or to any of the designated depositaries, national banks, or receivers of public money, designated by the Secretary of the Treasury for that purpose; and such officer shall give the depositor a receipt or certificate of deposit therefor. All money received at the Patent-Office, for any purpose, or from any source whatever, shall be paid into the Treasury as received, without any deduction whatever.

Act July 8, 1870, c. 230, § 69, 16 Stat. 209.

This section was made applicable to trade-mark fees by Act Feb. 20, 1905, c. 592, § 15, post, & 9500.

Refunding.

The Treasurer of the United States is authorized to pay back any sum or sums of money to any person who has through mistake paid the same into the Treasury, or to any receiver or depositary, to the credit of the Treasury, as for fees accruing at the Patent-Office, upon a certificate thereof being made to the Treasurer by the Commissioner of Patents.

Act July 8, 1870, c. 230, § 70, 16 Stat. 209.

This section was made applicable to trade-mark fees by Act Feb. 20, 1905, c. 592, § 15, post, § 9500.

CHAPTER TWO

Trade-Marks

Sec.

Court of cases arising under
act.

9504. Power of courts to grant injunc-
tions; recovery of damages in
addition to profits to be ac-
counted for; treble damages;
assessment of profits and dam-
ages.

9505. Order for destruction of infringing labels, etc.; service of injunction, and proceedings for enforcement thereof.

9506. Restrictions on actions for infringement.

9507. Suits involving interfering registered trade-marks.

9508. Existing rights and remedies for wrongful use of trade-mark preserved.

9509. Pending applications for registration; amendment and prosecution thereof.

Sec.

9510. Damages from registration procured by false or fraudulent declaration or means; recovery. 9511. Regulations for proceedings for registration.

9512. Classes of merchandise for purpose of trade-mark registration. 9513. Articles imported, copying, or simulating, etc., trade-name or registered trade-mark, not admitted to entry.

9514. Notice of registration to be affixed to trademark or to package inclosing article; notice of registration or of infringement requisite of recovery of damages. 9515. Construction of act; definitions. 9516. Time of taking effect of act; repeal; exception of certificates of registration issued under previous acts.

(R. S. §§ 4937-4947. Superseded.)

These sections, constituting chapter 2 of this Title of the Revised Statutes, authorized the registration of trade-marks by persons entitled to the exclusive use of a lawful trade-mark, or who intended to adopt and use any trade-mark for exclusive use within the United States, and provided remedies for infringement of registered trade-marks and for false registration, and authorized regulations for the transfer of rights to trade-marks. Its provisions were held by the Supreme Court to be unconstitutional, on the ground that a trade-mark was not an invention, discovery, or writing, within Const. art. 1, § 8, cl. 8, authorizing Congress to secure "to authors and inventors the exclusive right to their respective writings and discoveries," and that its provisions were not sustainable under Const. art. 1, § 8, cl. 3, giving Congress power "to regulate commerce with foreign nations, and among the several States, and with the Indian tribes," since the act was not thus limited, but was so framed as to apply to all commerce. Trade-Mark Cases, 100 U. S. 82, 25 L. Ed. 550.

Provisions similar to those in the above-mentioned sections, but limited to trade-marks used in commerce with foreign nations or with the Indian tribes, were contained in the Trade-Mark Act of March 3, 1881, c. 138, 21 Stat. 502. This act was evidently intended as a substitute for these sections.

Act Aug. 14, 1876, c. 274, 19 Stat. 141, making punishable certain offenses against the provisions of this chapter of the Revised Statutes, was held to fall with it, and not to become operative under Act March 3, 1881, c. 138, mentioned above. United States v. Koch, 40 Fed. 250. That act is therefore omitted.

The Trade-Mark Act of Feb. 20, 1905, c. 592, post, §§ 9485, 9487-9511, 95139516, contained more comprehensive provisions than those of said Act March 3, 1881, c. 138, and may be regarded as superseding said act. See notes to said Act Feb. 20, 1905, c. 592, § 1, post, § 9485.

§ 9485. (Act Feb. 20, 1905, c. 592, § 1, as amended, Act May 4, 1906, c. 2081, § 1, and Act Feb. 18, 1909, c. 144.) Registration of trade-marks authorized; requisites of application therefor; fees and other requirements.

The owner of a trade-mark used in commerce with foreign nations, or among the several States, or with Indian tribes, provided such owner shall be domiciled within the territory of the United

States, or resides in or is located in any foreign country which, by treaty, convention, or law, affords similar privileges to the citizens of the United States, may obtain registration for such trademark by complying with the following requirements: First, by filing in the Patent Office an application therefor, in writing, addressed to the Commissioner of Patents, signed by the applicant, specifying his name, domicile, location, and citizenship; the class of merchandise and the particular description of goods comprised in such class to which the trade-mark is appropriated; a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trade-mark has been used; a description of the trademark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner. With this statement shall be filed a drawing of the trade-mark, signed by the applicant, or his attorney, and such number of specimens of the trade-mark as actually used as may be required by the Commissioner of Patents. Second, by paying into the Treasury of the United States the sum of ten dollars, and otherwise complying with the requirements of this Act and such regulations as may be prescribed by the Commissioner of Patents. (33 Stat. 724. 34 Stat. 168. 35 Stat. 628.)

