In re Nantucket Inc.

concurring.

I join the court’s holding that there must be an indication that “the purchasing public would expect men’s shirts to have their origin in Nantucket when seen in the marketplace with NANTUCKET on them.” Moreover, I agree that on the present record the board’s decision holding that NANTUCKET for men’s shirts is “primarily geographically deceptively misdescriptive” must be reversed. I choose to concur, however, because I reach the same conclusion from a different direction, and because the court leaves open what the PTO must show to make a prima facie case under § 2(e)(2) with respect to this application.

Appellant had urged that the court adopt the rule that a goods/place association can be established under § 2(e)(2) only if the place identified by the geographic name claimed as a mark was “noted for” the goods, like IDAHO for potatoes or PARIS for perfume. The standard of registrability enunciated by the court has not been restricted to such a stringent test. To have done so would have created as rigid a rule in favor of registration as the board had used to deny registration. If a geographic name were arbitrary in the absence of a reputation for the goods, any trader who is the first to use any geographic name for particular goods would, thereby, appropriate it to his exclusive use. Moreover, the rationale advanced by appellant is not limited to geographic names of places where the likelihood of future commercial exploitation by others is small but would be equally applicable if the claimed mark for shirts were CHICAGO. The answer to the basic question of public association of goods with a place, i.e., geographic descriptiveness, cannot be decided on this simplistic basis.

My reasons for rejection of appellant’s position, which are based on concepts from the common law, more than on statutory construction, are set out herein.

*102 Applicable Common Law Concepts

Protection and registration of geographic names as marks embodies concepts comparable to those applicable to surnames as well as to terms which are descriptive of the nature or quality of goods or services. A geographic name might appropriately be viewed as a hybrid in this respect. Courts do not readily recognize trademark rights in such names or terms because of the legitimate interests of other merchants in truthfully being able to use them in connection with their own wares or services.

In determining whether a geographic term is registrable under the Lanham Act and upon what conditions, the first question is whether the name is primarily of geographic significance but, contrary to the board’s view, that does not end the matter.

A geographic term may be used in a manner which is (1) inherently distinctive, which includes arbitrary and suggestive usage, (2) generic, (3) descriptive, (4) deceptively misdescriptive, or, (5) deceptive. Different consequences flow from the finding of what is the appropriate category or categories for the mark, which to some extent overlap. In any event, such a determination can only be made by consideration of the specific goods on which the name or term is used. In every case the issue which must be resolved is: What meaning, if any, does the term convey to the public with respect to the goods on which the name is used?

In resolving the question of registrability of geographic names, the development of the law with respect to protection of such terms provides guidance. Basic to consideration of the registrability and protectability of any geographic term as a trademark is the routine commercial practice of merchants, whether they are growers, manufacturers, distributors, or local retailers, in placing the name of their location on their goods or using the name in their trade names. Because the public would be aware of common trade practice, the common law originally deemed all use of geographic names wholly informational and unprotectible. It was believed such names could not function and, in any event, should not be recognized as the identification of a single source.1 Thus, we must start with the concept that a geographic name of a place of business is a descriptive term when used on the goods of that business.2 There is a public goods/place association, in effect, presumed.

However, as with other terms which are descriptive when first used, it came to be recognized that through substantially exclusive and extensive use, a merchant might develop a protectible goodwill in such a geographically descriptive name upon proof that the name ceased being informational to the public and came to indicate a source of goods. Thus, if a manufacturer located in Chicago were to display the name CHICAGO on his shirts, for example, it has been the law for over a century that he could prevent another’s subsequent use only *103if he could establish “secondary meaning” in the term.3 Until secondary meaning has been developed in a descriptive term, the public cannot be confused that the term indicates source in a particular user and others are free to make comparable use of the term. Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981); Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1043, 208 USPQ 175, 180 (CA 2 1980); J. McCarthy, 1 Trademarks and Unfair Competition § 1415, p. 493 (1973). While a merchant in Chicago will not be deprived of his right to use the name in a non-trademark display if another acquires trademark rights in CHICAGO, he does become limited in the choice of marks for related goods or services and must operate, thereafter, under the constraints of avoiding likelihood of confusion with CHICAGO per se for shirts. American Waltham Watch Co. v. United States Watch Co., supra. It is, thus, to his advantage to have the term remain in the public domain and he can take appropriate steps to keep it there by using the name himself.

