Instructions:

1. Mention the parties involved in the case, duly identified as plaintiffs or defendants, etc. 2. What is the main controversy that arises in the case. (The controversy It is always that question that the court asks itself to which it must respond to solve the problem at hand). 3. it needs a summary of the facts that led to the case reaching court. (Those particularities that gave rise to the conflict between the parties). 4. it needs a summary of the legal reasoning that the court used to resolve the controversy. 5. Indicate what the verdict was, that is, what was the final disposition made by the court supreme on the case. 6. What effect does that verdict or sentence have?

In the Supreme Court of Puerto Rico.

Petition for Certiorari to review a Judgment of Angel G. Hermida, J. (San Juan), on judicial review of an administrative decision that declares the issuance of said requested review order void. Revoked and the original records are returned to the trial court for the continuation of compatible proceedings.

Maggie Correa Avils, of McConnell, Valds, Kelley, Sifre, Griggs & Ruiz Suria, attorney for the appellant; Federico Calaf Legrand, of Reichard, Colberg & Calaf, lawyer for the respondent.

Associate Judge Negrn Garca issued the opinion of the Court.

**1 I

This litigation raises important questions about the state of trademark law in Puerto Rico.

Its factual antecedents date back to 1976. Mistoln of Venezuela came up with the phrase 'Mistoln makes your nose happy' to promote its products. Later Colgate-Palmolive copied it and used it in markets where Mistoln's articles had not penetrated. Thus, Colgate-Palmolive acquired its exclusive use as a trademark in Colombia and Uruguay, and Mistoln in Venezuela, Panama and the Dominican Republic.

In 1980 Mistoln de P.R., Inc., began to distribute its products on the island. From that year until September 23, 1983, it did not use the phrase in its advertising and products. We do not know the reasons.

On August 7, 1983, Colgate-Palmolive began an expensive and aggressive *318 advertising campaign. [FN1] As a badge it advertised the Fabuloso product with the 'slogan' [FN2] 'It makes your nose happy'. On September 23, a month and a half later, Mistoln began physically adhering the phrase to its Mistoln deodorant cleansing product. This is very similar to the Fabuloso product. Both are deodorant cleansers with a floral scent and color concept and are aimed at the same audience. On October 11, Mistoln requested the Department of State to register the phrase as a trademark in accordance with the P.R. Trademark Law. --No. 66 of July 28, 1923. (10 LPRA sec. 191 et seq.)

Colgate-Palmolive became aware of that request through edicts. On February 23, 1984, he objected. Simultaneously, she required that it be recorded in her favor for having begun to unite her with Fabuloso that same day. After evaluating the documentary evidence of both, the State Department resolved that Mistoln was the first to use it, and that said use, and not advertising, was the determining criterion on the existence of a trademark. He admitted the registration for the benefit of Mistoln. Colgate-Palmolive went to the Superior Court, San Juan Chamber, to challenge the ruling. Said forum confirmed and invoked the doctrine of *319 deference towards the administrative body. [FN3] At the request of Colgate-Palmolive, we reviewed.

Since its inception, Colgate-Palmolive's theory has been to maintain that although Mistoln of Venezuela created the phrase, this is irrelevant, since the determining factor is who was the first to appropriate it in the particular territory or market. Although Mistoln was the first to add it to its products, Colgate-Palmolive used it before in advertising in Puerto Rico and began to add it to Fabuloso the same day it opposed Mistoln's request. He also argues that the State Department erred in registering the phrase in favor of Mistoln, since to prevent it it did not have to demonstrate a right superior to that of Mistoln. In his opinion, it was enough to prove the probability: (1) of harm to the opponent, and (2) of confusion among the public regarding the origin of the products.

**2 In its supplementary argument Colgate-Palmolive outlined, as a new theory, that it has the right to register the phrase, because although it is descriptive and therefore not registrable by provision of our Trademark Law, 10 LPRA sec. 194 (e), took on secondary significance by virtue of the propaganda carried out. Coffee Growers Cooperative v. Columbus Columbus, 91 D.P.R. 372, 388 (1964).

For her part, Mistoln defends her right to registration and property as the creator of the phrase. She alleges that Colgate-Palmolive allegedly plagiarized her through her advertising company - which is the same both here and in Venezuela - which constitutes unfair competition. Furthermore, Mistoln emphasizes that she was the first to add the phrase to her products, which she understands is *320 the guiding criterion that creates the exclusive right of a trademark and not advertising.

