File No. 811.543/48a
The Secretary of State to the Ambassador in Brazil ( Morgan)1
Sir: From various private sources it has come to the attention of the Department that one Richard Mittler of Vienna, Austria, and presumably an Austrian subject, has, on a number of occasions, registered American trade-marks as his own property with the International Trade-Mark Bureau at Berne, Switzerland, apparently in accordance with the provisions of a convention for the international registration of trade-marks (arrangement of Madrid, April 14, 1891; revised at Brussels December 14, 1900, and at Washington, June 2, 1911), to which the following thirteen states appear to be parties: Austria, Hungary, Belgium, Brazil, Cuba, Spain, France, Italy, Mexico, Netherlands, Portugal, Switzerland, Tunis.
Under this convention it would seem that registration of a trademark in any one of the countries which are parties to the convention has the effect, when the International Trade-Mark Bureau is properly notified thereof, of registering that trade-mark in the other countries adhering to the convention, except in those countries where it may be rejected because of prior registration of another person or for other reasons.
The Department has been advised that the following companies, whose addresses and trade-marks are also given, have been affected by the international trade-mark registrations of Richard Mittler on or about January 13, 1916:
| Name | Address | Trade-mark |
| Empire Rubber & Tire Co | Trenton, N. J | Empire |
| Thermoid Rubber Co | Trenton,. N. J | Thermoid |
| Ajax Rubber Co., Inc | 58th Street and Broadway, New York City. | Ajax |
| The Continental Rubber Works | Erie, Pa | Vitalic |
| Firestone Tire & Rubber Co | Akron, Ohio | Firestone |
| Federal Rubber Co | Cudahy, Wis | Federal |
| Fisk Rubber Co | Chicopee Falls, Mass | Fisk |
| Republic Rubber Co | Youngstown, Ohio | Republic |
It will be noted that in every instance save that of the Continental Rubber Works, which sells its products under the trade-mark “Vitalic”, the trade-mark is also an essential and striking part of the trade name, and is, in the language of commercial intercourse, the designation which would commonly be used to describe the product of each company in question.
It will also be observed that Article 10 of the international convention concerning the protection of trade-marks, signed at Buenos Aires on August 20, 1910, reads as follows:
Commercial names shall be protected in all the states of the Union, without deposit or registration, whether the same form part of a trade-mark or not.
Furthermore, it is to be noted that Article 8 of the international convention for the protection of industrial property of March 20, 1883, as revised at Washington June 2, 1911, reads as follows:
Trade names shall be protected in all the countries of the Union without the obligation of filing, whether it be a part or not of a trade-mark.
The United States and the country to which you are accredited have become parties to the above conventions by depositing their respective ratifications with the Government of the Argentine Republic and with the United States Government.
You are, therefore, instructed to bring the above facts to the attention of the Brazilian Government, and to state that the Government of the United States does not doubt that American citizens and concerns will be accorded in the use of their trade names in Brazil the protection to which they are entitled under the international conventions for the protection of trade-marks and of industrial property, notwithstanding the obvious attempt of Mittler and possibly others to usurp American trade-marks.
I am [etc.]
- The same, mutatis mutandis, on the same date, to the Ambassadors in France, Italy, Mexico, and Spain, and the Ministers in Cuba, Netherlands, Portugal, and Switzerland.↩