Statutory Application of the Common Law

These concepts, which balance the interests of different persons, are embodied in § 2(e)(2) of the Lanham Act, which provides that a term which is primarily geographically descriptive is initially unregistrable; and § 2(f), which allows registration on a showing of distinctiveness.4 J. Gilson, Trademark Protection and Practice § 2.07, pp. 2-47 and 2-48 (1980).

Since the mark CHICAGO is, thus, unregistrable even to a Chicago manufacturer who is the first to use that name for shirts without a showing of distinctiveness, one cannot accept, as urged by appellant, that the law recognizes better rights, ipso facto, in a company not located there which hap*104pens to be the first to use that name for shirts.5 It is simply illogical to say that CHICAGO is descriptive of shirts if the manufacturer is located in Chicago, but arbitrary, if he is not located there. The public is not aware of the actual locations of most businesses. The public is aware of trade practice and makes, or is presumed likely to make, a goods/place association in either instance. Nor is it any less objectionable to a Chicago merchant if the term is used by a non-local rather than another local merchant.

The legislative history of the Lanham Act is far from a model of clarity, but it was clearly brought to Congress’ attention that use of NEW YORK as a mark by a New York merchant or by a Boston merchant should be subject to at least equally stringent requirements with respect to registration to reflect the protection of such names provided under the common law. (See text referenced particularly at notes 26, 27, 28 of appendix.)

Section 2(e) originally was drafted to preclude registration on the Principal Register of a term which has a “geographic or descriptive meaning” when applied to the goods. The provision was restricted and divided and became (1) “merely descriptive [of the goods],” or (2) “primarily geographically descriptive.” The latter change was to exempt from § 2(e)(2) a mark, such as ALASKA for bananas. Next, § 2(e)(2) was changed to insert “or misdescriptive” with the explanation (text referenced by n. 26 of appendix):

. . . for example, in a case where New York was used in a place other than New York — “New York” was used in Boston as a trade-mark. Now it might not be descriptive if it were not used for New York, don't you see, but it would be misdescriptive and be equally objectionable.

It then appears that it was feared that this language might bar names and terms used in an arbitrary (or no more than suggestive) manner with respect to particular goods. Arguably any nondescriptive use, even if arbitrary, is, in a sense, misdescriptive. Accordingly, the word “deceptively” was inserted before “misdescriptive” in both § 2(e)(1) and § 2(e)(2), again, to avoid technical rejections of applications to register marks such as IVORY for soap, or ALASKA for bananas.

Thus, where usage would be understood by the public as arbitrary, i.e., misdescriptive but not “deceptively” so, the term or name claimed as a mark is registrable without a showing of distinctiveness. In re Automatic Radio Manufacturing Co., 56 CCPA 817, 822, 404 F.2d 1391, 1396, 160 USPQ 233, 236 (1969). On the other hand, if the public would perceive a misdescriptive use of a geographic name as a descriptive use, the claimed mark is deceptively misdescriptive and unregistrable without secondary meaning. That a place is “noted for” goods is only one circumstance under which a geographic name would be barred by § 2(e)(2). “Noted for” and “public association” thus, are not equivalent tests for determining public goods/place association. Singer Mfg. Co. v. Birginal-Bigsby Corp., 50 CCPA 1380, 319 F.2d 273, 138 USPQ 63 (1963), which held AMERICAN BEAUTY to be primarily geographically deceptively misdescriptive when applied to sewing machines of Japanese origin is another example. There was no holding that “America” must be “noted for” sewing machines for the mark to be barred by § 2(e)(2).

The solicitor suggests that Singer Mfg. Co. v. Birginal-Bigsby should have been decided under § 2(a), not § 2(e)(2). I disagree. The provisions of § 2(e)(2) are broad enough to encompass a deceptive use of a geographic term barred by § 2(a). I see nothing in the statute that makes the sections mutually exclusive. Some geographic names rejected under § 2(e)(2) may be registrable in accordance with § 2(f); others will encounter the absolute bar of § 2(a). Whether the mark contains “deceptive” matter within the meaning of § 2(a) be*105comes material when resort is made to § 2(f) or the Supplemental Register (15 U.S.C. § 1091), questions not present in this case.

