Published in Landslide Vol. 11 No. 4, ©2019 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
The history of federal trademark law is almost as old as the Constitution.1 In 1791, a Massachusetts sailcloth manufacturer petitioned for a federal trademark law. The matter was referred to Secretary of State Thomas Jefferson. Jefferson responded by writing a report suggesting that such a law would in fact be prudent, recommending that for marks used in interstate commerce and beyond, the manufacturer should be able to register its mark with the local U.S. district court.2 This would secure rights in the mark nationwide, similar to the system for registering copyrights enacted the previous year. Such a law would have perhaps encouraged the development of nationwide commerce more quickly than it developed, but it was not to be. No action is recorded in Congress, and it would be almost seven decades until any such action was forthcoming.
Instead, the development of trademark law was largely left to the states, and doctrines like passing off were well established at common law by the 1850s. States also began enacting their own trademark laws, starting with New York in 1845.3 The first documented bill for a federal trademark law was introduced in March 1860, but ran aground quickly on concerns as to whether the federal government had power to pass it (other more significant things going on at the time likely did not help).4 A similar bill was introduced in 1862, when even greater distractions were afoot, and no action was taken on it.5
With the close of the Civil War, international trade was once again in focus, and concerns about international trademark infringement became more prominent, especially regarding European infringements of American-made watches. In 1868 and 1869, the United States entered treaties for reciprocal protection of trademarks with Russia, Belgium, and France. What was then known as the Patent Office began to receive registrations of trademarks, even though they lacked any statute executing these treaties and providing for a federal trademark regime.
The patent and copyright laws were already in the midst of a revision, and thus the first federal trademark law was appended to that bill.6 To this day, it is the only bill to pass revising all elements of federal intellectual property law at once. The 1870 revision was passed, with the trademark provisions receiving no special notice. In fact, because the trademark provisions of the law were drafted specifically in response to concerns of executing international treaties, no attention was paid as to whether a limitation to interstate commerce was needed for constitutional purposes, as one of the leading members of Congress behind the bill stated in an interview a decade later. The new act set up a system for the registration of trademarks at the Patent Office, and the Office quickly issued rules for the registration of trademarks.
The trademark provisions of the 1870 Act underwent a number of revisions in their first decade. Most notable was the addition of criminal penalties for certain trademark infringements, a controversial move that had to overcome some opposition to be passed.7 However, a law review article in 1878, published in two parts, questioned whether the trademark provisions of the 1870 Act were constitutional.8 A federal court in Wisconsin concurred in this assessment, in a case about dueling manufacturers of cheap tobacco in late 1878.9 Similar defenses were raised in three other cases around the same time: in New York by two label printers accused of printing counterfeit labels of G.H. Mumm and Piper-Heidsieck champagne, and in Cincinnati in a criminal case as part of a broader disagreement over ownership of the O.K. mark (short for Old Kentucky) for whisky. These three cases would be consolidated on appeal before the U.S. Supreme Court, in a case the reporter of decisions would call the “Trade-Mark Cases.”
In practice, though, only the O.K. whiskey case was really argued, presumably a strategic choice to focus the question of constitutionality on the copyright clause of the Constitution. The brief for the Cincinnati defendants asserted, in prose that perhaps indicated a twinkle of the eyes:
We have the right, for aught that appears, to hold our high opinion of our clients and their goods, and to believe that in the general rush for the very superior article they manufacture and sell under this trade-mark, no Kentuckian, deserting his inferior home-made drink, will ever be in season to buy any, or if he do, to conclude that the temptation for immediate consumption will be too strong for resistance, and that he will drink it before reaching the bridge or ferry. Doubtless, in this generation, all good things originate in Ohio, as in the reign of James the First all deserving persons came from Scotland, but then they required exportation, whereas the highly cultivated and thirsty people of Ohio furnish a sufficient home market, at least for whisky, and are even open to the suspicion of assuaging their thirst with imported liquor also. And however desirable it may be that liquor of our client’s manufacture should be substituted for the vile article which has decimated the Indian tribes, the record furnishes no suggestion that any “O.K.” or “Seal and Ribbon” whisky has ever reached, or is likely to reach, the parched throat of the red man. Ohio, we may believe, has not yet more than enough for the uses of her own sons and daughters.10
According to what reports exist, the argument of the Trade-Mark Cases was somewhat anticlimactic. The law’s defenders had all but given up on the argument that a trademark was a “writing” within the meaning of the Constitution, and thus focused their arguments on interstate and foreign commerce, as well as an unformed version of the treaty power argument. However, the focus on the Ohio case—where there was no evidence the mark was being used interstate or with Indian tribes—made things difficult for defenders of the law on grounds of interstate commerce. Given a lack of precedent, there is no reason to believe the argument based in the nascent treaty power had an easier time before the Court.
