Chapter 138.
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CHAP. 138.— An act to authorize the registration of trade-marks and protect the same.March 3, 1881. *Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled*,Registration of trade-marks authorized. That owners of trade-marks used in commerce with foreign nations, or with the Indian tribes, provided such owners shall be domiciled in the United States, or located in any foreign country or tribes which by treaty, convention or law, affords similar privileges to citizens of the United States, may obtain registration of such trade marks by complying with the following requirements :
First. By causing to be recorded in the Patent Office a statementRequirements to be complied with. specifying name, domicile, location, and citizenship of the party apply- FORTY-SIXTH CONGRESS. Sess. III. Ch. 138. 1881. 503 503 ing; the class of merchandise and the particular description of goods comprised in such class to which the particular trademark has been appropriated; a description of the trademark itself, with facsimiles thereof, and a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trademark Las been used.
Second. By paying into the Treasury of the United States the sum of twenty-five dollars, and complying with such regulations as may be prescribed by the Commissioner of Patents. Sec. 2. That the application prescribed in the foregoing section must,Accompanying declaration under oath. in order to create any right whatever in favor of the party filing it, be accompanied by a written declaration verified by the person, or by a member of a firm, or by an officer of a corporation applying, to the effect that such party has at the time a right to the use of the trademark sought to be registered, and that no other person, firm, or corporation has the right to such use, either in the identical form or in any such near resemblance thereto as might be calculated to deceive; that such trademark is used in commerce with foreign nations or Indian tribes, as above indicated ; and that the description and fac similes presented for registry truly represent the trade mark sought to be registered.
Sec. 3. That the time of the receipt of any such application shall beTime of receipt of application for registration to be recorded.Conditions of registry. noted and recorded. But no alleged trademark shall be registered unless the same appear to be lawfully used as such by the applicant in foreign commerce or commerce with Indian tribes as above mentioned or is within the provision of a treaty, convention, or declaration with a foreign power; nor which is merely the name of the applicant; nor which is identical with a registered or known trade mark owned by another and appropriate to the same class of merchandise, or which so nearly resembles some other person’s lawful trademark as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.
In an application for registration the Commissioner ofCommissioner of Patents to decide on claims to trade-marks.Practice of United States courts of equity to govern in cases of dispute.Certificates o f registry of trade-marks, how issued. Patents shall decide the presumptive lawfulness of claim to the alleged trade mark ; and in any dispute between an applicant and a previous registrant, or between applicants, he shall follow', so far as the same may be applicable, the practice of courts of equity of the United States in analogous cases.
Sec. 4. That certificates of registry of trade-marks shall be issued in the name of the United States of America, under the seal of the Department of the Interior, and shall be signed by the Commissioner of Patents, and a record thereof, together with printed copies of the specifications, shall be kept in books for that purpose. Copies of trade-marksEvidence in suits regarding trade-marks. and of statements and declarations filed therewith and certificates of registry so signed and sealed shall be evidence in any suit in which such trade marks shall be brought in controversy.
Sec. 5. That a certificate of registry shall remain in force for thirtyDuration of protection of registered trademark and renewal.Exceptions. years from its date; except in cases where the trademark is claimed for and applied to articles not manufactured in this country, and in which it receives protection under the laws of a foreign country for a shorter period, in which case it shall cease to have any force in this country by virtue of this act at the time that such trademark ceases to be exclusive property elsewhere.
At any time during the six months prior to the expiration of the term of thirty years such registration may be renewed on the same terms, and for a like period. Sec. 6. That applicants for registration under this act shall beCredit for fee previously paid. credited for any fee, or part of a fee, heretofore paid into the Treasury of the United States with intent to procure protection for the same trademark. Sec. 7. That registration of a trademark shall be prima facie evidenceRegistration prima facie evidence of ownership. of ownership.
Any person who shall reproduce, counterfeit, copy or colorably imitate any trademark registered under this act and affix the 504 FORTY-SIXTH CONGRESS. Sess. III. Ch. 138, 139. 1881, same to merchandise of substantially the same descriptive properties asCounterfeiting, etc., registered trade-marks. those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trademark, at the suit of the owner thereof; and the party' aggrieved shall also have his remedy according to the course of equity to enjoin the wrongful use of such trademark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensation therefor in any court havingUnited States courts to have jurisdiction. jurisdiction over the person guilty of such wrongful act; and courts of the United States shall have original and appellate jurisdiction in such cases without regard to the amount in controversy.
Sec. 8. That no action or suit shall be maintained under the provisions of this act in anyRestrict upon actions for infringement. case when the trademark is used in any’ unlawful business, or upon any article injurious in itself, or which mark has been used with the design of deceiving the public in the purchase of merchandise, or under any certificate of registry fraudulently obtained. Sec. 9. That any person who shall procure the registry of a trademark, or of himselfFraudulent trade-marks. as the owner of a trademark or an entry respecting a trademark, in the office of the Commissioner of Patents, by’ a false or fraudulent representation or declaration, orally or in writing, or by any fraudulent means, shall be liable to pay’ any damages sustained in consequence thereof to the injured party, to be recovered in an action on the case Sec. 10.
That nothing in this act shall prevent, lessen, impeach, or avoid any remedy Former rights and remedies preserved.at law or in equity which any party’ aggrieved by any wrongful use of any trademark might have had if the provisions of this act had not been passed. Sec. 11. That nothing in this act shall be construed as unfavorably affecting aSaving as to rights after expiration of term for which a trademark has been registered. claim to a trademark after the term of registration shall have expired; nor to give cognizance to any court of the United States in an action or suit between citizens of the same State, unless the trademark in controversy is used on goods intended to be transported to a foreign country, or in lawful commercial intercourse with an Indian tribe.
Sec. 12. That the Commissioner of Patents is authorized to make rules and regulations Regulations for transfer of rights to trade marks.and prescribe forms for the transfer of the right to use trade-marks and for recording such transfers in his office. Sec. 13. That citizens and residents of this country wishing the protection of trade-marks Foreign trade-marks.in any foreign country, the laws of which require registration here as a condition precedent to getting such protection there, may register their trade-marks for that purpose as is above allowed to foreigners, and have certificate thereof from the Patent Office.
Approved, March 3, 1881.