Things to Know About Trade-Marks: A Manual of Trade-Mark Information

by J. Walter Thompson Company

CHAPTER IV
Infringement

There is no intrinsic value in a trade-mark. Its worth in dollars is a creation, and it depends upon the successful sale, or popularity, of the commodity to which the trade-mark is applied, the distribution of this commodity, the extent to which it has been advertised, and the profit that there is in it.

Some widely-known trade-marks are worth millions of dollars, and many are valued at a hundred thousand dollars or more.

The ownership of an advertised and favorably known trade-mark is, therefore, a valuable property right. In estimating the assets of a business, its trade-mark is included under the head of Good-Will, and Good-Will is Reputation. The value of a trade-mark is the value of the reputation of the goods it represents and identifies.

A valuable trade-mark—like other valuable things—becomes, sooner or later, an object of envy on the part of those who want money without troubling themselves about the manner of getting it. Sometimes this leads to a more or less ingenious simulation of a trade-mark.

The remedy for the infringement of a registered trade-mark is covered by sections 16 to 19, inclusive, of the Act of 1905. We quote these sections of the law:

"Sec. 16. That the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. Any person who shall, without the consent of the owner thereof, reproduce, counterfeit, copy, or colorably imitate any such trade-mark and affix the same to merchandise of substantially the same descriptive properties as those set forth in the registration, or to labels, signs, prints, packages, wrappers, or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in such registration, and shall use, or shall have used, such reproduction, counterfeit, copy or colorable imitation in commerce among the several states, or with a foreign nation, or with the Indian tribes, shall be liable to an action for damages therefor at the suit of the owner thereof; and whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment therein for any sum above the amount found by the verdict as the actual damages, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs.

"Sec. 17. That the Circuit and Territorial Courts of the United States and the Supreme Court of the District of Columbia shall have original jurisdiction, and the Circuit Courts of Appeal of the United States and the Court of Appeals of the District of Columbia shall have appellate jurisdiction of all suits at law or in equity respecting trade-marks registered in accordance with the provisions of this act, arising under the present act, without regard to the amount in controversy.

"Sec. 18. That writs of certiorari may be granted by the Supreme Court of the United States for the review of cases arising under this act in the same manner as provided for patent cases by the act creating the Circuit Court of Appeals.

"Sec. 19. That the several courts vested with jurisdiction of cases arising under the present act shall have power to grant injunctions, according to the course and principles of equity, to prevent the violation of any right of the owner of a trade-mark registered under this act, on such terms as the court may deem reasonable; and upon a decree being rendered in any such case for wrongful use of a trade-mark the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby, and the court shall assess the same or cause the same to be assessed under its direction. The court shall have the same power to increase such damages, in its discretion, as is given by section sixteen of this act for increasing damages found by verdict in actions of law; and in assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost which are claimed."

The legal remedies set forth in these sections of the Act of 1905 apply only in case of infringements of registered trade-marks. In the case of infringements of common law trade-marks, and in cases where packages, labels and advertisements are imitated or counterfeited, actions to restrain must be brought under the law of unfair trade.

A coined word is the property, in a commercial sense, of the person, or firm, or corporation, that makes it up and uses it.

This is indisputable. It is a principle of justice that is supported consistently by the courts, but it needs no legal mind to acquiesce in its fairness, for it appeals to everybody's common-sense.