*1 in- dentifrices use of buffered
herently appellants’ provide a solution though adequate
problem, theo- an even why explanation reason retical buffering agents
incorporation su- dentifrices achieves
acidic fluoride
perior found in the values is not RES
cited think it is sufficient art. doing prior suggests clearly what art done, although
appellants an under- have
lying exactly why explanation done,
should be other than to obtain results,
expected superior beneficial taught suggested in the cited
references. in the
We find no reversible error holding Appeals
decision of the Board of subject
the claimed matter to obvious unpatentable under 35 U.S.C. 103. §
Accordingly, the decision of the board is
affirmed.
Affirmed.
SMITH, J., concurs the result.
Sidney Wallenstein, Chicago, (Ben Ill. Cohen, C., Washington, Charles B. D. Spangenberg, Chicago, Ill., counsel), appellant. Application of MOGEN DAVID WINE Patent CORPORATION. Appeal No. 7705. ents. (George Roeming, Joseph Schimmel, Washington, D. C. counsel), C. for the Commissioner of Washington, D. Pat- C., United States Court of Customs Judge, WORLEY, Before Chief Appeals. and Patent ALMOND, Judges, RICH, SMITH, and Feb. Judge KIRKP H. WILLIAM
ATRICK.* Judge. ALMOND, ap- Corporation David Wine peals Trademark from decision of the refusing grant Appeal Trial and Board Register registration configuration bottle as of a decanter wines. * Pennsylvania, by designation. Judge, sitting Senior District Eastern District *2 540 configurаtion drawing depicts precluded application1 “is as The bottle during of law matter the life of the de-
bottle as follows: sign constituting subject registered may properly matter which be Principal Register.” appeal on the On Mogen in In re David this court Wine held, Corp., 925, 1260, F.2d 51 CCPA 328 substance, in design existence appel- preclude did not register lant’s Register, and remanded the case to the board “for factual issue decision on the submitted as whether evidence appellant’s to establish that sufficient bottle functions as a trademark (328 932, origin” p. 51 to indicate F.2d 1268-1269). pp. In its af- court board remand from this regis- the examiner’s refusal of firmed ground insufficient evi- tration on secondary meaning. is from dence of It appeal that the instant the latter decision been taken. In his brief on behalf of the Commis- argument sioner of Patents and in before us, challenges clearly the solicitor “as erroneous the law of the case estab- by majority opinion Appeal lished Mogen No. 7085. re David Wine Corp.,” say supra. it to Suffice reaching 7085, appeal our decision in No. considered, we we do in the instant appeal, the and the ar- authorities cited guments relevancy made as to their persuaded the issue raised. We are not decision, of error in our former and con- sequently we This con- adhere thereto. disposes by ap- clusion motion filed pellant 7, on October to strike cer- 1966 parts of Commis- tain the Brief 12, September sioner of Patents filed Appellant contends that the evidence 1966, by us and taken under advisement proves sought adduced that the mark by 31, order dated 1966. October registered acquired, wines, secondary meaning. issue, therefore, The sole is whether examiner found configuration appellant's support decanter the evidence insufficient to secondary meaning acquired appeаl contention. bottle has On the board refused 2(f) so under section of the Lanham Act consider the evidence adduced but held identify- existing, expired, as to function as a trademark ing that a then but now distinguishing sign appellant’s patent2 wines and covered the decanter bottle application them from those of others. of the instant and that the 158,213, April 18, May 11, 73,406, for a 1950 1. 2. No. issued No. filed Serial years. term of by by wines bottled and sold situation found concern factual [sj aсcepted which us is as stated bottles and sell David board 7085, supra, opinion appeal Wines. No. page 1262. F.2d 51 CCPA at We do not consider the board’s evalua- incorporate herein reference. same evidentiary efficacy tion of the of these deprecation affidavits to be in appellant’s adver- We have examined *3 veracity of The affiants. board reasoned appear- tising promotional material and that the obvious inference the state- pro- ing no of find therein record. We ment is that or had been sell- others “are display the motion or of advertisement of” wines decanters similar to that configuration per an in- se as container appellant and that when such use first of the wines. dication of the began is not from the ascertainable of wine