Fritz Garland Lanham -- Father of American Trademark Protection

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F R IT Z GARL A N D

LANHAM

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Father of American Trademark Protection JOE CLEVELAND

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Foreword by M A R Y B O N E Y D E N I S O N Former U.S. Commissioner for Trademarks United States Patent and Trademark Office

Parker County Courthouse, Weatherford, Texas (1939).

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FR IT Z GA RLA ND

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LANHAM Father of American Trademark Protection JOE CLEVELAND Foreword by MARY BONE Y DENISON Former U.S. Commissioner for Trademarks United States Patent and Trademark Office

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Fritz Garland Lanham— Father of American Trademark Protection Copyright © 2021 by the Texas Intellectual Property Law Foundation

All rights reserved. No part of this book may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or by any information storage and retrieval system, without permission in writing from the Texas Intellectual Property Law Foundation.

100 Main Street Fort Worth, Texas 76102 President Herbert J. Hammond Author Joe Cleveland Bookhouse Group, Inc. Editor Rob Levin Editorial Associate Stacy Moser Design Amy Thomann Index Shoshana Hurwitz Production Renee Peyton Bookhouse Group, Inc. Covington, Georgia www.bookhouse.net Printed in the United States of America ISBN 978-1-5323-3924-0

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WITH GRATITUDE The following donors made generous contributions to support scholarships in honor of Congressman Fritz G. Lanham and to celebrate the 75th Anniversary of the Lanham Trademark Act.

Texas Intellectual Property Law Foundation Herbert J. Hammond President ThompsonKnight Joseph F. Cleveland Jr. Treasurer Brackett & Ellis, P.C. Craig Stone Secretary Phillips 66 Company Haynes and Boone, LLP logo size: 220px (width)

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Charter Members Shannon Bates Harper Bates Champion Scott W. Breedlove Carter Arnett E. Leon Carter Carter Arnett Kirby B. Drake Klemchuk, LLP

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Hilda C. Galvan Jones Day Timothy E. Hudson ThompsonKnight Sharon A. Israel Shook Hardy & Bacon Devika Kornbacher Vinson & Elkins, LLP William L. LaFuze McKool Smith Kat Li McKool Smith Mike Locklar Adolph Locklar

KIRBY B. DRAKE

Leisa Talbert Peschel Jackson Walker, LLP Louis T. Pirkey Pirkey Barber, PLLC Derrick A. Pizarro Pizarro Allen Molly Buck Richard Richard Law Group Jerry R. Selinger Patterson + Sheridan, LLP

CON T E N T S WITH GRATITUDE iv FOREWORD Mary Boney Denison viii CHAPTER ONE “The Gentleman from Texas” 1 CHAPTER TWO In Search of a “Clothes Horse” 25 CHAPTER THREE “A Giant of the Chamber” 39 BIBLIOGRAPHY 70 ACKNOWLEDGMENTS 75 INDEX 76

FORE WORD Mary Boney Denison

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in 1905, Congress sought to enact uniform trademark laws, which pro‌ h i s y e a r m a r k s t h e s e v e n t y - f i f t h a n n i v e r s a ry o f vided the registration of trademarks and remedies for their infringethe Lanham Trademark Act. During his decades of service in the ment. But these civil remedies proved insufficient to prevent pirating a U.S. Congress, Congressman Fritz G. Lanham worked tirelessly business’s trademarks. Additionally, while patents are specifically menand spent enormous political capital championing a new trademark tioned in the Constitution, trademarks are not. After all, trademarks bill for the modern era. The Lanham Act—named in honor of its chief recognized by the common law were generally based on use, rather proponent—not only protects American consumers, it protects the goods than the notion of a new or novel invention. It was only after the United and services produced by America’s businesses. To appreciate CongressStates Supreme Court held that the Conman Lanham’s extraordinary gift to our gress could enact trademark protection country, one must first understand the hisunder the Commerce Clause that the tory of trademark protection and the sigpath to nationwide trademark protection nificance of trademarks to all Americans became clear. and to our national economy.

