CHAPTER I
A Digest of the Trade-Mark Law
In February, 1905, Congress passed an act entitled "An act to authorize the registration of trade-marks used in commerce with foreign nations or among the several states or with Indian tribes, and to protect the same."
This act went into effect on April 1, 1905. With its amendments it is known as the United States Trade-Mark Law. Its provisions should be known by every manufacturer or advertiser who is using, or who intends to adopt, a trade-mark.
Property in Trade-Marks Does Not Rest upon the Statute, But upon the Common Law.
It should be stated here that ownership in a trade-mark is a property right resting in the common law. This right is, therefore, not a creation of the statute. The purpose of the statute (or Act of 1905) is to systematize the registration of trade-marks, and to provide a definite procedure both for recording and protecting them. A trade-mark may be legally valid without having been registered, and on the other hand, a registered mark may be proved legally invalid. Registration is prima facie evidence of validity, but it is not conclusive evidence.
Upon this subject the Supreme Court of the United States has said, "The right to adopt and use a symbol or device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons, has been long recognized by the common law and the chancery courts of England and of this country. It is a property right for the violation of which damages may be recovered in an action at law, and the continued violation of it will be enjoined by a court of equity with compensation for past infringements. This exclusive right was not created by the act of Congress and does not now depend upon it for its enforcement."
The common law rights of the owner of a trade-mark are the same now as they were before the passage of the act. In fact, the statute itself contains this provision: "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 trade-mark might have had if the provisions of this act had not been passed". (Section 23 of Act of 1905.)
The advantages of registration are readily apparent, however. In an action at law against infringement, the owner of a registered trade-mark can produce at once the record of its adoption and legal registration. Without registration, it would be necessary for him to go through an involved legal process to prove his rights in the matter.
Registration in the United States Patent Office brings any litigation involving the right to use the trade-mark within the scope of the Federal court, with a judiciary trained in such cases. When a trade-mark is not registered under the Federal law a suit pertaining to it cannot be heard in the United States courts, unless the amount in dispute exceeds two thousand dollars, and the parties on the opposing sides are not citizens of the same state.
Under the Act of 1905 about 39,000 trade-marks had been registered, up to September 1, 1911.