*1 equitable, or generally were not fair and purposes of
not effectuate the calculated to “It must As the observed: Act. court Emergency Price remembered that the imposed upon
Control Act Administra- stabilizing
tor the Herculean task
price great nation and of do- structure of speed
ing unprecedented so under
immediate inflation. think threat of We Adminis-
that under such circumstances the
trator the re- judged is entitled to be subjected
sults his acts and not to be
retrospectively judicial in the calm of the
study hypercritical appraisal to a rea- which, steps by
sonableness of each of the emergency, acts the stress of the upon.”
were decided complainants proofs not show do regulation generally was invalid
establishing prices types the same for all shipments
of sellers of direct from the
mills to consumers.
Complainants herein not have sustained regulations
the burden of that the proving
here generally under attack fair were equitable, they nor have established action or conduct the Adminis- arbitrary capricious.
trator was complain-
The remaining contentions of
ants, aspects directed con- considered,
troversy, have been but we have they
come conclusion that are not require
meritorious and do not further dis-
cussion in our determination of the case. foregoing, accordance with the
judgment dismissing will be entered
complaint. (Patents)
35 C.C.P.A. E. PONT & CO. I. DU DE NEMOURS OF CELANESE CORPORATION AMERICA. Appeals No.
Patent 5360. Appeals.
Court of Patent Customs and
April 2, 1948. O’CONNELL, Judge, dissent- Rehearing April Associate Denied ing.
485 ”; with in accordance said trademark’ Aniline agreement, American license said time to Products, Inc., “published from 1935, run- year time, beginning in the 1943,numer- ning through year at least matter, ad- such advertising displays ous of following vertising appearing in the namely:- others), periodicals (among —(cid:127) Dyestuff Drycleaner,’ ‘American ‘American Washington, Mack, Stone, Boyden of & ‘Cotton,’ Month- Reporter,’ ‘Rayon Textile Washington, Boyden of (J. D. Hanson ” C. Colorist,’ ad- ly,’ and in such and ‘Textile C., appellant. for counsel) D. vertisements, dyestuffs un- offered featured Seltzer, both of I. W. Levinson C. prod- “Celanese”; said der name City, York for New advertised ucts trade-mark were under said Aniline Prod- product of American GARRETT, Presiding Judge, Before Inc., any reference without ucts, HATFIELD, BLAND, JACKSON, orders appellee; it filled the way O’CONNELL, Judges. Associate dyestuffs placed on such received for Judge. HATFIELD, Associate bearing dyestuffs labels can- appeal in This is an a displayed as the source its own name proceeding the decision of shipped celation such goods “Celanese” and U.S.P.Q. Patents, directly purchasers; the Commissioner goods labeled 258, Examiner affirming decision longer “Celanese” no served the trade-mark appellee’s therefore, granting motion of Interferences appellee and to denote appellant’s petition cancel “Celanese,” applied dismiss the trade-mark “Celanese,” appellee’s registration of dyestuffs, as a trade- has ceased function has, smaller “Brand” enclosed in registration the word mark; appellee’s with and that “Celanese,” letters within the term invalid. and is therefore, been abandoned dyestuffs. on alleged, in order to es- Appellant further trade-mark, Appellee’s registration injured No. tablish that it itself deemed 16, 1924, 189,399, registered September trade-mark, was registration of 20, February registration Act of under the Trade-Mark on its appellee had relied 1905, seq., appli- appellant’s on an proceeding against U.S.C.A. a cancelation § 15, 1924, April 365914, American cation mark “Ze- registration filed for the No. Manufacturing pro- Cellulose & Chemical Com- cancelation lan” reasons of which which, Limited, by change of name pany, “grievously been har- ceeding appellant has later, injured.” Corporation the Celanese seriously became rassed and otherwise America, corporation organized under the appellant’s filing of Subsequent to the regis- of the State of Delaware. laws cancelation, appellee, No- petition on 16, 1944, September tration renewed was 10, Rule 1944, filed a motion under vember Corporation of America. Celanese Proce- Federal Civil Rules 12(e) 723c, 26, appellant, 1944, dure, following E. On October I. du section U.S.C.A. Company, Pont de Nemours & filed its furnish with requiring appel- petition reg- for cancellation of statement a further better istered in which it was claimed Attached to motion lant’s claims. 