certificate of registry, and does not appear in the specification, of which several hundred copies are printed for possible use. By a recent regulation, the representation of the trade-mark may printed as a portion of the specification. In that case, it is not

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be

annexed," but incorporated. An allegation that "the mark consists of a schooner-yacht under full sail, in connection with the words 'Middlesex Yacht-cloth,' as is more fully shown in the fac-simile hereto annexed," would be unobjectionable. Sometimes the representation filed consists of fanciful groupings of figures, or of ships and railway trains, and bridges, and a number of words, while the essential mark lies in a single word. The verbal description is, therefore, the only true guide.

§ 314. Ten Fac-similes must be filed, when the representation consists of an engraving, lithograph, letter-press, &c.; but when it consists of an original drawing, made in accordance with the Office-rules, and which may be photo-lithographed, that will be sufficient without fac-similes.2

§ 315. Mode of Application or Use of mark. This may be set forth thus: "by marking each article with blue ink by means of a stencil-plate;" "by printing the mark upon tags to be fixed to the cloth;"" by branding the top of each box containing the goods with a hot iron;""by painting or stencilling the mark upon each article;" or in any other language which will clearly show the mode of affixing the same. Sometimes the articles intended to be protected are too minute to bear the mark, as needles, when the box will perform that office; or pins, when the paper in which they are fastened will serve the purpose; and so of a myriad of those articles to which the emblem cannot be affixed, except by means of envelopes, wrappers, boxes, and other enclosures.

§ 316. Fourth. The length of time, if any, during which the trade-mark has been used.

1 Middlesex Co., No. 655.

2 Office Rules of Practice, Nos. 83, 87.

Preciseness upon this point may become an important item in a contest for the establishment of priority of adoption. A neglect to accurately fix the time may operate as an estoppel in the event of conflicting claims, and limit the date of adoption to that of application for registry; and at all times it might justly be regarded as a suspicious circumstance, as, for example, when it is stated that the mark has been used for “ a long time," or for "a number of years." If the applicant state that he has adopted, and intends to use," &c., he would be precluded upon trial from going behind the record, and giving evidence of long user. If he state that he has used the mark for ten years, and the proof be that he has used it but five, would that not be regarded as evincive of bad faith? Here is one thing that should be carefully looked into by the applicant before registry, and by his antagonist at the trial. It frequently happens that the application, as filed, alleges that the mark therein described has been used for a certain time, or number of years; and then upon an after-thought, perhaps on account of rejection, the description is amended so as to materially change the symbol itself, and not upon oath. The seventh subdivision of the section we are now considering calls for a declaration under oath that the party has the right to the use of the trade-mark, and that the description is true, &c. What trade-mark? Clearly that which was used for such a time, and not that which appears in the amendment. An irregularity in this respect may be fatal to the plaintiff. Therefore, when an application is amended so as to alter the symbol in any essential feature, let the oath be renewed. It has been said upon very respectable authority that this part of the section as to oath is merely directory, and within the discretion of the Patent Office; and that consequently the issue of a certificate of registry would cure all defects. This is an error. When a patent has been issued, and the letters contain a recital that the inventor duly made oath, &c., that recital would be conclusive in case of not finding the required

affidavit on file; for it would fairly raise the presumption that the affidavit had been misplaced; but if the affidavit be found on file, and its statements be insufficient or repugnant, that would be conclusive evidence of the fact that the Office had no jurisdiction. So, in a trade-mark case, may the response be, Coram non judice. The Office does not arrogate to itself the doctrine of infallibility.

§ 317. Again, it is a sound doctrine that a symbol may be a lawful trade-mark, from the facts of long user and established reputation, which could not be so considered if but recently adopted. Judicial decisions may be invoked to prove that the thing has been involved in forensic strife where its legal sufficiency was brought into question, and affirmed. Notoriety from long continued user may give a currency and value that could not be predicated of a brand-new mark; just as a neologism, which in its inception was an unknown foundling, or cant, or slang, has been adopted into the family of legitimate words, and holds up its head with the stateliest words in the standard dictionaries. "The rank is but the guinea's stamp;" but the guinea gold would lack currency without the stamp. A hieroglyph, or a combination of letters, may pass almost without challenge on account of venerable age and universal recognition, which, were it to come unheralded and without indication of antiquity, would be subject to rigid scrutiny and criticism. A common word might be rejected unless it had come to denote merchandise as originating with some particular person. The association may save it. A title by prescription will have been acquired.

