The Official Gazette of the United States Patent Office, of September 30,1884, contains a decision rendered September 23, 1884, on the vexed label and trade mark question by the Commissioner of Patents. In rendering his decision the Commissioner gives very lengthy reasons, the text filling nearly two full pages of the Gazette. The question is the old one whether the Commissioner cause fuse to register as a label what in bis judgment constitutes a trade mark, and whether, if not a trade mark in all characteristics, it then can be registered as a label. Whoever as an applicant has bad labels subjected to Patent, Office rulings on the above question, will know what the decision was. The Commissioner held that the words not a trade mark occurring in the statute gave him full power to refuse label registration to a Ubel containing subject matter for a trade mark. We take decided issue with this decision. In former articles we have stated pretty fully what our views are, and have fortified them by appropriate quotations from authorities. The great court decision in these matters was rendered September 30, 1881; it is in the case entitled the Will-cox and Gibbs Sewing Machine Company against ?. M. Marble, Commissioner. This was a case before the Supreme Court of the District of Columbia, and in it a peremptory mandamus was issued, enforcing just such a registration as is now refused. In his decision Mr. Butterworth disposes rather briefly of the opinion in the sewing machine case. He does not agree with it, and so concludes that it was not fully argued, and asserts that it was practically an exparte case. Now the truth is that, the case in question did not goby default in any sense. In Mackey's Reports, vol. i , page285 et seg., Mr. Marble's answer in the case will be found. If the decision, published also in the Official Gazette of October 17, 1882, be examined, it will be found unusually long and full. The court strikes at the root of the matter by going back to the original registration of labels with the Librarian of Congress under the copyright laws, and by deducing therefrom the powers of the Commissioner of Patents. But this opinion of so high a court is disposed of as given in practically an exparte proceeding, and as one rendered in a case that "did not have careful consideration from the court. Now, no one can impartially examine the decision so shortly disposed of, without forming exactly the opposite opinion. It is certainly a bold criticism on the methods of so high a court to say that it decided a case and issued a peremptory mandamus without careful consideration. The Supreme Court of the District of Columbia is the successor of the old Circuit Court of the District. By the act ? f February 27, 1801, the original tribunal was established, one of whose functions was to issue writs of mandamus to compel public officers to do acts required of them by law in performance of their duties. The Supreme Court of the District was established by the act of March 3, 1863, whereby the. oid Circuit Court was abolished, and the new court made its successor. Cases from the Supreme Court of the District may be appealed to the Supreme Court of the United States. Thus the court we are considering possesses very high powers, exceeding in some respects those of the circuit courts. It is, to all intents and purposes, in the mandamus proceedings a United States Court. Several judges, one chief and five associates, compose it. Yet a carefully rendered decision of such a court, given afterf ull deliberation, is disposed of by the Commissioner of Patents in a single sentence. Three divisions of label and trademarkmatter are created by the Commissioner's decision. There is, first, the label, which must be descriptive; secondly, the trade mark, which must be arbitrary or non-descriptive, and in use in commerce with some foreign nation or Indian tribe; and thirdly, 1 he subject matter for a trade mark, but not in the prescribed commercial use. Of these three the first two are registrable, the last the Commissioner decides is non-regislrable. All this distinction is purely a Patent Office creation. The old registration under theCopy right Laws with the Librarian of Congress was subject to no such rulings. The inherited power of registration belonging to the Commissioner of Patents should not be either. The poiut overlooked by this official is that he registers labels under one clause of the Constitution and trade marks under another. To define trade marks in addition to the special act of March 8, 1881, he has a multitude of court decisions. To define labels he is obliged to have recourse to Worcester's dictionary. His predecessor used Webster. He does not take the point that the greater includes the less, and that the term label includes trade marks. Labels are registered under the copyright law. Can any one conceive of an eugraving being refused registration by the Librarian of Congress because it is arbitrary? Yet this is precisely what the Commissioner upholds as proper practice in the Patent Office. The misfortune of the whole business is, that these cases are usually not of sufficient importance to be brought before the court. The applicant, on finding registration refused him, usually prefers to submit to the loss so unjustly incur red rather than go to the expense of an application for a mandamus. The predecessor of the present Commissioner of Patents incurred such a proceeding, however, in the case we have cited. It served to change the practice of the office during his term. Under such amended ruling the business of label and trade mark registration went on with perfect smoothness and satisfaction. It is a great pity that any change has been inaugurated. The status of affairs now is that the Supreme Court decisiou is set aside, and that rulings I are made that would unquestionably incur a mandamus from that tribunal were one applied for. But owing to the somewhat minor importance of this class of privileges, such proceedings will not often be inaugurated. The Commissioner's arguments in the case in questiou as affecting labels are derived from these words of the statute: not a trade-mark, and from Worcester's dictionary. This is but a small basis for a decision. The true way to treat ? such a case is to go to the root of the matter, and examine the origin of the powers whose limitations are under discussion. Had the latter method been adopted, and not the more superficial plan, a different result would probably have been reached. But taking the issue as presented, we find that the Commissioner quotes Upton's definition of a trade mark, and Worcester's of a label. The trade mark according to Upton is the name-symbol, etc. . adopted by a manufacturer or merchant to designate the goods that he manufactures or sells. Worcester says a label is a small piece of paper or other material containing a name, title, or description, and affixed to anything to indicate its nature or contents. Certainly these two definitions quoted by 1he Commissioner in his decision come very close to each other, considering that they describe things that he considers so radically different. Even in Worcester's definition of a label absolute descriptiveness is not insisted on, as nature and contents may be indicated arbitrarily as well as descriptively. It is in such arbitrary indication that the commercial value of a trade mark consists. We can only hope for the satisfaction as well of the Commissioner as of the public that some of these cases will again be brought before the Supreme Court of the District of Columbia. Mr. Butterworth, we are convinced, desires such an issue no less than the prospective registrants of labels and trade marks. When such a case does arise, the Commissioner, to borrow his own expressions, will have a good chance to fully argue the case and see that, it receives careful consideration from the judges of the court.
This article was originally published with the title "Patents" in SA Supplements 18, 458supp, 240 (October 1884)