Untitled Texas Attorney General Opinion ( 1944 )

Honorable Sidney Latham
Secretary of State
Austin, Texas
Dear Sir: Opinion No. O-5564
Re: Registration of trade names
under Artiols 851, Vernon's
Annotated Civil Statutes, and re-
lated matters.
Your letter of February 11, 1944, requesting the opinion of
this department on the questions stated therein is, in part, as follows~
"Under the provisions of Article 851, R.C.S., 1925,
this office is authorized to file a 'label, trade mark,
design, device, imprint or form of advertisement' on be-
half of persons, associations or unions of workingmen;
incorporated or unincorporated that might have adopted
same fbr its me.
"You, of course, are likewise familiar with the
duties of this office with reference Uo the granting of
corporate charters,and particularly our responsibility
with respect to avoiding a conflict of names in corpor-
ations.
"It will be noted that Article 851 does not mention
a enamel or 'trade name' as one of the items subject to
registration under the provisions of such article. This
Department has had submitted to it from time to time trade
such as Crescent Drilling Company, for re,+stration
ll¶IlleS,
which did not involve any peculiar design, type of letter-
ing or other identifying characteristics exempt the name
itself.
We have also had submitted for rocistration under
the provisions of the statute authorizing the registration
of a 'label' and 'imprint' a card used by Retail Merchant's
Association of &u&on for keeping records in its office,
whioh in the opinion of this office is subject possibly
to a Wderal patent or copyright, but not to registration
under Article 551.
"In the light of the above faots, will you please ad-
vise this Department upon the following inquiries8
.
Honorable Sidney latham, Page 2 (O-5854)
"1. Is a mere trade name without a peculiar design
or type of lettering subject to registration under
Artiole 8517
"2. If a trade name Is subject to registration, and
the registrant is unincorporated, then will suoh reg-
istration render such name unavailable thereafter for
oorporate use?
l3. If a name has previously been granted to a oor-
poration, but has not registered under Article 551,
then would its use by such aorporation preclude its
right to registration by an unincorporated ccsnpany
under Article 8511
"4. Is the record card subnltted by the Retail Mer-
chant's Association of Houston, Texas, subject to
registration under Article 8511
"Photostatic copy of the application and card submitted
by the Retail Merchant's Association of Houston are attached hereto."
The law of trade marks is principally a matter of Federal juris-
prudence. However, there is a considerable body of statutory and case law
relating to protection in the exclusive use in Texas of trade marks end n~cs,
and it is with suoh statutes and decisions that wa arehere concerned in ccn-
nection withtfieforegoing questions presented in your inquiry. What is knowx
as "unfair competition" is a non-statutory subject -Hhichis not considered in
this opinion, although often involving trademarks and trade names. The term
"unfair competition" is broader than either trademarks or trade names.
"Unfair competition" involves the principle thet no p;-son : -:cthe ri;!:::
.'b
sell or advertise his own business or goods as those of another. (Tex. Jur.
Vol. 41, p. 388).
The term "trademark" has been defined as followsr
"A trademark is a distinctive name, word, mark,
emblem, design, symbol, or device used in lawful com-
merce to indicate or authenticate the source from
which it has come, or through which has parsed, the
chattel upon or to which it is affixed." (mestern Gm.
co., V. Gaffarelll Bras., 108 S.TR.413, reversed on
other grounds 127 8.W. 1018).
It is stated in Ruling Case Law, Vol. 26, p, 830:
"A trade name differs from a trademark, in that
it is dcscriptlve.of the manufacturer or dealer him-
self as much as his own name is, and frequently, like
.
- .
Hon. Sidney Latham, Page 3 (o-5864)
the name of business corporations, includes the name
of the place where the business is located, If attach-
ed to goods, It is designed to state plainly what a
trademark only indicates by association and use. It
is also said to be a species of property, and while not
strictly a trademark, will as a general rule be protect-
ed in like manner. A trade name also involves the indi-
viduality of the maker, for proteotion in trade, to
avoid confusion in business, and to secure the advant-
ages of a good reputation, and therefore is said to have
a broader scope than a trademark. And it has also been
declared that it is more properly applied to the good
will of the business."
It is stated in Tex. &. Vol. 41, p. 378:
"Those trade names are nothing more than marks of
trade that consist of names instead of signs or emblems;
and, further, names that do not possess the necessary
oharaoteristios of a trademark, but which are so used
to do service as trademarks." (Citing Nims on Unfair
Competition and Trademarks, 2nd Ed., p. 374).
For other definitions of trademarks and trade names see "lords
& Phrases, Penn. Ed., Vol. 42, pp. 176-189.
