Cease & Desist on Domain Name Use

[cw1865]

Here is a link with the full text of the Treaty of Versailles. Check it out, very interesting, there are some REALLY OBSCURE provisions in there.

I have obviously read a few references to the Germans surrendering aspirin, I have yet to find a direct reference to it in the Treaty itself:

I DID find:

"Notwithstanding the provisions of Article 297, where immediately before the
outbreak of war a company incorporated in an Allied or Associated State had
rights in common with a company controlled by it and incorporated in Germany to
the use of trademarks in third countries, or enjoyed the use in common with such
company of unique means of reproduction of goods or articles for sale in third
countries, the former company shall alone have the right to use these trade-marks
in third countries to the exclusion of the German company, and these unique means
of reproduction shall be handed over to the former company, notwithstanding any
action taken under German war legislation with regard to the latter company or
its business, industrial property or shares. Nevertheless, the former company, if
requested, shall deliver the latter company derivative copies permitting the
continuation of reproduction of articles for use within German territory."

I am reading this to mean that Bayer Germany forfeits its trademark to its successor, not that the trademark itself is unenforceable, nevertheless, peruse it, maybe it IS in there, it really is a LONG treaty...

I love this clause:

"Within the same period Germany will hand over to His Britannic Majesty's
Government the skull of the Sultan Mkwawa which was removed from the Protectorate
of German East Africa and taken to Germany."

WOW

[deepsand]

Note the date, after the end of WWI, but before Germany signs the Treaty of Versailles. By 11/30/18 I would doubt that the cancellation of the TM was in anticipation of a specific treaty term.

Why make such assumption?

There is here in fact an admixture of claims and counter-claims re. both Patent and Trademark protections. Furthermore, there is evidence here of said compound having been surreptitiously being here marketed under the formal English name of the chemical compound for which a Patent had been issued, but not under the Trademarked name.

"It is impossible to ascertain how much, if any, of this infringing drug was marketed under the name 'Aspirin,' but it is probable that little or none of it reached the retail druggists under that name.

The plaintiff called a number of retail druggists, who swore with substantial unanimity that they had never sold the infringing drug to the consumer under the name 'Aspirin,' and in many cases that the customers themselves asked for it as 'Acetylo' or as 'acetyl salicylic acid.' In Europe, where the plaintiff's predecessor appears not to have enjoyed the benefit of a patent, the drug was manufactured in open competition, but the name 'Aspirin' was uniformly respected as a trade-mark, other manufacturers selling either under the name mentioned in the patent or under artificial trade-marks invented by the manufacturers themselves."

Furthermore, while it is the case that "On November 30, 1918, an examiner of the Patent Office declared that the trade-mark was no longer valid and ordered its cancellation. it is also the case that " From this decision no appeal was taken, and that feature of the case therefore falls out of consideration. I.e., the merits of such were not party of the body of the cited case.

To hold that the USPTO should have only coincidentally issued such decision a mere 7 days following Germany's surrender is to very badly try credulity. This action more strongly suggests a case of the victor plundering the vanquished. And, considering the circumstances if the time, it should not surprise that said decision was not appealed.

Lastly, I find Judge Hand's reasoning particularly convoluted, relying as it does on imposing an Anglo-centric interpretation on a word that is Germanic in origin. Furthermore, to hold that Bayer's having placed its name on tablets of its own manufacture beginning in 1915 served as evidence that Bayer itself was using the word "Aspirin" in the generic sense is so non sequitur as to be laughable.

Finally, it must be noted that this was not a case of the original Bayer AG company trying to reclaim said Trademark, but rather a US company born of the assets of Bayer AG that were confiscated by the Allies following WWI.

In short, this case addresses the matter of a successor to Bayer AG trying to regain that which had previously been lost by Treaty.

[deepsand]

Here is a link with the full text of the Treaty of Versailles. Check it out, very interesting, there are some REALLY OBSCURE provisions in there.

