*1 appellants’ answering brief.) In this 53 CCPA COMPANY, Inc., CUMMINS ENGINE unnecessary contention, we find it Appellant, analysis an undertake of the differ- v. Keating patent ences between the CONTINENTAL MOTORS CORPORA- Hays application, or to determine TION, Appellee. Hays whether is dif- “invention” No. 6961. Keating ferent invention. appellants’ patent- Since contention United States Court of Customs ability filing based on the of the termi- Appeals. and Patent obviousness, nal disclaimer assumes § May grant 103 is an absolute of a bar patent. (357 289) F.2d at agree Ap Court of
We
peals Hays that a terminal disclaimer rejection
will obviate a for obvious prior
ness view of the art under 35 pre
U.S.C. 103. That situation is not §
sented here and the solicitor’s reliance Hays misplaced.
on the decision is The here, however, present
facts a case in filing disclaimer,
which of a terminal permitted under section is effec rejection only
tive overcome a based patenting.
double The different chemical compounds respective defined in the Smith, J., dissented. claims are different inventions. The specify claims these differences thus
do not define the same invention. In re
Siu, supra. summary, where there are in separate inventions,
fact each of which patentable prior
is considered over the other, patent
art absent a re
jection patenting based double can
be obviated of a terminal
disclaimer under U.S.G. assignee. be filed a common foregoing,
In view of the the decision
of the board is reversed.
Reversed. Judge
KIRKPATRICK, (concurring). opinion logical this case reasoning
extension the Court Robeson,
in In re 331 F.2d 51 CCPA Kaye, and In re 332 F.2d
CCPA 1465. The rationale of those requires
cisions reversal of the board’s present and,
decision in case only,
reason coftcur. I
893 granting Reg. petition to No. cancel 629,304 “TURBODIESEL,” for issued 19,1956 Regis Supplemental June on the ter for internal combustion parts and Engine thereof.2 Cummins (Cummins) owns the mark. parties competitors in the are com- manufacture and sale of internal igni- compression bustion of the type, namely, engines, tion particularly diesel an ex- supercharger. haust driven Con- turbine petitioned tinental- for cancellation of registration grounds, Cummins’ on alia, “turbodiesel,” inter that the word composed individually generic from (in words “turbine” “diesel,” “turbo”) “incapable of properly denoting origin manufacture, of sig- and is therefore without trademark (petitioner-ap- nificance.” Continental alleges pellee) also that “turbodiesel” “generically descriptive” been used as type engines prior of such of to December 20, 1954, alleged by the date of first use respondent-appellant Cummins in the registration. trademark While the main issue is whether here distinguish- “turbodiesel” is ing thereby barred from under section 23 George Hibben, Chicago, 111., N. Fran- Act, 1946 Lanham Trade-Mark 15 U.S.C. Thomas, Jr., C., Washington, cis D. D. presented pre- § are we appellant. liminary issue which of Nims, Whitman, Halliday, Howes & documentary properly exhibits can be Collison, City (Walter York Halli- New J. considered us in resolution of the day, Buchanan, William H. York New main issue. City, Hauke, Southfield, Mich., Robert C. application Cummins’ initial counsel), appellee. February 17, sought registration RICH, Acting Principal Register. Registration on Judge, Before Chief was refused the examiner MARTIN, ALMOND, SMITH ground merely mark was Judges, Judge KIRKP WILLIAM H. scriptive. Following final refusal and ATRICK.* just prior expiration to the time Judge. MARTIN, appeal, appellant sought to to regis- application appeal amend the to convert to This is an decisions Supplemental Register, Trademark Trial and Board1 tration Judge (TT&AB 1962), United States District for the Senior on re Pennsylvania, (TT&AB Eastern District of des- 144 USPQ consideration ignated participate place of Chief WORLEY, pursuant provisions Judge 294(d), Proceedings 7,118. States Section Title United No. Cancellation Code. pursuant paper to then Rule 13.5. The the Trademark Act of 1946 seeking amend, signed only by 1092], U.S.C. [15 attorney, 22, 1955, was filed December unnecessary We find it to decide that being apparently delayed but within the arguendo issue since we assume the cor- Office, given May was a date of 22, 1955, yet rect date to December sign- 1956. A conversion amendment