42 App. D.C. 321 | D.C. | 1914
delivered the opinion of the 'Court:
The property right in a trademark under our statute is not essentially different from that accorded at common law. The analogy is concisely stated in the opinion of the court below, as follows: “The whole history of the law of trademarks negatives the idea that where a statute has provided for their registration for a definite period, with provision for renewal, we should expect to find in such legislation a requirement that all conditions prerequisite for original registration should be complied with when a renewal is sought. At common law trademarks did not expire by lapse of time. The rights acquired thereby were limited only by the period of their use, and ceased only with their abandonment. When, therefore, legislation required their registration, renewals were made necessary for the sole purpose of negativing their abandonment. And when the fact of a continued user was manifested by the application for renewal, it would seem to be logical that the renewal should issue as a matter of course, without going through the elaborate procedure which was a prerequisite to their original registration.” It therefore appears that the right once acquired being perpetual and subject to forfeiture only in case of abandonment, registration amounts only to a record of existing trademark rights, and thé object of renewal is to malee the record as nearly as possible one of actual rights. Renewal in no sense confers new rights. It is a correction of the record to the date of renewal by the registrant or owner of the mark asserting his ' continued use of it, and therefore title in it.
The reasonable interpretation of the trademark act will not sustain the contention of the Commissioner that a request for a renewal is to be treated as an original application. While it is true that a registration under an original application does not confer title to a mark, but only accords it the right of record, the statute in terms defines the procedure essential to secure such registration. The duty of a general investigation of the applicant’s title is imposed upon, the Commissioner before granting an original registration. But let it then appear that
' Sec. 6 of the act provides that on filing an application for registration “the Commissioner of Patents shall cause an examination thereof to be made.” If such examination was contemplated in the case of a request for renewal, it would seem that the statute would have so provided. That no such provision was made warrants the conclusion that no examination was intended. If the same procedure is open to the Commissioner in case of renewal as in original registrations, Congress must be imputed with having done a vain thing in the enactment of sec. 12, since renewal could as well be accomplished by an original application for re-registration. “It is the duty of the court to give effect, if possible, to every clause and word of a statute.” Montclair Twp. v. Ramsdell, 101 U. S. 141, 152, 21 L. ed. 431, 432, 2 Sup. Ct. Pep. 391.
But will sec. 12, considered alone, bear the construction sought to be placed upon it by the Commissioner ? It will be observed that the twenty-year limitation upon the period of registration and the right of renewal are coupled in the same section of the act. It does not provide that the rights acquired under the original registration shall terminate at the end of twenty years, but it provides that the certificate “shall in no case remain in force more than twenty years, unless renewed.” This is equivalent, we think, to a declaration that the rights under the original certificate may be perpetuated by request for renewal, and such request shall be accepted as prima facie evidence that the mark has not been abandoned. In other words, it is intended that the rights originally acquired shall continue, and not that new rights shall be granted at the end of twenty years as the result of an investigation by the Commissioner.
But the act specifically provides procedure for renewal. “Certificates of registration may be from time to time renewed for like periods on payment of the renewal fees required by this act, upon request by the registrant, his legal representa
As admitted by the pleadings, in most foreign countries, as in this, continuous registration at home is essential to protect rights acquired under a foreign registration. An application for renewal cannot be filed until within six months of the expiration of the twenty-year period. Hence, adopting the contention of the Commissioner, the procedure may well become so involved as to create a lapse of time which .would forfeit the applicant’s rights under his foreign registration, and render the mark subject to appropriation there. It cannot be that-such was the intention of Congress, nor will the act reasonably admit of such an interpretation.
The decree is affirmed. Affifined.