Honorable Sidney Latham
Secretary of State
Austin, Texas

Dear Sir:                          Opinion No. O-5564
                                   Re: Registration of trade names
                                       under Artiols 851, Vernon's
                                   Annotated Civil Statutes, and re-
                                   lated matters.

            Your letter of February 11, 1944, requesting the opinion of
this department on the questions stated therein is, in part, as follows~

                 "Under the provisions of Article 851, R.C.S., 1925,
            this office is authorized to file a 'label, trade mark,
            design, device, imprint or form of advertisement' on be-
            half of persons, associations or unions of workingmen;
            incorporated or unincorporated that might have adopted
            same fbr its me.

                 "You, of course, are likewise familiar with the
            duties of this office with reference Uo the granting of
            corporate charters,and particularly our responsibility
            with respect to avoiding a conflict of names in corpor-
            ations.

                 "It will be noted that Article 851 does not mention
            a enamel or 'trade name' as one of the items subject to
            registration under the provisions of such article. This
            Department has had submitted to it from time to time trade
                   such as Crescent Drilling Company, for re,+stration
            ll¶IlleS,
            which did not involve any peculiar design, type of letter-
            ing or other identifying characteristics exempt the name
            itself.

                 We have also had submitted for rocistration under
            the provisions of the statute authorizing the registration
            of a 'label' and 'imprint' a card used by Retail Merchant's
            Association of &u&on   for keeping records in its office,
            whioh in the opinion of this office is subject possibly
            to a Wderal patent or copyright, but not to registration
            under Article 551.

                 "In the light of the above faots, will you please ad-
            vise this Department upon the following inquiries8
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    Honorable Sidney latham, Page 2 (O-5854)



               "1. Is a mere trade name without a peculiar design
               or type of lettering subject to registration under
               Artiole 8517

                "2. If a trade name Is subject to registration, and
                the registrant is unincorporated, then will suoh reg-
                istration render such name unavailable thereafter for
                oorporate use?

                l3. If a name has previously been granted to a oor-
                poration, but has not registered under Article 551,
                then would its use by such aorporation preclude its
                right to registration by an unincorporated ccsnpany
                under Article 8511

                "4. Is the record card subnltted by the Retail Mer-
                chant's Association of Houston, Texas, subject to
                registration under Article 8511

                     "Photostatic copy of the application and card submitted
    by the Retail Merchant's Association of Houston are attached hereto."

                The law of trade marks is principally a matter of Federal juris-
    prudence. However, there is a considerable body of statutory and case law
    relating to protection in the exclusive use in Texas of trade marks end n~cs,
    and it is with suoh statutes and decisions that wa arehere concerned in ccn-
    nection withtfieforegoing questions presented in your inquiry. What is knowx
    as "unfair competition" is a non-statutory subject -Hhichis not considered in
    this opinion, although often involving trademarks and trade names. The term
    "unfair competition" is broader than either trademarks or trade names.
    "Unfair competition" involves the principle thet no p;-son : -:cthe ri;!:::
                                                                              .'b
    sell or advertise his own business or goods as those of another. (Tex. Jur.
    Vol. 41, p. 388).

                The term "trademark" has been defined as followsr

                     "A trademark is a distinctive name, word, mark,
                emblem, design, symbol, or device used in lawful com-
                merce to indicate or authenticate the source from
                which it has come, or through which has parsed, the
                chattel upon or to which it is affixed." (mestern Gm.
                co., V. Gaffarelll Bras., 108 S.TR.413, reversed on
                other grounds 127 8.W. 1018).

                It is stated in Ruling Case Law, Vol. 26, p, 830:

                     "A trade name differs from a trademark, in that
                it is dcscriptlve.of the manufacturer or dealer him-
                self as much as his own name is, and frequently, like
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    Hon. Sidney Latham, Page 3 (o-5864)



                the name of business corporations, includes the name
                of the place where the business is located, If attach-
                ed to goods, It is designed to state plainly what a
                trademark only indicates by association and use. It
                is also said to be a species of property, and while not
                strictly a trademark, will as a general rule be protect-
                ed in like manner.  A trade name also involves the indi-
                viduality of the maker, for proteotion in trade, to
                avoid confusion in business, and to secure the advant-
                ages of a good reputation, and therefore is said to have
                a broader scope than a trademark. And it has also been
                declared that it is more properly applied to the good
                will of the business."

                 It is stated in Tex. &.   Vol. 41, p. 378:

                      "Those trade names are nothing more than marks of
                 trade that consist of names instead of signs or emblems;
                 and, further, names that do not possess the necessary
                 oharaoteristios of a trademark, but which are so used
                 to do service as trademarks." (Citing Nims on Unfair
                 Competition and Trademarks, 2nd Ed., p. 374).

                 For other definitions of trademarks and trade names   see \"lords
    & Phrases, Penn. Ed., Vol. 42, pp. 176-189.

                 Article 851, Vernon's Annotated Civil Statutes, provides:

                      aFiveryperson, association or union of working men,
                 incorporated,or tlninoorporated,that shall have hereto-
                 fore or shall hereafter adopt a label, trademark, design,
                 devioe, imprint or form of an advertisement shall file
                 the same in the office of the Secretary of 5tate by loav-
                 ing two faosimllie oopies with the Secretary of State
                 and said Secretary shall return to such person, assooia-
                 tion or union so filing the same, one of said faosimilie
                 oopies along with and attached to the duly attested cer-
                 tificate of the filing name, for which he shall receive
                 the fee of One Dollar. Such certificate of filing shall
                 In all suits and prosecutions under this chapter be suf-
                 ficient proof of the adoption of such label, trademark,
                 design, device, imprint or form of advel-tisement,and of
                 the right of such person, association or union to adopt
                 the same. No label, trademark, design, device, imprint
                 or form of advertisement shall be filed as aforesaid that
                 would probably be mistaken for a label, trademark, design,
                 dG?ioe, imprint or form of advertisement already of rec-
                 ord. No person or association shall be permitted to reg-
                 ister as a label, trademark, design, device, imprint or
                 any form of advertisement any emblem, design or resemblance
                 thereto that has been adopted or used by any charitable,
.




