not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use it only as a mask. And so it has come to be recognized that, unless the borrower's use is so foreign to the owner's as to insure against any identification of the two, it is unlawful." This philosophy of the protection of trade-marks has recently been reconsidered by Judge Learned Hand in a case 68 where plaintiff had for more than 50 years made a continuous use of the name "Waterman" on fountain pens, and defendant, whose name was Gordon, advertised and sold his razor blades as Waterman blades. In affirming a decree for the plaintiff, Judge Hand set a limit to the doctrine of the Vogue and the Yale cases: "The goods," he wrote, "on which the supposed infringer puts the mark may be too remote from any that the owner would be likely to make or sell. It would be hard, for example, for the seller of a steam-shovel to find ground for complaint in the use of his trade mark on a lipstick."69 Although in so ruling, Judge Hand did not go as far in the functional concept of a trade-mark as did the New York court in the Tiffany case or the German court in the Odol case 70 there remains a rationale of trade-mark protection which, if applied in congressional legislation and Patent Office administration would greatly aid in formulating a sound basis for trademark registration, or rather for refusing trade-mark registration on equitable principles.

The amendment to the Vestal bill recommended to the House Committee on Patents by the writer in 1932 endeavors to crystallize the contemporaneous equit able basis of preventing unfair competition and trade-mark piracy. It reads: "When such previously used trade-mark (1) is applied to merchandise or services of the same descriptive properties, or (2) is applied to merchandise

67 Id. at 973-974.

69 L. E. Waterman & Co. v. Gordon, 72 F. (2d) 272 (C. C. A. 2d, 1934.).

69 Id. at 273.

70 See supra, note 14. If, under the doctrine of the Tiffany and Odol cases the same trade n ark may net be used on jewelry and motion pictures, or upon mouthwash and steel railroad ties, it would seem that the same would be true of steam shovels and lipsticks.

The desirability of the registration of so-called "service marks" (i. e., trade-marks for services as dan tinguished from trade marks on goods) has long been recognized by the legal profession. Thus N [op. cit. supra note 10, at 601-602], in discussing the refusal to register a trade mark of a service corporation for repairing and dyeing fabrics, states: "A trade mark must be applied or affixed to goods. Mereu the trade mark in connection with the owner's business will not be sufficient to entitle him to protected against infringement. However, it is possible that, with the growth in importance of arom marks, they may be accepted for registration. It seems possible fairly to construe this section 5. e. 11 of the act of 1905, 33 Stat. 724, 15 U. S. C. A. § 81 (1927)] so as to permit such registration."

The Patent Office and the appellate tribunal, the Court of Customs and Patent Appeals, as well as its predecessor, the Court of Appeals of the District of Columbia, have, both prior and subsequent to the states ment of Mr. Nims above quoted, steadily refused to recognize the registrability of service marks. The tribunals insist that "to establish a right to the registration of a trade mark⚫ ⚫⚫ it must have been actually applied to vendible goods. Gray v. Armand Co., 24 F. (2d) 878 (App. D. C., 198),

in re Gregg & Son, Inc., 24 F. (2d) 898, 899 (App. D. C. 1928); in re Toledo Porcelain Enamel Products Co 58 F. (2d) 423, 425-6, C. C. P. A. (1923); cf. Diedreich v. W. Schneider Wholesale Wine & Liquer Co., 163 Fo 35 (C. C. A. 8th, 1912), cert. denied, 232 U. S. 726 (1914). For Patent Office decisions see es perte Links L Parish Laundry Corp., 156 M. D. 246 (1929); ex parte Western Union Telegraph Co., 140 M. D. 321, 1' T M. Rep., 139 (1924); ex parte Rer Agency, (1929) C. D. 61; 389 O G. 3; ex parte The Union Deposit Cc., 17M.D. 500 (1930); McBride's Theatre Ticket Offices, Inc., (1931) C. D. 1, 156 M. D. 634; ex parte Corn Expe National Bank & Trust Co., 156 M. D. 689 (1931); American Bleached Goods Co., Inc. v. Defiance Mfg. Co. opposition number 10-315, briefly reported in United States Daily, Mar. 3, 1932, at 4; ex parte Jen C Pugh, 159 M. D. 444; 25 T. M. Kep. 629 (1935).