I have obviously read a few references to the Germans surrendering aspirin, I have yet to find a direct reference to it in the Treaty itself:

I DID find:

"Notwithstanding the provisions of Article 297, where immediately before the
outbreak of war a company incorporated in an Allied or Associated State had
rights in common with a company controlled by it and incorporated in Germany to
the use of trademarks in third countries, or enjoyed the use in common with such
company of unique means of reproduction of goods or articles for sale in third
countries, the former company shall alone have the right to use these trade-marks
in third countries to the exclusion of the German company, and these unique means
of reproduction shall be handed over to the former company, notwithstanding any
action taken under German war legislation with regard to the latter company or
its business, industrial property or shares. Nevertheless, the former company, if
requested, shall deliver the latter company derivative copies permitting the
continuation of reproduction of articles for use within German territory."

I am reading this to mean that Bayer Germany forfeits its trademark to its successor, not that the trademark itself is unenforceable, nevertheless, peruse it, maybe it IS in there, it really is a LONG treaty.

I concur with this conclusion.

I've done a full search of Part VII. Penalties (Arts. 227–230), Part VIII. Reparation (Arts. 231–247), Part IX. Financial Clauses (Arts. 248–263), and Part X. Economic Clauses (Arts. 264–312), and find no mention of aspirin by name.

[cw1865]

Why make such assumption?

The initial suit by Bayer (whether it was still 'Bayer AG' or Bayer Co. isn't particularly clear), was brought a month after the US declared war on Germany. So, Bayer AG does get its assets seized, but Bayer Co., at the time of the decision is simply declared to be a 'successor' (describing Bayer AG as its predecessor) holding 'proper assignments'

There is here in fact an admixture of claims and counter-claims re. both Patent and Trademark protections. Furthermore, there is evidence here of said compound having been surreptitiously being here marketed under the formal English name of the chemical compound for which a Patent had been issued, but not under the Trademarked name.

By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"

"It is impossible to ascertain how much, if any, of this infringing drug was marketed under the name 'Aspirin,' but it is probable that little or none of it reached the retail druggists under that name.

Yes, and on appeal this is the 'fact' , ie. its given....although I find it difficult to believe that they're willing to infringe a patent but pay heed to the trademark.

The plaintiff called a number of retail druggists, who swore with substantial unanimity that they had never sold the infringing drug to the consumer under the name 'Aspirin,' and in many cases that the customers themselves asked for it as 'Acetylo' or as 'acetyl salicylic acid.'

They were plaintiff's witnesses who are swearing they never broke the law. But again, its an appeal so that fact is 'given'

In Europe, where the plaintiff's predecessor appears not to have enjoyed the benefit of a patent, the drug was manufactured in open competition, but the name 'Aspirin' was uniformly respected as a trade-mark, other manufacturers selling either under the name mentioned in the patent or under artificial trade-marks invented by the manufacturers themselves."

If this were today, this would be a lot more pertinent because of international agreements. In that era, much less so.

Furthermore, while it is the case that "On November 30, 1918, an examiner of the Patent Office declared that the trade-mark was no longer valid and ordered its cancellation. it is also the case that " From this decision no appeal was taken, and that feature of the case therefore falls out of consideration. I.e., the merits of such were not party of the body of the cited case.

To hold that the USPTO should have only coincidentally issued such decision a mere 7 days following Germany's surrender is to very badly try credulity. This action more strongly suggests a case of the victor plundering the vanquished. And, considering the circumstances if the time, it should not surprise that said decision was not appealed.

They had already plundered the vanquished though. Bayer AG's assets get seized and sold off, Bayer Co., while bearing the name is simply a New York corporation.

Lastly, I find Judge Hand's reasoning particularly convoluted, relying as it does on imposing an Anglo-centric interpretation on a word that is Germanic in origin.

