the defendant was restrained from using the name Woodbury in connection with the sale of soap in such a way that the public would be led to believe that his product was "Woodbury's Facial Soap" or a new brand thereof.
For the assignment of a trade-mark no particular form of assignment is required except it must be in writing.
The law provides that assignments may be recorded in the Patent Office. If any assignment is not recorded within three months after its date, it will be held void as against a subsequent purchaser for valuable consideration.
CHAPTER VI
Trade-Marks in Canada
Trade-marks are registered in Canada in the Department of Agriculture.
The Canadian law recognizes two kinds of trade-marks, viz.: General Trade-marks and Specific Trade-marks. These two kinds of marks require separate registrations.
A "general trade-mark" means a trade-mark used in connection with the sale of various articles in which a proprietor deals in his trade, business, occupation or calling generally.
A "specific trade-mark" means a trade-mark used in connection with the sale of a class of merchandise of a particular description.
The Corticelli kitten is both a trade-mark and an advertising character.
In this respect the Canadian and American trade-mark laws differ materially. The American law does not recognize a "general" trade-mark—that is, a trade-mark applicable to any merchandise a manufacturer may produce, irrespective of its class. An American trade-mark is registered for use in connection with a specific product, or for use in connection with a class of merchandise, all the units of which have the same general descriptive qualities. The "specific trade-mark" of Canada corresponds closely to the American trade-mark.
The Canadian definition of a trade-mark is as follows:
"All marks, names, labels, brands, packages or other business devices, which are adopted for use by any person in his trade, business, occupation or calling, for the purpose of distinguishing any manufacture, product or article of any description manufactured, produced, compounded, packed or offered for sale by him, applied in any manner whatever either to such manufacture, product or article, or to any package, parcel, case, box or other vessel, or receptacle of any description whatsoever containing the same, shall, for the purposes of this Act, be considered and known as trade-marks."
The Trade-mark Act of Canada is more broad and liberal than the American Act, as is shown by this definition of trade-marks. Not only are marks, names, labels and brands considered trade-marks, but "packages" and "other business devices" are also included.
An applicant who seeks to register a trade-mark must state in his application whether the trade-mark is intended to be general or specific. If specific, a description of the merchandise on which it is to be used must be made a part of the application.
A general trade-mark, once registered, shall "endure without limitation."
The registration of a specific trade-mark expires in twenty-five years, but it may be renewed at the end of that period, and so on from time to time.
The registration fee for a general trade-mark is $30.00; for a specific trade-mark, $25.00.
The Minister of Agriculture may refuse to register a trade-mark for any one of the following reasons:
1st. If he is not satisfied that the applicant is undoubtedly entitled to the exclusive use of such trade-mark.
2nd. If the trade-mark proposed for registration is identical with or resembles a trade-mark already registered.
3rd. If it appears that a trade-mark is calculated to deceive or mislead the public.
4th. If the trade-mark contains any immorality or scandalous figure.
5th. If the so-called trade-mark does not contain the essentials necessary to constitute a trade-mark, properly speaking.
The "essentials necessary to constitute a trade-mark" are not defined by the law, an omission which means that the English common law definition of a valid trade-mark, as shown by the decisions of the courts, must be the basis on which eligibility to registration is based. No mark or symbol which has a designating or descriptive quality may be registered.
When a descriptive word has been registered, through error of the registrar, it does not give the owner of the mark exclusive right to its use. As in the United States, registration is only prima facie evidence of validity.
A trade-mark used on sheet tin. It is affixed by stenciling.
The right to a trade-mark belongs to the first user of the mark. If it is registered by any other person than its first user, the registration may be set aside as invalid upon the production of proof of its prior use by any other person than the registrant.
The law states that "no person shall institute any proceeding to prevent the infringement of any trade-mark, unless such trade-mark is registered in pursuance of this act."
A well-advertised trade-mark.
