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A Case of Prejudice? The Uncertain Development of Collective and Certification Marks

Published online by Cambridge University Press:  11 September 2012


The introduction of collective and certification marks to U.S. law in 1946 by the Lanham Act has generally been regarded as an innovative and forward-looking step. Yet these marks had been widely used by individual states since the previous century, and international conventions had long been pushing the federal government to enact measures to protect them. Indeed, it may be stranger that the U.S. trademark law of 1905 did not include protection for such marks than that, forty years later, the Lanham Act did. In exploring why the law of 1905 failed to respond to widespread innovation, and why the Lanham Act was celebrated for fulfilling such a long-overdue obligation, this article raises questions about conventionally linear accounts of the development of trademark law and practice.

Copyright © The President and Fellows of Harvard College 2012

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The author is grateful to the Economic and Social Research Council (U.K.) for funds in support of, and to archivists at the California State Archives, Oregon State Archives, and St. Louis City Archives for help with, this research; also to Teresa da Silva Lopes and David Higgins for reading and responding to earlier versions of this article.

1 16 U.S. Stat 198; Lemley, Mark A., “The Modern Lanham Act and the Death of Common Sense,” Yale Law Journal 108, no. 7 (1999): 16871715, quotation at 1687CrossRefGoogle Scholar.

2 60 U.S. Stat 1943–1946, sections 3 and 4. The U.S. Patent and Trademark Office defines a collective mark as one that indicates that “the user of the mark is a member of a particular organization” and a certification mark as one that “certifies the goods and services of others when they meet certain standards.” (; visited 15 Apr. 2011.) Standard certification marks include the “wool mark,” used to indicate the content of material. Standard collective marks include the “CA” used by the Institute of Chartered Accountants. Collective marks differ from certification marks primarily in that the former may be used only with the assent of members of a collective, while the latter may be used by anyone who meets the specified standards. There are large areas of overlap between the two, particularly in geographic collective marks, which often set standards for use.

3 Wilkins, Mira, “The Neglected Intangible Asset: The Influence of the Trade Mark on the Rise of the Modern Corporation,” Business History 34 (1992): 6699, quotation at 81CrossRefGoogle Scholar.

4 DKG, “Protection of Service Marks under the Lanham Act,” Virginia Law Review 41, no. 3 (1955): 365–78CrossRefGoogle Scholar, quotation at 365. For opposition, see Lemley, “Modern Lanham Act.”

5 See Landes, William M. and Posner, Richard A., “Trademark Law: An Economic Perspective,” Journal of Law and Economics 30, no. 2 (1987): 265309CrossRefGoogle Scholar, which is widely and generally approvingly cited. For a dissenting voice, see Desai, Deven and Waller, Spencer, “Brands, Competition, and the Law,” Brigham Young Law Review 5 (2010): 1425–99Google Scholar.

6 Hearings in 1954 noted that “one of the principal objectives of the Lanham Act is to induce lawful users of trade-marks, service marks, collective marks and certification marks to register under the act.” Registration and Protection of Trademarks: Hearing before a Subcommittee of the Committee on the Judiciary (Washington, D.C., 1954), 37Google Scholar.

7 U.S. Commissioners, Report of the Commissioners Appointed to Revise the Statutes Relating to Patents, Trade and Other Marks, and Trade and Commercial Names (Washington, D.C., 1900) [hereafter, Report], 349–51Google Scholar.

8 Trade Marks Act, 7 Ed. 7 15§ 62. What are now called collective and certification marks were then often called “association” and/or “standardization” marks.

9 33 U.S. Stat 724.

10 [Anon.], Trade Marks, Trade Names: For the Businessman (New York, 1912), 10Google Scholar. In 1905, James Hopkins, one of the major legal commentators, noted that, in principle, “trade-mark need neither indicate the manufacturer or the place … but may indicate either the … handling or selection or some labor that has been performed in connection therewith,” but conceded that federal law did not provide protection for such marks. Hopkins, James Love, The Law of Trademarks, Trade Names, and Unfair Competition, 2nd ed. (Chicago, 1905), 1516Google Scholar; in England, Lewis Sebastian noted that “In America, the question [of association marks] has been much discussed” but remains unresolved. Sebastian, Lewis, The Law of Trademarks, 5th ed. (London, 1911), 100Google Scholar.