Meanwhile, state legislatures began Today it seems obvious that a busiconsidering trademark bills, which feaness’s trademarks deserve protection under tured costly compulsory registration and a nationwide trademark schema. But that significant ramifications to trademark has not always been the case. Before Conowners for failure to register their marks gress enacted any federal trademark legisin each state. With the prospect of various lation, the right to adopt and use a symbol states enacting a patchwork of onerous to distinguish a business’s goods and serstate trademark laws, the American Bar vices was only recognized by American United States Patent and Trademark Office Headquarters, Alexandria, Virginia Association (ABA) began to study a new common law and by the statutes of some nationwide law for trademark protection but was unable to obtain adestates. Indeed, the whole system of common law trademarks and the quate legislative support. civil and equitable remedies for their protection existed long before any In the fall of 1937, Edward S. Rogers, dean of the trademark bar, federal trademark legislation enacted by Congress and remains in full and Congressman Fritz Lanham, chair of the House Subcommittee on force today. This exclusive right to a trademark was not created by any Trademarks, met in Washington, D.C. to discuss the problem. As they act of Congress and does not depend upon any federal legislation for discussed a potential solution, Rogers presented Lanham his draft notes its enforcement. from ABA meetings that had been ongoing to address the need for fedAs the United States embarked upon the industrial revolution at eral trademark legislation. After their meeting, Lanham undertook the the turn of the century, Congress passed several federal trademark regmomentous effort to craft and enact nationwide trademark legislation. istration laws, but none was adequate to the task. In 1870 and again

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Although interrupted by World War II and a variety of other challenges, Congressman Lanham persisted. On July 5, 1946, President Harry S. Truman signed the Lanham Trademark Act into law, almost nine years after Lanham took up his gavel to begin championing the legislation in Congress.

Over the past seventy-five years, the Lanham Act has stood the test of time. Since its enactment in 1946, it has been repeatedly challenged and reviewed by all levels of the federal judiciary, including the United States Supreme Court. It has been amended more than twenty times, and parts have been declared unconstitutional. Still, the Lanham Act remains the primary source of statutory protection for trademarks in this country.

From a practical standpoint, trademarks are critical to the day-today lives of each and every American. Trademarks play a vital role in helping consumers differentiate goods and services in commerce in the United States and indeed the entire world. Studies show that children recognize brands incredibly early in their childhood development. From my own personal experience, I know that to be true. My daughter— when she was only two years old—pointed to a VISA® trademark and to my surprise uttered the word VISA. She could not read; she could not use a credit card, but she knew the VISA® trademark and recognized its source. From early childhood until our twilight years, brands serve the essential role of helping us identify the source of goods and services. Trademarks permit us to distinguish quality and to understand what we are buying. And they protect us. They help us identify the goods and services we want, and they help us avoid fake or dangerous products or fraudulent services we don’t want.

Counterfeiting has become an enormous global problem with a significant impact on the economy and the health and safety of all Americans. In addition, the sale of counterfeit products results in lost revenues

to businesses and lost tax revenues to governments while generating enormous profits to traffickers who sell counterfeit goods. Frequently, these traffickers are associated with organized crime and terrorist groups.

Trademarks protect the health and safety of the American consumer by helping them identify counterfeit products such as fake medicines, faulty airbags, self-igniting lithium-ion batteries, adulterated cosmetics, and a great many other dangerous products introduced into this country’s stream of commerce.

Trademarks also have a significant economic impact. The United States Department of Commerce has studied the impact of intellectual property on American jobs. The study found that in 2014 almost twenty-­four million American jobs were in trademark-intensive industries. Including supply-chain jobs, the number of jobs related to trademark-­intensive industries surpass forty million. Further, according to the study, the average weekly wage premium of workers in trademark intensive industries was close to 40 percent higher than those in non-­ intellectual property intensive industries.

Trademarks matter. They provide clear guideposts to consumers.

They protect consumers and American businesses. And they promote the national economy.