Article 851, Vernon's Annotated Civil Statutes, provides:
aFiveryperson, association or union of working men,
incorporated,or tlninoorporated,that shall have hereto-
fore or shall hereafter adopt a label, trademark, design,
devioe, imprint or form of an advertisement shall file
the same in the office of the Secretary of 5tate by loav-
ing two faosimllie oopies with the Secretary of State
and said Secretary shall return to such person, assooia-
tion or union so filing the same, one of said faosimilie
oopies along with and attached to the duly attested cer-
tificate of the filing name, for which he shall receive
the fee of One Dollar. Such certificate of filing shall
In all suits and prosecutions under this chapter be suf-
ficient proof of the adoption of such label, trademark,
design, device, imprint or form of advel-tisement,and of
the right of such person, association or union to adopt
the same. No label, trademark, design, device, imprint
or form of advertisement shall be filed as aforesaid that
would probably be mistaken for a label, trademark, design,
dG?ioe, imprint or form of advertisement already of rec-
ord. No person or association shall be permitted to reg-
ister as a label, trademark, design, device, imprint or
any form of advertisement any emblem, design or resemblance
thereto that has been adopted or used by any charitable,
.
Ron. Sidney Latham, Page 4 (O-5864)
benevolent or religious society or assooiation,
without their consent."
liberea trademark has been abandoned or it is discontinued
for more than three years, the Seoretary of State is required to withdraw
the mark from registration upon giving the registrant the notice required
by law; and the mark may ther-after be registered by another person as
his trademark. (Article 851-a, V.A.C.S.).
In connection with the questions under consideration, we
have carefully considered the cases of ABC Stores, Ino, v. T. S. Richie &
Canpany, 280 S.W. 177, and Shugart v. Rogers, 170 5.X 12d) 813. In the
case of ABC Stores, Inc., v. T.S. Rlchie A Compaq, supra, referring to
Article 851, Vernon's Annotated Civil Statutes, it was said:
"This statute was enacted for the purpose of con-
ferring a state-wide ri&t to the exolusive use of such
particular name or device as comes within its terms,
and, since the evidence in this case shows that the ABC
Stores, Ino., had complied therewith, andthat T. S.
Richie & Cmnpaqy had acquired no exclusive right to the
use of the name or device, either by purchase or prior
use, It should bs held to have no right to use same
either in Beauaont or elsewhere. . . ."
As we understand the foregoing cases they do not decide the
questions propounded by you. The question whether a trade name without a
particular design or type of lettering should be registered u;iththe
Secretary of State under the terms of Article 851 was not before tho
murts in these cases; therefore, this question vms not passed upon by
the courts in either of the foregoing cases.
We have carefilly considered the ease of Gluck, et al, v.
Kmhan, 186 S.E. 615, *herein the Supreme Court of West Virginia had
under consideration Code 47-2-l of that State, which is very similar in
some respects to Article 851, V.A.C.S. In that case, among other things,
the court held that Code 47-2-l did not provide for the registration of
trade names as distinguished from tradesarks, and persons attemptin& to
re$stor a trade name pursuant thereto, thereby acquired no exclusive
right to the usoof the name so attempted to be registered. However, it
is noted that the Supreme Court of YrestVirginia in the foregoing case
stated, in effect, that the Texas Statute was much broader than the !'!est
Virginia statute in some respects. As heretofore stated the Supreme
Court of Xiest Virginia held that persons attempting to register a trade
name pursuant to Code 47-2-l acquired IY)exclusive right to the use of
the nc~e so attempted to be registered. However, in the case of the ABC
Steres, Inc., v. T.S. Richie & Compaqy, supra, the Texas Cormissicn of
Appeals, amon other things, held, in effect, that a registrant of a
trade nsme an< advertising devioe under Article 851, V.A.C.S., was entit-
led to the trade territory actually occupied by the registrant, but ex-
tends to every section of the State. It will be noted that in the ABC
Stores case the court had under consideration a trade name of a particu-
lar design and form of advertising. In the case of Shugart vI Rogers,
.
. .
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Honorable Sidney Latham, Page 5 (O-5864)
supra, the oourt had under consideration the trade name "Texas State
Optical Company" using the words "Texas State" and inserting within
a circle between these words the following wordsr "Optical Company."
lhether the court considered the trade name "TexasState Optical Company"
in the form heretofore mentioned as a special design or device is not
stated in the opinion of the court.
After a oareful search of the authoritles,we have failed to
find any case passing directly upon the questions here involved.
It Is noted that Article 851, supra, does not mention a "name"
or "trade name" as one of the items subject to registration under the.pro;,
visions of such article. If the Legislature in enacting Article 851 had in-
tended to include "name" or "trade name" as one of the items subjeot to reg-
istration under said statute it could have easily included the words "name"
and "trade name" in said dot in plain language, and had it intended to do SO,
it is our opinion that the Legislature Hould have included the words "nsme"
and "trade name" in said dot. It is apparent that there Is a well defined
distinction between a "trade name" and a "trademark."
In view of that has heretofore been said, we respectfully answer
your first question in the negative.
In view of our answer to your first question your second and
third questions do not require further discussion.
With reference to your fourth question regarding a card submitted
by the Retail Merchant's Association of Rouston, it is our opinionthat such
card does not come within the terms of Articl 051, supra, and, therefore, it
is not subject to registration under said article,
We are returning herewith the file accompanying your inquiry.
Yours very truly
A’iTOF?l?EY GENERAL CF TEXAS
&FROVED FEB 28, 1944
By
/*/ Ardell Williams
/*/ GROVER SEUERS Ardell Williams
ATTORNEY GhNRT'2.L
OF TEXAS Assistant
AWrEPaegw
Encl. APPROVED
Opinion Cixmnittee
ByBWB
Chairman