The controversy, new in this jurisdiction, raises several questions: How is the exclusive right to a trademark acquired in Puerto Rico? Under what circumstances does your registration proceed? What legal protection do distinctive symbols and phrases used in advertising deserve? These questions force us to make a brief foray into the concept of brand and define its foundations.

II

Trademark law deals with the legal regulations that regulate and provide protection to commercial symbols known as trademarks.

[FN4] Although the Trademark Law does not provide any definition, our criminal law makes up, to a certain extent, for that gap. Thus, Art. 314 of the Penal Code of 1902 [FN5] reads:

Brand, definition of:

The phrase 'factory brand'[,] used in the three previous sections, includes any word, letter, emblem, emblem, seal, imprint, label or cover, which is usually affixed by the creator, manufacturer, druggist, merchant. or merchant, to denote that any article or product is imported, manufactured, produced, composed or sold by him, as distinguished from any name, word or expression generally used to denote a certain class of articles. 33 LPRA sec. 1314.

The definition is predominantly descriptive. This characteristic responds to how difficult it is to structure a foundation in the *321 brand concept. For this reason, it has been believed that the best definition of a trademark is to describe its essential function. 1 Nims, Unfair Competition and TradeMarks Sec. 187, p. 516 (4th ed. 1947). This renowned writer echoes a classic quote from the end of the last century by Judge Vann, who in Waterman v. Shipman, 130 N.Y. 301, 311, 29 N.E. 111 (1891), said: '[t]he function of a trademark is to point to the maker [Nims would add: and the seller] of the article to which it is attached.' (Our translation.) For its part, the Federal (Lanham) Trademark Act of 1946 (60 Stat. 427, 15 U.S.C. sec. 1051 et seq.) defines trademarks as 'any word, name, symbol or device) or any combination of these adopted and used by the manufacturer or merchant to identify his products and distinguish them from those manufactured or sold by others.' (Our translation.) 15 U.S.C. sec. 1127.

**3 From an examination of these definitions we observe that the brand concept has very own profiles. For the sake of brevity, we can say that a trademark is a symbol - in the broadest sense - by which the merchant identifies his products. This defining expression captures the original and historical function of brands, namely, to differentiate. In practice, the brand not only indicates the origin of the product, but also its quality and individuality. Cf. Columbus v. Carlos Martnez, Inc., 112 D.P.R. 846 (1982). [FN6

*322 The acquired interest in a trademark is a proprietary right. Coffee Growers Cooperative v. Columbus Columbus, supra, p. 387; H. Baylos Corroza, Treatise on Industrial Law, Madrid, Ed. Civitas, 1978, pp. 95 et seq., 793 et seq.; 1 Nims, op. cit., Sec. 198; 1 McCarthy, Trademarks and Unfair Competition Sec. 2.6 (2nd ed. 1984). Sec. 1 of the Trademark Law, 10 LPRA sec. 191, this is how he characterizes it when referring to the 'owner of a brand'. However, the statute is silent on how ownership of a trademark is acquired. Curiously, it only provides mechanisms for the registration of already existing trademarks. Historically, the regulations governing trademarks were very similar in both civilist and Anglo-Saxon countries. Such similarity has been explained in different ways. The most convincing is the one that postulates the equitable origin of trademark law. For this reason, faced with similar problems, different countries reacted in a similar way. Cf. D.M. McClure, Trademarks and Unfair Competition: A Critical History of Legal Thought, 69 T.M.R. 305 (1979); S.D. Diamond, The Historical Development of Trademarks, 65 T.M.R. 265 (1975); B.G. Paster, Trademarks--Their Early History, 59 T.M.R. 551 (1969); D. Leeds, Trademarks- -Our American Concept, 46 T.M.R. 1451 (1956). From this perspective, our trademark law has as its legal basis the concepts implicit in our Trademark Registration Law, commercial uses and customs--Art. 2 of the Commercial Code--, the protection that *323 our system grants to property in general, the theory of illicit competition and equity, Art. 7 of the Civil Code.