The Supreme Court issued its decision in the Trade-Mark Cases in the latter part of 1879, holding the entire 1870 Trademark Act, and its subsequent amendments, unconstitutional.11 As expected, the Court quickly dismissed talk of using the copyright clause of the Constitution as the basis for the laws, and found that without an explicit limitation to interstate commerce, the law could not be premised on the commerce clause. Justice Miller’s unanimous opinion included a fair bit of dicta as to whether a trademark was truly used in commerce or was simply an instrumentality thereof—a distinction completely outdated now, but taken seriously at the time. Finally, the Court indicated that the treaty power argument had not been properly addressed, and if given a statute that relied on such a power, the Court would determine its constitutionality then. And with that, the United States had no federal trademark law again.
The reaction was not as panicked as one might expect. Foreign governments were concerned, but the United States Trademark Association (formed shortly after the lower court decision holding the trademark laws unconstitutional) decided that domestic federal trademark law was not a priority, and state laws would be sufficient for everything but international commerce. There was more concern about the status of existing registrations. The Patent Office suspended existing registrations, but continued to accept new registrations provided the applicant was aware of the current uncertainty regarding trademark law. A particular concern of domestic trademark holders was getting registration fees returned, which spawned litigation of its own. Regardless of domestic trademark concerns, though, everyone agreed that a new law to comply with treaty obligations was needed.
Concerned by the dicta in the Trade-Mark Cases indicating that the commerce clause might not be relevant to trademarks, an amendment to the Constitution was introduced, giving Congress the power to legislate to protect trademarks. This would have solved the problem, of course, but it faced an uphill battle in the court of popular opinion, where media sources covering the issue viewed amending the Constitution for trademarks with suspicion.12 In any case, it was “very manifest” that the amendment could not get the requisite two-thirds majority necessary for a constitutional amendment.13 Somewhat surprisingly, such an amendment would be proposed again in the following Congress in 1882, and six more times in American history—twice in the early 1910s, and four more times following the passage of the Lanham Act in 1946. However, each time cooler heads have prevailed, and legislation under existing provisions of the Constitution was deemed sufficient.
In 1880, Congress decided against the risk to include marks used in interstate but not international commerce, following the Supreme Court’s dicta suggesting that a trademark law based on the commerce clause would also fail. Instead, a bill came out of committee that was limited to trademarks used in commerce with foreign nations and Indian tribes, with its constitutional predicate being the power to make treaties, not the power to regulate commerce. Otherwise, the bill was largely along the lines of the 1870 Act, but it entirely omitted the criminal provisions of the 1876 amendment. The bill’s author, Representative Hammond, felt that the criminal sanctions provided for were entirely incongruous with the evil they sought to punish, noting on the floor of the House of Representatives:
On an American vessel in mid-ocean is a young girl returning home. In charge of the master, she has the right to be secure against even discourtesy. But forgetful of his duty as a man, despising his sacred trust, in the darkness of night he attacks her, alone, friendless, helpless, and with threats seduces and deflowers her. In Georgia we could put one at hard labor for twenty years for such a crime. Death would be too good for the scoundrel. But see that man at the bar of a United States court, convicted of thus violating section 5349 of the Revised Statutes, and hear the judge, burning with virtuous indignation, pronounce on him the extreme penalty of the law, a fine of $1,000 and imprisonment for twelve months. And imagine him adding, “I regret that you are not found guilty of fraudulently putting a false drink in a bottle having on it the trade-mark of LL whisky; for then I could punish you at least double as much as I can for this diabolical crime.14
The exclusion of criminal penalties was broadly accepted, and trademark law would not have federal criminal sanctions again until 1984. The new bill was signed into law in 1881, and America once again had a federal trademark law—kind of.15 While major trademark owners were content to rely on state law in 1879, the limitations of state law for regional or national brands quickly became apparent. The first subsequent proposal to amend trademark law to include trademarks used in interstate commerce was introduced in Congress in 1885. In the time after the passage of the 1881 Act, the United States continued to sign reciprocal trademark protection treaties with other nations, and in 1887, the United States joined the fairly new Paris Convention for the Protection of Industrial Property. In this period, industry was going at a rapid clip, but the number of trademarks registered per year was fairly low—staying below 2,000 a year until the twentieth century, and going only slightly higher in the first years of the new century.