Concerning the authority cited by the appellant, it is apparent that the issue of whether the public is likely to believe a particular geographic name is informational when it appears on a product has been lost sight of in some decisions, which have applied mechanical rules wholly inappropriate to trademark cases. A geographic name is not unprotectible or unregistrable because it can be labelled a geographic name, but because it tells the public something about the product or the producer about which his competitor also has a right to inform the public. Thus, the names of places devoid of commercial activity are arbitrary usage.

In this category are names of places such as ANTARCTICA, MOUNT EVEREST, or GALAPAGOS, at least when used for ordinary commercial products, such as beer and shoes. Names such as SUN, WORLD, GLOBE, MARS, or MILKY WAY are also arbitrary, not informational; competitors do not need to use the terms to compete effectively. Sun Banks of Florida, Inc. v. Sun Federal Savings & Loan Association, 651 F.2d 311, 211 USPQ 844, reh’g denied, 659 F.2d 1079 (CA 5 1981); World Carpets, Inc. v. Dick Littrell’s New World Carpets, 438 F.2d 482, 486, 168 USPQ 609, 612-13 (CA 5 1971). If the pertinent issue is kept in mind, the question of geographic descriptiveness or its corollary, deceptive misdescriptiveness, can more easily be resolved.

It is also apparent that some opinions fail to grasp that the defense of geographic descriptiveness, put forth by an alleged infringer, should be available only to one with a legitimate personal interest in use of the name. When raised by others, the defense can only be characterized as contrived. In this respect, a geographic name is comparable to a surname in protectibility: one of the same name may have a defense of inherent right to use; one with a different name should not be heard to demand that secondary meaning must be established by a prior user. The issue in such a case is which of the two parties has superior rights and whether the public interest is served by enjoining use by the latecomer. The first of the two users in such litigation need not prove rights against the world to prevail. National Lead Co. v. Wolfe, 223 F.2d 195, 200, 105 USPQ 462, 465-66 (CA 9), cert. denied, 350 U.S. 883, 76 S.Ct. 135, 100 L.Ed. 778 (1955).

In National Lead, supra, appellant established long prior use and registration of DUTCH in the mark DUTCH BOY for paint, and intentional infringement by appellee’s subsequent use of DUTCH for paint. Appellee, a San Francisco company, attempted to justify its use as fair use by asserting that DUTCH indicated a particular quality of paint, and failing that, that DUTCH was so widely used by others on paint as to be of no trademark significance, an assertion that also failed. The rationale for recognition of an equal right to identify one’s place of business was not present in the case. Moreover, the mark DUTCH BOY was not considered unregistrable even under the Act of 1905. A determination of geographic descriptiveness turns not only on the goods to which the mark is applied, but also, the entire context in which the name is used.

In LaTouraine Coffee Co. v. Lorraine Coffee Co., 157 F.2d 115, 70 USPQ 429 (CA 2), cert. denied, 329 U.S. 771, 67 S.Ct. 189, 91 L.Ed. 663 (1946) (LaTOURAINE and LORRAINE for coffee), and Hyde Park Clothes, Inc. v. Hyde Park Fashions, Inc., 93 USPQ 250 (SDNY 1951), aff’d, 204 F.2d 223, 97 USPQ 246 (CA 2), cert. denied, 346 U.S. 827, 74 S.Ct. 46, 98 L.Ed. 351 (1953) (HYDE PARK for men’s suits and women’s dresses, respectively), again the infringers were merely mouthing the litany that geographic names are inherently unprotectible without any basis for assertion of a right to use the geographic name as a trader in that locale. In the Hyde Park case, moreover, in view of the widespread use of the name by others on clothing, the court concluded that HYDE PARK did not have a geographic significance but indicated stylishness. Neither this case nor any other cited by appellant *106provides authority for the principle that a place must be “noted for” goods before use of its name as a mark will be held “primarily geographically deceptively misdescriptive.” Even the test enunciated in In re Circus Ices, Inc., 158 USPQ 64 (TTAB 1968), was not limited to the “noted for” test but included the broader test “used by anyone to denote the geographical origin of such products.” Id.

The rejection of the “noted for” test as the sole basis for the rejection under § 2(e)(2), of course, does not determine whether NANTUCKET on shirts is or is not registrable. The question remains: Are purchasers likely to believe NANTUCKET is descriptive in that it identifies the location of the source of the shirts?

