30 App. D.C. 411 | D.C. Cir. | 1908
delivered the opinion of the Court:
Frank Fuller, on December 2, 1905, filed an application for the registration of a trademark consisting of the words
This trademark was allowed as entitled to registration under what is called the “ten years’ clause” or proviso of sec. 5 of the trademark act of February 20, 1905, and publication was ordered and made as required by sec. 6 of said act. On December 16, 1906, the Battle Creek Sanitarium Company, Limited, of Battle Creek, Michigan, filed its opposition to the registration of the said trademark. The grounds of this opposition are substantially as follows: 1. The Battle Creek Sanitarium Company, Limited, is engaged in the manufacture and sale of food products, among others, of bread, crackers, wafers, sticks, and the like. 2. It is closely associated with the Sanitas Nut Food Company, Limited, which is largely engaged in the manufacture and sale of foods, opponent being the selling company for the foods manufactured by the Sanitas Company aforesaid. 3. That said companies use in their “advertising matter the words ‘Health Food’ or words of similar import, and have made use of the same for a period of about twenty-eight years last past.” 4. That it is believed that the registration of the term “Health Food” will interefere with the rights of the opposer and its associates in business. 5. That the words “Health Food” do •'not constitute a valid trademark because descriptive. 6. That the United States circuit court of appeals for the second circuit, in Fuller v. Huff, 51 L.R.A. 332; 43 C. C. A. 453, 104 Fed. 141, 145, has held that the term “Health Food” cannot be a technical trademark, because descriptive.
This opposition was demurred to by Fuller, on the following grounds: 1. The opposition does not state facts sufficient to •constitute a cause of action. 2. The opposition does not show in what manner the opponent would be injured by the registration of the mark. 3. That paragraphs 5 and 6 of the opposition, if true, would not bar the applicant’s right to register. 4. That the opposition is defective because the Sanitas Nut
The Examiner of Interferences overruled grounds 1, 2, and 4 of the demurrer, but sustained grounds 3 and 5. Without asking leave to amend the allegations of the opposition to which the said objections applied, the opponent appealed to the Commissioner. The Commissioner affirmed the decision, and denied the opponent leave to amend the opposition in order that it might allege the use of the trademark by it upon its merchandise. This objection was called to the attention of the opponent by the fifth ground of demurrer, and the appropriate time to ask leave to amend was when the Examiner of Interferences sustained that ground of the demurrer. When the case came before the Commissioner on appeal it was discretionary with him to allow or to refuse the leave to amend. Under the conditions stated, there was no abuse of that discretion, and we need not pause to consider whether such an amendment, setting up a new ground of opposition, would be equivalent to a new opposition, and therefore not permissible because the period within which opposition can be made had elapsed.
It is true, as contended by the appellant, that the words “Health Food” cannot be appropriated and registered as a technical trademark because they are clearly descriptive of the goods with which they are used. Trademark act, sec. 5. The right to register is claimed under the “ten years” proviso of the same section, which reads as follows: "And provided, further: That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors or by those from whom title to the mark is derived, in commerce with foreign nations, or among the several States, or with Indian tribes,
When an application for registration is made under the said proviso, it is the duty of the Commissioner to determine whether the applicant has brought his5 claim within its terms. He represents the general public interest in such matters, as he does in the case of applications for patents. If satisfied of the truth of the representations, as he was in the matter of Fuller’s application, it was his duty to order publication. Within thirty days after this publication, “any person who believes he would be damaged by the registration of a mark may oppose the same by filing notice of opposition, stating the grounds thereof.” Sec. 6. It is not sufficient for the opponent to say that he believes he would be damaged. He must allege some fact showing an interest in the subject-matter, from which damage might be inferred. If he has not used the mark as a trademark upon goods
There is no such allegation in this opposition. The allegation is that the opponent “uses in its advertising matter the words ‘Health Food’ or words of similar purport,” and has so used them for about twenty-eight years. No trademark right grows out of the mere invention or discovery of the word or symbol, but out of its use as such. Trade Mark Cases, 100 U. S. 82, 94, 25 L. ed. 550, 551. To constitute a trademark use, the mark must be attached or applied to the goods. Columbia Mill Co. v. Alcorn, 150 U. S. 460, 464, 37 L. ed. 1144, 1146, 14 Sup. Ct. Rep. 151. Property in it can only be acquired by the actual application of it to goods of a certain class, so that it1 serves to indicate the origin of the goods; that is to say, identify them with the particular manufacturer or trader, and to distinguish them from similar goods. United States v. Braun, 39 Fed. 775; 28 Am. & Eng. Enc. Law p. 346. The mere advertisement of the words or symbol without application to the goods themselves is insufficient to constitute a trademark. As this is all that was claimed in the opposition, the Commissioner was right in sustaining the demurrer to it on that ground. As this is sufficient to dispose of the case, it may be remarked of the paragraph setting up the decision of the circuit court of appeals, in Fuller v. Nuff, 51 L.R.A. 332, 43 C. C. A. 453 (104 Fed. 141), that the decree of that court is not pleaded as decisive of the question involved here; nor could it avail the opposition if it had been so pleaded. Fuller sued Huff, who represented the Battle Creek Sanitarium Company, apparently, not for the infringement of a trademark, but for unfair competition in trade, and obtained a decree against him. In discussing the ease, the court said that the words would not constitute a technical trademark, because descriptive; and in this it was undoubtedly correct. But the question of trademark was not involved, and Fuller, as we have seen, is not asking for registration on that ground, but under the “ten years’ clause” or proviso.
It is so ordered.
Affirmed.