remaining prior find in the exhibits *3 by applicant (appellant) ed was also sub- in the record abundant evidence indi- January 5, prosecu- on mitted 1956. The cating in the mark issue is proceeded tion in course due with issu- distinguishing appellant’s goods, pursu- registration by ance of the followed the ant to section 24. proceeding cancellation and a board rely primarily We the (fully reported USPQ 557), cision at Wagnalls 1935 Funk & New Standard timely appealed that was to this court. Dictionary “turbine,” definitions of its board, upon consideration of evi- “turbo,” “diesel,” and of up May 17, 1956, held, dence inter “Flight” magazine and March 1953 a alia, descriptive that “as the common article, reproduced all of which are particular name for a kind or class of reported, the board’s decision as engines, ‘TURBODIESEL’ falls within USPQ view, at 557. In our the defini category words, symbols the and de- tions alone indicate that “turbodiesel” subject vices are not to exclusive by convey a word which its nature will appropriation it, as trademarks” and specific meaning a and correct which is therefore, granted petition the for can- such that it cannot become a trademark cellation. origination as a result even of and first Subsequently prosecu there was much Bick, use. See Scholler Bros. v. Hans C. history concerning tion which conversion Inc., USPQ (Com’r Pats. appellant date Ap is to be accorded.3 “turbodiesel,” it, The term as we see is a pellant dropped attempts has all to be composite natural form for a class of February 17, 1955, accorded the date of engines engines into which to which it would have been entitled had recognize fall. We that original application conformed to then applied by appel which the term has been registration Rule 13.5 as sufficient plus diesels, lant are not turbines but register to which converted. The exhaust driven tur argument is over whether the December superchargers. However, bine it January 5, 1955 or 1956 date is the required precisely the name describe date, consequently conversion and wheth and define the in order to in be er we are to consider an additional two capable registration under section 23. having falling exhibits dates between De “turbodiesel,” naturally We think to be January cember and 5. adequately and nominative urges having proper December 1955 as super chargers. date, stating: * * * “Flight” maga- In March Despite ruling a to the con- specifically zine referred to the names
trary by the Commissioner of Patents “turbo-C.I.” “turbo-diesel” (Supp. 25), Appellant Tr. believes that question raised the as to which name regis- the effective date applied compound- would be to a “Nomad 22, 1955, tration should be December engine,” ed as follows: which would remove these two exhibits yet given by No class name has been [advertisements Waukesha Motor compounded engine employing to the Nomad the term “TURBODIE- —in (which time such names as turbo-C.I. consideration under See- SEL”] decision, USPQ same result as that 557 as This includes a board second January up decision, pursuant that, based evidence available to a reconsideration, of the Commissioner court, on remand from this came to leading therefor, apply Commissioner article) is used in our or turbo- * * * diesel, registration. approval. find to cancel such hearing before If is found after a it engine pictured The Nomad and discussed registrant was not the Board that “Flight” magazine engine is a diesel register mark at entitled to performance with a turbine. Its registra- application for of his time compared turbojet, turboprop with a a thereof, the mark is not or that piston engine, comparative registrant or has been used given. statistics are We view that use abandoned, shall be exemplary the term “turbodiesel” as * * canceled the Commissioner. expressed above, the view we have Appellee competitor appellant recognized that such term would be as a clearly it will reason to believe composite designating natural term for damaged required by to the extent stat- engines. such *4 ute. following cases, the We consider Appellant complains also that it among others, support our herein: to view term, has made use of this extensive has 843, Bailey Co., 102 26 re F.2d In Meter large spent money promoting in sums of 1136; Bailey Co., CCPA Ex Parte Meter goods its and that it uses this term in 1952); USPQ (Com’r Ex Pats. 93 179 promotion connection with its