Our law presupposes a system of substantive law. This particularity responds to the fact that we are dealing with legislation rooted in the federal Trademark Law of 1905, now repealed, which did not regulate the substantive aspect of trademarks, as it left it to the states. [FN7] Since our legislation finds its ancestry in the federal Trademark Law of 1905, we have to conclude that the legislator has admitted the North American trademark system in Puerto Rico. Thus, the jurisprudence of that latitude enjoys a highly persuasive value. Garriga Trad. Co., Inc. v. Century Pack. Corp., 107 D.P.R. 519, 522 (1978).

In the United States, the doctrine recognizes four essential requirements for the genesis of the exclusive right over a trademark. First, that the symbol is capable of being appropriated as a trademark -1 Nims, op. cit., Sec. 200 et seq.--, immediately or through the acquisition of secondary significance. 1 McCarthy, op. cit., Chaps. 12-15. Second, it physically adheres to the product. This requirement is implicitly required by our law by requiring the registrant to explain in the application 'the manner of applying or affixing the mark to the articles'. 10 LPRA sec. 191. This act is known as affixation and is 'an essential element of a valid trademark'. 1 Nims, op. cit., Sec. 218, p. 636. By way of parenthesis, it should *324 be noted that current federal law has tempered this requirement for federal registration purposes. Lanham Act, Sec. 45 (15 U.S.C. sec. 1127). [FN8] Third, there must be a bona fide distribution or sale of the product. 1 Nims, op. cit., Secs. 214 and 218; E. Vandenburgh, Trademark Law and Procedure Sec. 2.10, p. 53 (2nd ed. 1968). And fourth, that the acquirer has priority and exclusivity in the use of the trademark over others, even when they do not use the symbol, strictly speaking, as a trademark. 1 Nims, op. cit., Sec. 217; 1 McCarthy, op. cit., Sec. 16.1 et seq. Cf. Bayuk Cigars v. Schwartz, 1 F. Supp. 283 (D.N.J. 1932); Blue Bell, Inc. v. Farah Manufacturing Company, Inc., 508 F.2d 1260 (5th Cir. 1975). Except in cases where the symbol needs secondary meaning, the right to a trademark can arise at the same time of its first 'use'. [FN9] 1 Nims, op. cit., Sec. 218; Vandenburgh, op. cit., Sec. 2.10, p. 54. Good faith has been added to all these requirements. [FN10]

**4 III *325 As a general rule, trademarks only receive legal protection within a certain market and jurisdiction. [FN11] Regarding trademarks, the territorial extension of the right is coextensive with the territorial extension of their use. F. De Sol Caizares, Treatise on Comparative Commercial Law, Barcelona, Ed. Montaner y Simn, 1962, Volume II, page. 438. Cf. Hanover Milling Co. v. Metcalf, 240 U.S. 403 (1916), (The TCA Rose Case) --legislatively repealed, Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636 (App. D.C. 1982); United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918) --legislatively repealed, see Foxtrap, Inc. v. Foxtrap, Inc., supra. [FN12] What is truly relevant in this type of controversy is the use of the symbol in the jurisdiction or market in which the forum is located, in this case, Puerto Rico. Sol Caizares, op. cit., pp. 550-551. Cf.

Vandenburgh, op. cit., Secs. 2.40 to 2.42. The Puerto Rican courts are not in the position of international judicial forums, vindicators *326 of commercial morality on a supra-national scale. If the supposedly injured legal value has no life in our jurisdiction, in the absence of a federal law or international treaty of local application to protect it, we can do nothing.

In this aspect we cannot endorse the thesis proposed by Mistoln of extending our legal analysis to the international market. We cannot undertake that incursion, as we would lack jurisdiction in this particular situation.

IV

Having clarified the limits of our intervention in the legal framework of the local market, and exposed the fundamental concepts raised by the appeal, let us focus on the merits of the parties' approaches.