11 Report, 103.

12 For example, Brooks, John Graham, “The Trade-Union Label,” Bulletin of the Department of Labor 15 (1898): 197221Google Scholar; MacArthur, Walter, Prize Essay on the Union Label (Washington, D.C., 1905)Google Scholar; Marot, Helen, American Labor Unions (New York, 1914)Google Scholar; Martin, W. A., “Union Labels,” American Law Review 42 (1908): 511–40Google Scholar; Spedden, Ernest R., The Trade Union Label (Baltimore, 1910)Google Scholar.

13 New York Times, 21 Aug. 1946, 4.

14 Derenberg, Walter J., “The Contribution of Edward S. Rogers to the Trademark Act of 1946 in Historical Perspective,” Trade-Mark Reporter 62, no. 3 (1972): 189Google Scholar; 41 U.S. Stat 533, 1914–1921.

15 Sherman, Brad and Bently, Lionel, The Making of Modern Intellectual Property Law: The British Experience, 1760–1911 (New York, 1999)Google Scholar.

16 16 U.S. Stat 198, 1848–71.

17 “Trademark Applications (Claims), Registrations, and Renewals,” registration 155, 1863, California State Archives, 8297 (Hereafter, state registrations are identified by state initials, registration number, and year); Duguid, Paul, “French Connections: The International Propagation of Trademarks in the Nineteenth Century,” Enterprise & Society 10, no. 1 (2009): 337CrossRefGoogle Scholar.

18 19 U.S. Stat 141, 1873–1887; 100 U.S. 82 (1879); Rosen, Zvi, “In Search of the Trade-Mark Cases,” St. John's Law Review (Summer 2009): 827904Google Scholar.

19 21 U.S. Stat 502, 1878–1881.

20 Depending on the state, such firms might have been covered by fragmented state and common law.

21 Report, 249.

22 Ibid., 120, 206.

23 Ibid., 529.

24 Forbes wrote the sections on French law and legal decisions in Charles Coddington, E., A Digest of the Law of Trademarks: As Presented in the Reported Adjudications (New York, 1878), 379466.Google Scholar

25 Greeley, Arthur P., Foreign Patent and Trademark Laws: A Comparative Study with Tabular Statements of Essential Features of Such Laws (Washington, D.C., 1899)Google Scholar.

26 Pillsbury v. Pillsbury-Washburn Flour Mills, 64 F 841 (1894), Johnson v. Bauer, 79 F 954 (1896), Hiram Walker & Sons v. Hockstaeder, 85 F 776, Stuart v. F.G. Stuart Co., 85 F 778, Colgate v. Adams, 88 F 899 (all 1898).

27 Report, 61.

28 Greeley, Arthur P., “The Boynynge Trade-Mark Bill,” Trade-Mark Bulletin 1, no. 3 (1905): 6468Google Scholar; Greeley, , Registration of Trademarks under the New Trademark Act of the United States: With Notes on the Act (Washington, D.C., 1905)Google Scholar.

29 Report, 76; 16 U.S. Stat 210, 1848–1871, §77.

30 Kerly, Duncan, The Law of Trade Marks and Trade Names, 3rd ed. (London, 1908), 84Google Scholar.

31 Ex Parte, Brockton Chamber of Commerce, Inc. Patent and Trade Mark Review 13 (1915): 221–22, quotation at 222Google Scholar.

32 41 U.S. Stat 533, 1914–1921.

33 52 U.S. Stat 638, 1937–1938.

34 Robert, Daphne, The New Trade-Mark Manual: A Handbook on Protection of Trademarks in Interstate Commerce (Washington, D.C., 1947), 4546Google Scholar.

35 60 U.S. Stat 1943–1946, §45.

36 Motley, James M., Untitled review of Spedden's Trade Union Label, American Economic Review 1, no. 1 (1911): 112–14Google Scholar.

37 Spedden, , Union Label, 46Google Scholar; Holmes in Tracy v. Banker 49 NE Reporter 308 (1898), quotation at 308.

38 Schechter, Frank, The Historical Foundations of the Law Relating to Trade-Marks (New York, 1925)Google Scholar. Schechter minimizes guild significance and never discusses unions. Dawson's reappraisal of Blanchard v. Hill presents a more intriguing view of the relationship. Dawson, Norma, “English Trade Mark Law in the Eighteenth Century: Blanchard v. Hill Revisited—Another ‘Case of Monopolies’?Journal of Legal History 24, no. 2 (2003): 111–42CrossRefGoogle Scholar; Duguid, “French Connections.”