Seeing that the 1881 Act was becoming increasingly unwieldy, in 1898 Congress appointed commissioners to write a report investigating the current state of trademark law and to recommend revisions. In 1900 the commissioners did just that, in a lengthy report which, among other things, recommended passage of a new trademark law that offered protection to trademarks used in interstate commerce.16 While this was seen as desirable generally at this juncture, in 1903 the Supreme Court forced the issue, holding in Warner v. Searle & Hereth Co. that de minimis international trade in a mark was insufficient for purposes of the 1881 Act, and that unless the infringement was in international commerce, the 1881 Act would not apply.17
Suddenly an annoying system became intolerable. In less than two years, a law based on that suggested by the commissioners a few years earlier became law.18 The United States finally had a federal trademark law that protected against domestic infringement. Trademark owners responded as one might expect: in 1905, trademark registrations doubled to over 4,000, and a year later more than 10,000 were registered. Anachronisms and inefficiencies would remain in the new law, but with federal law now protecting trademarks in earnest, the march could begin toward a modern trademark law, passed roughly 40 years later as the Lanham Act.
1. Edward S. Rogers, Some Historical Matter Concerning Trade-Marks, 9 Mich. L. Rev. 29 (1910), reprinted in 62 Trademark Rep. 239, 251 (1972). Other suggested readings on the subject include John T. Cross, The Lingering Legacy of Trade-Mark Cases, 2008 Mich. St. L. Rev. 367; and Paul Duguid, French Connections: The International Propagation of Trademarks in the Nineteenth Century, 10 Enterprise & Soc’y, no. 1, Mar. 2009, at 3.
2. Thomas Jefferson, Report on the Policy of Securing Particular Marks to Manufacturers by Law, in 3 The Writings of Thomas Jefferson 156–57 (Andrew A. Lipscomb ed., 1903).
3. 1845 N.Y. Laws 304–05.
4. H.R. 330, 36th Cong. (1860).
5. H.R. 235, 37th Cong. (1862).
6. Patent, Copyright, and Trademark Act of 1870, 16 Stat. 198.
7. Act of Aug. 14, 1876, chs. 273–274, 19 Stat. 141.
8. Wm. Ritchie, Jurisdiction of Federal Courts in Trade-Mark Cases I, 7 Cent. L.J. 143 (1878); Wm. Ritchie, Jurisdiction of Federal Courts in Trade-Mark Cases II, 7 Cent. L.J. 163 (1878).
9. Leidersdorf v. Flint, 15 F. Cas. 260 (C.C.E.D. Wis. 1878).
10. Argument for Defendants at 12, Trade-Mark Cases, 100 U.S. 82 (1879).
11. Trade-Mark Cases, 100 U.S. 82.
12. Tinkering the Constitution, Hartford Courant, Dec. 11, 1879, at 2.
13. Tending Towards Debate, in the House, Wash. Post, Dec. 18, 1879, at 1.
14. 10 Cong. Rec. 2704 (1880).
15. Act of Mar. 3, 1881, 21 Stat. 502.
16. Report of the Commissioners Appointed to Revise the Statutes Relating to Patents, Trade and Other Marks, and Trade and Commercial Names, S. Doc. No. 56-20 (2d Sess. 1900).
17. 191 U.S. 195 (1903).
18. Act of Feb. 20, 1905, ch. 592, § 1, 33 Stat. 724.