This provision of the law would seem to exclude actions based on the common law, but in practice the Canadian courts take cognizance of the doctrine of unfair trade. The prime requisite of registration before infringement proceedings can be instituted merely makes the mode of procedure different from that in the United States. The complainant must get his trade-mark registered before he begins his suit against the infringement. If the mark alleged to infringe has already been registered, the plaintiff moves to set the registration aside as invalid, and have his own mark registered instead of it.
A circular containing the full provisions of the Canadian law, with directions and forms for making an application for registration, may be obtained by any person who will write for it to the Minister of Agriculture, Ottawa, Canada.
CHAPTER VII
How to Devise a Trade-Mark
A Trade-mark may be a word, or words; or a device; or a device combined with a word or words.
It is often considered desirable to register the name of a product as a trade-mark. Consequently, in the case of new products, the selection of a trade-mark often means the selection of a name for the merchandise with which the trade-mark is to be used.
A familiar and excellent example of a coined word used as a trade-mark.
A trade-mark, to be valid, should not have any meaning obviously descriptive of the goods for which it is registered. The word "Crex", to illustrate our meaning, is an arbitrary coined word. As such it is registrable, and besides its undoubted validity, it has some of the best qualities that a trade-mark can possess, in that it is short—of one syllable—easy to pronounce and remember, and its sound is not displeasing to the ear. Note that in the name "Crex Grass Furniture", the word "Crex" is alone registrable. "Grass Furniture" is a descriptive term.
Coined words, like Karo, Onoto, Chiclets, Crisco, Uneeda, Jap-a-lac, Sapolio, are virtually infringement proof. The ownership of a coined word, as applied to the commodity with which it is associated, rests absolutely in the individual or concern that first uses it.
Many of these coined words are only fortuitous combinations of letters, arrived at after divers experiments. Such a word is "Onoto", applied to a fountain pen. It was selected from a list of hundreds of similar names, in which all sorts of curious arrangements of letters were set down.
In the creation of an artificial or "coined" word, a mere misspelling of a word or phrase does not make it registrable, if it would not be so otherwise. "Bestok", a misspelling of "Best Stock", was refused registration, as it is plainly descriptive.
"Omo" is the trade-mark of a dress shield; "Persil"—a coined word—is a washing compound; and "Steero" is the trade-mark and the name of bouillon cubes.
"Sealpackerchief" is a name made up of "Sealed", "Package" and "Handkerchief". It is the trade-name of a brand of handkerchiefs that are sold in clean sealed packages.
"Nabisco" is a name made by joining together the first syllables of the three words "National Biscuit Co."—Na-Bis-Co—Nabisco.
The Porto Rico Seal of Quality
The Government of the Island of Porto Rico has given its encouragement and material support to the formation of an association among the large planters, shippers and manufacturers of the Island. This organization, known as the Porto Rico Association, is active in promoting the sale of Porto Rican products in the United States. As a guaranty of the quality of the goods, each member of the Association—after his shipment has been inspected and approved—has the right to use the "Porto Rico seal of quality", shown here. This seal is not a trade-mark in the technical sense, but it is affixed to Porto Rican merchandise of high quality, sold at the New York store of the Porto Rico Association at 510 Fifth Avenue, New York, and elsewhere, and in that relation it is a common law trade-mark, with ownership vested in the Porto Rico Association.
The name "Roxonia", a registered trade-mark, applied to hosiery and underwear, is an evolution of the name Roxburghe. When the goods were first put on the market the Duke of Roxburghe was on a visit to the United States, "taking notice" of an heiress, and was, in virtue of this situation, much in the public prints. A manufacturer of underwear thought Roxburghe sounded pretty good, and he applied for registration of the name as a trade-mark. His application was refused on the ground that Roxburghe was the name of a person. Abandoning "Roxburghe", another cogitation of the subject brought to light the word "Saxonia", this name having been suggested by the fact that Saxony is one of the great centers of hosiery production. "Saxonia" was refused registration because it is a geographical term. The addition of two letters to the word "Saxon" does not make sufficient change to remove it from the prohibited class of geographical terms. With these two rejections before him, it occurred to the manufacturer that he could unite the two words, and get rid of the objectionable feature of each. This was done, and the result is "Roxonia", which is not only a valid trade-mark, but a very good one.