Various provisions in proposed legislation have included the registration of service marks and the res tection thereof against infringement upon the same basis (rather than as being) as "trade marks used upgoods" (e. g., see American Bar Association Trade Mark bill, S. 2679, Cath Cong., 2d sess. (1927) + 24, D_& 2828, 71st Cong., 2d sess. (1930) §23; HI. R. 7118, 72d Cong. 1st sess. (1932) § 23]. In the 1935 America T Association report at 13, it is likewise recommended "that service marks should be included " It we is noted that in II. R. 11592, 72d Cong., 1st sess. (1932) the special § 23 of its predecessor, H. R. 7118, was e nated, and instead of making special provision for the registration of service marks "subject to the s provisions as appear in sac. 2 thereof, relating to trade marks, so far as the same may be applicable and instead of stating that "when registered they shall be entitled to the same protection and rene: * against infringement as provided herein in the case of trade marks used upon geeds," service nik placed in precisely the same category as trade marks and their registration provided ser accordingly 15" ices are today designated or distinguished to as great a degree by trade marks or trade nan us as sie perek Broadcasting, news reporting, airplane transportation, stenography, theater ticket service, insurance re surety service, laundry, taxi, cleaning, dyeing and valet services are only a few of these services to w trade marks become affixed. Service marks are now protected in courts of equity from unfair competit-x their owners should likewise be further protected by being permitted to register such marks as trademar in the Patent Office. § 23 of H. R. 7118, mentioned above, by isolating the service marks, atteint accomplish by indirection that which it seems to me can either be done directly or not at all. It is desce to permit the registration of service marks, but carefully describes a service mark as "any trade name of vice" -not as a trade mark. In this connection see also the definition of the term "trade mark" in §30 ** lines 7-14, of H. R. 7118, with which cf. H. R. 11592, § 30, p. 42, lines 12 ff. This matter of the recitat of service marks is but another instance, it seems to me, of the desirability of a frank recognition extension of congressional power to legislate "substantively" concerning trade marks.

or services of such other properties, quality, or reputation" or to merchandise or services so distributed or conveyed to the purchasing public, or (3) was at the time of its registration a coined or invented or fanciful or arbitrary mark,73

"so that the use of applicant's mark is likely to cause confusion or mistake or to deceive purchasers or users thereof as to their source or origin or otherwise to injure the good will, reputation, business, credit or securities of the owner of the previously used trade mark,

"it shall constitute prima-facie grounds for refusing registration." 75

IV. CONCLUSION

A recent and most readable decision 7 involves the misleading use by one William Gordon of the name Gordon (standing alone) in connection with the vending of gin-a product which the plaintiff, a British corporation, had been distilling and selling under the name Gordon since 1769. This was, it seems, the third time that the defendant had run afoul of the law of unfair competition. At the conclusion of his opinion enjoining the defendant's piracy of plaintiff's rade mark, District Judge Clark said:

"In conclusion, we record our surprise at counsel's apparent distaste for our suggestions from the bench that we intended to attempt 'the introduction of a uttle ethics in American business.' We should have supposed that the business Eistory of the past 10 years made such an attempt rather appropriate. We do not feel that it is particularly harsh to question the ethical perceptions of an individual -ho seems unconscious of the misleading impression created by the use of the British coat-of-arms on an American product." "7

From the standpoint of the author of Transcendental Nonsense and the Functional Approach, mentioned at the outset,78 the question whether a trade mark on gin should or should not be permitted by the courts to be thus pirated would appear to be socially irrelevant or, if decided at all, to be determined in The negative. At worst, it would be only one of those "petty things, of lying, +tealing * * * in their retail forms * * * of ugly manners." 79 Howver, this is a problem which, even if solvable, space will not permit an attempt to solve here. Its perplexities will be dealt with in the second part of this paper. FRANK I. SCHECHTER.

New York City.

"E. g., Northam Warren Corp. v. Universal Cosmetic Co., 18 F. (2d) 774 (C. C. A. 7th, 1927); Duro Co. v. Para Co., 27 F. (2d) 339 (C. C. A. 3d, 1928); Kotabs, Inc. v. Keter Co., 50 F. (2d) 810 (C. C. A. 3d, 1931), -rt. denied, 284 U. S. 665 (1931); Standard Oil Co. of New Mexico, Inc. v. Standard Oil Co. of California, F. (24) 973 (C. C. A. 10th, 1932); L. E. Waterman & Co. v. Gordon, 72 F. (2d) 272 (C. C. Á. 2d, 1934); Helv. Metropolitan Refining Co., Inc., 9 F. Supp. 662 (E. D. N. Y. 1935); Long's Hat Stores Corp. v. Long's thes, Inc., 224 App. Div. 497, 231 N. Y. Supp. 107 (1st Sept. 1928).