The Present Case

The PTO believed it had made a prima facie case for rejection of the application under § 2(e)(2) by proving that the name NANTUCKET was primarily of geographic significance, not being an obscure place or having other meanings.6 That NANTUCKET is considered “primarily geographic,” while not disputed by appellant, does not make the term descriptive of the goods or make a prima facie case. In my view it is incumbent on the PTO to put forth evidence that other businesses have or are likely to have legitimate interests in use of the geographic name claimed by the applicant. The solicitor suggests that this court may take judicial notice that Nantucket has a lively summer tourist trade and that men’s shirts are generally available in summer resorts and locations frequented by tourists. I do not believe it is appropriate to take such judicial notice at the appellate level as to do so would deprive an applicant of the opportunity to respond. In re Water Gremlin Co., 635 F.2d 841, 845, 208 USPQ 89, 92 (CCPA 1980). Moreover, as pointed out by appellant, the solicitor’s position is not the board’s position. Were the application for NANTUCKET for steam turbines, the board’s test would preclude registration.

The PTO frequently makes use of telephone directories in connection with proving surname significance. The same type of evidence could be made of record to show that businesses dealing in the same or related goods exist in the named area. This would, in my view, make a prima facie case. With a name such as CHICAGO, such a prima facie case in all likelihood could be made regardless of goods and an applicant would have a difficult task to overcome it. With a name such as NANTUCKET, one would expect that there are at least some goods for which the term is arbitrary. If the PTO makes a prima facie case which the applicant is unable to overcome, the applicant must resort to proof of distinctiveness in accordance with § 2(f) to secure registration.7

Appendix

Legislative History of § 2(e) of the Lanham Act

In 1938, Congressman Fritz G. Lanham of Texas introduced H.R. 90411 to amend the Trademark Act of 1905.2 H.R. 9041 provided in part: 3

*107No mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration as a trade-mark on account of its nature unless it—

(a) Consists of or comprises . . . deceptive . . . matter [or]

* * * * * *

(e) Consists of a mark which when applied to the goods of the applicant has merely a descriptive or geographical meaning or is merely the name of an individual;

(f) Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing herein shall prevent the registration of any mark used by the applicant as a trade-mark in commerce which has become distinctive of the applicant’s goods.

The reported hearings4 in the House on H.R. 9041 include comments on the registration of geographical terms,5 “secondary meaning” acquired in geographical terms,6 and the “mechanical manner” in which the Patent Office applied § 5 of the 1905 Act.7

The prominent practitioner in the field, Mr. Edward S. Rogers, who played a significant role in drafting the Lanham Act (See 62 Trademark Rep. 197 (1972)), made the following statement:

The present construction of the Patent Office of that language [Sec. 5 of the 1905 Act] is that they take a word without reference to its connotation, and if it appears in the atlas anywhere as the name of a place, or if it appears in the Postal Guide they say that is a geographical name or term, and hence is not registrable.[8]

Another witness commenting on the above language stated:

[I]t leaves open to constant argument and bickering between applicants, attorneys, examiners, the Patent Office tribunals, and the courts as to whether a given trademark has “merely a descriptive or geographical meaning” or when it has such significance. To illustrate, the word “Alaska” would probably have no descriptive or geographical meaning applied to bananas, but applied to canned salmon would unquestionably have a descriptive as well as geographical meaning.[9]

H.R. 9041 did not reach the House floor during the 75th Congress.

In the 76th Congress, Congressman Lanham introduced H.R. 474410 which in relevant part precluded registration of:

... a mark which, when applied to the goods of the applicant, has merely a descriptive or geographical, and no other, meaning ... or is merely the name of an individual and has no other meaning.

H.R. 4744 also provided for registration of “any mark used by the applicant .. . which has become distinctive . . . . ”

The House held hearings on H.R. 4744. During those hearings, Mr. Rogers suggested an amendment of Section 2(e) to preclude registration of a geographical mark only if the mark:11

.. . when applied to the goods of the applicant, is primarily geographical and descriptive of them .... [Emphasis added.]

