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to overcome its defects and inefficiencies by drawing power more directly from the locomotive as steam for operating a vacuum refrigeration system. Still another system depends upon an internal combustion motor driven by propane stored underneath the car for its power, each car having a completely independent plant of its own. These and other refrigeration systems are replacing units in which ice is the cooling agent. Rapid strides in this field assure increasing passenger comfort in the future. Almost as significant from the passengers’ standpoint as any of these developments is the trend towards design of trains as complete units. Passenger requirements and desires are being met in increasing degree by the inclusion in unit trains of all reasonable services. By integrating these into welldesigned equipment, designers are providing greater economy of operation, vital to the railroads, and greater travel comfort on which depends increased patronage.
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Obvious throughout the railroad world today is the investigative spirit of research, both into the physical requirements of efficient transportation and into the too-long-neglected aspects of consumer service necessary to increased use of railroad facilities. Cooperative research by the Association of American Railroads through numerous active committees, by organizations supplying equipment and materials, and by independent and quasi-independent agencies is actively developing our railroad systems to meet modern needs well. The value of this movement to all concerned is obvious.
Literature Cited (1) Am. Assoc. Railroads, Mech. Div.’, Report of Comm. on Air Conditioning and Equipment Lighting at Atlantic City, N. J., June 18, 1937. (2) Winterrowd, N’. H., paper presented before Mech. Div., Assoc Am. Railroads, Atlantic City, N. J., June 17, 1937. R B I C E I V July ~ D 13, 1937.
Lost Monopolies of Names and Things E. W. LEAVENWORTH Watson, Bristol, Johnson & Leavenwortb, 6 East 45th Street, New York, N. Y.
T
HE fate that has overtaken such well-known names as
aspirin and cellophane has aroused interest and comment, and some of the comment is decidedly pessimistic. It is said, for example, that the manufacturer who invents a name to use as his trade-mark, and who succeeds in making it so well known that it comes into common usage, is likely, because of his success, to lose the monopoly of the name just when it has become most valuable. Questions are asked as to ways and means of avoiding the risk of losing the monopoly. Has anything helpful been learned, and if so what is it? How would a prudent person proceed from the start in order to adopt a trade-mark and make it valuable without risk of losing it?
Cellophane The histories of the lost monopolies are strikingly alike, but none teaches so many helpful lessons as that of cellophane. The word cellophane was coined in France in 1909 by Brandenburger, an inventor whose inventions are credited with the production and use of cellophane in commerce. He coined the word as suggesting a transparent product made of cellulose, but was not content to use it as aproduct name. He wanted to monopolize it, so he registered “ L a Cellophane” as a trade-mark. He did not coin any other name for the product although commercially it was a new product which had never been known to the public or sold, and which had no name even among chemists other than a chemical description. He permitted it to go nameless commercially except in so far as the name which he claimed as a trademark might be used as the name of the product. So the labels on the first shipments of the product to this aountry in 1911 read “Cellophane” or “La Cellophane” with nothing more except specifications of color, size, etc. The meaning conveyed by such labels was that the packages con-
tained cellophane. It was not that the packages contained the Cellophane brand of some otherwise known thing. The labels introduced the word cellophane as the name of a new product. The advertising followed the lead of the labels by featuring cellophane, not as a brand, but as the product itself, a “superior wrapping material.’’ Some of the advertisements stated that “Cellophane” was a registered trade-mark (the word having been registered here by an importer) but used the word as the name of the product. Other publicity of the period, such as an occasional article or news item in a newspaper, magazine, or scientific journal, used the word cellophane as the name of the product and helped to make the word a part of the common vocabulary. When an American manufacturer took over the United States business in 1923, the word cellophane had been used and known as a product name in this country for twelve years. It would have been It then to build up for the that ceQophane is not just word a new meaning to the a product but a particular brand of a product. It would have been impossible to do so without teaching and persuading the public to adopt another name for the product sufficiently specific to be capable of identifying the product as distinct from all other materials. Without such a name purchasers of the product would have no name except cellophane which they could use with assurance that they would get what they wanted, other manufacturers would be unable to compete unless they could sell their product as cellophane, and the alleged trade-mark monopoly would be a perpetual product monopoly in disguise. This brings us to the main lesson taught by cellophane and the other lost monopolies : A product or thing may lawfully be monopolized only by patent and during the patent period. When it appears that the monopoly of a name will result in
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the monopoly of a product or thing, the monopoly of the name is unlawful and unenforcible. Some of the cellophane patents did not expire until 1928, and up to that time the American manufacturer had the monopoly of the product and, incidentally, of the name. This was not because the name was a valid trade-mark but because the patents shut off competition. The assured monopoly of the name for some years to come probably tended to create a sense of security and a lack of concern as to the future. I n any event, the American manufacturer took no step in 1923 towards giving the product a new name in order to make a valid trade-mark out of the old one. On the contrary, the manufacturer announced that he had acquired the rights to “the product known as cellophane,” and thereafter proceeded, in all advertising, to utilize to the utmost the selling power of the word cellophane, not as a trade-mark, but as the name of a desirable product. The manufacturer also encouraged customers to advertise their products as “Wrapped in Cellophane,” or to use similar phrases using the word descriptively, and as late as 1929 distributed to customers a