For typical decisions see cases cited in Schechter, supra note 14, at 828-830; Mantle Lamp Co. of America Alladin Mfg. Co., 78 F. (2d) 426, 428-429 (C. C. A. 7th. 1935) cert. denied, 56 Sup. Ct. 173 (1935) (involving ladin on lamps); Holt v. Metropolitan Refining Co., Inc., 9 F. Supp. 662, 666 (E. D. N. Y. 1935), (invclving ast-I-Cide on rust removers) and the cases cited therein; cf. discussion of the Tiffany and Odol cases, and the British proposed "defensive trade mark", supra, note 14.

For decisions holding that, quite apart from diviersion of trade, or other injury to the good will of plaintiff, misuse of trade marks, resulting in injury to the credit or other financial standing of securities ed by the owner of the trade mark or in possible diminution of their value will be enjoined, see Britishserican Tobacco Co., Ltd. v. British-American Cigar Stores Co., 211 Fed. 933, 935 (Ć. C. Á. 2d, 1914); ton Overland Tire Co. v. Willys-Overland Co., 273 Fed. 674, 676 (C. C. A. 3d, 1921); Buckspan v. Hudson Co, 22 F. (2d) 721, 723 (C. Č. A. 5th, 1927), cert. denied, 276 U. S. 628 (1928); Hudson Motor Car Co. v. don Tire Co., 21 F. (2d) 453, 456 (D. Ñ. J. 1927); Armour & Co. v. Master Tire & Rubber Co., 34 F. (2d) 21203 (S. D. Ohio, 1925); Lincoln Motor Co. v. Lincoln Automobile Co., 44 F. (2d) 812, 817 (N. D. III. 1930) dard Oil Co. of New Merico v. Standard Oil Co. of California, 56 F. (2d) 973 (C. C. A. 10th, 1932); Standard *Co, of Colorado v. Standard Oil Co., 72 F. (2d) 524 (C. C. A. 10th, 1934), cert. denied, 293 U. S. 620 (1934); hold Finance Co. v. Household Finance Co., 11 F. Supp. 3 (D. W. Va., 1935); Yellow Cab Corporation v. peek, 120 Misc. 499, 198 N. Y. Supp. 864 (Sup. Ct. 1923); F. W. Woolworth & Co., Ltd., v. Woolworths Astralasia, Ltd., 47 Rep. Pat. Cas. 337, 345 (Ch. Div. 1930); cf. Certain-Teed Products Corp. v. Philadelphia 4 saburban Mortgage Guarantee Co., 49 F. (2d) 114 (C. C. A. 3d, 1931) adopting the opinion of the lower rt that the owner of "Certain-Teed" trade mark for roofing and building materials is not entitled to in defendant whose business is buying and selling mortgages, from using the slogan "A guaranteed guge is a Certain Teed income." The lower court held that defendant's use, of this slogan "is comatively unobtrusive."

* See the Perkins bill, H. R. 11592, 72d Cong., 1st sess. (1932) § 2(d), p. 3. line 24, to p. 4, line 11. It will observed that seemingly contrary to the constitutional views as to substantive as distinguished from merely *cedural legislation, indicated above, the words "prima facie" grounds for refusing registration were ere used by the writer. They were used intentionally because I did not then feel that the reasoning e Odol decision would at that time be acceptable to either legislators or lawyers. The Tiffany decision, ⚫wing the reasoning of the Odol case, had not as yet been handed down. If I were redrafting the above ted section at this time I should be inclined to omit the "prima facie" modification.

Tanqueray Gordon & Co., Ltd. v. Gordon, 10 F. Supp. 852 (D. N. J. 1935), appeal dismissed, 77 F. (2d) 998 CC. A. 3d, 1935).

Hon. WILLIAM I. SIROVICH,

FISH, RICHARDSON & NEAVE,
New York, January 13, 1936.