Firstly, let us examine the registrability of the 'slogan' 'It makes your nose happy'. On its face, the question is not simple. Different criteria have been developed for such an evaluation. One of the most precise statements, and one that deserves our approval, was summarized by the Court of Appeals for the First Federal Circuit in Boston:

Both the Lanham Act and common law jurisprudence differentiate four categories of terms for purposes of trademark analysis: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or imaginary. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 98 S.Ct. 751, 54 L.Ed.2d 772 (1978); Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2nd Cir. 1976). A descriptive term merely describes a characteristic or ingredient of the item to which it refers. A descriptive term can only become a trademark if it acquires secondary significance, such that the consumer associates the term with the goods of a particular producer. A suggestive term suggests, rather than describes the characteristics of the goods to which it is attached. Such a *327 term, which evokes the perceptual imagination of the consumer, can be protected without proof of secondary significance. Finally, an arbitrary term has no logical or suggestive relationship with the real characteristics of the products. Such a term is almost always protectable because, unlike a suggestive term, it is not susceptible to attack for being merely descriptive. Even an imaginary term can, however, become generic through use. (Our translation.) Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 374 n.8 (1st Cir. 1980).

**5 See also, Columbus v. Carlos Martnez, Inc., supra, where we define what a general word is.

We note, therefore, that the difference between a descriptive term and a suggestive one is somewhat confusing. 3 Callmann, Unfair Comp., Trademarks & Monopolies Sec. 18.09 (4th ed. 1986). To differentiate them, several criteria (tests) have been developed. First, the 'degree of imagination'. According to this, the qualification depends on the degree of imagination that an average person must use to obtain, through the term, some description of the product. Thus, while a descriptive term directly and clearly conveys information about the ingredients, qualities and characteristics of the product, the suggestive term only 'suggests' those characteristics. Second, the 'need of competitors' criterion. Under this analysis the rating depends on the degree to which competitors need the term to describe and advertise their own products. And third, 'use by competitors'. This approach focuses on the extent to which other competitors have used the term with respect to similar merchandise. 1 McCarthy, op. cit., Sec. 11.21. Even so, it has been pointed out that in reality and everyday practice, courts use intuition as a measure (test). 1 McCarthy, id.

When comparing these criteria with the phrase 'It makes your nose happy', it becomes clear that we are dealing with a suggestive term. As previously outlined, *328 the qualifying examination is essentially predicated on the 'relationship' between the merchandise and the term or phrase. The closer that relationship is, the more descriptive it will be; acontrary sensu, the further away, the more arbitrary. Somewhere in between are suggestive terms. Under this criterion, what relationship does the phrase 'It makes your nose happy' have with a deodorant cleanser? Obviously, we need some imagination to relate it to its deodorant 'quality'. It is necessary to meditate a little to realize that the idea you want to convey is the well-being caused to the sense of smell by the pleasant smell of the advertised product. In short, it is, therefore, a 'suggestive' phrase, inscribable without the need for secondary meaning.

V

Having established that the phrase is registrable, it is up to us to see the role that advertising plays in trademark registration procedures at the Department of State in light of trademark law. Its importance immediately emerges. [FN13] As noted above, brands can perform an important advertising function. However, propaganda alone does not create brands. Advertising use is not the use necessary to give rise to that right. Consumers Petroleum Co. v. Consumers Co. of Illinois, 169 F.2d 153 (7th Cir. 1948); Gray v. Armand Co., 24 F.2d 878 (D.C. Cir. 1928); cf. 3 Callmann, op. cit., Sec. 19.08. This does not mean that propaganda lacks relevance and legal value. [FN14] Advertising can reach and be equivalent to the necessary 'analogous' use that *329 under our law prevents the registration of a trademark by another person. Let's see.

**6 We have indicated that our trademark law is of a registry nature, not a substantive one. The legislative scheme provides that an ex parte registration request does not affect the rights of third parties. To this end, it contains as a safeguard the publication of edicts to notify the registration request. 10 LPRA sec. 195. By virtue of this notification, the rights of any interested third party can be asserted through three inter-parte proceedings of a contentious nature. These are: (1) opposition, in which the 'promoter' tries to prevent registration in favor of the 'promoter'. Ibid.: (2) cancellation, where the promoter is interested in having the registration cancelled. Ibid., Sec. 200, and (3) interference that occurs when two incompatible marks seek registration benefits. [FN15] Ibid., Sec. 196.

Under these different procedural alternatives, we can classify the case at hand as interference. Colgate-Palmolive appeared at the State Department to oppose the registration of the trademark in favor of Mistoln, and also requested registration in its favor. [FN16] In these circumstances, Sec. 6 of the Trademark Law, 10 LPRA sec. is applicable. 196, which reads: *330 196. Notification of opposition, sufficiency; conflict

In cases where an opposition is presented, the Secretary of State will notify the applicant, explaining the reasons for the opposition.

