OFFICE OF THE ATTORNEY GENERAL OF TEXAS 

AUSTIN 

Hon. Tcm L. Beauuhamp 

Searetary of State 

Austin, Texas 

Dear sir: Attention or Hr. Claude 

0plnfon No. O-983 

feet 

are herein 8 

on on the questions ea 

by this offiw. 

a8 follana: 

Brown, doing 

in San Antonio, 

ed by ami1 to 

7, this offioe wrote I&. Brown 

cation was not in order for the 

did not state how long the 

been in we by him. The requiree length of time a trademark has 

:a departmental requireinent and 

haa been in eiYeat ia 'thfs Department for a 

number of yeers. At the same time, we sdviaed 

?Jr. Brown that we w&-e emlosing an application 

r0m and that he aould rfii out the row in 

lieu of the application whioh we were returning 

to him or he could oorreat his application SO 
. . . 

. . 

Iion. Tom L. IIeauohamp, Pa.~e .2 

as to show how ions he 

trademark and/or trade 

had been usinS the 

name. 

“On Yaroh 9, 1939, ws veoelved a 

letter from Yerlon D. Johnson, advortlslw 

agent of Dalrplend, Incorporated, of San 

.wtonlo, Texas, advlslry: UC that she had 

noticed 1.7 the ‘San Antonio LlSht’ OS ?‘oroh 

4 thct ‘it. 1:. Brown Dairy had rlled wlth the 

County Clerk of Bexar C unty a facsimile 

of a proposed trademark and trade name and 

thut it contained the phrase ‘The Brlrhtest 

3,ar in the !‘llky ?laay(, that this phrase had 

been copyAChted by Dairyland, Incorporated, 

and that said Vademrk and trade name had 

been filed in the CopyrlCht Cfflce of the 

‘Federal Covernmcnt in “ashln+on, D. C., 

end that Dairyland, Incorporated had been 

uoln~ the trade ncmo and trademark since 

February 21, 1936, and attached to this 

letter was a ollpplny, from u Fort ?:orth 

newspaper puhlls::ed on February 21, 1936. 

!.!arlon D. Johnson, on behalf of Dairyland, 

Tacor?omted, protested ay,alnst this office 

approving and flllnC the prOpOSed trade name 

and trademark pre;enti:d by i7. K:. Brown !hlry. 

“On Yaroh 9, 1939, vie advised !ferlon D. 

Johnson thet our reoords did not show that 

euch a trade wime or trademark using the 

phrase ‘The &l&test Star In the E’llky ‘.‘!ay’ 

had been apeqoved and filed in this office. 

“On !‘aroh 10, 1939, this office received 

the appllcutlcn of Yelrylond, Incorporated 

to have reClst.ored as ti trademrk ‘The Drl@test Star in the T’llky Yay’, which application 

lo attached hereto and zarked Zxhlblt ‘W and 

Is attached to Exhibit *&*. 

-On l’arch 13, 1939, the corrected appllcetlon 0r the :;. I:. Bxwn Pair? was received, 

which appllcttlofi ic attacked hereto and rarkcd Exhlblt ‘C’. 
Hon. Tom L. Reauohamp, Page 3 

With all these feats before this offioe. 

It was deolded that Dairyland, Inoorporeted 

had been using thls trade name and trademark 

since Febru ry 81, 1956 and that V. K. Brown 

Dairy had used it since the 2nd day of Karoh, 

1939, or approximately ten days beSore the date 

we received their oorreated epplioatlon for 

registration of the trademark. Believing that 

the party having priority of use was entitled 

to have prererenee in the registration of the 

trademark, we approved end filed on March 17, 

1939, the epplioatlon or Dairyland, Inoorporated 

and returned, refused, the application of a. B. 

Brown Daily. 

Tie desire that you edflse us upon the 

follwing questions: 

'(1) Under the above faots, did this 

office err in epprow and filing the epplioation ror registration of the trademark *The. 