This was the first section of the Trade-Mark Act of 1905, entitled "An act to authorize the registration of trade-marks used in commerce with foreign nations or among the several States or with Indian tribes, and to protect the same."

Sections 2-30 of the act are set forth post, §§ 9487-9511, 9513-9516.

This section, as originally enacted, contained, after the words "description of goods comprised in such class to which the trade-mark is appropriated," as a further clause, the words "a description of the trade-mark itself"; and to this clause was added, by the amendment of the section by Act May 4, 1906, c. 2081, § 1, cited above, the words "only when needed to express colors not shown in the drawing." Section 4 of said amendatory act of May 4, 1906, c. 2081, provided that the act should take effect July 1, 1906.

By further amendment of this section by Act Feb. 18, 1909, c. 144, last cited above, the whole of said clause previously amended was omitted, and after the sentence next following it was inserted the provision, “a description of the trade-mark itself shall be included, if desired by the applicant or required by the Commissioner, provided such description is of a character to meet the approval of the Commissioner," making the section read as set forth here. This act superseded the Trade-Mark Act of March 3, 1881, c. 138, 21 Stat. 502, entitled "An act to authorize the registration of trade-marks and protect the same," and also Act Aug. 5, 1882, c. 393, 22 Stat. 298, entitled "An act relating to the registration of trade-marks." Section 30, of this act, post, § 9516, repealed all inconsistent acts and parts of acts, except so far as they might apply to certificates of registration issued under the Trade-Mark Act of March 3, 1881, c. 138, and Act Aug. 5, 1882, c. 398.

Said Trade-Mark Act of March 3, 1881, c. 138, was as follows: "Be it enacted, &c. 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 statement specifying name, domicile, location, and citizenship of the party applying; the class of merchandise and the particular description of goods comprised in such class

to which the particular trade-mark has been appropriated; a description of the trade-mark itself, with fac-similes 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 trade-mark has 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, 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 trade-mark 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 trade-mark is used in commerce with foreign nations or Indian tribes, as above indicated; and that the description and facsimiles 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 be noted and recorded. But no alleged trade-mark 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 of 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-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 thirty years from its date except in cases where the trade-mark 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 trade-mark 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 be 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 trade-mark.

"Sec. 7. That registration of a trade-mark shall be prima facie evidence of ownership. Any person who shall reproduce, counterfeit, copy or colorably imitate any trade-mark registered under this act and affix the same to merchandise of substantially the same descriptive properties as those described in the registration, shall be liable to an action on the case for damages for the wrongful use of said trade-mark, 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 trade-mark used in foreign commerce or commerce with Indian tribes, as aforesaid, and to recover compensa

tion therefor in any court having 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 any case when the trade-mark 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 trade-mark, or of himself as the owner of a trade-mark 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 at law or in equity which any party aggrieved by any wrongful use of any trade-mark 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 a claim to a trade-mark 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 trade-mark 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 and prescribe forms for the transfer of the right to use trademarks and for recording such transfers in his office.

"Sec. 13. That citizens and residents of this country wishing the protection of 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."

Said Act Aug. 5, 1882, c. 393, was as follows:

"Be it enacted, &c., That nothing contained in the law entitled 'An act to authorize the registration of trade-marks and protect the same," approved March third, eighteen hundred and eighty-one, shall prevent the registry of any lawful trade-mark rightfully used by the applicant in foreign commerce or commerce with Indian tribes at the time of the passage of said act.'

The Commissioner of Patents was authorized to make regulations for proceedings for registration of trade-marks under this act, by section 26 thereof, post, § 9511.

Provisions for the protection of trade-marks on foreign articles, etc., exhibited at the Panama-Pacific International Exposition were made by Act Sept. 18, 1913, c. 14, §§ 2-6, post, §§ 9525-9529.

§ 9486. (Act May 4, 1906, c. 2081, § 3.) Owners of trade-marks having manufacturing establishments in United States entitled to registration and protection of trade-marks on products of such establishments.

Any owner of a trade-mark who shall have a manufacturing establishment within the territory of the United States shall be accorded, so far as the registration and protection of trade-marks used on the products of such establishment are concerned, the same rights. and privileges that are accorded to owners of trade-marks domiciled within the territory of the United States by the Act entitled "An Act to authorize the registration of trade-marks used in commerce with foreign nations or among the several States or with Indian tribes,