The New York herald. [volume] (New York [N.Y.]) 1840-1920, 1879-11-26


The decision Of the Supreme Court setting
aside the federal trade mark statutes has
caused no little CONSERVATION in COM
mercial circles, and has given rise to much
speculation as to what rights, if any, owners
of trade marks may hereafter assert. The
opinion seems to have gained some currency
that all means Of protection, future as we'll
as present, have been swept away by the
Judgment of the Supreme Court. and that
the eight thousand trade marks registered in
the Patent Office have become the legitimate
spoil of any persons who may not scruple
to appropriate them. On the other hand.
the numerous inquiries concerning pending
and future applications for registration that
have been received in Washington from
various parts of the country indicate that
a considerable number of those whose inter-
ests are vitality affected have some faith, or
at least hope. that, by legislation or other
wise, the unfavorable consequences of the
decision may be overcome, or TINT some
how or other the advantages of the law
which has been annulled may be regained
These facts show that erroneous impress
sions exist as tothe effect of the opinion
given by the Supreme Court and as to the
legal condition in which trade marks are
now left.
The Court declares that the existing fed
eral statutes for the protection of trade
marks are void for the reason that Congress
had no constitutional authority to pass
them. There are two, and only two, pro-
visions in the constitution that were cited
as authority for this legislation. These
are the clauses which empower Con-
gress, first, to pass laws securing
for limited times to authors and invent
ors the exclusive right to their respective
writings and discoveries" and second, ''to
regulate commerce with foreign nations and
among the several States" The Court seems
to have had no doubt that trade mark is
neither a discovery, IN invention nor q
writing, and hence that no authority for
Congressional legislation on the subject of
trade marks is found in the first clause just
cited. The commerce clause of the consti-
tuition authorizes legislation regulating in
ternational or interstate commerce, but
not commerce confined within the
boundaries of State. The Court found
that the trade mark legislation Of Congress
was not restricted to interstate or inter-
national commerce, but that it was equally
applicable to all trade and to commerce be-
tween all points. This intrastate feature
or operation of the law, as the Court held,
vitiated the legislation in question and
gave to it character which put it beyond
the constitutional powers of Congress.
OF course no federal statute SO unre-
stricted in its operation as that which has
been annulled can hereafter be made with
out an amendment to the constitution.
But the Court openly disclaimed the
expression of any opinion against the
power of Congress to pass laws giving effect
to treaties for the protection of foreign
trade marks, and it did not deny that a
trade mark statute applying only to inter-
national or interstate commerce might be
constitutional There is nothing, then, in
this decision to prevent Congressional legis-
lation in the matter of foreign trade marks.
But it practically renders impossible any
federal statutory protection for domestic
trade marks For, admitting that there is
no constitutional objection to trade mark
law applicable exclusively to trade
among the States, such law for
obvious reasons would be practically use-
less. The only statutory protection, then,
that the merchants and manufacturers of
the country can look forward to for what
has been called their commercial signatures
must be in the form of State legislation.
Acts of this kind now exist in some Of the
States and will doubtless be passed in
Others But they cannot take the place Of
federal trade mark statute any more than
State insolvent acts can serve the purpose
of national bankrupt law.
But, independently of federal or State
legislation, property in trade marks Is
recognized and protected by the common
law, which affords remedy by injunction
and action for damages in case Of infringe
ment. Long before any statute for this
purpose was passed by Congress the COM
mon law courts were open for redress to
the owners of violated trade marks. In
fact, four-ffths of all the trade mark liti-
CATION that has arisen in this country has
come up not under the statute but at COM
mon law. 1t is true that the advantages
secured by national statute are much
greater than those afforded by the common
law. The remedies are more effective and
complete in the former than in the latter
case. One of the acts of Congress which
have been annulled provided for criminal
proceedings against counterfeiter of trade
marks only civil remedies are afforded by
the common law The federal statute Sc.
cured tho exclusive right to trade mark
from the date Of registration; the common