Brightest Star in the Milky Way* by Dairyland, 

Inoorpozated? 

w(2) If you have answered .the above queotion *yes', then advise us if we are authortied 

to oenoelthe regfstratlon'of Dairyland, ShpIMaEporeted." 

hrtioles 844, &Q1 an4 331, Revised Civil Statutes 

read as follwo: 

UArt. 844. Any person, firm or aorporation engnged in the delrylng business, or in 

the distribution or sale of mix?& requiring the 

we of bottles, may file in th&orfioe of the 

county clerk of the oounty in whioh it is 

expected such person, fina or corporation will 

sell or distribute milk,, a fee~simile or dewription or the name or nmues, trade name* 

mark or design used by,suah person, fina or 

oorporation for advertising purposes, and 

aeuse such fee sfmile or deeerlption to be 

published in a publlo newspaper published in 

su& oounty for three sueeasaivs weeke, and 

the act of filing and publioation ahall operate to secure to auoh de&pen, tilk dls-' 

trlbutor or ,Bsilk dealer, sole and eaolusive 
right $9 use ,ln eaid oountt_or oquntiee, aaid 

name or namee; btradS ~wne:aa~k or desiun. 

~APt:847.,~ Any gez+& firi~or:ior$tiation‘engagdd ln.t$e dui~~iag'bidnes8~oT. the 

6ale or distrlbution'of tiilki.I$o'eheiI -h&a 

filed with thb dounty'blerlt‘?of .tlje ooti+$ in - 

nh-ioh theymiy be enti$ed .fn the dle,tr;ibtiiti 

or stile ‘of ~~ilk,~ a U~UZI~ ‘q ~.nme,lj‘, trade ‘&me, 

markor design ~a8 herein prtMdsd; m6’y~oatie~ 

to be-engraved, etched, bl,pwn in or impresrBd 

OF ?>hemlee'prodiiced upoq .t he, Ifottlds ouhql 

by said porson,'flm or corporation su.oh WIQW 

or numes; trade mm~e, n&k' 'or .ti~+iz, 'snd when 

ouch mm 0.r names,.trade pame, mark or de8tin 

lo .a@ impqsoaep -tipon a l5ottla~ such bottle 

ishall'be prlma'facle the property of the pereon, ~.$.x-JI or qorportatiq whio.h, ray anpear ~upon 

the rec~rd.~f.the dff%cp'i$.'$I$e ocqt i&rk 

qf. s)rch. EorlqCy to ,y'$p .amptf .f$'pc ..paPs or 

.Q . 

qanes +dq ,JWUE~, E*rk $+;desfgn :egtJei- a8 the 

orlt$nal oqer qr h+nsfrqed, ‘a<‘hereli uro- 

~‘li’idetj.~ 

'Art; '831, E9ery pcrhn; :j~~bbolti~l& o’r 

<i.6f.t:oi%iCqgiexi; lnoorporat'dd ar,&n%,&r- 

$o,rcited;. that has%eretofore or+liilFh&firter 

ad6pt a-'b%el, traih tiark, deeign, device, imprlnt.or form OS advertiaemer$, ahall rxp3 tb8-0 ia the offi+ 0r the Seor&u*'ai Stat6 By 

'leailni: bra- rab s@ile ooplea, with the Seoretary ot State, ,end said Seo_retarv ebell,r.et.urq, 

to syop. person;' as.gobiB~Loq, .or \mioq.'~.:~IUn8 

the. ?eme, onc.of.'8ald fat #&O.e~'.eop~es ,$Iong 

with and attached to a"duiy'at~'~ed'cert'Li~obta - 

of the‘~fllln(: of sme for nhiW Q'.shEill yeceiye II flee of one..do i lar:. ,.sqqh c_er.??lrjcatf!~~ 

c$ f>lin$phaU in all,~.ul~s’ahd pr&ectiiona . 

