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whether the facts stated above constitute a proper and legitimate bar to the employment of this design in its application to interstate commerce as a Trade-Mark.
The fact that this proposed Trade-Mark may be said to be a design I think can make no possible difference. The records of the Office contain a multitude of Trade-Marks which are designs in the sense that they are fanciful pictures and illustrations, and it matters not how incongruous or meaningless a design may be, it still, within some limits and restrictions, can be the subject of a Trade-Mark.
It is conceded that this design has never been used as a Trade-Mark by the Grand Army of the Republic or by any other persons either in local trade, interstate commerce, or commerce with foreign nations. As is said by the Examiner in a supplement to his statement, this design has become a matter of public knowledge and use, so that it is no longer capable of being exclusively appropriated in the ordinary sense as property. It has fallen into the mass of fanciful designs which may be employed by every person in any appro priate and lawful manner. The applicant in this case claims to have thus found it the subject of lawful use, and has so far appropriated and applied it as a Trade-Mark to a certain class of merchandise in a proper and legal manner. His doing this in no manner interferes with its proper and lawful use by all other citizens and persons. The Grand Army can still use it in precisely the same manner in which it has heretofore been used, upon the badges of the members and upon the paper which they use in their correspondence, whether such paper is manufactured by this applicant with the Trade-Mark incorporated as a watermark, or whether the paper is entirely different in the respect of containing no water-mark whatever. So any other persons than the members of the Grand Army of the Republic can employ this design upon other materials than paper, and I see no reason why it may not be employed as a Trade-Mark when applied to any other class of merchandise to which it may be properly appropriated. The Examiner concedes that this could be done. If a manufacturer of carpets saw proper to have this design woven in his carpet, certainly no objection could be raised against it. The design could also be printed upon wall-paper as an ornament simply, for the reason that, not being the subject of copyright and not being secured by any law applicable thereto, it is capable of general and universal use. The Trade-Mark law provides that when au individual has obtained or selected, either by his own ingenuity or by appropriating that which he finds existing in public knowledge, a device or design, and has applied it as a Trade-Mark to a class of merchandise which he is using in commerce with other nations, he shall be entitled to have such Trade-Mark registered and to receive the protection which the law gives to a Trade-Mark. This, of course, depends upon whether he is the first to have thus applied that device or design upon that class of goods which is the subject of foreign commerce.
In the present case the applicant has complied with the statute and filed the necessary affidavit asserting himself to be the first person who has adopted this design as a Trade-Mark in foreign commerce. There is nothing of record in the statement of the Examiner intimating that the Grand Army of the Republic, or any other organization or person, has ever thus applied this design. I have already stated how the Grand Army of the Republic has used this badge or design. That use has been of such a character that no property in it remains with such organization, for its members have published it to the world. It seems that at one time they retained a property in one of the methods recognized by law-viz., by a Design patent. The period of that security has expired. Had that organization been engaged in the manufacture or sale of paper, or any other merchandise or commodity, and seen proper to apply this design to that class of merchandise as a TradeMark, they could have been secured in its use and enjoyment in the manner provided by the Trade-Mark law; but, as already stated, they have never engaged in such manufacture or sale, nor have they attempted to secure a property in the design in the manner set forth, They have, however, published the design to the world both in their use of it and by their Design patent, just as manuscripts and the results of thought are donated and given to the public by the ordinary and usual publication and use, when such public use and publication are not guarded and protected by conforming to the copyright law. There is, however, no property in the design itself vested in any one.
The applicant in this case, in selecting the design under consideration from what the Examiner may term the worthless rubbish abandoned by its owner-the materials of dust heaps and accumulations-has acquired no property in the thing, and it is only by this new application of the design as a Trade-Mark to a certain class of merchandise that it newly acquires the quality of property and becomes invested in him who first makes such an application of it. I can conceive that there is no more reason why the applicant should be denied his right to a Trade-Mark under these circumstances than if he had selected some fanciful design which might have belonged to the order of St. John, or that had existed two or three centuries ago, the only condition being that, having selected it, he has applied it as a Trade-Mark to merchandise in foreign commerce, as required by the statute.