    Ron. Sidney Latham, Page 4 (O-5864)


                benevolent or religious society or assooiation,
                without their consent."

                 liberea trademark has been abandoned or it is discontinued
    for more than three years, the Seoretary of State is required to withdraw
    the mark from registration upon giving the registrant the notice required
    by law; and the mark may ther-after be registered by another person as
    his trademark. (Article 851-a, V.A.C.S.).

                 In connection with the questions under consideration, we
    have carefully considered the cases of ABC Stores, Ino, v. T. S. Richie &
    Canpany, 280 S.W. 177, and Shugart v. Rogers, 170 5.X 12d) 813. In the
    case of ABC Stores, Inc., v. T.S. Rlchie A Compaq, supra, referring to
    Article 851, Vernon's Annotated Civil Statutes, it was said:

                      "This statute was enacted for the purpose of con-
                 ferring a state-wide ri&t to the exolusive use of such
                 particular name or device as comes within its terms,
                 and, since the evidence in this case shows that the ABC
                 Stores, Ino., had complied therewith, andthat T. S.
                 Richie & Cmnpaqy had acquired no exclusive right to the
                 use of the name or device, either by purchase or prior
                 use, It should bs held to have no right to use same
                 either in Beauaont or elsewhere. . . ."

                 As we understand the foregoing cases they do not decide the
    questions propounded by you. The question whether a trade name without a
    particular design or type of lettering should be registered u;iththe
    Secretary of State under the terms of Article 851 was not before tho
    murts in these cases; therefore, this question vms not passed upon by
    the courts in either of the foregoing cases.

                  We have carefilly considered the ease of Gluck, et al, v.
    Kmhan,   186 S.E. 615, *herein the Supreme Court of West Virginia had
    under consideration Code 47-2-l of that State, which is very similar in
    some respects to Article 851, V.A.C.S. In that case, among other things,
    the court held that Code 47-2-l did not provide for the registration of
    trade names as distinguished from tradesarks, and persons attemptin& to
    re$stor a trade name pursuant thereto, thereby acquired no exclusive
    right to the usoof the name so attempted to be registered. However, it
    is noted that the Supreme Court of YrestVirginia in the foregoing case
    stated, in effect, that the Texas Statute was much broader than the !'!est
    Virginia statute in some respects. As heretofore stated the Supreme
    Court of Xiest Virginia held that persons attempting to register a trade
    name pursuant to Code 47-2-l acquired IY)exclusive right to the use of
    the nc~e so attempted to be registered. However, in the case of the ABC
    Steres, Inc., v. T.S. Richie & Compaqy, supra, the Texas Cormissicn of
    Appeals, amon other things, held, in effect, that a registrant of a
    trade nsme an< advertising devioe under Article 851, V.A.C.S., was entit-
    led to the trade territory actually occupied by the registrant, but ex-
    tends to every section of the State. It will be noted that in the ABC
    Stores case the court had under consideration a trade name of a particu-
    lar design and form of advertising. In the case of Shugart vI Rogers,
.
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        Honorable Sidney Latham, Page 5 (O-5864)



        supra, the oourt had under consideration the trade name "Texas State
        Optical Company" using the words "Texas State" and inserting within
        a circle between these words the following wordsr "Optical Company."
        lhether the court considered the trade name "TexasState Optical Company"
        in the form heretofore mentioned as a special design or device is not
        stated in the opinion of the court.

                     After a oareful search of the authoritles,we have failed to
        find any case passing directly upon the questions here involved.

                     It Is noted that Article 851, supra, does not mention a "name"
        or "trade name" as one of the items subject to registration under the.pro;,
        visions of such article. If the Legislature in enacting Article 851 had in-
        tended to include "name" or "trade name" as one of the items subjeot to reg-
        istration under said statute it could have easily included the words "name"
        and "trade name" in said dot in plain language, and had it intended to do SO,
        it is our opinion that the Legislature Hould have included the words "nsme"
        and "trade name" in said dot.   It is apparent that there Is a well defined
        distinction between a "trade name" and a "trademark."

                     In view of that has heretofore been said, we respectfully answer
        your first question in the negative.

                     In view of our answer to your first question your second and
        third questions do not require further discussion.

                         With reference to your fourth question regarding a card submitted
            by the Retail Merchant's Association of Rouston, it is our opinionthat such
            card does not come within the terms of Articl 051, supra, and, therefore, it
            is not subject to registration under said article,

                         We are returning herewith the file accompanying your inquiry.

                                                               Yours very truly

                                                           A’iTOF?l?EY GENERAL CF TEXAS




            &FROVED FEB 28, 1944
                                                            By
                                                             /*/  Ardell Williams

            /*/ GROVER SEUERS                                        Ardell Williams
            ATTORNEY GhNRT'2.L
                             OF TEXAS                                       Assistant

            AWrEPaegw
            Encl.                            APPROVED
                                          Opinion Cixmnittee
                                             ByBWB
                                             Chairman