Well, actually Learned Hand is a famous judge. While there are a few, off the top of my head there are four (prior to WWII) that pop into my head: Marshall, Holmes, Cardozo and Hand. The court is supposed to be 'Anglo' centric, its a Federal court sitting in the US! {When in Rome, do as the Romans do). But even then, apparently the German word itself was derived from the Latin genus/species designation of the plant from which it is derived: "Salicylic acid was first extracted from the plant Spiraea ulmaria, and the principal component of this extract was known by the German term spiroylige Säure, which was later shortened to Spirsäure."

Furthermore, to hold that Bayer's having placed its name on tablets of its own manufacture beginning in 1915 served as evidence that Bayer itself was using the word "Aspirin" in the generic sense is so non sequitur as to be laughable.

The point was that they were writing 'Bayer - Tablets of Aspirin' - clearly they were referring to Aspirin in the generic sense.

Finally, it must be noted that this was not a case of the original Bayer AG company trying to reclaim said Trademark, but rather a US company born of the assets of Bayer AG that were confiscated by the Allies following WWI.

Following the declaration of war to be precise. Its not clear if the original Bayer AG brought the case and Bayer Co. became the successor in interest and took over the litigation after Bayer AG was out of the picture.

In short, this case addresses the matter of a successor to Bayer AG trying to regain that which had previously been lost by Treaty.

The procedural history suggests otherwise, the action is brought in May, 1917, a month after the US declaration of war against Germany, to assert a trademark that, at least at that juncture, was still recognized in law. They weren't trying to 'regain' anything....

[deepsand]

The initial suit by Bayer (whether it was still 'Bayer AG' or Bayer Co. isn't particularly clear), was brought a month after the US declared war on Germany. So, Bayer AG does get its assets seized, but Bayer Co., at the time of the decision is simply declared to be a 'successor' (describing Bayer AG as its predecessor) holding 'proper assignments'

But, Bayer AG and Bayer, a NY Corp., are clearly not one and the same. From Bayer - 1914 – 1925 we read "The company's U.S. assets, including its patents and trademarks, were confiscated in 1917 and auctioned off to its competitors." Given that the cited case states that "The bill was filed in May, 1917," presumably the NY Corp. was one of the Bayer AG assets that were seized.

[QUOTE=cw1865;497557]By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"
Agreed. And, yet, a good deal of Judge Hand's opinion deals with the matter re. the English chemical name under which said compound was patented. This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

Yes, and on appeal this is the 'fact' , ie. its given....although I find it difficult to believe that they're willing to infringe a patent but pay heed to the trademark.

They were plaintiff's witnesses who are swearing they never broke the law. But again, its an appeal so that fact is 'given'

From the cited case, "This patent issued on February 27, 1900, and therefore expired 17 years thereafter." Thus, said Patent expired shortly before said case was initiated.

Given the propensity of the time for engaging in underground trade, and the ease with which such was facilitated, that such smuggling should have occurred gives no cause for surprise. Furthermore, the mere sale of such goods as were "surreptitiously introduced into this country" would not in and of itself constitute patent infringement.

They had already plundered the vanquished though. Bayer AG's assets get seized and sold off, Bayer Co., while bearing the name is simply a New York corporation.

Still, that the initial filing of the cited action should occur so close on the heals of the expiration of the Patent, and that the USPTO should revoke the Trademark a mere 7 days following Germany's surrender, defies the odds that such were merely coincidental.

Well, actually Learned Hand is a famous judge. While there are a few, off the top of my head there are four (prior to WWII) that pop into my head: Marshall, Holmes, Cardozo and Hand. The court is supposed to be 'Anglo' centric, its a Federal court sitting in the US! {When in Rome, do as the Romans do). But even then, apparently the German word itself was derived from the Latin genus/species designation of the plant from which it is derived: "Salicylic acid was first extracted from the plant Spiraea ulmaria, and the principal component of this extract was known by the German term spiroylige Säure, which was later shortened to Spirsäure."