is fea- a decanter bottle While vagueness ambiguity phrase and the tured, nothing to indicate that there is оnly relatively ago.” “until separate a short time promoted container has been the It would seem to assume that apart reasonable mark “MOGEN from the word and engaged single sale those affiants the retail find a are unable to DAVID.” We indicated Prom- wines could and would have container itself. reference to the degree particularity inently the displayed with some the wine-filled con- on usage by their every time when others came to “MOGEN DA- tainеr in instance is noted, we, pro- attention. In its of the as do assessment WINE.” The board VID affidavits, Personality” “Package think bative worth of these we reference to the publications the board warranted in its observa- & Vines” and was in the “Spirits.” “Wines tion is not to the that:
The reference package complete the itself to bottle but ago” phrase time The “until short container, prom- the which consists of the appears to meet to been tailored have inently displayed label, and the cellulose as a affiants the recollection the top with the at of the bottle band group the mem- rather than reflect figure and the DAVID” words “MOGEN individual, ory this leads of each embracing “MD.” letters of a star question this statement us to whether truly their the affiants was made personal agree We with the board that the affi- experience or recollection by appellant davits submitted leave much something merely rеlated was it way to be desired in the of substantial by applicant. them proof container itself run had gamut acquiring following secondary the ing. Each affidavit contains the mean- approximately fifty affiants, statement or one similar substance purport: generally appellant, customers of located throughout States, the United executed When I saw wine bottled and sold language pur- affidavits similar in shape bottles above- port prepared which had been and sub- decanter, I mentioned associated said by appellant. substance, they mitted just company, wines with one and that hardly amounted to more than a carte company is the one whiéh sold and approval blanche of that which had been Mogen sells Wines. David by party naturally formulated and un- noted, As we the de- have heretofore derstandably serving desirous of its own displayed canter in issue when in adver- These affidavits containеd tisements, promotional literature well statement: place as in the market is embellished with That, my knowledge a cellulose at the neck of the band bottle the best of belief, up only relatively with the words “MOGEN DAVID” there- until short featuring prominently ago, and a label time wines which were having As far sold in trademark MOGEN DAVID. decanter bottles substantially shape from the advertise- the record shows or point promotional material and ment and the current bottle in which decanter Mogen display, of sale affiants never saw the are sold were David Wines SMITH, Judge (concurring). without neck band label decanter al- to their had called attention agree majority’s with the conclusion configuration legedly unusual previous that our in In re decision as- it reasonable canter. think. 925, Corp., David 328 F.2d 51 CCPA Wine board, therefore, sume, as did to. should adhered Thus the the decanter association of affiants’ design patent at one existence of a time upon predicated was automatically preclude appel- does imparted by impression mark MO- register lant’s a device on the descriptive ma- and other GEN DAVID Register. appearing than rather terial thereon very solicitor, however, in a ex any the con- distinctive characteristic present appeal brief filed in tensive per se. tainer argues previous is “er The board reasoned that inasmuch as Supremе Court’s roneous” view of the *4 issue, the decanter in unlike the “PINCH” Sears, in & Co. v. decisions Roebuck whiskey bottle, susceptible is not to ver- 784, Co., 225, el 376 U.S. 84 S.Ct. Stiff description, likely bal it is more than 661, Compco Corp. v. 11 L.Ed.2d and appellant’s that wine for would be called 234, Inc., Day-Brite Lighting, 376 U.S. requested by and MOGEN trademark 779, 11 669. L.Ed.2d 84 S.Ct. DAVID. disagreeing the solicitor on with On the basis of record issue, the facts of majority apparently rests presented, agreement reasoning here we are in previously on the advanced Mogen board opinion. that: David Since our prior expressly consider decision did not Under such circumstances and since Compco, Sears and which were decided assertedly most of the fea- distinctive previous at about the time applicant’s tures