It is said that the seal of the Government belongs to all persons in the sense that no one can acquire an individual property in it or apply it as a Trade-Mark. I see no occasion to discuss that question now; but as to mere emblems which have been used by societies it seems to be settled by the decisions of the Office that there is no sanctity or sacredness about them which precludes their being used and applied as Trade-Marks.
Attention has been called to the case of ex parte Tolle (2 O. G., 415 ;)
but the later case of ex parte Thomas (14 O. G., 821; C. D., 1878, 113) seems especially to overrule the former one. The Commissioner in this later decision says:
I can not agree with the doctrine of that case (ex parte Tolle.) There is no law giving to the Masonic fraternity a monopoly of the symbols used by them, and I see no reason why this office should not hold in the same respect the symbols and emblems of the Odd Fellows and of other secret societies, and the particular emblems used by certain religious organizations.
In regard to the character of the deception that might be caused by the use of such symbols on manufactured goods the decision is silent. It is inferred, however, from a careful perusal of the opinion, that the public might be led to think that the manufacturer using the mark was a Mason when he was not; or that, being a Mason, his goods were of first-rate quality, when in truth they were very poor.
On consulting the statute, however, I find nothing at all indicating that the function of a Trade-Mark is to point out the character or social standing of its owner or the quality of his goods. Nor is there anything in the Office rules requiring us to apply any tests of this kind. The sole and independent office of a Trade-Mark is to distinguish the goods of one person from the same kind of goods made or sold by another. The relations to society the manufacturer bears or the particular quality of his goods are determined by the public in other ways.
It is proper to say in this case that I do not find, nor does the Examiner suggest, that the design as used would be calculated to deceive, and the case is not brought within the principles announced in ex parte M. Bloch & Co. (40 O. G., 443.)
It is suggested that if this Trade-Mark is allowed to be registered the members of the Grand Army of the Republic would be precluded from using the design or symbol in the manner in which they have heretofore used it. Evidently this is a misapprehension. As stated above, that organization will have precisely the same right to employ this design upon its badges even if the badges could be regarded as articles of merchandise, and also to imprint it in the manner heretofore done upon paper used in correspondence, whether that paper contains the watermark or Trade-Mark of this applicant or is common and ordinary paper. But, it is said, suppose hereafter the Grand Army desires to manufacture paper or to use paper in which its members have caused this watermark, their own symbol, to be impressed, would they not be regarded as infringers of the Trade-Mark thus registered by the applicant? It will be seen at once that whenever the Grand Army of the Republic enter upon the manufacture and sale of paper and attempt to employ this symbol as a feature of that paper they embark in a new business and attempt to apply this design to a new use. So, also, if they, instead of engaging in such manufacture or sale for the purpose of supplying themselves with this kind of paper, were to employ or induce others to manufacture and engage in the sale, then such other persons would themselves begin the manufacture and use of a quality of paper and the employment of this design in a use to which it had not heretofore been applied. Whether such a use of the design would constitute infringement of this Trade-Mark depends upon a number of important questions: First,
would they employ it as a Trade-Mark? Second, would such TradeMark be applied in foreign commerce or interstate commerce or in local trade only? Finally, would such use be simply a matter of embellishment? In either event it would be an entirely distinct and new application of the use of this design by the Grand Army of the Republic, or by such persons as the organization should employ or induce to enter into the manufacture and sale of such paper, and when the Grand Army or such other persons began this new use of the design they must take it subject to the rights of other parties accrued prior to this new use and application. This is the condition in which every person finds himself placed when he applies for the registration of a Trade Mark. If some other party has previously used the Trade-Mark and has registered it, an interference follows and the Office decides which one first properly ap plied the design to the same class of goods; or, if the question arises in the courts, the courts settle the rights of the parties, depending upon which one first thus applied the design as a Trade-Mark. I am not able to see that the Grand Army of the Republic would occupy any other or different position. The mere fact that they were the originators of the design, or the authors of it, in my opinion, would make no difference whatever, for the reason that they have donated this design to the world to be used in all the ways in which the design is capable of use, and retained no proprietary right in themselves, and in that condition the Trade-Mark quality which follows the application of the design to merchandise belongs to him who first applies it to that particular purpose. Then as to the question whether the Grand Army would have the right to embellish their paper with this design by means of the watermark. Whether they would have the right to do that depends entirely upon whether it would be an infringment of a previously registered Trade Mark in which the same design was employed by means of the watermark. If it were used solely for embellishment, and was never used in commerce, and was employed by the members of the Grand Army exclusively, it probably would not present a case of infringement, unless the courts should find that its use operated to deceive the public and induced it to purchase a particular kind of paper used and thus embellished by the organization upon the supposition or belief that it was the paper of the character and quality manufactured by the applicant under his Trade-Mark. In such a case the courts would probably hold that there was an infringement.