I am quite aware of Judge Hand's stature. Nevertheless, I here find his reasoning here to leave much to be desired.

The point was that they were writing 'Bayer - Tablets of Aspirin' - clearly they were referring to Aspirin in the generic sense.

How does the physical presence of a company name and a protected name render the latter generic?

By that line of reasoning, one would be justified in concluding that, to name by one of many possible examples, Intel's Itanium mark is generic because both "Intel" and "Itanium" appear on such CPU chips.

With regards to Bayer, it introduced the "Bayer Cross" in 1904, with such being imprinted on its tablets, well before this action began.

Following the declaration of war to be precise. Its not clear if the original Bayer AG brought the case and Bayer Co. became the successor in interest and took over the litigation after Bayer AG was out of the picture.

Well, since this case was brought in the US, by a NY Corp., following the declaration of war, I think that we can reasonably conclude that at this point Bayer AG was not party to this case.

The procedural history suggests otherwise, the action is brought in May, 1917, a month after the US declaration of war against Germany, to assert a trademark that, at least at that juncture, was still recognized in law. They weren't trying to 'regain' anything....

While you are correct with regards to the timing of the action vis-a-vis the war, a fact that I initially overlooked owing to the 1921 date on the decision, it remains a case of a successor to Bayer AG attempting to, in the US, retain control of a brand name that still was, at the time of filing, under Trademark protection. And, since such case endured beyond the point in time at which the USPTO voided said Trademark, it then became a case of regaining that which had been lost.

Now, care to speculate re. the validity of Google's trademark for "PageRank?"

[cw1865]

But, Bayer AG and Bayer, a NY Corp., are clearly not one and the same. From Bayer - 1914 – 1925 we read "The company's U.S. assets, including its patents and trademarks, were confiscated in 1917 and auctioned off to its competitors." Given that the cited case states that "The bill was filed in May, 1917," presumably the NY Corp. was one of the Bayer AG assets that were seized.

I interpret it to mean that Bayer Co., a NY Corporation, is the purchaser of the seized assets (ie. they have, according to Judge Hand, 'proper assignments')

[QUOTE=cw1865;497557]By the time the suit is filed, the patent itself had clearly expired. The first line of the suit tells you precisely what Bayer Co. was seeking: "This is a suit in equity between the plaintiff, a New York corporation, and the defendant, a Massachusetts corporation, to enjoin infringement of the plaintiff's common-law trade-mark 'Aspirin.'"

Agreed. And, yet, a good deal of Judge Hand's opinion deals with the matter re. the English chemical name under which said compound was patented. This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

"In the case at bar the evidence shows that there is a class of buyers to whom the word 'Aspirin' has always signified the plaintiff, more specifically indeed than was necessary for its protection. I refer to manufacturing chemists, to physicians, and probably to retail druggists.



The crux of this controversy, however, lies not in the use of the word to these buyers, but to the general consuming public, composed of all sorts of buyers from those somewhat acquainted with pharmaceutical terms to those who knew nothing of them. The only reasonable inference from the evidence is that these did not understand by the word anything more than a kind of drug to which for one reason or another they had become habituated."

To me, this is not 'off the wall' or in any way lacking a sufficient legal basis. Problem is, to test Hand you have to go back in time and put yourself in the position of a buyer of aspirin from 1917-1921 and we just can't do that.

This owing to the fact that the Defendant argued that the name "Aspirin" became descriptive by virtue of the Patent having fallen into the public domain. I.e., Defendant argued that the loss of the Patent gave rise to a concurrent loss of the Trademark.

Well, to be precise the Defendant was arguing that the expiration of the patent coupled with the fact that the word 'Aspirin' had become the {generic} name for the drug...

"and expired on February twenty-seventh, 1917, and that thereafter the product fell into the public domain and with it the word, 'Aspirin,' which had become the name for the drug and therefore descriptive. It denied the charges of unfair trade in the bill."