of decanter are some- released, my to state was like it is what obscured hidden when Supreme in the views. Court Sears filled with wine with the and adorned Compco that and both cases considered label, opiniоn neck band and it is our decision, presented issue for the same average likely purchaser that is e., of state un i. “whether the use recognize identify applicant’s and against give competition relief fair law by pictor- and the written matter wine copying unpatented of industrial an representations prominently dis- ial patent design federal conflicts with the played band on the label and neck 234, Compco, supra, at U.S. laws.” 376 configuration of thе than on the rather cases, held, in both 780. It 84 S.Ct. at prosaic bottle, pre se. rather The decisions that a conflict existed. Accordingly, persuaded we are not on trade with federal were concerned the record herein that the decanter bottle Derenberg although Professor mark law impression separate creates a commercial language, in there “much has stated is apart appear- and from the word marks opinions, sweeping Justice Mr. Black’s itself, serves, thereon and of and easily with” cannot be harmonized which applicant’s an indication portions opinion in certain wine. 660, Rep. 665 54 Trademark David. refusing registra- (1964).1 The board’s decision tion affirmed. is Very the Sears is said in either little concerning Compco opinion trade- or the Affirmed. Rep. Decisions, Compco expressed Trademark 55 are in the 1. comments Other (1965); Eight following Derenberg, (1965); 520 53 L.J. Geo. articles: 933 (1965). Reр. See Lan 1032 Trademark of Administration 55 Year eenth Design-Rights: Dulin, Statutory 1946, So Trade Act 55 Trademark ham Competition Regis (1965); Zelnick, of Pira Rep. to the Unfair lution 609 mark (1966). 158, Rep. Configurations cy, Trademark and of Goods trations infra, Light fn. and Sears See Containers competitors cludes of the owner of a court did set forth marks. While the trademark, patent interest has an the free the boundaries between federal law, symbols, words, names, competition use of devices and state unfair laws my Supreme or combination do not thereof which it is conclusion purport serve as trademarks. did not consider Court federal decide the boundaries between Thus private substantial in- patent law. law and federal trademark design terests exist in both federal law Compco Do trademark the Sears law. It cases indi- seems to me that controversy potential heart of cate that there conflict is here duration of betweеn these federal laws and federal interests. Federal de- sign provides Congress, period trademark ? I law laws think not. for a limited 171, provided inventor, to the 35 U.S.C. in- which that the has been set § original Congress. “new, law, ventor of a and ornamen- Federal trademark however, provides grant rights tal for an article of manufacture may therefor, subject obtain a trademark owner for an indefinite period. time requirements” Absent conditions and certain abuses Congress рrovided, assuming title 35. trademark owner in the use in Trade- sense, (1) (15 mark Act section U.S.C. the duration of a 1051), depends public recognition § owner of a “[t]he trade- may register mark used in the trademark commerce his identifies user’s goods distinguishes prin- trade-mark under this Act them from *5 goods cipal register”. Congress stated, of in others. Trademark also law is re- plete (15 1127), public section 45 with instances U.S.C. that “The where the § “destroyed” any word, both term name, symbol “created” ‘trade-mark’ includes the trade- rights any subject registra- mark or which are device or combina- to tion, adopted by independently tion thereof and this has and used a manu- been done any identify by of facturer or action or inaction merchant to his the trade- goods distinguish Congress stated, mark owner. Thus them from those effect, designs by in manufactured or sold others.” Fur- that interests in certain * * * ther, protected independently are “No created and trade-mark shall be any registration reg- public recognition principal acceptance of refused or design ister on of the in account of its nature” unless it interests the registration recognized by public is barred from trademarks will under section (15 1052). protected only long pub- for as as U.S.C. § . recognizes lic that interest. See 15 U. purpose design patent of federal S.C. § encourage laws is to the creation of orna- designs. challenging previous mental In our receives, Thе inventor being erroneous, period, for right in limited David as as a federal to ex- argues