Mr. Fish to Mr. Bancroft
Sir: Referring to the previous instructions of the Department and to your dispatches, as to “trade-marks convention,” I again call your attention to the subject. In most, if not all, of the States of this Union, the protection of parties entitled to the exclusive use of trade-marks is afforded by the courts upon the principles of the unwritten common law, including of course what is known as equity law. Upon these principles the courts restrain, by injunction, the violation of a trade mark in the way of preventive justice, and award damages by way of remedial justice. There are in some of them statutes in aid of the common law [Page 360] on this subject, but none, so far as known, restrictive of it. These principles are plastic and adapt themselves to the exigencies of justice as those exigencies develop themselves.
Under this administration of the unwritten law, all foreigners, not being public enemies, and whether residents of the United States or not, have always received the same protection as citizens. The right to such protection has been adjudged both by State and Federal tribunals. [So it has in England.] The act of Congress of July 8, 1870, (16 Stat., 210, et seq.,) provides for the registration of trade-marks and for their protection through the Federal courts. The remedies thus created are confined by section 77 to foreigners (if located or resident abroad) whose governments, by treaty or convention, afford similar privileges to citizens of the United States. Any person or firm (but not a foreign association) domiciled in the United States, are, as this Department is advised, entitled to its benefits irrespective of reciprocity toward citizens of the United States. The seventy-eighth section limits the effect of registration to thirty years, but it is careful at the close to declare that it shall not unfavorably affect the claim of any person to a trade-mark after the expiration of the term for which it was registered. I am not aware that at common law there is any limitation whatever to the time for which a right of property in a trade-mark may be maintained. Upon principle the right gathers strength with the lapse of years. With this exposition of the present laws of the United States, you will probably be in a position to advise the Department whether the property of citizens of the United States in trade-marks is protected in North Germany, or, if that is not the case, you will be able to judge what course to pursue in the execution of the instructions already given you in this respect.
I inclose a copy of the act of 1870, referred to above.
I am, &c.,