Monday, November 10, 2014

The Patenting of a Design Trademark

It appears that the U.S. Patent Office used to issue design patents for graphical trademarks. Portland patent attorney James Walters reports his astonishing find of a U.S. design patent, D3444, issued in 1869 for this trademark:

 The "inventor" set out the following "claim":
What I claim as my invention, and design to secure by Letters Patent, is--
The design for a trade-mark, herein set forth and shown.
Exactly how the Patent Office came to issue Letters Patent in a trademark is more than interesting. The Patent Act of 1836 was designed to improve patent quality by removing the then-authority for the issuance of patents from the U.S. Secretary of State to a new official, a Commissioner of Patents. The 1836 Act established a formal criteria for issuing patents, allowing a patent to an inventor who "discovered or invented any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale ..."

It is unclear why the Patent Office viewed the design of a trademark as a new or useful discovery, invention or improvement of useful art, machine, manufacture or composition of matter. A trademark is a source identifier, not an invention, and is not authorized under the patent clause of the U.S. Constitution, Art I, Section 8, cl.8. In any event, since the 1836 Act limited a patent's term to 14 years, this "inventor" may have outwitted himself by obtaining limited patent protection when a trademark, in theory, can last as long as it is used to perform its source identifier function -- perhaps forever.

It would be interesting to learn whether the Patent Office's issuance of Letters Patent was a common practice for design marks at any point in time, or whether this one presently known example is an aberration. If any reader has additional examples, kindly share.

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