The clever trade-mark of a cleaning fluid.
A trade-mark may consist of a coined word which is suggestive, but not descriptive. An example of this is shown in the "Arco Spotzoff" trade-mark. This is the name, as well as the trade-mark, of a cleaning fluid. "Spots Off", spelled in any way whatsoever, suggests cleaning and cleanliness, but it does not describe the cleaning fluid. This is a very ingenious trade-mark. With a slight variation it would be unregistrable. For instance, "Spot Remover" would not be valid, because it is an ordinary descriptive term—an advertisement, in short.
Susceptible of mispronunciation.
Two other examples of coined words, suggestive but not descriptive, are "Sealpackerchief"—mentioned above—and "Hydegrade".
In some instances, there is a sort of tangential, or left-handed suggestiveness, about a trade-mark which gives it a significance quite different from the idea that was in its owner's mind when he adopted it. This is a defect in any trade-mark. An example of this is the "Ruberoid" trade-mark, applied to a high-quality, ready-to-lay roofing, sold in rolls. It is pronounced "Rue-ber-oid". The owners of this product state, in their advertising, that Ruberoid does not contain any rubber. It is not a rubber roofing. But a large percentage of the public pronounces the word "Rubber-oid", and many people have the impression that Ruberoid is a rubber roofing. The name is suggestive of rubber. This effect is not an intentional one, as is plainly shown by the widely advertised statement of the owners that Ruberoid contains no rubber, as well as by their taking the trouble to indicate the correct pronounciation in their advertisements.
The trade-mark of H. O. Wilbur & Sons.
A trade-mark name should not be easily susceptible of mispronunciation.
An arbitrary symbol may be a valid trade-mark. The Wilbur Chocolate trade-mark, showing a Cupid stirring a cup with a large spoon, is an example of an arbitrary symbol used for this purpose.
The McCutcheon trade-mark. Suggestive of fine linen.
The McCutcheon trade-mark, consisting of the representation of an old-fashioned spinning wheel, is arbitrary in the sense of not being descriptive, but it is suggestive of flax and fine linen, which is a specialty of the McCutcheon store.
The trade-mark of Domino sugar is the picture of a red domino or mask.
Initials, like "E. & W."—used on Earl & Wilson collars; "G.E."—the trade-mark of the General Electric Company; and "R & G"—used on corsets, are valid as trade-marks.
A trade-mark in which the defects predominate.
A trade-mark may be the name of a fictitious person, like "Buster Brown", used in connection with hosiery, and "Dorothy Dodd" used as a trade-mark for shoes.
A famous example of initials used for this purpose is the "B.V.D." trade-mark.
An excellent, distinctive trade-mark.
Good trade-marks are simple and distinctive. The mark should be of such a character that it can be easily retained in the purchaser's memory, and it is apparent that this is not readily done when it is complicated and commonplace.
Look at the "Sonor" trade-mark, reproduced on this page, as an illustration of this point. The lettering is so involved that it is difficult to read, and it looks like a pattern of some intricate fancy work. Compare it with the simple, clear-cut "Rub-dry" trade-mark.
A trade-mark cluttered up with too much detail.
The "Neponset" trade-mark has so much in it, including the picture of a child in a rainstorm, that it loses its character when it is reduced to any practical, small size for advertising purposes. The single word "Neponset", enclosed in a simple design, would be much more effective—or the child holding the piece of roofing over her head would be equally effective, if shown alone, without a background.
An example of a commonplace trade-mark is the big "P" surrounded by a circle. This mark lacks distinction and originality. It makes but little impression upon a reader's mind, and is soon forgotten.
A trade-mark that bears a startling resemblance to a soda-water check.
Compare the big "P" with the admirable "Pacific" Mills trade-mark. The Pacific Mills emblem is graceful, simple, distinctive, and has a swing and a whirl to it that suggest motion. When a symbol is used as a trade-mark it is always advisable to put the suggestion of motion into it, if this can be done without the sacrifice of some other essential quality. A thing in motion arrests the eye, and holds the attention, much better than a still figure. Evidence of this is seen in the well-known Dutch Cleanser trade-mark, where the motion of the lady in wooden shoes dominates every other quality of the symbol.