39 Hattan, Victoria C., Labor Visions and State Power: The Origins of Business Unionism in the United States (Princeton, 1993)CrossRefGoogle Scholar; Wolman, Leo, The Boycott in American Trade Unions (Baltimore, 1916)Google Scholar; Burnett, John, “The Boycott as an Element in Trade Disputes,” Economic Journal 1, no. 1 (1891): 163–73CrossRefGoogle Scholar.

40 For Carhartt, see Report of the Industrial Commission on the Relations and Conditions of Capital and Labor Employed in Manufactures and General Business, vol. 7 (Washington, D.C., 1901), 190Google Scholar; Horlicks registered a series of trademarks with union endorsement. See, for example, Oregon State Archives, Trademark Register, 1900–1907, 234.

41 Brooks, , “Trade-Union Label,” 197Google Scholar.

42 By 1870, 91.5 percent of San Francisco's cigar workforce was Chinese but their average wage was only 55 percent of that of white males in the trade. Brown, Martin and Philips, Peter, “Competition, Racism, and Hiring Practices among California Manufacturers, 1860–1882,” Industrial and Labor Relations Review 40, no. 1 (1986): 6176Google Scholar.

43 Scientific American 60, no. 8 (1889): 113Google Scholar; Brooks, , “Trade-Union Label,” 209Google Scholar.

44 Meillon, J., “The Union Label,” Commonwealth Law Review 3, no. 2 (1905): 7075, quotation at 71Google Scholar.

45 Norris, Frank, McTeague: A Story of San Francisco (New York, 1966 [1899]), 90Google Scholar.

46 Eaves, Lucile, A History of California Labor Legislation (Berkeley, Calif., 1910), 385Google Scholar. Trademarks on lumber appear in California in 1866. CA 59, 1866.

47 Taft, Philip, Organized Labor in American History (New York, 1964)Google Scholar.

48 CA 250, 1873. The Cooperative had, however, formed in opposition to attempts to “substitute cheap Chinese labor for the dearer white labor.” Shinn, Charles Howard, Cooperation on the Pacific Coast (Baltimore, 1888), 490Google Scholar. Like the cigarmakers, shoemakers faced a growing Chinese workforce. This grew from under 16 to 48 percent between 1870 and 1880. Brown and Philips, “Competition, Racism, and Hiring Practices,” table 3.

49 “Abusing a Chinaman,” Daily Alta California, 27 Sept. 1864, 1Google Scholar; CA 260, 1873.

50 CA 354, 1876.

51 “Trade Mark Record 1,” 90, St. Louis City Archives, St. Louis, Mo.

52 Spedden, , Union Label, 13Google Scholar; Brooks, , “Trade-Union Label,” 190Google Scholar.

53 CA 416, 1878; 417, 1878; 430, 1878; 886, 1882; 894, 1882; 905, 1882; 1261, 1885; 1282, 1885. For Shaeffer, see Daily Alta California, 28 Dec. 1884.

54 CA 800, 1882; 811, 1882; 894, 1882. So virulent was the League's xenophobia that, at the height of agitation against prison labor, it accepted shoes made by prisoners as long as these carried “white labor” certification. “Shoemakers' League,” Daily Alta California, 19 June 1886.

55 CA 894, 1882.

56 CA 1451, 1886; 1480, 1887. Dragon-slaying images were perhaps adapted from the trademark of the popular bitters made by Hostetter & Smith (CA 14, 1863), where the speared dragon suggests the slaying of digestive demons. Perhaps to avoid rejection by the Secretary of State, the image was used to denounce the Chinese without naming them. In 1895, for example, Mysell & Rollins registered a label for stationery in which putti throttle a dragon with a belt alongside the copy “We are not the advocates of cheap and nasty printing” (CA 2545, 1895).

57 CA 252, 1878; 1127, 1884; 844, 1882; 1387, 1886; 838, 1882; 839, 1882; 1451, 1886. In all, of the approximately 5500 marks registered in California by 1905, some sixty were union labels and another fifty cooperatives and associations. While the proportion may seem low, the register includes a large number of ephemeral firms and marks. Those of unions, cooperatives, and associations tend to endure.

