Arthur P. Greeley

“ It is clear there can be no common law of the United States. The Federal Government is composed of 24 sovereign and independent States, each of which may have its local usages, customs, and common law. There is no principle which pervades the Union and has the authority of law that is not embodied in the Constitution or laws of the Union. The common law could be made a part of our Federal system only by legislative adoption. ”

“ The nefarious but lucrative business of pirating or counterfeiting genuine trademark goods has too long nourished unchecked to the incalculable injury of every consumer, of every honest merchant, manufacturer, and trader, and has extensively multiplied costly and tedious litigation. ”

“ It is well settled that a court of equity will exercise its power for the protection of the owner of a trademark in the exclusive enjoyment of that device or symbol chosen by him to designate his goods or manufactures, and to distinguish them from those of others. Every man has a right to the products of his own labor, and is entitled so to distinguish them, that persons dealing in or purchasing his commodities may be readily able to recognize them as his. ”

“ An award of damages against a willful infringer is clearly an inadequate punishment of the fraud of which he has been guilty, and is not sufficient to deter others from infringement. An injunction against further infringement is not greatly feared by those who deliberately counterfeit another's mark, and at best is effective only as to the future and as to the persons specially named in it. The willful counterfeiter of another's mark is entitled to no better treatment than the criminal who takes the goods of another. ”

“ In other words, if Congress has power to prevent combinations in restraint of competition in the sale and exchange of commodities among the several States, it seems clear that it has also the power to prevent unfairness in competition in such sale and exchange by providing for the protection of trademarks used in commerce among the several States. ”

“ It is obvious that the counterfeiting or imitation of a mark known to be the distinguishing mark borne by the goods of a particular trader is attended by injurious consequences of a serious character from two points of view. The rightful owner of the mark suffers by the diminished sale of his goods, and incurs also the risk of serious injury to the reputation of his goods, since the goods placed upon the market under a false mark are almost invariably inferior in quality to those sold by the rightful owner. ”

“ The right of property does not in any manner depend for its inceptive existence or support upon statutory law, though its enjoyment may be better secured and guarded, and infringements upon the rights of the proprietor may be more effectually prevented or redressed by the aid of the statute than at common law. ”

“ Much is said of the injustice of allowing one man to avail himself of the skill and expenditure of another by false representations, which is well founded; but where, instead of using the name of the owner or vendor, strange devices and insignia are employed to indicate such ownership or source, which do so but ambiguously, and require considerable familiarity and experience with them to connect them therewith, no great sympathy is created for those using such devices. ”

“ If it should be held that Congress has no power and the State legislatures have full and complete authority to thus far regulate interstate commerce by means of their control over private contracts between individuals or corporations, then the legislation of the different States might and probably would differ in regard to the matter, according to what each State might regard as its own particular interest. ”

“ In the use of such "trademark" he is to be protected from the efforts of others who would take advantage of his enterprise or skill, and, by imitation, endeavor to impose upon the public and to deprive him of the just reward of his industry. The adoption of a trademark or device to indicate the manufacture or origin of a certain article does not give any right to the exclusive production of the article so marked. Any article of manufacture, unless it be protected by a patent, may be made and sold by any person. There is no such thing as an exclusive right to any particular branch of industry. ”

“ No country other than the United States has in its constitution a provision limiting the power of the General Government to regulate commerce generally, and all countries which have any pretension to commercial importance provide in their trademark laws for the registration and protection of the trademarks of their citizens or subjects without regard to the kind of commerce in which they are used, and no question of the constitutionality of such laws appears to have arisen in any foreign country. ”

“ In fact, it is of quite as much importance as to the owner of the mark, of so much importance that the justice of holding a mark to be the exclusive property of such owner as against another who uses it without notice has been seriously questioned. ”

“ Thus the action for damages amounts to but little. Nearly 400 of the leading manufacturers, merchants, and dealers of New York, Boston, and Philadelphia have petitioned Congress very earnestly at this session to enact such a law as that contained in this Senate bill; and they state their reasons in this forcible language: "The use of trade-marks on every species of merchandise and manufactures, both foreign and domestic, has greatly increased with the expansion of modern trade and commerce, and has become a powerful interest throughout the United States of America. ”

“ As manufacturing increased and the facilities for transportation were improved, competition became less restricted and it was found that the goods of a manufacturer or dealer must be sold in competition not only with others in his immediate locality, whose marks were well known to him and to whom his marks were well known, but with those located at a great distance, even in a foreign country, of whose very existence he was not aware and of whose trademarks he could know nothing. ”

