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CHAPTER XV.

ABANDONMENT.

How Question may arise. - Error in arguing from Supposed Analogies. When Symbol is discarded by one Person, any other may adopt it. If Symbol becomes Free to the Public, its Technical Trade-mark Existence is extinguished. - Distinction between Abandonment of Trade-mark and that of other kinds of Property.. What amounts to Abandonment. - Difficulty of laying down Rule. - Intention is a Necessary Element. - Evidence thereof must be Clear. Forbearance to prosecute is not Fatal.- - Abandonment in one Country is Abandonment in all Countries. Conclusion.

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§ 674. Abandonment sometimes is alleged as an affirmative defence, while it may incidentally be drawn into question in ex parte proceedings upon application for registration. It is advisable, therefore, to ascertain the import of the term, as applied to a trade-mark case, and to consider the facts that may constitute it. But, at the very threshold of the investigation, we must be on our guard not to fall into error in attempting to reason from wrong premises or false analogies.

§ 675. A common mistake is this: in confusing notions of other kinds of rights with that right which consists in property in a certain emblem or device, with which a manufacturer or merchant stamps his wares and merchandise. A trade-mark differs essentially from all other matters of property. For that reason, we cannot hope to arrive at an intelligent understanding of the subject, unless we sedulously keep several points in view. Those are distinctions between the dedication or dereliction of tangible property, deliberately yielded into the common stock of the community or of the world, and the forsaking of a claim to the exclusive use of a mere shadow of incorporeal property, as is the emblem or device which is to become a

trade-mark. We have a clear idea of the utter forsaking of lands, and of the casting of a jewel or coin into the sea, or upon the highway; and we can clearly conceive the idea of an abandonment of the right to a patent for an invention, or an exclusive claim to the product of a person's literary labor; but the subject of cession, actual or tacit, of the right to prohibit all other persons from marking goods in a certain mode, or with a peculiar symbol, is a matter that is somewhat more difficult of comprehension. Let us inspect the lines of demarcation.

§ 676. Property belongs to him who first makes declaration of an intention to appropriate it to his own use; and the title remains in him, by the principle of universal law, till he does some other act which shows an intention to abandon it; for then it becomes, naturally speaking, publici juris once more, and is liable to be again appropriated by the next occupant.1 Thus a valuable thing deliberately cast away is an express abandonment of private claim to its possession, and the finder becomes its owner. So a conveyance of land by deed, or a long-suffered adverse possession, is conclusive evidence that the former owner intended to divest himself of title, in favor of the party who shall have succeeded to the possession. So, also, if an inventor from a motive of patriotism, generosity, despair, or any other cause, acquiesce in the public use of his invention for two years, he is debarred from subsequently obtaining a patent therefor; 2 or he may abandon his claim to a monopoly at any instant, and the right to the invention passes at once into the public stock. In all such cases, whether of tangible property or of incorporeal rights emanating therefrom, there is something to affect the senses, and the land, or jewel, or invention embodied in a machine or composition of matter, can be seen and felt; and property in the object or thing may truly be said to exist. Not so with the symbol that a trader has made the peculiar mark of his goods. We have seen heretofore that

1 2 Blackst. Com. 9.

2 Adams & Hammond v. Edwards et al., 1 Fish. 1.

there cannot be property in an abstract symbol, whether that be an original design, or word, or emblem; for it is only an index to a certain article of merchandise. That undeniable truth being conceded, how can we draw a parallel between the relinquishment of a hold upon something which in itself is property, and another thing which until actually affixed to a vendible commodity is purely ideal! The land and jewel continue to be property under all circumstances; but a trade-mark ceases to be property the moment that its exclusive use ceases, and it resumes its ideal state. Its conjunction with a corporeal thing is like the union of soul and body.