There was also further discussion of the registration of geographic terms and Section 2(f), which proposed registration of *108marks which could be shown to be “distinctive.” 12

With respect to Section 2(f), Congressman Lanham said:

[t]he suggestions I was making is, simply because something is geographical or descriptive does not say that through use it may not become distinctive as to that article, and where it becomes distinctive then it is subject to registration as a trade-mark,

and

[t]he sole right would be acquired only when something which was descriptive or geographical became distinctive through use. It would be adapted to general use unless it became distinctive.!13!

Following hearings on H.R. 4744, Congressman Lanham introduced H.R. 661814 which embodied the language suggested by Mr. Rogers. Section 2(e) of H.R. 6618 proposed to preclude registration of:

a mark which, (1) when applied to the goods of the applicant is merely descriptive of them, (2) when applied to the goods of the applicant is primarily geographically descriptive of them . . ., (3) is primarily a surname.

Section 2(f) was also changed from the H.R. 9041 version by additionally providing:

Substantially exclusive use as a mark by applicant, in commerce for two years pri- or to the application, may be accepted by the Commissioner as prima facie evidence of distinctiveness.

H.R. 6618 was passed by the House on July 17, 1939, following debate15 in which Congressman Lanham pointed out that the bill would “protect owners of trademarks and conform federal trademark law to modern practice.” 16 On June 22,1940, the Senate passed a comparable bill, although with amendments not relevant here.17 A motion to reconsider prevented the bill from reaching a conference Committee.18

H.R. 5461, introduced during the 77th Congress, retained the language of Section 2(e), but increased from two to five years the period in Section 2(f) for making a prima facie showing of distinctiveness.19

S. 895, also introduced during the 77th Congress, kept the two-year period in Section 2(f).20 After consideration by the Senate Committee on Patents, S. 895 ultimately reached the Senate floor where it passed without debate.21 Upon reaching the House, S. 895 was referred to the House Committee on Patents, which held hearings on S. 895, H.R. 102, and H.R. 5461.22 The Committee print23 of the proposed legislation differed from H.R. 5461 in that 2(e)(1) contained a prohibition against registration of misdescriptive marks, to wit:

(e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or misdescriptive of them, or (2) when applied to the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4 hereof, or (3) is primarily merely a surname.

During hearings, there was discussion on the “distinctiveness” provision of Section

*1092(f) 24 There was also a proposal to deny registration of “misdescriptive” geographical terms.25 A witness, referring to ABA recommendations concerning H.R. 5461, proposed to delete “misdescriptive” from 2(e)(1) to allow registration of a mark such as IVORY for soap, and to add “or misdescriptive” in 2(e)(2), stating: 26

. . . for example, in a case where New York was used in a place other than New York — “New York” was used in Boston as a trade-mark. Now it might not be descriptive if it were not used for New York, don’t you see, but it would be misdescriptive and be equally objectionable.

First Assistant Commissioner Frazer then made a further suggestion 27 that the word “deceptively” be inserted before “misdescriptive,” in 2(e)(1) so that the restrictive language of 2(e)(1) would become:

when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them ....

The following is a recount of the debate on this proposal:28

MR. FRAZER. I was going to suggest, Mr. Chairman, that in line 19 before the word “misdescriptive” we insert the word “deceptively.”

MR. LANHAM. “Or deceptively misdescriptive”? What is your reaction to that, gentlemen?

MR. ROGERS. There cannot be any objection to that.

MR. MARTIN. I think it is an unnecessary repetition, because it is already covered, but I cannot see any objection to it.

MR. LANHAM. But if, from the standpoint of administration, it would be helpful — “or deceptively misdescriptive”? Well, is there agreement on that?

MR. STANLEY. Would “Ivory soap” be misdescriptive?

MR. POHL. Mr. Chairman, the present act of 1905 has no such provision. The existing trade-mark law, the act of 1905, speakes [sic] of merely descriptive marks, and the only reason why descriptive marks should not be registered is that the community should be free to use descriptive marks, prima facie, at least, until they have acquired a secondary meaning. Now by putting “or misdescriptive” in this place you will open up the doors to a new line of interpretation, and marks would become doubtful. The suggestive marks “Beechnut” for food products, “Holeproof” for hosiery, “Pussy-Willow” for silk, “Ivory” for soap, might not perhaps by any chance be deceptively misdescriptive. It leaves too much to interpretation.

Under the 1905 act these questions have not come up, and I believe it should not come up.