The Examiner has made the objection that this Trade-Mark embellishes the paper and thus adds something to its intrinsic value, and that whatever possesses this quality can not properly be made the subject of a Trade-Mark, and several cases are cited; but I do not think such cases support the proposition in its application to the present case. The proposition which lies at the foundation of this case is that a Trade Mark may be impressed upon each sheet of paper as a water-mark, and I think it may be safely said that scarcely any Trade-Mark can be or
would be thus applied without incidentally embellishing the page or the paper to a greater or less extent; but if the design itself is the proper and legitimate subject of a Trade-Mark, is not prohibited by law or contrary to public morals or public policy, the fact that it incidentally embellishes the page on which it appears can not deprive it of its lawful quality as a Trade-Mark, and I do not think that objection is well taken under the circumstances.
There are several affidavits filed in the record in which this particular feature of the water-mark is set out, and it is undoubtedly true that paper of a suitable quality containing this water mark might be particularly acceptable to members of the Grand Army; but the TradeMark is sought to be registered for its use in foreign commerce, and the affidavit of the applicant asserts that it has been thus used, although evidently not to any great extent as yet, and it is in the direction of such employment that the registration is allowed. The Patent Office is not constituted, nor has it the means, to investigate the question whether the applicant in the present application is simply seeking to obtain the guise of security around his Trade-Mark when he really means to use it as an attractive embellishment for a particular class of persons in this country. I feel that the Office is bound by the affidavit, and that in that respect the affidavit of the applicant can not be controverted. Such a question as that must be settled by the courts.
In conclusion, the case is one that has given me no little difficulty. It has been thoroughly and elaborately presented by the Examiner, and it is with the greatest hesitation that I find myself compelled to differ with his opinion; but in view of the fact that there is this difference between his opinion and mine, I feel that it is due to the applicant to give him the benefit of the doubt.
MCDONOUGH v. GRAY v. BELL v. EDISON.
Decided February 23, 1889.
.GRAY'S PETITION TO REOPEN.
46 O. G., 1245.
Held that the petition "is of no avail for any purpose whatever;" that Gray proposes no new evidence as to dates, nature, or the character of his own invention; that it was conclusively shown in the evidence that Gray, at the time of filing his caveat, while having a conception of the telephone, did not understand the invention, and was unable to explain the mode of its operation; that he adhered to the idea that articulate speech must be transmitted upon the multipletelegraph principle; that he positively conceded that he did not reduce his invention to practice for a long time after the issuance of patent to Bell; that he regarded the invention patented to Bell as trivial, and called it a "scientific toy," and turned his attention to other and, in his opinion, more important inventions; that he negligently omitted to file his application for a patent until two years after the grant of Bell's patent, and was then stimulated to do so only by other parties, who had acquired an interest in his inventions; and that his present pe