When an application is filed for the registration of a trademark that is substantially identical to a trademark applied to the sale of articles of the same descriptive properties, and which trademark is registered with the Department of State in the name of another, or that has previously been applied for, or that resembles such trademark, or another already known trademark owned and used by another, which, in the opinion of the Secretary of State, may lead to public deception, the Secretary of State will decide who has the right to use the trademark, and on the sufficiency of the objections made to the registration.

The Secretary of State may refuse to register a trademark to which an objection has been made, in view of the sufficiency of the grounds for the opposition. When two or more trademarks are pending registration, and are in conflict due to their similarity, the Secretary of State will decide which of these will have the right to registration, based on the priority regarding the use of the same, a fact that must be satisfactorily proven. (Emphasis supplied.) 10 LPRA sec. 196.

From the transcribed text it appears that in the interferences the Department of State must decide on the validity and sufficiency of the objections made to the registration by the adverse party, if any, and the priority in the legitimate use (including good faith) of the mark. 2 McCarthy, op. cit., Sec. 20.25, pp. 1089-1093. In this case, Colgate-Palmolive's objection was based on the fact that it used the phrase 'It makes your nose happy' before Mistoln added it to its products. The State Department gave no value to this irrefutable fact. In doing so, he made a mistake. The correct rule is set out by McCarthy:

**7 [T]he prior use of a term in advertising and promotion analogous to use as a trademark is sufficient to prevent registration by a subsequent user of the same or a similar term.

For example, prior use of *331 a term in advertising pamphlets, catalogs and newspaper advertisements, or in press releases and trade publications may constitute a use so analogous to use as a trademark as to prevent a user from registering. subsequent in an interference procedure. Use 'analogous' to use as a trademark means use of such a nature and extent as to create in the minds of competitors an association between the petitioner and its products. According to the same rule, the previous use of the term as a trade name or as a trademark without secondary significance will give priority in an interference. (Our translation.) Ibid., Sec. 20.25, pp. 1091-1092.

The doctrine of 'analogous use' emerged at the end of the last century as a circumstantial imperative. It aspired to provide protection to those commercial distinctives, which although they were not strictu sensu, trademarks, merited that legal protection under what we know today as unfair competition. 1 Nims, op. cit., Sec. 1, p. 9; G. D. Cushing, On Certain Cases Analogous to Trademarks, 4 Harv. L. Rev. 321 (1891); 2 Nims, op. cit., Sec. 230, p. 794 n.4; John Wood Mfg. Co. v. Servel, 77 F.2d 946 (C.C.P.A. 1935); Touraine Co. v. F. B. Washburn Co., 286 F. 1020 (C.A.D.C. 1923); The Atlas Underwear Company v. B.V.D. Company, 9 T.M.R. 222 (1919); M'Ilhenny Co. v. Trappey, 277 F. 615 (C.A.D.C. 1922). Today it is firmly established. Walter Kide & Co. v. Alcon Laboratories, Inc., 162 U.S.P.Q. 412 (1969); KMC Semiconductor v. Kevlin Mfg. Co., 153 U.S.P.Q. 683 (1967); Sears Roebuck & Co. v. Mannington Mills, Inc., 138 U.S.P.Q. 261 (1963); International Tel. & Tel. Corp. v. General Instruments Corp., 152 U.S.P.Q. 821 (1967). On analogous use: Jim Dandy Company v. Martha White Foods, Inc., 458 F.2d 1397 (C.C.P.A. 1972); American Components, Inc. v. Kent Corp., 160 U.S.P.Q. 335 (1968). For a more recent *332 exposition of the doctrine, see Caesars World, Inc. v. On-Line Systems, Inc., 209 U.S.P.Q. 334, 336-337 (1980).