folder of reprints of “Wrapped in Cellophane” advertisements with a letter pointing out that this was the way “to obtain the utmost value from the use of Cellophane.” The manufacturer did put on the cellophane labels and advertisements a statement to theeffect that “Cellophane” was a registered trade-mark for “transparent cellulose sheets and films.” The difficulty with this, primarily, was that the name quoted was not specific enough to distinguish cellophane from a number of other transparent cellulose products. In this connection the Circuit Court of Appeals said [Du Pont Cellophane Company v. Waxed Products Company, 85 F. (2d) 75, 791: In 1927 the Du Pont Company began t o place on its labels underneath the oval mark, in small type, the statement that: “Cellophaneis the registered trade-mark of Du Pont Cellophane Company, Inc., to designate its transparent cellulose sheets and films.” Its general manager testified that if he wanted t o buy from a dealer the particular product, which is a hydrate, and he wished the dealer to understand that he did not desire t o buy an acetate or glassine, cellophane was the only word to use that would be understandable. Other difficulties were that the name quoted was not used until 1927 and was printed so inconspicuously that it was not observed and did not become known to the public. The court found that the word cellophane “ordinarily signifies the cellulose product we have been discussing and nothing more” and is “the descriptive word in general use,’’ and that the lower court’s finding that the word is a valid trade-mark was (‘not only not warranted by the evidence but clearly disproved.” The opinion also includes the following statement [85 F. (2d) 75,811 : The District Court erred in concluding that “the trade-mark cellophane does not depend upon what was in the customer’s mind” and in deciding the case on the theory that the public understanding as to the meaning of the word was immaterial. Such a theory is out of accord with the essence of the law of trademarks. The rights of the complainant must be based upon a wrong which the defendant has done to it by misleading customers as to the origin of the goods sold and thus taking away its trade. Such rights are not founded on a bare title to a word or symbol but on st cause of action to prevent deception. It, therefore, makes no difference what efforts or money the Du Pont Company expended in order to persuade the public that “cellophane” means an article of Du Pont manufacture. So far as it did not succeed in actually converting the world to its gospel it can have no relief. The comparable statement in the aspirin case is as follows (Bayer Company u. .United Drug Company, 272 Fed. 505, 509) : The single uestion, as I view it, in all these cases, is merely one of fact: h a t do the buyers understand by the word for
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whose use the parties are contending? If they understand by it only the kind of goods sold, then, I take it, it makes no difference whatever what efforts the plaintiff has made to get them to understand more. He has failed, and he cannot say that, when the defendant uses the word, he is taking away customers who wanted to deal with him, however closely disguised he may be allowed to keep his identity.
How Trade-Mark Rights Are Created Some people may have the impression that every newly coined word such as cellophane or aspirin is necessarily a valid trade-mark a t the start because it is a new word which nobody has ever used before. It is merely a potential trademark. It is in the same situation as “telephone” once was, or “telegraph,” “automobile,” “airplane,” “radio,” or any other word which may be capable of functioning as a trademark and which has not been used before on that kind of merchandise. Trade-marks are not created by coining them, or by calling them trade-marks, or by registering them as trade-marks. The rights which we have in mind are created under our law by making what we call a “trade-mark use” of the wordor mark which is to be the subject of the rights, and by being the first to do so with respect to the class of goods which the user sells. A trade-mark use is made by using the trade-mark on goods sold in commerce, and by using it in such manner and under such circumstances that it indicates to observers a particular brand or make of the goods and not the kind of goods. We are here concerned with a narrowly limited class of names which were once claimed as trade-marks but are now said to have ‘(becomepublic property.” In most cases they never became trade-marks. The name cellophane was never used on the goods in such manner and under such circumstances that it indicated a brand or make of the goods and not the goods themselves. The goods were new and nameless, and the word cellophane was used on them in such manner that it appeared to be the name of the goods. This was also true of aspirin, kerosene, liholeum, featherbone, and other names once claimed as trade-marks. Each of these names was made known as the only name for the goods, and a monopoly of any of them would have been the equivalent of a perpetual monopoly of the goods. This is also true of a name which is made known as the only name for a particular species of a familiar genus of goods, ‘such as a species formerly made under a patent or patents. Among the lost monopolies in this category are the name Singer for the type of sewing machine formerly made under the Singer patents (Singer Manufacturing Company v. June Manufacturing Company, 163 U. S. 169), and the name Rahtjen’s Patent Composition for the type of boat-bottom paint formerly made under patent (Holzapfel’s Company v. Rahtjen’s Company, 183 U. S. 1). The name Dry Ice got into trouble for a different reason. It was not even a potential trade-mark because it was descriptive of the goods from the start [Dry Ice Corporation v. Louisiana Dry Ice Corporation, 54 F. (2d) 8821. The difference between a descriptive name and a generic name is that the former describes the goods whereas the latter is used as the name of the goods. All generic names are in a sense descriptive but all descriptive names are not generic. The cases in which trade-marks have been held invalid because of descriptiveness are numerous, and in most of them the name was merely descriptive of the character or quality of the goods and was not also used as the name of the goods. Dry Ice happens to be a case where the descriptive name was also used as the name of the goods, although the holding of invalidity was based on its descriptiveness. Another name which may prove to be of the same sort is Shredded Wheat, but Shredded Wheat has recently been held, on reargument of a
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case, not to be descriptive (National Biscuit Company v. Kellogg Company, C. C. A. 3, April, 1937). This decision may possibly be reviewed in further court proceedings.