1935, April April had entered into dated Corporation license with Ani- non-exclusive American Amer- between Celanese Inc., York, Inc., Products, New Aniline Products, line New American ica and “ A, York, company together granting latter to the ‘a Exhibit with designated as employ copies said two advertisements of trade photostat non-exclusive dyestuffs’ appearing mark in connection ‘the publish advertising Dyestuff matter —in of the American in Volume —to dyestuffs, April and in with the sale of Volume Reporter connection Drycleaner designated of Novem- effect that right granted time has not respectively referred herein ber each provided motion B. and C. terminated as in Clause as Exhibits *3 under agreement”; this that notice of the agreement be- quoting Without entire fact was that “Celanese” trade-mark appellee Aniline Prod- tween and American registered by appellee should be and owned ucts, Inc., it is that American stated therein advertising matter indicated in all such Products, Inc., Aniline desirous sell- was advertising and that before such ing dyestuffs “Celan- under the trade-mark published to was should be submitted it ; acknowledge it and agreed ese” that “to appellee that approval; and validity” of hereby acknowledge the does provided agreement, it is Clause 6 of the “Celanese,” the trade-mark and “further that termin- agreement may be anything agrees that it will never do or ated by appellee notice months six any way the trade-mark “Celanese” “in use” writing party. the second to appellee in infringe rights” stated in the trade-mark. It is further B, published by American Exhibit Aniline that American Inc., Products, appears that Aniline Products, granted “a Inc., non-exclu- was merely used to trade-mark “Celanese” was sive, personal license” and non-transferable type particular or indicate to the employ “in “Celanese” quality dye. dyestuffs and other connection with Exhibit Ameri- is an advertisement of C Products, product”; that Aniline American Inc., Products, which it stat- can Aniline Inc., appointed was as one ed, dyes among things, other Celanese affixing agents purpose “for the labels might properly purpose be in- used for the bearing” the “Celanese” tended. “packages containing dyestuffs”; that said 1944, 24, appellant, On November Products, Inc., agreed to American Aniline response appellee to the motion filed “only dyestuffs such manu- labels attach Rules of 12(e) Rule of the Federal long right only factured it and so as the Procedure, acknowledged exist- Civil terminated as granted herein has not been A, C, B, ence of Exhibits and provided agree- in Clause 6 under to, and referred stated that there were ment”; “Nothing and herein contained other advertisements similar Exhibits construed to mean” Ameri- shall be particularly andB referred to and Inc., C Products, “has the sole can Aniline of an advertisement the American copy and exclusive use” the trade-mark Dyestuff Reporter July reserved the “Celanese” and apparently bill attached the to its same appoint and to other use said trade-mark however, particulars. advertisement, That agents to use the same. substantially does not differ from Exhibits appears from further the license to, B C, hereinbefore referred agreed agreement that the trade- was does not indicate that American Aniline employed be mark should Products, Inc., trade- owner of the Products, designate only Inc., “to Aniline mark “Celanese.” quality up dyestuffs shall such ap- standard or to such be fixed 1944, appellant On December moved proved by part of the first party petition to amend its for cancellation purpose ascertaining allegation for the the adding thereto that Ameri- Products, Inc., dyestuffs,” quality said can Aniline know- “shall representatives approval through agents ledge such of appellee, “issued designate, inspect have the distributed to the color trade books time, illustrating dyestuffs ‘cards’ from time such various shades of test ‘Cel- dyestuffs they sale”; being anese’ offered colors or which were before are offered, color books or Inc., might ‘cards’ bear- ing only the name American publish advertising in circulars or Aniline Prod- Inc., ucts, dyestuffs source of with the sale the ‘Celanese’ “to connection dyestuffs displayed described therein” and designed that such effect