Committee on Patents, House of Representatives,

Washington, D. C.

DEAR SIR: Referring to my letter to you of December 23, 1935, and your reply of December 27, 1935, the information has now been collected which Mr. Swope, president of the General Electric Co., was asked to furnish when testifying before the Committee on Patents in New York on October 15, 1935.

Mr. Swope is now away and will not return for a month or more. You may wish the information before that time, so I am giving it to you in this letter. The figures in parentheses refer to the pages of the typewritten report of his testimony.

"How many companies make up the General Electric system?" (P. 140.) Attached is a list of the General Electric affiliates (companies of which General Electric Co. holds over 50 percent stock ownership) as of December 31, 1934; of these 77 companies, 40 were operating outside of the United States. This list is copied from a report furnished to the Securities and Exchange Commission. "What is the total capitalization of all the companies in the system?" (P. 141) On December 31, 1934, it was $382,387,910.

The General Electric Co.'s annual report was asked for. (P. 141.)

The report of December 31, 1934, is furnished herewith.

"How many patents does it (General Electric Co.) own?" (P. 142.) Between 8,000 and 9,000 patents.

"How many patents owned or controlled by the General Electric Co. are joined into a patent pool or cross-licensing agreement?" (P. 144.) Between 500 and 2,000 patents.

The General Electric Co. has no list of its patents involved in patent pool or cross-licensing agreements, and it would be difficult to prepare any reasonably complete and accurate list. For example, the cross-license agreement with the Radio Corporation of America grants rights under General Electric Co. patents in the field of radio purposes, but the patents are not listed in the agreement. There are about 1,000 General Electric Co. patents which relate primarily to this field, but there are many patents not directed to radio purposes at all which may have some use in the radio purpose field which would come under the license.

Similarly, the cross-license agreement with the Babcock & Wilcox Co. relates to mercury boilers, without listing the patents of either company. There are between 25 and 30 General Electric patents particularly directed to inventions which clearly come under the agreement and others which may come under it. In the license agreements relating to incandescent lamps and machines and processes for their manufacture, hereinafter referred to, about 250 existing patents were listed, and additional patents have issued since the list was printed, bringing the number to a little over 300.

"Under what patents do they (the incandescent-lamp licensees) pay you royalties?" "Would you be willing to furnish copies of the licensing agreements?" (P. 155) A list of patents for incandescent lamps and machines and processes for ther manufacture appears in the copies of the B license-large incandescent lamps and B license-miniature incandescent lamps, furnished herewith. There is a' furnished herewith a copy of the electric-lamp license between General Electr Co. and Westinghouse Electric & Manufacturing Co.

"What are the patents under which you are now manufacturing or licensingdo you know the total number of them?" (P. 160.)

The patents specified in license agreements that provide for payment of royal ties to General Electric Co. (other than incandescent-lamp patents, which are listed as stated above) are set forth in a list furnished herewith.

A list is also furnished herewith of 2,485 patents, the numbers of which have been marked on apparatus made and sold by the General Electric Co.

"Which of those patents have ever been adjudicated in the higher court, as o their validity?" (P. 161.)

The following have been passed upon and sustained in the circuit court d appeals:

Abbott, 1367341, 6 F. (2d) 376; Sargent & De Reamer, 1567863, 63 F. (24) 764; Rice, 1334118, 19 F. (2d) 290; Pacz, 1410499, decision by Court of Appea for Ninth Circuit December 20, 1935, General Electric v. Anraku et al., not reported.

NOTE.-The Mitchell & White patent 1423956 for the tipless incandescent lamp was before the court of appeals for the third circuit in General Electric Ca

v. Eisler et al. (20 F. (2d) 33), where the court held there was no infringement but said:

"But, as we view it, Jaeger did not anticipate and invalidate what Mitchell & White disclosed."

A list of licensees under General Electric Co. patents was asked for. (P. 164.) The list is furnished herewith, which is not complete but is reasonably so. It is believed to include all licensees from whom any report may be required under the license.

There may be between 50 and 200 licensees, not listed, who were granted free, nonexclusive licenses under the issues of interferences in connection with the settlement of the interferences. There are a number of licensees who have been granted licenses by the Radio Corporation, in which licenses the General Electric Co. appears as one of the licensors and under which licenses the General Electric Co. collects no royalty. For example, there are a few over 200 radio broadcasting station licensees who make no reports and pay no royalties. Respectfully submitted.