An arbitrary number may be a valid trade-mark. The number "830" has been judicially held to be a good trade-mark for a brand of hosiery. The number "4711"—an arbitrary arrangement of figures—has been in use since 1792 as a trade-mark for toilet preparations. The numerals "1" to "35" are valid trade-marks, as applied to Humphrey's Homeopathic Remedies.
A numeral indicating quality or composition cannot be protected against infringement.
This design is very attractive. A fine example of a symbol with wording.
A trade-mark may be the name of a mythological character, like Juno, Venus—there is a Venus lead pencil—Hercules, or Apollo, this last name being used in connection with a player-piano. It may be the name of an historical character, like Voltaire, Buckingham, Mazarin, Napoleon—used with a brand of flour—or Champlain; or Samson, used as a name of a clothes-line sold in a package. It may be the name of a character in fiction, like Hamlet, David Copperfield, Hypatia or Portia. "Pequot", the name of an extinct Indian tribe, is the trade-marked name of a brand of sheets and pillow cases. The name of an existing Indian tribe is not valid as a trade-mark, as it has a geographical significance.
A phrase in common use may be registered as a trade-mark, provided it has none of the qualities prohibited by the Act of 1905. For example, "Yours Truly" is the registered trade-mark of an article of food.
A word in common use may be valid as a trade-mark if it has no defects under the act. There is, for instance, an "Arrow" collar, a "Lion" collar, and a "Velvet" smoking tobacco. If careful consideration is given to the selection, it is sometimes possible to find an ordinary word that may be very effective as a trade-mark. There is, for example, the word "Rainbow", used as a name for dyes. This word is not descriptive of the dyes, but it is tremendously suggestive of their quality and their wide range of colors.
"Gold Cross" is the trade-mark of a brand of condensed milk.
"Skidoo" is the particularly happy name of a rough-and-ready soap, and this is also used as the trade-mark of a marine engine. "Flash" is the name of a soap. "Bread Winner" is the trade-name of a line of children's suits.
There are many trade-marks made up of two or more words, such as "Bachelor's Friend", for hosiery; "Iron-Clad", also a hosiery trade-mark, and "Porosknit"—a coined word made up of "Porous" and "Knit".
The portrait and name of a living person may be registered as a trade-mark, provided the application is accompanied by the written permission of the person whose name and portrait are shown. There is a "Maxine Elliott Soap", and a "Mrs. Rorer's Coffee".
The name of a natural object used in a fanciful sense, may be registered. There are many examples of this usage, such as "Beech-Nut" bacon, "Ivy" corset, "Hawkeye" camera, and "Eagle" condensed milk.
A trade-mark may consist of a fanciful combination of words, like "Blue Jay", applied to corn plasters; "Red Devil", "Silver Moon", and "Flying Cat".
A well-balanced and handsome design.
When a design and wording are used in combination, care should be taken to make them fit together without discord. Attractiveness is a quality that is desirable in a trade-mark if it can be attained without a sacrifice of more virile features. The Ipswich Hosiery trade-mark is eye-catching and attractive. It contains as much in lettering and in illustration as the Neponset trade-mark shown on [page 80], and it is much more attractive. This trade-mark—as shown in the accompanying engraving—is descriptive, as it contains the word "hosiery", and it contains a geographical term—"Ipswich". These features would probably prevent its registration under the general Act of 1905, but not under the ten years' clause of that act, provided it could fulfil the requirements of that clause.
Swift & Co.'s trade-mark.
The trade-mark of Swift & Company, of Chicago, is unusually distinctive. Its symbolism is interpreted in a circular issued by Swift & Company, of which the following is an excerpt:
"Four factors intimately combined enter into the symbol. They are: (1) the 'S', (2) the dart, (3) the circle, (4) the pivot.