In this case there are two decisive facts that are not contradicted. First, Colgate-Palmolive began an extensive advertising campaign in which it used the 'slogan' 'Fabulous makes your nose happy.' Second, after this advertising effort, Mistoln began to use the aforementioned 'slogan' as a trademark. From the doctrinal perspective exposed, it is clear that Colgate-Palmolive was using the phrase in an analogous way to a trademark. Shortly after, Mistoln begins to use it. [FN17]

**8 Apart from the applicability of the 'analogous use' doctrine, the State Department should have evaluated the registration in favor of Mistoln based on Sec. 4(f) of the law. As pertinent, it provides:

Nor will a trademark be registered that is identical to another already registered or known trademark that belongs to another and is used on articles with the same descriptive properties, or that is so similar to the trademark belonging to another that it is very probable that causes confusion or misunderstanding in the mind of the public, or gives rise to deception of buyers; or that has not been legally used in Puerto Rico by the applicant or his predecessor, prior to the date of submission of the application. 10 LPRA sec. 194.

As can be seen, this section requires that registration of a mark be denied if there is a likelihood of confusion in the mind of the public. See: Broderick v. L. Mitchell & Co., 289 F. 618 (Ct. App. D.C. 1923); California Cyanide Co. v. American Cyanamid Co., 40 F.2d 1003 (C.C.P.A.*333 1930);Americann Druggists' Syndicate v. United States Industrial Alcohol Co., 2 F.2d 942 (Ct. App. D.C. 1924). Without prejudging the issue, it is plausible that the timing and extent of Colgate-Palmolive's advertising use of the phrase could have created a relationship in the public mind between the 'slogan' and the Fabuloso product. Because the State Department did not make a specific determination in this regard, we lack evidence to consider that approach. One of the main purposes of trademark registration is to avoid confusion among buyers about the origin of products. Keebler Co. v. Rovira Biscuit Corp., supra, p. 372 n. 3. If this confusion arose, Mistoln's request should be rejected.

In short, the State Department erred in ordering registration in favor of Mistoln. The Superior Court also erred in confirming the decision of that body. Against the decisions of the Trademark Office of the Department of State, the courts must rule not only on the registration performance of the agency, but also on the substantive rights of the parties. This approach is imposed as an imperative of procedural economy.

In the instant case, the appealed ruling limited the controversy to how a trademark is acquired and confirmed the ruling under the doctrine of deference and specialty of the administrative forum. The ruling did not cover or extend to the aspects of actual confusion in the mind of the public, unfair competition and valid acquisition of the trademark. The explanation is that the fragmentation of the controversy by the appellant Colgate-Palmolive prevented this. For this reason, strictly speaking, for a good methodology, we have limited ourselves to the registry aspect. However, the controversy is evidently broader. Both parties must have the opportunity, in due course, to pass additional evidence on the points elaborated here that were not considered by the appealed ruling.

**9 *334 For the reasons stated, it is appropriate to revoke the sentence and return the case to the court of first instance so that, consolidated with case PE-84-1305, the rigorous procedures compatible with what has been resolved here continue and it is clarified which of the parties has the best right over the phrase. [FN18]

The corresponding sentence will be issued.

FN1. From August 7, 1983, to February 23, 1984, about $140,000 was invested in the press, television and radio. For 1984 and 1985 they expected to disburse about $700,000 per year. The phrase is a central part of the campaign.

On the other hand, Mistoln submitted to the State Department Exhibit J consisting of invoices from WKAQ-TV for advertisements for the Mistoln product from October 1983 to April 1984, which totaled the sum of $190,375. However, the invoices do not specify whether the phrase 'It makes your nose happy' was used in said advertisements, nor was such fact proven by sworn statement.

FN2. The word 'slogan' is of English origin. It has no precise equivalent in Spanish, it is a short and striking commercial slogan. For this reason, our language has borrowed it from English. M. Gili Gaya, Nuestra Lengua Matterna, San Juan, Ed. Inst.Puerto Rican Culture, 1965, Chap. 11, pp. 115-117. At first the loan was pure - it was written as in the original language - today its spelling has been Spanishized. See General Illustrated Dictionary of the Spanish Language, 3rd ed. rev., Barcelona, Ed. Bibliograf, 1976. page. 672.

FN3. During the process Mistoln registered the phrase as a trademark at the Federal Patent Office. For its part, Colgate filed a lawsuit for alleged damages against Mistoln for unfair jurisdiction in a separate lawsuit before the Superior Court, San Juan Chamber, Civil No. PE-84-1305.

The procedure in that case was paralyzed until the decision in the present. (Minutes of May 6, 1985.)

