No. 1042.
Mr. Kloss to Mr. Bayard.
Washington , August 13, 1887. (Received August 15.)
Mr. Secretary of State: In notifying the contracting countries of the accession of the United States to the union for the protection of industrial property, the federal council called their attention to the mention inserted in the report of the session of March 12, 1883, of the second Paris conference (reports, page 37), according to which the Swiss Federal Government was authorized to accept the subsequent accession [Page 1536] of the United States with the reservation made in fourth paragraph of the draught of the final protocol of 1880, which reservation is as follows:
The plenipotentiary of the United States of America having declared that, according to the Federal Constitution, the right to legislate in matters relating to trademarks is, to a certain extent, reserved to each of the States of the American Union, it is agreed that the stipulations of the convention shall he applicable only within the limits of the constitutional powers of the high contracting parties.
The French Government, in acknowledging the receipt of the notification of the federal council, requested it to induce the United States to define their situation as regards those parts of the convention to which their constitutional laws do not permit them to adhere in connection with trade-marks, or at least to communicate the constitutional texts in question.
The federal council replied to the French Government as follows:
The reservation relative to the constitutional situation of the United States seems to us very clear. The American Constitution does not place legislation concerning trademarks within the competence of the Federal law-making power as it does legislation concerning literary property and patents. For this reason, the Federal law of July 8, 1870, which regulated the protection of trade-marks for the entire Union, was declared; unconstitutional and void by a decision of the Supreme Court of the United States which bears date of November 18, 1879. Being unable to regulate, in the interior of the country, the protection of trade-marks in a uniform manner, Congress, basing its action upon its constitutional right to legislate concerning matters connected with the commerce of the American Union with other countries and with the Indians, enacted the law of March 3, 1881, which regulates the ownership of foreign trade-marks and of those used by American citizens in trading with the Indian tribes and with other nations. There exists, therefore, in the United States, in the matter of trade-marks, an international law based upon the act of March 3, 1881, and comprising the registration of trade-marks, and a national law which is based solely upon the common law. According to the foregoing, we think ourselves authorized to conclude that the reservation made by the representative of the United at the Paris conference means that foreigners domiciled outside of the United States will be protected by the law of March 3, 1881, and that those established in that country will be obliged to content themselves with the protection resulting from the common law, which protection, in reality, is as effective as the one first mentioned.
Our Government said, in conclusion, that it did not think it necessary to ask the United States Government for information, on this subject, but that it was willing to do so if France wished it.
The federal council has now received a note from the embassy of France, informing it that, in the opinion of the minister of commerce, its explanations but incompletely define the scope of the reservation under which the accession of the United States took place. It may be admitted that, in consequence of the accession of the United States to the convention of March 20, 1883, trade-marks belonging to citizens of the States of the Union for the protection of industrial property are to be deposited in the United States in accordance with the provisions of the federal law of March 3, 1881. That law, however, establishes only the formalities required for the deposit of trade-marks belonging to foreigners, and, according to article 3, marks consisting merely of the name of the applicant are not admitted to deposit. Now, article 6 of the convention of 1883 is more liberal, and provides that “any trade-mark that has been regularly deposited in the country of its origin shall be admitted to deposit and protected just as it is in all the states of the union.” Will the restriction contained in article 3 of the American law of 1881 be applicable to foreigners who present for registration at the Patent Office at Washington, according to article 6 of the convention of 1883, marks consisting merely of the name of the applicant ?
It is important that this question should be elucidated, and that with as little delay as possible. If article 6 of the convention of 1883 could [Page 1537] be applied to the United States as being at variance either with the special laws of the states on the subject of trade-marks, or with the federal law of 1881, the accession of the United States would be productive of no advantage to the citizens of other states of the union, because American citizens would enjoy all the advantages of the convention in the territory of the contracting powers, while those advantages would be refused in the United States to the citizens of those powers.
In compliance with the desire expressed in the French note, the Federal Council instructs us to request you to be pleased to furnish us, with all convenient speed, as precise explanations as possible concerning the scope of the constitutional reservations made by your representatives at the Paris conferences of 1880 and 1883.
As to the special question whether the exceptional situation of the United States would permit your country to maintain, as regards citizens of the other states of the union, article 3 of the act of March 3, 1881, our Government unhesitatingly declares for the negative, and thinks that this article will be replaced by article 6 of the convention of March 20, 1883. “According to the reservation,” continues the dispatch of our Government, which forms the subject of this correspondence, “the stipulations of the convention shall be applicable only within the limits of the constitutional powers of the contracting parties.” Now, the American law of March 3, 1881, is a federal law. It is therefore within the constitutional competence of the central Government of the American Union, and may, consequently, be modified by the convention of March 20, 1883.
We have the honor to beg you, in the name of the Swiss Federal Council, to be pleased to cause your esteemed reply in reference to this matter to be communicated to us with as little delay as possible.
We are, etc.,