dyestuffs. name as a “Celanese” its own source of the by” the trade-mark “until such by the facts in the to which granted instant The motion to reference was amend appellant will hereinafter made. Examiner of Interferences in which January until appeal, Patents On the Commissioner requested ap- particulars to furnish the affirmed Examiner of the decision of the to. pellee’s referred motion hereinbefore support deci- Interferences and in of his an Appellee, 1944, filed on December sion cited the cases of Smith Dental additional motion under Rule 12(e) al., supra, and Products Procedure, to re- Civil Federal Rules of App.D.C. Republic Metalware bill an additional quire to file The commissioner referred also particulars. cases of Pharmacal Macmahan *4 Co., Cir., Mfg. F. 30, 1944, appellant, in re- Denver Chemical On December Mayer of Fertilizer & sponse motion a bill to second for Junk Co., App. photostat copies Virginia-Carolina Chemical particulars, attached two “cards” of covers of color books or D.C. original from stated further books that of unnecessary It is recite all that we photostats attached
which the had in the commission- the statements contained made, might either Room be examined say is sufficient to that er’s decision. It Wilmington, Building, 7090 of the Pont du it that one he stated that was well settled Delaware, of National or in Room 866 with- assigns his with or who Building, Washington, Press D. C. which it has been' out with the business photostat copies The two attached to used, that a license abandons but his colors particulars of to Celanese bill refer naked license to agreement, merely not pub- purchasing do indicate to the but not use, expressly reserves the licensor where owned lic that the trade-mark “Celanese” is of the mark right continue the use to Products, Inc., but Aniline American provides agreement that license and which suggests colors rather that Celanese by the agreement may terminated particular quality. are-of a regis- of its is not licensor, an mark. tered therefore, in The sole issue the facts as stated is accordance with bar, clearly appears In the case at cancelation, appellant’s petition whether for agreement license that licensee from the any containing not record other dye on such agreed the trade-mark to use notice, judicial is we take only quality and as were stuffs cause of in ac- sufficient to state a action approved might fixed or the standard Trade- cordance with section 13 licensor, might, by the the licensor and that 20, 1905, February Act in view Mark representatives, through agents its have peti- to dismiss the motion right inspect arid test time to cancellation, particu- tion for the bills made the licensee. time the lars, and exhibits attached thereto. agreement provided, further The license noted, Interferences, that the licensor re as hereinbefore in a Examiner cited, use said opinion, in served the lengthy which he rather others, agents appoint non-exclusive for among cases of F. Prichard E. American Cir., thereof; that Aniline Co., Brewing Consumers use al. v. Co. et Socony-Vacuum Inc., validity Co., Products, acknowledged 136 F.2d Oil Mfg. U.S.P.Q. appellee’s registered Atomol Inc. v. trade-mark and Inc., anything way Dental Products it would not do Smith Cir., appel al., appellee. held infringe rights petition provided for cancelation might lant’s should be further agreement that it appellee by giving accordance with dismissed be terminated six decision, writing to dis notice the licensee. motion. In his the examiner months Hollingshead tinguished nothing of M. is license case R. There Davies-Young Soap Co., appellee 121 F.2d its indicate that had abandoned Patents, C.C.P.A., dyestuffs. for from the mark On the é88
contrary, clearly appears the that Exhibits B do not state that C only it retained not registered trade-mark “Celanese” use, ownership full but its owned appellee, and to that extent trade-mark, subject Ameri- Inc., American Products, Aniline violated manufacture Aniline agreement. can the terms of license appellee’s dyestuffs in accordance view of the fact that filed a quality required by and standard dismiss, that, acknowledged motion at obvious, therefore, the license least as to C, Exhibits B and agreement, not a naked license Products, Inc., por- Aniline violated that and that abandoned its However, agreement. tion license purview within the of section 13 of alleged petition there no statement 20, 1905, February Act Trade-Mark for cancelation that either argued appellant. by counsel anyone else deceived the failure of cancellation, petition Products, Inc., It is noted com- contrary ply stated, portion with that of the terms of the agreement, agreement. Furthermore, Prod- American Aniline there is ucts, Inc., not, allegation instanc- no did least in some at other terms of *5 es, comply wtih the contract fully the terms of were not carried out dyestuffs parties agree- that it under the advertised its each of the to the license “Celanese,” apparently as trade-mark the ment. dyestuffs,
