No. 1050.
Mr. Bayard to Mr. Frey.

Sir: I have the honor to acknowledge your note of January 5 last, calling my attention to the fact that the trade-mark treaty concluded between yourself and Mr. Frelinghuysen on February 14,1885, had not yet been ratified by the United States Senate, and requesting that it might be brought to the attention of that body.

The treaty to which you refer was signed by my predecessor only a few days before he resigned the direction of this Department.

It was not transmitted by him to President Arthur, or by the President to the Senate of the United States for its consideration; and on assuming my present office it became necessary for me to consider whether I should do what had not been done by my predecessor, namely, advise the President to submit the treaty in question to the Senate with a recommendation for its approval.

It is unnecessary for me to recall to your attention the Federal legislation in this country in regard to trade-marks. As you are aware, the Congress of the United States passed an act, which was approved on March 3, 1881, to authorize the registration of trade-marks and to protect the same.” It was thereby enacted that owners of trade-marks used in commerce with foreign nations, provided such owner should be domiciled in the United States or located in any foreign country which by treaty, convention, or law afforded similar privileges to citizens of the United States, might obtain registration of such trade-marks by complying with certain preliminary requirements. This law was passed to take the place of certain sections of the law of July 8, 1870, which had been declared by the Supreme Court of the United States to be in some respects beyond the constitutional competence of the legislative power of the United States.

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As I wrote to you on the 11th January of this year, the question of the precise extent of the authority of Congress to deal with the registration and protection of trademarks, and the exact effect of the statutes enacted by that body, is by no means free from doubt. Similar doubts extend to the question of the power of the treaty-making branch of the Government to deal with the subject.

The Supreme Court of the United States, when the question was before it in 1879, took pains to state that it left untouched “the whole question of the treaty-making power of the General Government over trade-marks and the duty of Congress to pass any laws necessary to carry such treaties into effect.” It has been the general expectation that there might be some further expression of opinion by that tribunal upon the subject which was thus left open by it in its former decision; but since 1879 the Supreme Court, so far as I am aware, has not been called upon to lay down any further rule upon this subject.

In the mean time, however, the question came before the Senate whether it should advise and consent to the adhesion of the United States to the Paris convention for the protection of industrial property. As you are aware, the Senate, after considerable hesitation, advised adhesion to that convention on the 2d of March, 1887. The accession of the United States to the union for the protection of industrial property was then announced by the minister resident and consul-general of the United States at Berne to the federal council of Switzerland on May 30, 1887, and the President issued his proclamation accordingly upon June 11 of same year.

The Patent Office, a branch of the Department of the Interior, which is charged with the registration of trade-marks, receives, as I am informed, applications from inhabitants of Switzerland without discrimination, and upon the same terms as from residents in the United States.

For your further information as to the practice of that Department, I inclose herewith* two copies of the laws and regulations concerning trade-marks, edition of November 1, 1886.

Upon a careful review of the federal legislation of the United States, as expressed in the act of March 3, 1881, and the provisions of the convention just referred to, I have been unable to perceive that there would be any advantage to citizens of the United States or of the Swiss Confederation in the ratification of the treaty of February 14, 1885, or in the conclusion of any similar engagement. The law of March 3, 1881, as already pointed out, provides for the registration and protection of trade marks used in foreign commerce or in commerce with the Indian tribes, whether the owners of such trade-marks are domiciled in the United States or in any foreign country or Indian tribe which by treaty or law affords similar protection to trade-marks of citizens of the United States.

Article 2 of the convention of March 20, 1883, provides that the subjects or citizens of each of the contracting states shall enjoy in all the other states of the union, for the protection of industrial property, the advantages the respective laws thereof accord to their own subjects or citizens, and that they shall have the same legal recourse for an infringement of their rights.

Whether these statutory and conventional provisions are in all respects within the constitutional competence of the Federal Government, is a question which, as I have already stated, has not been decided by the Supreme Court. But as they stand and are now applied, they are [Page 1545] unambiguous in their terms and are ample ior the purpose lor which they were devised. To enter, therefore, into a new engagement, such as is proposed in the convention now under consideration, might work a positive disadvantage by complicating the present situation with new questions as to federal power.

Therefore, as previously stated, after an attentive examination of the whole subject, and after awaiting some authoritative expression of opinion from the judicial branch of the Government upon the point which it had left untouched in its former decisions, the President has decided not to recommend to the Senate its advice and consent to the ratification of the treaty signed February 14, 1885.

Accept, etc.,

T. F. Bayard,
  1. Inclosures not printed herewith.