under this chapter be ‘sufficient proof of the 

a$'option of such label, t.rede park, design,.derice, i.mpHnt or fo?m .of advcrtlcecent:;',m4:of~ 

the right of sach ~erson;~s'adoiat~on.or. Woi' 

to ud$pt-the. oaze. Yo laboli tr&Ce .r;ark, de8iq1, eevjce, lqrint'or tom0 .gf advbrti..?e&&iit 

s-hall bo filed es eforesc.ld thfit W.uId mobab'bly 
Roll. Tom L. Beauohamp, Page 5 

be mletqkeh for 8 label, trade merk, design, 

derlae, lmprlnt 0r rorm or adrertlaement already or reoord. No pewon, or aesoclatlon 

ahall be permitted to register a8 a label, 

trade n&k, doe@, derloe, imprint or r0m 

or advertisement any emblem, deelgn or resemblame thereto that ha8 bceu adopted or ueed, 

by any charitable, benevolent 07 rsliSlou8 

society or assocletloa, without their 0oneent.e 

In the case or Dlluoxth 18. Rake, 64 SH 2nd 

829, it was held the right to the use of a trade name 

belongs to tho porsoon that first appropriated the name. 

3W 2nd 905 

33 quote fros the case of Russ vs. DW, 49 

a8 fOiiOU8:' 

eyriorlty in adoption and use or tmde 

name8 confer8 a euperfor right to the ~88 

thereor, end, since appellee first ueed the 

nane tbcretofore used by the oorporatlan, 

she acquired a priority to the uee thereof 

and the appellant could not, by the mre ftllng Or such afildaVlt to 60 bU8lms8 under a 

fiCtliiOU8 name defeats appellee'o right to 

continue to use such tXe.nm8.e Aho Bee Tex. 

Sur.) Vol. 41, peg0 3S3. 

R8 quote iron. corpus rlurla, vol. 63, page8 337, 

340 ad 470 a8 rOiiOW8: 

VA trademrk is aoqulr4d by Pete adoption 

and user a8 suoh, subjeot to 8UOh Well-sstabllahod 

rule8 a8 to what nay be exolusloely approgrlated 

as a trade.-&, and as to what manner of dce will 

conetitute the mrk used a trademark. The mark 

must be used in this couutry in order to acquire 

a trader,ark,ln this country. 

*The one who firat onploys a trademark in 

oonheotion with a particular ulasa of Soode aoqulreo a prfor end cxclueive rleht to u8e it 

In oonneotion with that olaas cb goods, notwlthatandin.9 the aubaoquent user first reelstera 

the mark, end one not the orlSlnator or first 
Hon. Tom L. Z3eauohamp, Page 6 

user thereof le entltlcd only to the diatlnctlve features added by him. 

“Only the owner of a trademark has the 

rlcht to reClster it and the tradenark, trade 

naxe , symbol or de4ts.n deslgnatlnC ownership 

of a business may be rezlstered. Thou@ a 

trade name nay bc reClstered, and exclusive 

use thereby reserved under a statute authorlzlnC appropriation for use as a trademark, 

any form, symbcl cr nsmo to 6eslCnute the 

ori& or ov.ner thereof.’ 

Iu the case of Amour &. Company ye. Loulsrllle 

Provlslon Cor:pany, 283 Fed. 42, and a long list of oases 

c%ed therein the courts have held that registration does 

not oreate a trademark, nor 1s it at all essential to its 

validity. 

In the case ot Co&kran, 1911 & Company vs. A. 3. 

KuhlersnnConpany, 13G b’d. 525, the court held to entitle 

plaintiff the use of trcdemark, or to protect plalntlii 

and ltn mark aCalnst lnfrllly,ement, it was not necesrary 

that the trademark should have been registered by plalntisi. 

In the oase of CrqU Atlantic t. Pacific Tea 

canp05y’ VS. A. e F. hai Store, 20 F. Supp. 703, it wa8 

held that a title to a trademark 1s independent of its 

reClstretlon. se 

In%%% the torecoinf: authorities, you are 

respectfully aavlnea that it 1s the opinion OS this department that zour first question should be answered in 

the necatlve. Therefore, it 1s not necessary to answer 

your second question. 

?rustlnC thst the fore.TolnC answers your lnqulry, 

we are 

Very truly yours 

APp~O~~Jm 23, 1939 

tide11 Wllll~ 

Assistant