source of such without reference appellant Counsel for has cited several any way object cases to primary the effeot that the particulars its When it filed bills of a origin, trade-mark is indicate as by appellee, product well as the motions particular accordance of a trader appellant C, appellee, having referred to Exhibits and and that B entered into a agreement, conforming voluntarily hereinbefore set has forth, to license divested as mark; allegation itself its of the use of the that Aniline Prod- exclusive ucts, Inc., appellee register that the mark though advertised its could not and, trade-mark there- “Celanese” was its own. view of the license failed, however, fore, It has abandoned the mark within the introduce into the purview record other advertisements Amer- of section 13 Trade-Mark Products, 20, Inc., differing February Act of ican-Aniline sub- stantially C, B Exhibits herein- relied on One the cases to, referred the right before but reserved appellant counsel for of M. Hol that R. to introduce evidence of'other advertising lingshead Corp. Soap Co., Davies-Young contrary it claimed was to the con- supra. opposition That case involved an tract, if advertising specimens were proceeding parties between ato con later discovered. appellee opposed tract regis in which We have examined Exhibits B and at-C tration mark appellant. “Whiz” to tached to motion under appeared Rule It that in that case had Federal 12(e) Rules of Civil Proce- entered into contract with dure, opinion are that neither relinquished voluntarily which it ex its any way exhibits indicates in those that upon clusive to the use Aniline Products, and, was the grit paste soap reasons there owner of the trade-mark “Celanese” and the in stated, was not entitled exclusive only importance appearing and, therefore, in use of the mark not entitled dyes those exhibits is register the Celanese same Trade-Mark quality 20, therein referred indicated February Act of 1905. It is true that were manufactured American Aniline in q.uoted our decision in that case we That, we Inc. per- think had a Competition from Nims Unfair fect to do and that Trade-Marks, such advertising Edition, 22, Third section “ * * any way indicate 68, does not page A lease or license abandoned, or reg- apart intended its abandon of a mark business with used, istered “Celanese.” It is which it true constitutes an abandon- ” 7, 45 L.Ed. No Eisner U.S. S.Ct. so.’ rightfully ment of the [179 Milling Star effect.’ quoted support cases were cited in 60] [Hanover Metcalf, S.Ct. 240 U.S. significant if statement. 60 L.Ed. interpreted liter- quoted be 713.] statement should ally, it is decisions hereinafter contrary to governs . aban- “The rule that intention appears cited. statement A similar donment, disputed. conduct is is not When Competition Trade- Nims on Unfair to retain consistent with the intention Marks, 22, page Edition, Fourth section un- rights, acts which when support cases cited are explained might are abandonment establish However, ex- author’s we have statement. proof there affirmative answered in- amined all of the Federal cases there up give never was an intention to they point. volved and are not in find that claimed, is not established.” “Nevertheless, The author also states that: quotation state- That that is an accurate may a trade-mark or trade name be seriously chal- ment of the cannot be law subject lawful and valid license lenged. support were cited in there- Cases may lease, legally ‘A even sold. of. name, trade-mark, trade like It well settled owner of that the assigned, long as it remains associated a trade-mark to another product with the same or business with long agreements so others as such which it become associated not merely agreements. naked See * * * mind. And same Holt, Menendez v. 128 U.S. *6 lent, may conditions licensed be or 143, 526; Corpora S. 32 Bacardi Ct. L.Ed. exclusive use its its be resumed al., tion of America v. Domenech et 311 according owner the terms lend- ” 150, 219, 98; U.S. 61 S.Ct. L.Ed. 85 Shav ing.’ Cir., Co., er et Heller & 8 al. v. Merz author, called is also in Attention the 821, Republic F. Mathy L.R.A. v. 22, page 123, a footnote sec- to section supra; Co., Metalware Saalfield Co. Pub. 408, stated, 1264, page tion re- where is Co., Cir., et al. & v. G. C. Merriam lating abandonment, 1;F. and E. F. Prichard Co. al. v. Con “ property ‘Abandonment in industrial is Co., Brewing supra. sumers origin- which an act the domain In the case of Smith Dental v. Products ally possession enters or into the re-enters Co., al., court, Inc., et supra, among the thing (commercial name, the or mark things, other there said F.2d : 146] [140 sign), by legitimate the will of the owner. “Again upon defendant relies authorities The essential condition to aban- constitute Metcalf, such as Hanover Star Mill Co. v. donment having the one supra U.S. 36 S.Ct. 60 L.Ed. [240 dispossession. should consent to the Out- 713], Drug and United v. Theodore Rectan- side of this there can be no dedication of us, supra U.S. S.Ct. 63 L.Ed. [248 right, the because there cannot aban- which, 141], judgment, in our are not con- in juridical donment of the word.’ sense trolling. This is so for reason that in results in a Abandonment forfeiture and case instant defendant’s use was defin- proved, strictly must be and the burden itely agreements limited between upon of its establishment af- party parties. In none authorities relied firming it. upon by defendant has it been held that the owner of a loses such own- purely question “Abandonment ership by grant the mere to another of the intent. privilege its use.” Supreme “In Court said that Mathy Republic case of v. Metal rights, like others ‘trade-mark that rest supra, ware clearly recog court user, by abandonment, may be lost non- proper that a license was nized valid. usfr, acquiescence. laches or Abandon- ment, sense, upon in the strict rests Mayer an in- It is the case of true Fer- abandon; purpose Virginia-Carolina tent to and we have no tilizer Co. v. & Junk Co., supra, authority qualify of Saxlehner v. Chemical court stated that assigned, “A trademark or subject cannot be its nowise appeal matter of the licensed, use except to a license proper incidental trans involves the issue that a fer of the property business in connec indicate does valid and and, owner, tion with used” part on support quoted statement, cited the since from the outset case of Macmahan Pharmacal v. Den Pa- proceedings begun heretofore ver Co., supra, Mfg. prosecuted Chemical consistently in which tent Office has petition case sole that where principle issue was whether the naked basic assignment of valid, manner as the trade-mark was is used mark in no and the court as an properly significance held that there a cause lose mark pub- mark assigned apart could not to deceive the indication good others, business and lic, will of the owner authorize owner thereof the mark. who are Accordingly, in its those including statement subsidiaries Mayer the case of independent, legitimately & completely Fertilizer Junk Co. Virginia-Carolina supra, produced under goods Chemical words, the court wrong saying, or, was supervision as the control issue presented, was not effecting its that a trade-mark abandonment. could without legally not be without a licensed transfer agree- By specific terms of the property good the business ment, Corporation was the Aniline thereof, holding will in that and the case to act “personal license” was proper connection to a pur- “for the appellee’s agents “one” of contrary case decisions bearing trade- pose labels” affixing Republic Co., supra. Metalware containing the packages Celanese Although the of Crown Fabrics product, manu- dyestuffs, no other said Corp., American Viscose by it sold to factured “Aniline” C.C.P.A., Patents, 701, is not ex- public. further contem- point, approve rule actly it does appellee’s mark plated use of additional *7 proper license valid and appellee might agents” as “other by such part does not indicate abandonment on the purpose. appoint for same or the owner of the the mark. Corporation, the was to have The Aniline cite other that we cases unnecessary publish in cir- to right account