58 Ex parte CMAPC: Official Gazette of the United States Patent Office 16 (1879): 958Google Scholar.

59 For example, in 1885, during a period of intense industrial confrontation among the hatters in Connecticut, a union-formed company, the South Norwalk Hat Company, registered its mark followed by the Knights of Labor hatters and the Cooperative Hat Company of South Norwalk. These were registered with the encouragement of the national Hatters' Association, which then distributed the South Norwalk union label nationally while claiming protection as a federally registered mark. (See Hatter & Furrier 14, no. 11 [1885]: 11Google Scholar; and later issues.) In 1888, marks of the U.K. Cooperative Wholesale Society (U.S. 15882) and the Commission de Surveillance et de Controle de la Marque Municipale pour les Soieries Tissées à Lyon (U.S. 16190) were registered. Here, the registrar might have been trying to comply with the Paris Convention, which the United States had signed the year before.

60 Schechter, , Historical Foundations, 153Google Scholar.

61 As racism remained endemic in their label campaigns, however, they are not necessarily the best representatives of more general trends in label content.

62 Spedden, Union Label, 11 and 46.

63 Brown and Philips, “Competition, Racism, and Hiring Practices,” table 3. At least some of this decline can be attributed to label agitation, which, by favoring closed shops and denouncing tenement labor, affected Chinese rates of employment indirectly as well as directly. East reports a five-month label campaign to turn an anti-union employer into a union shop. East, Dennis, “Union Labels and Boycotts: Cooperation of the Knights of Labor and the Cigar Makers International Union, 1885–6,” Labor History 16, no. 2 (1975): 266–71CrossRefGoogle Scholar.

64 For 1885–87 figures, undated letter from John Philips, secretary of the United Hatters of North America to unknown correspondent, Hatters Unions, 1853–1896, Wag 189 Box 2.2, Robert F. Wagner Labor Archives, New York University [hereafter, Wagner Archives]. For 1898, see Brooks, , “Trade Union Label,” 202Google Scholar.

65 Bird, Monroe M. and Robinson, James W., “The Effectiveness of the Union Label and ‘Buy Union’ Campaigns,” Industrial and Labor Relations Review 25, no. 4 (1972): 512–23Google Scholar. Apart from the specific goals (child labor, the eight-hour day, and so on), the label was undoubtedly also a means to raise both the profile and the membership of unions.

66 The New York Times reported labeled cigars selling for $3 per thousand more than unlabeled. “Their Label Protected,” New York Times, 9 Mar. 1888, 1Google Scholar.

67 For the trusts, see U.S. Bureau of Corporations, Report of the Commissioner of Corporations on the Tobacco Industry, vol. 1 (Washington, D.C., 1909), 2021Google Scholar.

68 CMIU v. Link, see Cigar Makers' Official Journal 12 no. 2 (1886): 81Google Scholar. The appeal of the CMIU blue label is suggested in the prosecution of a Chinese cigarmaker Get Fong (the “blue-label felon”) accused of stealing CMIU labels to put on Chinese-made cigars. “Held for a Felony,” Daily Alta California, 31 July 1886, 1Google Scholar. He was also accused of stealing white labels from the CMAPC. Daily Alta California, 19 Dec. 1886, 4.

69 CMOJ 29 no. 5 (1905): 2. New York Times, 17 Mar. 1889, 4; Hopkins, James Love, The Law of Unfair Trade: Including Trade-Marks, Trade Secrets, and Good-Will (Chicago, 1900), 37Google Scholar; Martin, William A., A Treatise on the Law of Labor Unions: Containing a Consideration of the Law Relating to Trade Disputes in All Its Phases (Washington, D.C., 1910), viiGoogle Scholar; State v. Hagen 33 NE 223 (1889), 224.

70 Allen v. McCarthy, 37 Min 349 (1887); Strasser v. Moonelis 108 NY 611 (1887–88). See Label Sustained,” CMOJ 13, no. 2 (1887): 10Google Scholar; Fighting the Blue Label,” CMOJ 13, no. 4 (1888): 6Google Scholar.