Every American owes an enormous debt of gratitude to Congressman Lanham. He used old-fashioned charm and persistence to usher into law a landmark bill we now know as the Lanham Act. Because of Lanham’s tenacity and perseverance, American consumers, American businesses and American commerce have vital protections as we move forward into the twenty-first century.

Mary Boney Denison U.S. Commissioner for Trademarks (2015-2019) United States Patent and Trademark Office

FOREWORD

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Congressman Fritz Lanham, center (c. 1920)

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CHAPTER ONE

“THE GENTLEMAN FROM TEXAS”

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It is a pleasure for The Herald to support Fritz Lanham for congress from this district.

Besides the fact that he was born and reared in Weatherford, he is every inch a gentleman, [and] well qualified to fill the seat . . .

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” rederick Garland Lanham was born on January 3,

1880, in Weatherford, Texas. Lanham, nicknamed Fritz, was one of eight children of Samuel and Sarah

Lanham. Traveling by covered wagon from South Carolina following the Civil War, Lanham’s parents first arrived in Texas in 1866. Their entire possessions consisted of their wagon, two horses, personal items, and $166 in cash.

In 1868, the Lanham family finally settled in Weatherford—a small West Texas town with a population of less than four thousand residents in what was then considered the Texas frontier. The Lanhams made their home among

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the lonely mesquite trees and rolling grassland prairies midway on the dusty stage coach run between Fort Belknap and Fort Worth—a major livestock shipping point along the historic Chisolm Trail and “Where the West Begins.”

In its early years, Weatherford was the principal frontier settlement situated on the crest of the divide between the Trinity and Brazos River Valleys. Weatherford is the county seat of Parker County—named after Isaac Parker, the uncle of Cynthia Ann Parker, the famous little girl who was captured from her home by Comanche Indians and later became the mother of the Chief Quanah Parker. Over the years, the City of Weatherford provided a safe haven for residents who fled the country to the city during the Indian raids, which continued in Texas until the early 1870s.

Samuel and Sarah Lanham taught school in a two-room log cabin—teaching in one room and using the other room as their family residence. Tuition ranged from $2 to $4 per month depending on the grade. Samuel Lanham was a Latin scholar and according to Fritz “could read Virgil’s Aeneid in the original text as readily as if it were printed in English.” Sarah was also highly educated and was fluent in several foreign languages. While away from the classroom, Samuel Lanham studied law and was admitted to the bar in 1869.

Their son, Fritz, was born in 1880—the same year the Gulf, Colorado and Sante Fe Railway arrived in Weather­ford. Operating nearly seven hundred miles of track, it was touted as the “Cattle Route of Texas.” The new railroad network established Weatherford as a retail and shipping point for Parker County farmers and ranchers and spearheaded the area’s rapid population growth.

By the mid-1890s Weatherford had an estimated population of five thousand with seven churches, several schools, and about one hundred businesses, including three banks, four hotels, Fritz G. Lanham (1900-1901)

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and three weekly newspapers.

TRADEMARKS With a Story

Averill Paint America’s First Registered Trademark Homeowners desiring a way to spruce up their living quarters in the 1800s faced a huge undertaking—they would grind paint pigment into oil to create a mixture that must be used immediately, as it would quickly harden, requiring the painter to start over with a new batch each day until a project was finished. Learning to paint was an acquired art—the medium was thick and unwieldy, and the results were often less than satisfactory.

That changed in the summer of 1867 when D. R. Averill of New York City, patented his well-received “ready-mix” paint, which was available to consumers in an eye-popping one hundred different colors, offering a more convenient and exciting way to enhance the look of a home’s interior and exterior. The marketing campaign for Averill Chemical Paint featured legendary showman P.T. Barnum, who declared the Averill product “far superior to any paint in use.”

Despite sometimes being thick and providing uneven coloration, Averill paints were a breakthrough, and the company was quick to file for federal trademark registration for its logo in 1870. According to the “List of Trade-Marks” in the 1870 Annual Report of the Commissioner of Patents, Averill filed for trademark registration for its paints on August 29, 1870.

Issued on October 23, 1870 as Trademark No. 1, it was the first U.S. registered trademark awarded by what was then called the Patent Office.