its own on support holding of our that a trade-mark advertising culars and other registration licensed in accordance be by the trade- dyestuffs designated were license hereinbefore with the 'itself, and, ap- Celanese, protect opinion, therefore, set forth. We are of such right all pellee reserved .veto stated, for the reasons matter, which advertising circulars and not its mark has abandoned under appellee and submitted were first be of the of Feb- Trade-Mark Act section 13 prior cir- approved writing to the by it unnecessary, 1905. It ruary there- Appel- and distribution thereof. culation fore, applicability consider the that we further specifically reserved lee 5, 1946, July Trade-Mark Act of effec- of “Ani- inspect quality time the at seq. U.S.C.A. 1051 et July tive 15 § marketed line’s” and to terminate the license Celanese, name stated, reasons hereinbefore For the writing.” months notice in “upon (6) six of the Commissioner Patents decision is, accordingly, be affirmed. should court, evidence before is no There however, none and there was before Affirmed. Office, these the Patent tribunals of appellee, actually rights were exercised BLAND, during sat Judge, Associate n no no appellee filed answer took resigned argument of but before rely solely upon elected testimony but prepared. opinion was to dismiss. its motion O’CONNELL, (dissent- primary issue therefore involves Judge The Associate elementary raised question sole ing). 491 conclu- not constitute registration pleadings whether does be- to abandon has an intent sive evidence of is invalid mark Celanese name, his own by- mark, reserves where the licensor because that come abandoned use of concurrent to continue the described reason nonexclu- with conduct in connection and the license by the thereof, longer subject con- termination performance no sive and opin- ap- prevailing whereby goods of court in the licensor. This a means stitutes that decision. goods of pellee distinguished approved and ratified be ion has by other vendors the same class marketed quote the important to It is deemed Act 1905. provisions of the under the provisions of the text of the well-known appel dismissal of examiner in his are here which sections of 1905 of the Act noted, prim petition, lant’s relied will important to note it is involved, but Republic Mathy v. arily case of sections 5 and addition sections App.D.C. In Company, 151. Metalware bearing on the have a act cited, among he addition to issue. others, Dental Prod Smith the case of in mind in the en- Congress had What al., Cir., F.2d 140. ucts was the clear actment of sections 2 and 5 reaching the identi- commissioner prohibit regis- and obvious intent case; upon Mathy cal relied conclusion to de- of a calculated tration quot- support position his but further respect ceive the opinion in the excerpt from the ed the goods by reason fact accurately quoted al- case which is Smith applicant registration have the did not opinion, and to which prevailing so use of the mark on to the exclusive objection has offered no descriptive properties goods of same applicable to statement of the law correct application registra- at date of his recited in the case. facts Smith Brothers, Inc., Laskin F.2d tion. In re correctly of Patents The Commissioner 32 C.C.P.A. Patents Crown Fab- rule of evidence that stated established Corporation rics Viscose Cor- assigns his an owner who the action of poration, 246, C.C.P.A., Patents, goods another for enactment of section Con- apart descriptive properties, same gress provided existing in effect that an has been the business with which the mark registration not become aban- used, thereby the abandonment effects upon request by doned shall renewable mark; proof whatever of his registrant or his successors in interest. required further clear intent to do so is *8 However, appellee whereby the action of person alleging from the such abandon- divested voluntarily itself of the to ment, assignment is “because the conclusive apart the of its exclusive use mark from the his intent aban- [assignor’s] of to evidence business with which mark the has been don.” used, and caused the to mark be used Appellant has here con- contended goods, another on identical constituted an identical rule of tends that the evidence of pur the mark within the applies one who likewise licensed to view of section 13 the Act of 1905. R. mark, upon holding the his and-relies