FN4. In addition to trademarks, company names (tradenames) -- as long as they have not acquired secondary significance -- and labels are some of the best-known symbols of commerce.

FN5. By express provision of Art. 278 of the Penal Code of 1974 (33 LPRA sec. 4622), Arts. 311-317 of the old Penal Code remain in force, 33 LPRA secs. 1311-1317. These articles constitute the crime of copying or falsifying a trademark belonging to another.

FN6. There are multiple functions of brands. They serve to indicate the origin of the articles. 3 Callmann, Unfair Comp., Trademarks & Monopolies Sec. 17.02 (4th ed. 1986). They guarantee - at least in the conscience of the seller and the buyer - consistency in the quality of the product. Ibid., Sec. 17.03. See: N. Isaacs, Traffic in Trade-Symbols, 44 Harv. L. Rev. 1210, 1220 (1931); Howard Dustless Duster Co. v. Carleton, 219 F. 913, 915 (D. Conn. 1915); Coca-Cola Co. v. State, 225 S.W. 791, 794 (Tex. Cir. 1920); M. F. Goldstein, Products Liability and the Trademark Owner: When a Trademark is a Warranty, 67 T.M.R. 587 (1977); Note, Tort Liability of Trademark Licensors, 55 Iowa L. Rev. 693 (1970). Finally, they can function as a badge that attracts the public's attention (advertising function). 3 Callmann, op. cit., Sec. 17.04; Northam Warren Corp. v. Universal Cosmetic Co., 18 F. 2d 774 (7th Cir. 1927); United States v. Beatrice Foods Co., 344 F. Supp. 104 (D. Ct. Cir. Minn. 1972). The use of trademarks in this latter capacity has had strong opponents --R. S. Brown, Jr., Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L. J. 1165 (1948) -- although criticism has really focused not so much on the brands as on the use of persuasive advertising and ' irrational'. 3 Callmann, op. cit., Sec. 17.04.

FN7. The historical reason is found in the famous Trade-Mark Cases, 100 U.S. 82 (1879). The Federal Supreme Court invalidated the federal Trademark Law of 1870, which substantively regulated the matter. Faced with the unconstitutional claim that it was intended to govern substantive trademark law beyond the power granted to it under the Commerce Clause, Congress, since then, has chosen to leave almost all substantive aspects to the states. 2 Antieau, Modern Constitutional Law Sec. 12:144 (1969). This does not mean that there is an absolute absence of substantive guidelines. The very language and scheme of the law implicitly contains them, although not uniformly.

FN8. Under this section, to qualify as a trademark, it is sufficient that the symbol has been displayed in relation to the products. In this way, Lanham Law recognizes a certain brand relevance to advertising, which is not exactly new. See Oakes v. St. Louis Candy Co., 146 Mo. 391, 48 S.W. 467 (Sup. Ct. 1898).

FN9. 'Use' in rigorous trademark terminology means (a) adhesion of the trademark on the products; plus (b) its sale or distribution. E. Vandenburgh, Trade-mark Law and Procedure Sec. 1.22, p. 22 (2nd ed. 1968).