CHARLES NEAVE, Counsel for General Electric Co.

AFFILIATED COMPANIES AS OF DECEMBER 31, 1934 (S. E. C. BASIS)

[Companies indented are direct subsidiaries of those companies under which they are indented] Canadian General Electric Co., Ltd., Toronto, Canada.

Carboloy Co., Inc., Detroit, Mich.

East Erie Commercial Railroad, Erie, Pa.

Edison General Electric Appliance Co., Inc., Chicago, Ill.

Electric Appliances, Inc., San Francisco, Calif.

Electric Household Appliances, Inc., Dallas, Tex.

Electrical Housekeeping, Inc., Cleveland, Ohio.

Electrical Securities Corporation, New York, N. Y.
Elmira Foundry Co., Inc., Elmira, N. Y.

Erie Improvement Co.1

General Electric Contracts Corporation, New York, N. Y.
Electric Acceptance Corporation, New York, N. Y.
G. E. Employees Securities Corporation, Jersey City, N. J.
General Electric Realty Corporation, Schenectady, N. Y.
General Electric Realty Co. of Texas, Dallas, Tex.
General Electric Realty Co. of Indiana, Fort Wayne, Ind.
Schenectady Realty Co., Schenectady, N. Y.

General Electric Supply Corporation, Bridgeport, Conn.
Pacific States Electric Co.1

General Electric Vapor Lamp Co., Hoboken, N. J.

General Electric X-Ray Corporation, Chicago, Ill.

General Electric Raios-X, South America, Rio de Janeiro, Brazil.
Victor X-Ray Corporation (New York).1

Victor X-Ray Corporation, Ltd. (London), London, England.
Victor X-Ray Corporation, South America (Mexico).1

Victor X-Ray Corporation of Canada, Ltd., Toronto, Canada.

International General Electric Co., Inc., Schenectady, N. Y.

China General Edison Co., Inc., Shanghai, China.

General Electric, South America (Argentina), Buenos Aires, Argentina.

General Electric Appliances, South America (Argentina), Buenos Aires, Argentina.

General Electric, South America (Brazil), Rio de Janeiro, Brazil.

Lojas General Electric, South America, Rio de Janeiro, Brazil.

General Electric Co. of Cuba, Havana, Cuba.

General Electric, South America (Mexico), Mexico City, Mexico.
General Electric (Philippine Islands), Inc., Manila, P. I.

International General Electric, South America, Schenectady, N. Y.

International General Electric Co. of New York, Ltd., London, England. International General Electric Co. (India), Ltd., Bombay, India. International General Electric Co. of Puerto Rico, San Juan, P. R. Mexico General Electric Co.1

South African General Electric Co., Ltd., Johannesburg, Transvaal.
Keystone Appliances, Inc., Harrisburg, Pa.

Locke Insulator Corporation, Baltimore, Md.
Loughborough Mining Co., Ltd., The.1

1 Inactive subsidiaries.

Maqua Co., The, Schenectady, N. Y.

Midwest Electric Appliances, Inc., Kansas City, Mo.
Monowatt Electric Corporation, The, Bridgeport, Conn.

Pacific Electric Manufacturing Corporation, San Francisco, Calif.
Southern Appliances, Inc., New Orleans, La.

Tennessee Appliances, Inc., Nashville, Tenn.

Trumbull Electric Manufacturing Co., The, Plainville, Conn.

Drendell-Trumbull Electric Manufacturing Co., San Francisco, Calif.
Plainville Realty Co., Plainville, Conn.

Trumbull Electric Manufacturing Co., The (Pacific division), Seattle, Wash. Walker Dishwasher Corporation, Chicago, Ill.

Warren Telechron Co., Ashland, Mass.

Electric Time Co., Inc. (New York), New York, N. Y.

Twenty foreign subsidiaries are omitted from this list as their names were not disclosed to the Securities and Exchange Commission.

LIST OF PATENTS OWNED BY OR LICENSED TO GENERAL ELECTRIC CO.-PATENTS MARKED AS OF OCTOBER 15, 1935

(Numbers preceded by * indicate patents owned by others with license to General Electric Co.)

We have 2,485 patents marked, of which 1,772 are General Electric patents and 713 others.