§ 318. Fifth. The payment of a fee of twenty-five dollars, in the same manner and for the same purpose as the fee required for patents.

The payment of this fee is an placing upon file for examination.

essential prerequisite to When once paid, as in

case of duty paid upon an application for a patent, or on the filing of a caveat, it is not a pledge or deposit of the money,

but an absolute and unconditional payment into the treasury;1 and it cannot be reclaimed unless it should have been paid by mistake, as when one intending to apply for a copyright erroneously applied for the registry of a trade-mark, or in any other case where the Patent Office had no jurisdiction of the subjectmatter.

§ 319. Sixth. The compliance with such regulations as may be prescribed by the Commissioner of Patents.

The Regulations may be found in the Rules of Practice of the Patent Office, established by the Commissioner, subject to the approval of the Secretary of the Interior; and perhaps in orders made by the Commissioner alone under authority of this subdivision. Whether the approval of the Secretary is required in trade-mark cases is not settled, and indeed has never been formally called in question. Regulations have all the force of statutory enactments, and, until repealed, are as binding upon the Office as upon parties.1

§ 320. Seventh. The filing of a declaration, under the oath of the person, or of some member of the firm or officer of the corporation, to the effect that the party claiming protection for the trade-mark has a right to the use of the same, and that no other person, firm, or corporation has the right to such use, either in the identical form or having such near resemblance thereto as might be calculated to deceive, and that the description and facsimiles presented for record are true copies of the trade-mark sought to be protected.

It is not sufficient to make oath that no other person, firm, or corporation has the right to use such mark, or one substantially the same; but the remainder of the section must be included, so as to make out a primâ facie case beyond all peradventure. The term "oath" is used; but an affirmation is deemed to be equivalent thereto, and in accordance with the spirit and reason of the law. Statutes in pari materia are to be taken together. Section 30 of the same general act, where it relates

1 Att'y-Gen's' Opinions, vol. ix. p. 64.

3 Sec. 19, Patent Law of July 8, 1870.

2 Pat. Office Rule 111.

Arnold v. Bishop, MSS. (Appeal cases), Cranch, Ch. J., D. C. 1841; also O'Hara v. Hawes, MSS. (Appeal cases), Morsell, J., D. C., 1859.

to patents, uses the words "oath or affirmation." By a necessary implication, to prevent the failure of a right because of conscientious scruples, the word "affirmation" must be interpolated. The English laws concerning paupers, and the bankrupt acts, are construed together as if they were one statute, and as forming a united system; otherwise the system might, and probably would, be inharmonious and inconsistent.1

§ 321. The manner of administering the oath, or affirmation, must of course be left to national or local peculiarities and customs, as in the case of heathen idol-worshippers. The oath may be made in the United States before any officer authorized to administer oaths for general purposes, as justices of the peace, notaries-public, commissioners of deeds of cities, or of judicial courts, and clerks and judges of the same; or, in a foreign country, before any minister, chargé d'affaires, consul, or commercial agent holding a commission under the government of the United States, or before a notary-public of the foreign country in which the applicant may be. The signature of a notary-public must in all cases be attested by his proper official seal. Sometimes the official seal is dispensed with by State laws; but under federal laws it cannot be.2 Of course the oath prescribed in this act cannot be taken by any one who has been convicted of perjury, or who for any other reason is not a competent witness in a court of justice in the State or Territory where the party proposes to take it; and if, upon interference or other trial it appeared that a person legally incompetent had sworn to the declaration, the case would stand exactly as if no oath had been made. Lapse of time could not cure a defect so radical.

§ 322. The Oath must comply with the Statute. In a patent case, it was held that an oath that an original patent "is not fully valid and available" to the patentee, is not such an oath as is required by law; and it was an excess of author

1 See Sedg. Stat. & Const. Law, p. 248.

2 Act of Cong., Sept. 16, 1850; and Rule 10, Patent Office.