This appeal is from a two-to-one decision of the Trademark Trial and Appeal Board rejecting appellant’s applicаtion, Ser. No. 14,417, filed August 22, 1956, to register a mark on the Supplemental Register.
The mark sought to be registered is illustrated, by a copy of the application drawing, in the published opinions of the board at
The goods enumerated in the application are “Safety Paper Products, including checks, bank money orders, identification cards, birth certificates, passports, export licenses, merchandise coupons, stock certificates, operators’ licenses, and gift certificates.”
In addition to the drawing, there is a verbal description of the mark which reads, “The trademark consists of a rеpeating pattern of green parallel lines having overlapping offset portions, substantially as illustrated in the accompanying drawing. Thе drawing is lined for the color green.” It should be added, as can be seen in the drawing, that the so-called parallel lines consist of units in the form of shallow elongated step shapes about 21,4" long wherein a central jog, which slopes upwardly and slightly to the right, is about ^4" long. These units are arranged in an interlocking parallel pattern which is employed in use to cover the entire back surface of the safety paper prоduct, a fact which has given rise to the controversy in this case.
The application was originally for registration on the Principal Register, an amendment asserted reliance on section 2(f), 15 U.S.C.A. § 1052(f), and finally *599 the application was Converted to ask for registration on the Supplemеntal Register. Notwithstanding the statement on the conversion amendment, as it appears in the record here, that it was “not entered,” the boаrd treated the application as one for registration on the Supplemental Register and we shall so treat it. 1 The sole issue is whether thе mark sought to be registered is “capable of distinguishing the applicant’s goods” under Section 23 of the Lanham Act, 15 U.S.C.A. § 1091.
The majority of the board affirmеd the examiner’s rejection which, it stated, was
“on the ground that what is presented for registration is not capable of distinguishing applicant’s goоds since (a) it is functional, and (b) it is a surface decoration or ornamentation rather than an identifying symbol or device distinguishing applicant’s goоds in a trademark sense.”
On point (a), functionality, the board appears to have disagreed with the examiner but failed to take decisive аction on the point. The board said:
“It is not entirely clear from the record that the design presented for registration performs any real utilitаrian purpose or function or that it was adopted for that purpose, so this ground of refusal requires no comment.”
The solicitor’s brief suggests that this point has, by the foregoing, been “removed from consideration by this Court.” This may indicate a disposition not to rely on it but we think this ground of rejection shоuld be disposed of with finality. We agree that the design- — or more accurately the “mark,” which is in the nature of a design — does not perform any utilitariаn purpose. We do not feel we are precluded from passing on it. We think that this ground does call for comment and our comment is that it is without substance and is reversed.
' Türnin'g to ground (b); the" board quoted first from the opinion of this court in the 1940 case of In re Burgess Battery Company,
Neither of those cases, so far as the decisions therein are concerned, is directly in point as the Burgess case was prior to the Lanham Act and concerned with an application to register under the 1905 act and the Swift case involved an application to register on the Principal Register of the 1946 act. In the present case wе have to reflect only on the question whether the pattern sought to be registered constitutes a mark
capable
of distinguishing applicant’s goods, not whether it does in fact or even whether it is a “trademark.” If it is a mark which can indicate source or origin, then ground (b) of the rejection must be reversed. In re Simmons Co.,
The board, in its reflections, cited an early 1917 decision in Ex parte Todd & Co., 122 Ms.D. 482, wherein it was the view of Commissioner Clay that what was appаrently the same design or mark involved here was ornamental, was a safety device, was not distinctive, and hence was not registrable under the 1905 Act. He said, “the eye or attention cannot get a hold on it, nor the memory retain it.” This the board adopted as its own view, giving it as the reason why the mark is “not capable of distinguishing.” We cannot agree.
It may well be that the casual observer, unsophisticated in the non-functional de *600 tails of sаfety paper products by which they can be recognized, instantly, as the product of one manufacturer or another, would not regard thе mark sought to be registered as an indication of origin. But once he has been told, we do not have the slightest doubt that from that moment on he will recognize the paper bearing appellant’s green staggered parallel unit design as a Todd product. This is true with respect to most words; signs аnd marks by which intelligence may be communicated, of language itself and all forms of symbolism. Until there is a body of people who understand the meаning of any “mark” the mark is meaningless. One of the most ancient forms of the trademark, the silversmith’s hallmark, is meaningless except to those who have been made aware of the fact that it indicates origin. So with the mark at bar. Those who have learned that it indicates origin are able to recognize origin by means of it. The record shows-that some people do so. It is therefore- capable of distinguishing applicant’s-goods, of indicating their origin. We are, therefore, unable to sustain the only ground of rejection on which the board relied.
In the instant case, moreover, we express complete agreement with the views of the dissenting member of the-board, who pointed out, inter alia, that the record here shows that it has long been the practice in this industry to utilize distinctive over-all surface designs-to indicate origin of safety-paper products and to advertisе that they are intended to do so. The fact that they incidentally serve to ornament a paper surface does not necessarily dеstroy their ability to indicate origin.
The decision of the board is reversed..
Reversed.
Notes
. It does not appear that reference to Section 2(f), which is not appropriate to a Supplemental Register application, has ever been deleted. This technical detail remains to be attended to in the Patent Office upon termination of this appeal.