and ad USPQ parte Bailey Co., 93 385 Meter vertising. Appellant further states it (Com’r 1952); Bailey Pats. Meter v. spent approximate estimates it that has Watson, F.Supp. (D.C.D.C.1954); 122 627 ly $400,000 promoting in “TURBODIE parte Blond, USPQ (Com’r Ex Le 98 416 advertising. SEL” in trade With parte Co., 1953); Pats. Ex The 12 Texas matter, agree reference to this we USPQ (Com’r 1932), and Schol Pats. stated, the board wherein it Bros., supra. ler We do not find the at 560: term here to be such deviation from a ** respondent And while has usage unitary natural an unusual or com made extensive use of this term and registration, permit bination as to in expended large promoting in sum to in contrast the terms In re Ada Mill its in connection with which ing Co., 315, 1076, F.2d CCPA used, this term has been the Court in Corp. Corp., and Alumatone v. Vita-Var Company Weiss Noodle v. Golden 612, 183 F.2d CCPA * * Specialty Company, Cracknel and questions the also [48 CCPA 290 F.2d right appellee petition can to of USPQ 411]; presented when with a appellee mark cellation of this because argument, aptly similar stated “While using was term as not the a trademark always distressing it is contemplate doing so, comtemplate al nor did it money a situation in which has been leging these circumstances that under promotion invested in a in the mis- appellee damaged. We had been not taken rights belief that trademark of provides think the statute being created, value are merchants act standing proceeding. in this cancellation peril at their attempting, ad- states, pertinent part: Section 24 vertising, descrip- convert common 1092). Supple- (15 names, belong Sec. 24 U.S.C. tive public, register pub- mental not to their own exclusive use”. —Marks opposition lished —Cancela- For above we affirm the reasons the of decisions the board. * * * any person be- Whenever Affirmed. damaged by or lieves that he is will be SMITH, Judge (dissenting). reg- of a mark on this any time, upon litigated payment ister he at The issue here is whether prescribed of present fee record mark “turbodiesel” stating distinguishing petition ground incapable appel- a verified was majority goods. am unable to see how Trade-Mark Act I lant’s supported (15 in its result the authori- sections U.S.C. §§ cases, Bailey su- ties cited. The Meter composite The mark “turbodiesel” pra, for boil- decided that “Boiler Meter” “turbine,” its from the terms derived er meters was the name the device “turbo,” and of “diesel” registrable. therefore Scholler registered supplemental and was “Nylonized” Bros., supra, was held it that register for “internal combustion for the with an emul- treatment fabrics parts The mark has been thereof.” nylon signifi- sion of trademark lacked applied to cance. These cases do not to be seem type superchargers germane on the issue here. accessory supercharger an increase diesel en- effectiveness basic majority therefore dissent from the I gine. decision. Considering dictionary definitions “turbine,” “turbo,” “diesel,” alone,
appellee clearly fail must burden proof registered composite distinguishing ap- term is goods.
pellant’s composite mark, terms,
coined as it is from the above *5 not the common name for either goods registered for which it or the goods upon which 53 CCPA mark is used. Application of Leonard EDGE. “Turbodiesel,” considering the defini- majority, conveys tions relied on No. 7618. meaning of a turbine combined with United States Court of Customs a diesel. There even a hint in this Appeals. and Patent supercharger combined term that a ele- 5,May ment is involved. matter, majority IAs view and the agrees, appellee’s case or falls stands bearing meaning
the evidence my opinion, contrary mark. majority’s conclusion, it falls short of establishing that the mark “turbodiesel”
was the common name for diesel
having type superchargers. produced The evidence by appellee discharging falls far short seems to me to
what burden proof proceeding. in this The evi- appellee
dence relied on establishes the term was used as a trademark nearly
and in a trademark sense in all majority opinion
instances. I be- treating
lieve errs in the use of the term in this manner as the common name product. Manifestly, when the mark capitalized and identifies
goods, description an accurate technical J., re- Kirkpatrick, coupled dissented need not be with each rejection of claim use the mark. versal