It is clear from the design of Averill’s logo that the company wished to draw attention to the fact that it received federal recognition from the U.S. government. At the center of Averill’s logo is an eagle, perched on a promontory with the labels “trademark” and “chemistry,” clutching a paint can in its beak, along with a ribbon inscribed with the words economical, beautiful, durable.

An unexpected discovery confirms the date of Averill’s historic federal trademark registration—according to Patent Office lore, in 2000, an office employee, poking around in the bowels of the archives, discovered a long-lost handwritten register of trademark applications. The list, dated August 1870, confirms that the Averill trademark application was the fifteenth application to be accepted that year, but the first to actually be registered. The entry for the trademark referred to the product as “Liquid paint. Eagle with ribbon ‘Economical, Beautiful.’” Archivists were elated to discover corroboration that the register entry’s description matched the details on the Averill company logo.

U.S. Registered Trademark 1867 “ T H“EE VG EE RNYT LI E NM CH A NA FGREONM T LTEEMX AA N S” 3

Fritz grew up in a political family. Not only was his father a lawyer, but also a United States congressman, and later served as the twenty-third governor of Texas. Samuel Lanham began his political career as a district attorney in Weatherford and achieved international fame during the height of the Texas-Indian Wars. In 1871, he prosecuted two Kiowa Indian chiefs—Santanta and Big Tree—for their involvement in the famous Warren Wagon Train raid.

On the Salt Creek Prairie in Texas, on May 18, 1871, over one hundred Kiowa and Comanche Indians from Fort Sill Reservation in present-day Oklahoma attacked a train of twelve wagons owned by Henry Warren, a contractor of supplies for United States forts in the frontier region of Texas. Seven from the wagon supply party were killed. Three managed to escape. After the chiefs were captured, General William T. Sherman—who narrowly missed being attacked the day before—ordered that they be tried for murder. Samuel Lanham led the prosecution. The trial drew international attention as it marked the first time Indian chiefs stood trial in a United States court.

Though the Indian chiefs were found guilty and sentenced to hang, their executions were never carried out. Their sentences were commuted to life imprisonment on humanitarian grounds and, due to Fritz Lanham was one of eight children of Samuel Willis Tucker Lanham and Sarah Beona Lanham. Samuel Lanham was a district attorney, United States congressman, and later governor of Texas.

a genuine fear of retribution; they were later paroled.

After the notoriety he received from the trial, Samuel Lanham ran for Congress and was elected to the United States House of Represen-

tatives in 1882. He served ten years as a congressman for the Eleventh District of Texas, known as the “jumbo” district because it comprised ninety-seven of the two hundred and fifty-four Texas counties and spanned millions of acres of West Texas ranch land. In 1892, Samuel Lanham retired from Congress and began practicing law in Weatherford.

But retirement was short-lived: In 1896, he was elected again as a congressman in the newly created Eighth District and served another six years until 1902. continued on page 8 4 F R I T Z G A R L A N D L A N H A M

LANDMARK Trademark Cases

In re Trade-Mark Cases (1879) Three defendants were charged under an 1870 federal statute imposing criminal penalties for counterfeiting trademarks. At the United States Supreme Court, the defendants (one of whom was accused of counter­feiting labels for French champagne G. H. Mumm & Co.) questioned whether Congress had the constitutional authority to enact criminal penalties for counterfeiting trademarks in the first place—arguing that the U.S. Constitution only granted the Congress the power to regulate copyrights and patents, but not trademarks. The Supreme Court agreed, ruled for the defendants and struck down the 1870 trademark law as unconstitutional. In light of the Court’s decision, Congress chose a different tack and specifically relied on wording in the Commerce Clause to enact the Trade-Mark Act of 1881 to regulate trademarks used in commerce with foreign nations and Indian tribes only. It was not until 1905 that Congress enacted a new trademark statute expanding the scope of federal trade­mark protection to include trademarks used in interstate commerce “among the several States.”

“ T H“EE VG EE RNYT LI E NM CH A NA FGREONM T LTEEMX AA N S” 5