law, making, clude using, others from matter of the solicitor or sell- patented design throughout certain considerations are irrelevant. may shape Upon expiration United Thus we assume that the States. of the design patent company’s right longer the container this identifies that federal no goods distinguishes pub- exists. them to Thus the inventor loses this ex- right lic from or sold clusive those manufactured may that if others. We assume laws, independent Federal by others for the container was used design patent law, from have confusion, goods, sale of those mistake purpose protecting the dual both the deception public would result. public trademark owner and the from confusion, point deception. this would like to focus at mistake and register. appellant It is interest under the federal trade- what seeks particular shaрe aspects. mark for “KO- laws has In container two addi- WINES,” protection confusion, tion to TYPE from mis- AND KOSHER SHER suggestion, public, deception, take and in- amended at the examiner’s which appellant Thus all “WINES.” asserts vices on or connection with which register right likely confusion, shape is the of the such use is to cause deceive; mistake, for container a trademark its wines or to or to cause identify for the reason it serves shall be registrant a civil actiоn liable distinguish its wines and them those for the hereinaf- remedies any * * * as- others. no sense is there [Emphasis provided add- ter sertion of an in the container interest ed.] shape per Comparing se for all uses. protection for Thus seeks law,2 de- and trademark federal pub- what it asserts amounts sign give appellant a law did limited acceptance its lic container concerning to exclude others the contain- wines. shape, regardless goоds as- er brief extensive any pub- The solicitor’s rather sociated with the container and arbitrarily appeal in- this decides that recognition acceptance lic rights. patent From volves federal sign, while federal trademark law arbitrary proceeds premise, it to a con- yield only following: and then statutes sideration of the 32(1) (15 1114(1)). Sec. U.S.C. § involving patents. The to a host of cases Infringement Remedies— general from this conclusion extractеd patentee’s conglomeration is that all Any shall, person who the con- without expire term interests after registrant— sent Congress. appel- provided by Therefore any repro- (a) use in commerce any lant can no other interest have duction, counterfeit, copy, or color- shape. And as kind in container registered imitation mark able of a impress consequences upon if to us the offering sale, connection with decisiоn, con- brief solicitor’s advertising sale, distribution, or recurring allegation: Appellant one tains any goods on or or services potentially perpetual mo- here se'eks “a *6 is connection with which such use nopoly,” “perpetual patent.” and a What- likely confusion, cause to cause or to terms, meaning by these ever the intended deceive; mistake, or to or repeated must what it that copy, nothing counterfeit, (b) reproducе, than a fed- seeks here is more registration colorably registered particular of a contain- or eral imitate allegedly reproduction, apply as er it serves mark and such because e., wine, counterfeit, for copy, i. a con- or colorable imita- a valid trademark tinuing legal right signs, prints, pack- prevent labels, to others from tion to goods applying receptacles ages, wrappers, adver- that trademark to similаr or creating public com- in and for the to be in commerce tisements intended used confusion, decep- upon with an area of mistake and merce or in connection offering sale, to sale, as the source or of the for distribu- tion goods the tion, goods advertising or ser- so identified. general public except stated, the law under in In Concentra- Deister re patent may 496, 500, Co., to the the law re- extent F.2d tor copy- move it. The same is true 962: * ** rights. tеmporary significance incursion When a the the public right public ends, patent expired on the the of an existence right right is copied No born. remains. neio it adds another is that article [Emphasis public saying added.] has that reason trademarks, public being Concerning inter- right copy it, to it basic to yields public may copying public system inter- patent to the est that confusion, preventing patent copy and mistake comes est when term independеntly deception exceptions. end, in commerce to an certain may any right copy However, accrue benefits to not is any patent way owner. rived from law; in the it which inheres reasoning design Copiers