"The 'S', combined with the dart in one piece, is a personality symbol, serving to set forth the name 'Swift', both accurately and generally, since the dart is an ancient and world-wide symbol of swiftness.
"The dart by itself is a humanity symbol, carrying the thought of speed and directness. In its position in the symbol it indicates high aim and rectitude.
"The circle is a humanity symbol, carrying the thought of universality, and everywhere recognized as the perfect form.
"The pivot symbol is beautifully developed by the 'S' which centers in the circle, and is itself a form of the pivot symbol.
"The black and red color scheme accentuates the pivot and gives the thought of day and night, of life and death, of heaven and hell—in short, the thought of dualism in life."
This design is simple, graceful, distinctive, and appropriate. In a business as far-reaching and as complex as that of Swift & Company, the quality of adaptability in a trade-mark is highly desirable. This trade-mark is of such a character that it may be used with appropriateness upon merchandise, stationery, packages, boxes, sides of cars, and in advertisements.
No. 1.
The engravings Nos. 1, 2, 3, and 4, illustrate the various steps taken in devising the trade-mark of the W. H. McElwain Company, of Boston. The fundamental idea was to incorporate the initials of the firm, W. H. M., into the design in some effective way. From a large number of suggestions the design marked No. 1 was selected. It can be seen that the three bars shown in No. 1 make the initials W. H. M.—but somebody has to tell you before you see it.
No. 2.
The next step, shown in No. 2, was to put in the sole of a shoe, as the trade-mark is intended for shoes, and to letter "The McElwain Mark" across the face of the bars.
The design shown in No. 2 lacks cohesion and finish. To hold it together, a border was put around it and a Ben Day background thrown in. This produced the figure shown in No. 3.
No. 3.
The design marked No. 3 is quite striking, but if you look at it awhile you begin to see defects in it. The black initial bars are too strong and glaring. They push the rest of the design out of the picture. This defect was cured by putting the initial bars in white with the sole of the shoe in black, and making the background darker. By doing this, the proper balance between white and black was obtained.
No. 4.
The design shown in No. 4 is the finished trade-mark.
In devising a trade-mark, any one who does not clearly keep the requirements of the law in mind is likely to fall into one or another of three classes of errors.
First, there is a natural tendency to make a trade-mark descriptive, to insert in the wording some phrase like "Best Quality", "Sold the World Over", or "Fits the Figure" or "Good for Children"—all of which are descriptive phrases. You cannot register or protect an advertisement used as a trade-mark, and such phrases are advertisements. A trade-mark is a thing to be advertised. It must not be an advertisement itself.
Second, there is a tendency on the part of many advertisers to incorporate their own names into their trade-marks. This often leads to interminable and costly litigation.
Third, there is a tendency among manufacturers to select geographical terms as their trade-marks, to use the name of the towns or cities where their plants are located, or the names of states, or of rivers or oceans. The trade-name, "Baltimore" hosiery, has a good sound, and the word "Baltimore" is easily remembered, simple and euphonious. But if you are a hosiery manufacturer, and adopt it, you do so at your peril, even if you do business in Baltimore. You cannot protect it against any other manufacturer of hosiery who has a plant in Baltimore, even on the grounds of unfair competition, unless you have used the name exclusively, and for such a long period of time, that it has lost most of its geographical sense in the hosiery trade, and has developed into a word of restricted meaning in that line of business.
P.S. A manufacturer who intends to apply for the registration of a new trade-mark should take the precaution to have the files of the Patent Office searched to ascertain if a trade-mark like his, or similar to it, has been already registered for the same class of merchandise. This should be done before application for registration is made.
When application to register a trade-mark is filed, the trade-mark must be already in use. This use may be limited to affixation upon a small consignment of goods, but it must be a genuine and actual use of the trade-mark.
This being so, it is worth while to ascertain if the proposed trade-mark has already been registered. There are 39,000 registered trade-marks in existence, divided among forty-nine classes of merchandise. Thousands of trade-marks have been registered for some classes. It is not unusual for an applicant to find that the trade-mark he has intended to use has been adopted by someone else.