Given the propensity of the time for engaging in underground trade, and the ease with which such was facilitated, that such smuggling should have occurred gives no cause for surprise. Furthermore, the mere sale of such goods as were "surreptitiously introduced into this country" would not in and of itself constitute patent infringement.

You're correct, the resellers are not on the hook for patent infringement, the pirate mfg would be of course {the sale needs to have a fairly strong nexus with the infringement to be actionable}

Still, that the initial filing of the cited action should occur so close on the heals of the expiration of the Patent,

This is NOT coincidental. The patent is expiring, United Drug knows it and obviously is going to market. United Drug does so, obviously using the name aspirin, and Bayer, not wanting to sit on its rights, brings an action {probably hoping to get a preliminary injunction}

and that the USPTO should revoke the Trademark a mere 7 days following Germany's surrender, defies the odds that such were merely coincidental.

Perhaps the examiner thought he was 'sticking it' to the Germans, perhaps its the result of United Drug politically maneuvering the system. But at this juncture, they're not 'screwing the Germans' anymore {they had already done so}, they're sticking it to the US corporation who had purchased Bayer AG's assets at auction.

I am quite aware of Judge Hand's stature. Nevertheless, I here find his reasoning here to leave much to be desired.

How does the physical presence of a company name and a protected name render the latter generic?

Well, first off Hand acknowledges that the experts (chemists) in the industry understand the distinction between aspirin, as being A/S acid coming from Bayer and A/S acid being generic. But Hand rules that its the buyers in the market that matter and the case clearly rules that the buyers in the market understand and interpret the word as being generic.

If you ask how Bayer's description on its bottles rendered the name generic, Hand focused on the word 'of' being, in his mind, a synonym for 'containing' - this bottle should've read: 'Aspirin, by Bayer - Tablets of A/S acid'

With regards to Bayer, it introduced the "Bayer Cross" in 1904, with such being imprinted on its tablets, well before this action began.

Was United Drug using the cross?

Well, since this case was brought in the US, by a NY Corp., following the declaration of war, I think that we can reasonably conclude that at this point Bayer AG was not party to this case.

My gut was telling me that would be way too quick for the government - declare war, seize assets, sell them and the successor files an action to enjoin, all within a month. I could still be wrong, but I still believe the initial action is filed by Bayer AG, notwithstanding the declaration of war. The US Trading with the Enemy Act passed October 6th, 1917. This appoints an 'Alien Property Custodian'

From what I could gather, Bayer's assets get seized, this would include their interest in the litigation. The Alien Property Custodian holds the assets in trust until their disposition, they are sold in 1918, and Bayer Co., a NY Corp. is the legal successor.

-----------------
On the Treaty question, I was merely trying to demonstrate that Bayer AG loses its property interest in the trademark (vis-a-vis Bayer Co.), the Treaty ISN'T the reason the word 'aspirin' loses trademark protection.

Now, care to speculate re. the validity of Google's trademark for "PageRank?"

Google? per se unenforceable....hehe. Its not particularly strong, that is for sure. We'll see if 'googling' becomes generic at some point.

With respect to google, I actually think they should encourage 'googling' to become generic {as opposed to Xerox taking actions to ensure 'Xeroxing' was replaced with 'photocopying'} - only google can have google.com

[deepsand]

Was United Drug using the cross?

That I do not know. However, if they were, I doubt that it would have used the crossed word "Bayer."

On the Treaty question, I was merely trying to demonstrate that Bayer AG loses its property interest in the trademark (vis-a-vis Bayer Co.), the Treaty ISN'T the reason the word 'aspirin' loses trademark protection.

However, it cannot be said that it lost said mark owing simply to the name having passed into common usage, given that said action was borne out of a seizure of assets, the likes of which was formalized by said Treaty, with such having occurred prior to Judge Hand's ruling.

Were there similar actions brought in other countries prior to said Treaty?

What if said Treaty had restored such assets to Bayer AG?