“ The manufacturing operations in the United States are all carried on in little hamlets, which often appear to spring up in the bosom of some forest, gathered around the waterfall that serves to turn the mill wheel. These villages are scattered over a vast extent of country — from Indiana to the Atlantic, and from Maine to North Carolina — instead of being collected together, as they are in England, in great manufacturing districts. ”

“ As the conditions of commerce improved, particularly the facilities for intercommunication between distant places, by which it was made possible for manufacturers to compete with others than those in their immediate neighborhood, the importance of the protection of trademarks began to be recognized and the British courts found it necessary to the protection of honest trade and the prevention of fraud to interpose by injunction to prevent their infringement. ”

“ If any watches or watch movements of foreign manufacture shall be offered for entry at any custom-house in the United States which shall copy or simulate the name or trade-mark of any domestic manufacturer, they are to be forfeited to the United States. ”

“ Not only are the rights of owners of trademarks located in the United States to be considered, but also the rights of alien owners of trademarks, especially since the United States is bound under the conditions of the treaties above referred to, which have been entered into with foreign nations on this subject, to afford to such owners of trademarks as are subjects or citizens of such foreign countries protection for their trademarks. ”

“ The high contracting parties, desiring to secure complete and efficient protection to the manufacturing industry of their respective citizens and subjects, agree that any counterfeiting in one of the two countries of the trademarks affixed in the other on merchandise, to show its origin and quality, shall be strictly prohibited and repressed, and shall give ground for an action of damages in favor of the injured party to be prosecuted in the courts of the country in which the counterfeit shall be proven. ”

“ It is generally conceded that there is not at present sufficient protection to trademarks. The public generally, the honest manufacturers, and honest dealers throughout the country are being constantly swindled by counterfeit trade-marks. The law of 1870, providing a general system for the registration of trade-marks and designed to afford better protection by giving right of action in United States courts to recover damages for counterfeiting and providing the remedy by enjoining counterfeiters, has not proved sufficient. ”

“ Trademarks pertain distinctively to the sale of articles, their sole purpose and function being to enable the buyer to distinguish the goods of one manufacturer from goods of the same kind made by another. ”

“ If the trademark has become public property in the country of its origin, it shall lie equally free to all in the other country. ART. II. If the owners of trademarks, residing in either of the two countries, wish to secure I heir rights in the other country, they must deposit duplicate copies of those marks in the Patent Office at Washington, and in the clerk's office of the Tribunal of Commerce of the Seine, at Paris. ”

“ That a manufacturer or dealer engaged in a particular line of business should unintentionally select as a mark for a particular class of goods sold by him the same mark which has previously been used by another for the same class of goods as a matter of fact has repeatedly happened. So many instances of the adoption by two or more traders of substantially the same mark were found when the trademark registration act of 1875, of Great Britain, went into effect that it was found necessary to frame a rule known as the "three-mark rule," under which identical or similar "old marks," i. ”

“ Every person who, with intent to defraud, or to enable another to defraud, any person, shall forge or counterfeit, or cause or procure to be forged or counterfeited any trademark * * * shall be guilty of a misdemeanor, and provided that every person found guilty of such misdemeanor should be liable to punishment "by imprisonment for not more than two years with or without hard labor or by fine, or both by imprisonment with or without hard labor and fine." ”

“ One State might condemn all kinds of contracts of the class described while another might permit the making of all of them, while still another might permit some and prohibit others, and thus great confusion would ensue and it would be difficult in many cases to know just what law was applicable to any particular contract regarding and regulating interstate commerce. ”

“ She prohibits the exportation from one province to another by water, and even the carriage by land upon, horseback or in a cart, of wools and woolen goods, of the produce of America, a regulation which effectually prevents the establishment of any manufacture of such commodities for distant sale, and confines the industry of her colonists in this way to such coarse and household manufactures as a private family commonly makes for its own use, or for that of some of its neighbors in the same province. ”

“ The business men of the world have awakened to the fact that manufacture and trade require national and international control and protection of genuine commercial signatures to identify and distinguish property made and marketed by cosmopolitan tradesmen. ”

“ It is generally considered that a mark to be effective for its purpose should be as simple and striking as possible, should either consist of or have as a prominent feature some representation or word which will be readily caught by the eye of the purchaser and retained in his memory, so that when he comes to make a second purchase he will look for and readily recognize that particular mark. ”

“ It gives at most a mere color of protection. It provides a means by which owners of certain trademarks may, if they choose, give notice of their claims to an exclusive right in such marks, warning mankind against trespassing upon such rights, but does not make such notice effective to give the registrant any substantial advantage against infringers which he may not have without registration. ”