consequences under federal law. should given urged place rights derogation not be the solicitor would be public the federal and the federal Federal trademark laws law nothing “public domain;” take in direct conflict. fact from the law rather, they give recognition implies the solicitor for- federal novel existing exists, e., interests, private pub- i. one feiture doctrine both and Society’s acceptance patent protection, lic. who seeks of law and or- depends not, der whether successful or forfeits all sound decisions. It will rights, by holding not be fusion, future trademark both under the advanced that con- deception federal law as well at common mistake and neces- law. are sary rights upon depend public prevent appellant Trademark order to ac- from ceptance allegedly extracting recognition, upon something not what from the applications “public patents for federal domain.” have been or who made made them. argument Perhaps the is that solicitor’s public It seems to me that there is a public “right” to be con- has in the interest trademarks manifested fused, recog- decеived, or that mistaken prevention confusion, mistake de- nizing narrow of trademark interest goods. Congress ception in the sale of confusion, preventing owners in mistake provided, by authority of the com- great deception is so an “evil” that Constitution, merce clause of for fed- sacrificing public interest is a small recognition eral of this interest price pay. It seems to me that con- n fusion in proven. when its Yet existence been unneces- cоmmercewould be an regulation provided of commerce as sary great price pay. by Congress through federal trademark purposely I have use of avoided prevent confusion, laws to mistake and “nonfunctional,” terms “functional” and deception ignored by is in effect presented I in this case. Instead solicitor. It seems me that the Su- heavily general have relied on a considera- preme Compco, Court in in ex- Sears tion of the basic interests involved in pressly relying policy on the federal un- argument. from conclude these derlying patents, require and must considerations that the federal yet task, arise, face the it policy underly- should laws and trademark laws are not in con- considering the federal Appellant flict. from is thus not barred ing trademarks.3 seeking protection federal what portrays appellant The solicitor’s brief public recognizes as a trademark. attеmpting something to extract *7 “public domain,” contrary appellant proven to federal As to whether public recognizes shape law. If the and ac- the container as a trade- serves cepts appellant’s mark, agree shape container I in a with the conclusions of sense, appellant seeks the court. It fed- does not seem to me that recognition public eral of that evidence submitted is either such public prоtected. weight appel- It is the is Of character or as to sustain may operate against competi- proof course this lant’s burden of on this issue. I potential competitors my tors and do who wish not rest on form conclusions appellant’s goodwill by copy- trade on of affidavit used. It seems to me that larger the container a much the sale of cross section of per- impression Certainly wines. mitting I see no valid interest needs to shown. very аlleged import minute class to create mark on the confusion, deception by copy- consumer, emphasis'on mistake or dealer and ing, merely thing copied impression because was latter patented sought patented shape, once to be container must be shown. Lunsford, Compco, Rep. 3. See The Protection of Pack- Sears 55 Trademark ages Containers, Rep. (1965). 56 Trademark 188 See also the authorities cit- (1966); comрare Leeds, Impact ed, supra, fn. 1. that the con- the fact fault with find no always in commerce associated
tainer “Mogen David” with the Such the container. a label affixed by provision required
marking is beverage Thus laws. federal alcoholic simply to a comes down issue here
the question met of whether proof that its to establish its burden identify its in fact container did shave regard I find the evi- In this
wines.4 con-
dence insufficient to show shape operates in a trademark
tainer distinguish appel- identify and
sense to of others.
lant’s wines from those reach-
I therefore concur in the result majority.
ed Milton Oscar SCHUR Rickards, Appellants, and James C.
v. MULLER, Appellee. Adolf
Paul Appeal
Patent No. 7735. Customs
United States Court of Appeals. and Patent 16, 1967.
Feb.
Rehearing April Denied *8 reg- Lunsford, supra, fn. 56 Trade- where containers have been See instances Rep. 572-573, Register. at for a review mark istered on