§ 677. The thing abandoned may be instantly and simultaneously seized by a large number of persons, and that either in fact or by operation of law, as in case of a right of common, or a right to use an invention; and when the original owner's grasp is once released, the exclusive right is gone from him for ever. He cannot regain it, as in the case of a coin tossed by him into the public street, and which he may be the first to again pick up. A trade-mark may be discarded and be resumed, unless in the mean time it be taken possession of by another individual, or by a number of persons with united interests, or by the community in general. In the latter case, the thing may truly be said to be extinguished, for when all may use there is lacking the essential element of an exclusive right. We are supposing that the mark is one that is not personal in its nature, but one which is associated rather with an object of commerce than with a certain person. Yet we read of instances in which courts have held that a man's name may lose all idea of personality, and become merely a generic designation. But we will not stop to discuss exceptional cases.

§ 678. Now, as to the extinguishment of a trade-mark. Suppose, for the sake of illustration, that a word that has been coined by a manufacturer to indicate a peculiar product be intentionally disused by said manufacturer, and that all other

1 See §§ 178-181, ante.

persons in the same line of business by common consent adopt the word as the most suitable name for the thing, as was the case as to the word "Lucilene," a name given to purified petroleum,1- then that name falls into the domain of commerce, and is not susceptible of reappropriation by him who first used it, as a fanciful denomination for his article of manufacture. But suppose, again, that, after having deliberately abandoned the mark, the late owner change his intention, while the title is still in abeyance, he may repossess himself of it, just as he might upon reflection recover the jewel flung into the sea or upon the highway. The case of the inventor is quite different. He has no right to his invention at common law. The right which he derives is a creature of the statute and of grant, and is subject to certain conditions incorporated in the statutes and the grant. He does not get his right to a patent on the ground of any inherent natural right which he has.2

§ 679. Hereby we see the impropriety of arguing upon decisions made under allegations of abandonment of an invention; for as the idea of invention does not enter into the contemplation of the law applicable to trade-mark property, we must dismiss the false analogy from mind. To complete and perpetuate the act of abandonment, there must be a tender, an acceptance, and an adoption. The only mode by which a trademark can be adopted is by user in the actual affixing of the mark to merchandise. How is it with an invention? If the first inventor choose to abandon the result of his genius, after perfecting it so as to be applicable to a practical useful purpose, and another and later inventor obtain a patent therefor, he fails to obtain any benefit, not being the first inventor of the particular thing. Why? Because the title to the invention passed to the public, the instant that the only person who had a right

1 See § 252, ante.

2 American Hide and Leather, &c., Co. v. American Tool, &c., Co., 4 Fish. 284.

3 §§ 346, 347, ante.

4 §§ 52, 382-384.

to a patent dedicated his invention to the common stock of property. But in the case of discontinuance of the use of a trade-mark the public gain nothing thereby, except the negative benefit of precluding an individual from profiting by the exclusive use of it as a sign. Thus in a case1 in the Court of Paris, in 1870, when the plaintiff's claim to the exclusive use of the representation of a golden bee, as a trade-mark for hats, was rejected, what did the public gain by the decision that the emblem was not a private mark? The court said, among other things, that, whether as an emblem, or as an ornament, the bee is common property. Any person might therefore use it as an ornament for a hatter's label or in any other mode; but the plaintiff had no exclusive right to "a bee in his bonnet." There is no advantage to the public in the liberty of adorning their furniture or hats with golden bees; but there is always presumed to be benefit in the use of an invention, of which benefit the use is the strongest kind of evidence. If the right of everybody to use an emblem, name, or word, were to exempt him from the annoyance of litigation, that might be deemed a positive benefit, but that such is not the truth must be evident to all. We have seen many proofs to the contrary in the foregoing chapters of this book. As evidences of our right to call a thing by its true name, we might cite authorities by the score. The name may originally have been the coinage of a manufacturer to designate his peculiar product; but it may have instantly become the only true and proper denomination of the article, wherefore all might use it.

§ 680. What amounts to Abandonment of a trade-mark? It is more difficult to lay down a rule in this matter than in the case of corporeal property. The latter we may see and handle. The product of invention affects the perceptive faculties. We cannot see a trade-mark unless it is in full vigor. We may see a perfect representation of a signature or of an emblem of commerce, but the trade-mark itself is visible only as an affix of

1 Herold v. Gerbeau, Annales de la Prop., tome xvi. p. 76.

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