7
Mar
2022

Pre-1870 Trademarks as Design Patents

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07 Mar 2022

Federal registration was established for trademarks, by statute, in 1870. I’ve written about this a few times, most recently in the upcoming Early American Federal Trademark Law and the Law of Nations, a book chapter in the upcoming Intellectual Property and the Law of Nations, 1860–1920 (P. Sean Morris, Ed., Brill 2022). However, these were not the first federal registrations of trademarks, as proprietors of trademarks had already been registering their trademarks as design patents since 1855.

This isn’t exactly a new discovery, although it’s fairly obscure – see for instance a 1912 Scientific American article on the subject. In 2007 Gerard Magliocca noted that “[p]rior to 1870, the Patent Office used [the design patent] law to protect many trademarks even though that type of subject matter was not expressly covered.” This protection was limited, though, in that the registration only covered those parts which could be protected as a design patent, and there was no protection against passing off as there is under technical trademark law. In Francis Upton’s 1860 treatise on trademarks, he noted that the design patent law was being used “to secure what is supposed to be an equivalent to trade mark property.” In his opinion such “policy of continuing such an unwarrantable construction of law…is, to say the least, very questionable.”

One can see an example of an application for patent registration of a trademark here (special thanks to Robert Beebe of the National Archives in Kansas City for this), which would be granted as D2629. The petition crosses out almost all the instances of “invention” or “discovery” in place of language of “production.” Perhaps the most revealing thing about the application is simply that it was granted, in spite of the problems manifest simply from looking at the petition.

Part of the application wrapper for D2629

In September of 1870, following the passage of the federal trademark law in July, the Commissioner of Patents announced In re King that he would no longer accept registration of trademarks as designs. In this decision the Commissioner read the new law as giving trademarks exclusive protection under trademark law, and prohibiting their registration as designs. Looking at indexes shows three design registrations for trademarks subsequent to 1870, but the two from the 1880s appear to be a clerical mistake where the trademark description with the same number was attached instead of the proper design record. In 1914 a design patent was given for a decorative insignia, which was also claimed as a trademark – this appears to be the only design patent for a trademark given after 1870.

As follows is a list, with links to PTO images, for all of the design patents for trademarks. Although I started making my own list, Dennis Crouch of Patently-O (and the University of Missouri School of Law) had already done so, which he was gracious enough to share; I’ve thus used his data as a source. You can see how trademarks fit into his timeline of most popular design patents (briefly) here.

About Post Author

Assistant Professor at the Southern Illinois University School of Law. I've written a fair deal about the evolution of intellectual property law into its present form, this blog is a way to share things that don't fit into a full-length article.

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