71 Schneider v. Williams, 14 Atl Rep 812 (1888); New York Times, 25 July 1888, 2.

72 McVey v. Brendel, 22 Atl Rep 912 (1891); the test holds that, whatever their grievance, no one who is guilty of improper conduct can find relief in equity. I have no evidence of private racist labels failing this test.

73 For the logic, see Cohn v. People, 37 NE 60; for the marketplace, CMIU v. Haak, see An Interesting Decision,” CMOJ 14, no. 5 (1889): 9Google Scholar.

74 Hetterman et al. v. Powers et al., 43 SW Rep 180 (1897), quotation at 181. Also CMPU v. Linder, 3 Ohio Dec. 244. The CMPU was the Cigar Makers' Progressive Union, which, backed by the Knights of Labor, broke from the CMIU in the 1880s.

75 128 U.S. 514, quotations at 520.

76 CMPU v. Conhaim, 49 MN 243, 943–44 (1889).

77 For a broader overview of unions in court, see Forbath, William E., “The Shaping of the American Labor Movement,” Harvard Law Review 102, no. 6 (1989): 11091256CrossRefGoogle Scholar; Frankfurter, Felix and Greene, Nathan, The Labor Injunction (New York, 1930)Google Scholar. (Neither of these studies of the “Gilded Age” discusses labels at any length.)

78 For their part, unions started sending union members who were also business owners into court, where, standing as a business rather than a union, they found common law protection for the label. See People v. Fisher, 50 Hun 552 (1899).

79 Ex parte the Anti-Adulteration League, Official Gazette 86, no. 11 (1899): 1803–4Google Scholar.

80 As Forbath puts it, “Nowhere else [in the world] did trade unionists contend so constantly for so many decades with judge-made law”; he notes in general the “austere liberal social vision that [courts] identified with the common law.” Forbath, “Shaping of the American Labor Movement,” 1114. See also Hattan, Labor Visions.

81 Hatters in particular pursued restrictions on prison labor. See Jackson, Theodore Henry, “Prison Labor,” Journal of the American Institute of Criminal Law and Criminology 18, no. 2 (1927): 218–68CrossRefGoogle Scholar. With CMIU help, anti-tenement law was passed in New York in 1884 but declared unconstitutional in 1885. In Re Jacobs, 98 NY 98 (1885).

82 Union Labels,” United States Trade Mark Bulletin 5, no. 3 (1893): 57Google Scholar. Statutes of California, 1887 (27th Session), ch 150, 3200–3201.

83 U.S. Industrial Commission, Report of the Industrial Commission on Labor Legislation, vol. 5 (Washington, D.C., 1900), 129Google Scholar, which noted that ten states allowed any “person, association, or corporation,” to adopt collective marks.

84 Report, 519.

85 See, for example, Hattan, Labor Visions.

86 Evans, E. Lewis, “The Union Label,” American Federationist 4 (1897): 142–44, quotation at 143Google Scholar.

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89 For conspiracy charges and the Debs Case, see Frankfurter, and Greene, , Labor Injunction, 17ffGoogle Scholar; Marot, American Labor Unions.

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92 It might seem possible to argue that the commission was simply unaware of the prevalence of collective and certification marks at the time. To counter this idea, I have, wherever possible, cited the commissioners' Report for evidence of international commitments, national law, and the union label.

93 The commission also “took into consideration the views expressed by the American Bar Association, the Manufacturers Association of America, the Pharmaceutical Association, the U.S. Trade-Mark Association, and the Association of Retail Druggists.” Report, 5. None was likely to support the union label.

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98 Schneider v. Williams, 814, 815.

99 Daniel, Edward, QC, quoted in Lionel Bently, “From Communication to Thing: Historical Aspects of the Conceptualisation of Trade Marks as Property,” in Trademark Law and Theory: A Handbook of Contemporary Research, ed. Dinwoodie, Graeme B. and Janis, Mark D. (Cheltenham, U.K., 2008), 37n140Google Scholar.

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101 Fisk, Working Knowledge.

102 Scranton, Philip, Figured Tapestry: Production, Markets, and Power in Philadelphia Textiles, 1885–1941 (Cambridge, Mass., 1989), 6Google Scholar.

103 In 1958, articles on certification marks still portrayed unions as parvenus. See Taylor, Donald A., “Certification Marks—Success or Failure?Journal of Marketing 23, no. 1 (1958): 3946CrossRefGoogle Scholar.