FN10. Ubeda v. Zialcita, 226 U.S. 452 (1913); Hanover Milling Co. v. Metcalf, 240 U.S. 403 (1916); United Drug Co. v. Rectanus Co., 248 U.S. 90 (1918); White Tower System v. White Castle System, Etc., 33 U.S.P.Q. 573, 90 F.2d 67 (6to Cir. 1937); Aluminum Fabricating Co. v. Season-All Window Corp., 116 U.S.P.Q. 335, 160 F. Supp. 41 (S.D.N.Y. 1957), cf. 119 U.S.P.Q. 61, 259 F.2d 314 (2do Cir. 1958); Fry v. Layne-Western Company, 126 U.S.P.Q. 423, 282 F.2d 97 (8vo Cir. 1960); Pike v. Ruby Foo's Den, 109 U.S.P.Q. 78, 232 F.2d 683 (Cir. D.C. 1956); Triumph Hosiery Mills, Inc. v. Triumph Internat'l Corp., 128 U.S.P.Q. 536, 191 F. Supp. 937 (S.D.N.Y. 1961); Merry Hull & Company v. Hi-Line Co., 146 U.S.P.Q. 274, 243 F. Supp. 45 (S.D.N.Y. 1965); O'Connor & Gordon, Inc. v. Handicraft Publications, 103 U.S.P.Q. 251, 206 Misc. 1087, 136 N.Y.S.2d 558 (1954); Langen-dorf United Bakeries v. General Foods Corp., 62 U.S.P.Q. 323, 125 F.2d 159 (C.C.P.A. 1942); United States Plywood Corp. v. Treib, 114 U.S.P.Q. 343 (Com. of Pat. 1957); Thompson & Sons, Inc. v. Brooks et al., 150 U.S.P.Q. 65 (T.M. Bd. 1966); Hans Holterbosch, Inc. v. Rheingauer Schaumwein- fabrik Schierstein, 110 U.S.P.Q. 543 (Com. of Pat. 1956); Marina Publications, Inc. v. Haydon, 130 U.S.P.Q. 278, 280, 281 (T.M. Bd. 1961); HMH Publishing Co., Inc. v. John Raumgarth Co., 129 U.S.P.Q. 327 (T.M. Bd. 1961). Pero vanse: Bayuk Cigars v. Schwartz, 14 U.S.P.Q. 132, 1 F. Supp. 283 (D.N.J. 1932); Potter-Wrightington v. Ward Baking Co., 288 F. 597 (D. Mass. 1923), cf. 298 F. 398 (ler Cir. 1924). Cf. Dynasty Room, Inc. v. Whiskey-A-Go-Go, Inc., 150 U.S.P.Q. 477, 478, 186 So. 2d 402 (4to Cir. 1966).

FN11. Certain provisions of the Lanham Act and some international treaties constitute the exception.

FN12. In Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636 (App. D.C. 1982) explains that a bona fide registrant under the Lanham Act has protection throughout the United States, although in reality it does not cover all markets in the United States. nation. Sec. 22 of the Lanham Act, 15 U.S.C. sec. 1972; cf. Sec. 33(b), 15 U.S.C. sec. 1115(b). 1 McCarthy, Trademarks and Unfair Competition Ch. 26 (2nd ed. 1984). But See Oakford Company v. Kroger Company, 157 F. Supp. 453 (D.Ill. 1957); 116 U.S.P.A. 430 (1957). The protection that Sec. 22 gives to the owner of the trademark and its ownership are determined by the precepts of the Common Law. Arm-strong Co. v. NuEnamel Corp., 305 U.S. 315 (1938).

FN13. It is not our place to rule in this appeal on the liability that may be incurred by someone who improperly uses advertising. Our interest revolves around advertising as a generator of protectable values.

FN14. Through advertising a descriptive term can acquire secondary meaning -Cooperativa Cafeteros v. Columbus Columbus, 91 D.P.R. 372 (1964); Vandenburgh, op. cit., Sec. 4.71; 1 McCarthy, op. cit., Secs. 15.17, 18-- or a capital gain protected by principles of fair competition. 3 Callmann, op. cit., Sec. 17.04; 1 Nims, Unfair Competition and Trade-Marks Sec. 16 (4th ed. 1947); 1 Callmann, op. cit., Sec. 1.11.

FN15. Note that in cases of interference, one of the trademarks may already be registered. 10 LPRA sec. 196.

FN16. In oppositions and cancellations, the active legitimacy of the applicant depends on the probable damage (not actual) that could be suffered if the trademark is registered in favor of the applicant. In interference it is enough to show that you have a mark. Cf. I Seidel, Dabueff & Gonda, Trademark Law and Practice Sec. 22 et seq. (1963).

FN17. It should be remembered that our analysis is limited to the conduct of the parties in Puerto Rico. We cannot give legal relevance to the fact - not disputed by Colgate-Palmolive - that the slogan was devised by Mistoln in Venezuela.

FN18. Our pronouncements that Colgate-Palmolive used the 'slogan' in a manner analogous to the use of a trademark does not prejudge the issue. It could only produce effect in terms of the limitations that Sec. 4(f), 10 LPRA sec. 194(f), of the law imposes on the State when admitting the registration of a trademark. P.R.,1986.

Colgate-Palmolive Company, Colgate-Palmolive Company, Distr., demandante y peticionaria v. Mistoln de Puerto Rico, Inc., demandados y recurridos.