Dangers in Advertising Policies The steps that should be taken for trade-mark protection are not methods that a good sales or advertising manager would follow for the purpose of increasing sales. On the contrary, they are methods that may retard sales for a time. It takes longer to “popularize” two new names, such as a new trade-mark and a new product name, than to Copularize one. It is natural to attempt to produce quick results. As a consequence the importance of the “long pull” value of a trade-mark is sometimes overlooked, and the opportunity to enjoy a monopoly in the future is sacrificed t o present sales. This shortsighted policy can be corrected, where it exists, by tempering sales and advertising efficiency with the prudence and caution that knowledge of the frailties of trade-marks gives. As Justice Holmes once said, the monopoly of a trademark “deals with a delicate matter that may be of great value but that easily is destroyed, and therefore should be protected with corresponding care” (Bourjois & Company v. Katzel, 260 U. 8 . 689,692). Allan Brown, advertising manager, Bakelite Corporation, and chairman of the board, Association of National Advertisers, recently called attention to the danger of permitting trade-marks to be used as generic names.’ Brown is obviously well informed on the subject of trade-marks, but his point of view is necessarily that of a n advertising expert. The best suggestion he could bring himself to make as to the way t o prevent trade-marks from being used as generic names was “to make occasional use of the generic name if there is one or devise one.” Unfortunately he qualifies even this mild advice by turning a longing eye on the very sort of generic use that has been fatal to the maintenance of trade-marks: A method of concentrating attention on a product is to use the trade name in entire substitution for the common name, instead, as is usually done, of supplementing the common name. Thus Kodak, Bakelite, Kelvinator, Ship, Pepsodent, Alemite, Mobiloil, Calavo, are much more effective than if used to qualify camera, resinoid, refrigerator, ink, tooth paste, oil, greasing process, and avocado. Thus used they perform the very valuable function of excluding from the mental reaction of the reader, all mention, even by inference, of other makes of these classes of articles and even connote their nonexistence which, after all, is the very “reason for being” of publicizing a trade-mark. 1
J. Palent Ofice Soc., 1 9 , 96, Feb., 1937.
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The fact that a suggestion such as this was made as late as last February by the head of the Association of National Advertisers shows how important i t is to remind ourselves repeatedly of the fate that overtook aspirin and cellophane.
Conclusions I n order to adopt a trade-mark and make i t valuable without risk of losing it, a prudent person would proceed as follows : 1. If the product is entirely new and has no name other than a chemical description which could not be put into general use commercially, a suitable name should be invented for the product. This should be a new word such as aspirin. 2. If the product is not entirely new but differs from other products to which the same general product name is applied because it is protected by patent and nobody else is able t o make precisely the same thing, the prudent person would invent for the gatented product a new product name so that the public would e able to distinguish the product on expiration of the patent by use of this name and without being obliged to use the trade-mark. 3. The next step would be to decide on a trade-mark. This should be either a coined word or some other word, words, device, or combination not descriptive of the character or quality of the goods, not geographical, and, in most cases, not a family name. Somefamily names become entitled to full rotection as the result of long and exclusive use in particular fiefis, but a family name is always subject to the rule that anybody else of the same name has the right to use his name in the same kind of business if he does not do so in a way that deceives. 4. The trade-mark and the product name should invariably be printed in conjunction with each other on all labels and advertisements, with the product name directly after or under the trade-mark and in lettering of sufficient size in comparison with that used for the trade-mark to make it appear that the fullname is the trade-mark plus the product name. If the trade-mark is X Y Z and the product aspirin, the labels and advertisements should convey the clear impression that the product is X Y Z aspirin, and not just X Y Z . Advertisements occasionally resort to methods of calling attention to trade-marks such as arrows pointing to the trade-marks or statements to the effect that a certain word is a trade-mark. In most of these cases it will be found that product names are either lacking or printed so inconspicuously as to be almost totally eclipsed by the prominence of the so-called trade-mark, and that accordingly the advertisers are choosing t o rely on calling the term a trade-mark instead of making safe and proper use of it as a trade-mark. Above all else it should be borne in mind that an attempt to monopolize a product through use of a trade-mark is extremely dangerous, and that an attempt to do without a product name, or to submerge it, is an attempt to monopolize the product. RECEIVED June 28, 1937.
