A Personal Note on Trademark and Unfair Competition Law before the Lanham Act

Abstract

I was first exposed to antitrust and trademarks in the 1926 term of the United States Supreme Court, when I served as law clerk to Justice Stone. I had studied neither subject while at law school, a remarkable deficiency in my education having regard for the fact that both subjects were the centerpiece of my teaching, which extended for some forty-five years, and my practice over a period of some seventy years. The Court that term decided two trademark and unfair competition cases, with both opinions written by Justice Holmes.1 I doubt whether these opinions alone would have sufficiently kindled my interest to lead me to devote my entire adult life to these subjects. What aroused my interest was the conversation about trademarks between Justices Stone and Holmes at which I was present. Holmes's tribute to Frank Schechter's The Historical Foundations of the Law Relating to Trade-Marks2 induced me to immerse myself in this subject. I discovered that the first trademark case to be litigated in the federal courts was as late as 1844, over 100 years before the enactment of the Lanham Act.3 The paucity of reported decisions made it possible for a neophyte to read all of the court opinions, which I did when I joined the Columbia faculty in 1927. What I found was rather disconcerting; valuable brands of immense commercial magnetism were not accorded trademark status because of their etymological inferiority, despite the fact that they identified the source of the goods upon which they were affixed. Waterman Fountain Pens, Waltham Watches, and Kellogg Corn Flakes were trade names, not trademarks, and in theory (but not necessarily in fact) accorded limited and inadequate protection. At Columbia, my mentor, Professor Herman Oliphant, who pioneered the field with the first published casebook on trade regulation and who introduced the subject as a separate course in the law school curriculum, invited me to teach it notwithstanding my total unfamiliarity with the subject. He also encouraged me to put out a revised