MR. LANHAM. Of course, the more we simplify the administration, the more we clarify the status of the whole matter, it seems to me. And that is one reason I was anxious to have Mr. Frazer’s reaction to this.

MR. STOWELL. In paragraph (a) of this section there is a provision that deceptive marks shall not be registered. Under the practice of the Patent Office the meaning of the term as used there is very well recognized, and so far as I know there is no great question of that practice; but introduced into a section such as section (e), which deals with a different type of objection, this term “deceptively misdescriptive” introduces into the law a basis for a new type of rejection which we know nothing about, and it seems to me the sound thing to do is to leave the word “deceptive” in paragraph (a) to take care of those cases which the Patent Office has always taken care of under that word, and to eliminate the proposed phrase “deceptively misdescriptive” from line 19 of paragraph (e). [Emphasis added.]

*110MR. POHL. Now, Mr. Chairman, I have one more mere suggestion or remark. The situation is different with the geographical name, as Mr. Martin has pointed out. A man who makes watches in Waltham, Mass., and puts the name “Waltham” on the watches, uses that name as a geographically descriptive mark. If he moves from Waltham to Cambridge, then the name “Waltham” is no longer geographically descriptive. However, in that event under the bill as it now stands that mark would become registrable, the word “Waltham” merely because it is geographically nondescriptive.

MR. LANHAM. It would not be deceptively used on a well-know product though, would it?

MR. POHL. Well, it would not be deceptive on a well-known product, because the place of manufacture would perhaps in a secondary meaning of the mark not be very important. But the intent is to stop all geographical names, whether they happen to be geographically descriptive or whether they are not geographically descriptive, meaning that the goods come from that particular location. The important thing is the question. Is the name geographical? and that was my understanding of Mr. Frazer’s objection to inserting “or misdescriptive” after “geographical.”

(There was discussion of the record.)

MR. LANHAM. Let us get this on the record: On page 5 of the committee print, after the word “or,” in line 19, insert the word “deceptively”; on line 21, after the word “descriptive,” insert “or deceptively misdescriptive.”

Thus, § 2(e)(1) and § 2(e)(2) became couched in the same language.

The Committee sent S. 895 to the full house,29 accompanied by House Report No. 2283.30 The proposed amendments to § 2(e) (as well as others) were approved, and S. 895, as amended, passed on September 24, 1942.31

In view of the extensive changes made by the House, when S. 895 returned to the Senate, it was again referred to the Senate Committee on Patents.32 The 77th Congress ended without further action by the Senate.

H.R. 82, introduced during the 78th Congress and containing in Sections 2(e) and 2(f) the language of S. 895 as passed by the House,33 was passed by the House on June 28, 1943.34 In the Senate, H.R. 82 was referred to the Senate Committee on Patents where hearings were held.35

There was some discussion of the interrelation of § 2(a), § 2(e) and § 2(f).36 Noting that § 2(e) was omitted from § 2(f), Mr. Moyer, Special Assistant to the Attorney General, stated: 37

Now, under the bill, by simply using such marks, a registrant may acquire vested interest in deceptive and descriptive language, in disregard of consumer and competitor rights.

In response to Senator Pepper’s questioning on this point, First Assistant Commissioner of Patents Frazer responded:38

Then I would say, “Go back and look at subsection (a).” No mark can be regis*111tered which consists of immoral, deceptive or scandalous matter.

A witness from the private sector also stated:39

In no event could that [§ 2(f) ] include a deceptive mark, as Mr. Frazer has pointed out, because that is included in section (a).

In response to Senator Pepper’s apparent concern that 2(a) prevented registration of only “deceptive” marks, not descriptive marks, there ensued a discussion of the acquisition of rights under the theory of “secondary meaning,” the thrust of the argument being, “If it is protected in the courts, it ought to be on the register.”40 H.R. 82 did not pass the Senate.

In the 79th Congress, Congressman Lanham introduced H.R. 1654 containing the “deceptively misdescriptive” language in both 2(e)(1) and 2(e)(2).41 The bill was passed by the House on March 5, 194542

H.R. 1654 was considered by the Senate Committee on Patents43 which recommended its passage by the full Senate with several suggested amendments.44 The bill, with suggested Committee amendments, passed the Senate on June 14, 1946.45 Differences between the Senate and House versions were settled in conference.46 H.R. 1654 became law on July 5, 1946.47