to Hollingshead M. v. Davies-Young Hollings- court in the that effect this Co., Soap C.C.P.A., F.2d 121 28 Pat case, supra, upon head other citations ents, 1292; Co., Everett O. Fisk & holdings to the same effect courts Inc., Agency, Inc., al., Fisk Teachers’ v. including throughout nation, the Su- 7, 9; Cir., Robbins, F.2d 8 3 & McKesson preme Court the United States. Phillips Co., Charles H. Chemical Cir., 1011; 342 appellant’s 2 53 F.2d commissioner overruled Chas. H. The Phillips ground contention on the one who Chemical v. McKesson Rob & his without 285 U.S. 52 bins, licenses mark business S.Ct. L.Ed. Publishing Photographic been used does also with which the mark has 942. See thereby Publishing not abandon the and that Ziff-Davis o. C 1014; Patents, C.C.P.A., Mathy re F.2d In is identical involved in the with that 302, C.C.P.A., Son, Mathy supra.” La Monte & in the F.2d The situation Patents, et al. case, F. Prichard Co. with that essentials, E. in its is identical Cir., Brewing Consumers not with involved but the Smith case those essentials instant case. involved present The examiner in case found situation in those two cases each of least,” instances, “that in a at in the court number of discloses equity had during Inc. not marketed merchandise the exist- complied contained in with the condition ence of the license had but the respect giving with to notice one origin source of in the licensor and no ownership person, advertisements of was used the mark of the point, mark Celanese. On this public, such manner as deceive the to examiner held by appellee’s failure and that those rendered two decisions were licensee to specific observe that accepted condition accordance rule of enlarge that, “could licensee, not well against law his the owner limited of use the licensee such does not lose owner- trade-mark agreement.” ship by grant privilege of the the mere licensee in con- the use of the mark point, On same the commissioner business when nection with owner’s “Contrary held: provision latter goods produced supervision under his of the agreement, appears situation exists control. No such the licensee has advertised the frequently at bar. mark respondents without reference ownership, respondent’s referring ap- without Commissioner Patents proval. properly seems me cases But that this con- the Smith nothing of those stitutes stated in his decision that “In each more than a breach of part licensee, contract cases it was held that a license from which original proprietor did hardly be said work an abandon- use a abandonment, ment not and the exclu- rights by respond- result ent, rights sive licensor restored or to evidence intent were an to abandon.” (Italics quoted) termination the license.” making the commis- rendering In such a statement decisions tribun- those consider, however, als sioner that in entirely ot the Patent Office overlooked failed licensor, predominant restoring frequent court fact held that agreement by appellee’s each of those two breach li- cases produced goods under the owner’s constituted a were censee series acts each and supervision control, ap- properly likely all of would be deceive the plied origin that a trade-mark order goods. This law doubly true-in the case bar be a valid at because one must indicate “Celanese” is not goods particular trade- only vendor and that in a appellee’s corporate but also assigned or its mark cannot be use licensed Moreover, complete- those apart name. decisions from the business with which *9 disregarded ly the admitted fact at mark is used. portion advertising least a of such mate- Appellant here, Office, in the Patent as by Corpora- rial was circulated the upon asserted authority and relied of period years of tion over a with “the know- Plollingshead case. With reference approval” of ledge and appellee thereto following submits the criti question of appellant event such adver- in appears cism its brief: “The tising, important, as while an element granting of to believe that mere of li a deceit, controlling in itself of in- cense constitutes of is an abandonment mark, fluence herein. The tribunals quotation of the Pa- and on relies to that conception had the Hollingshead Corp. tent false that effect in Office R. M. v. Dav case, in the ies-Young Soap the situation instant as ex- 28 C.C. examiner, plained by P.A.Patents, .pointed “in its essentials is out that required purport possession acknowledge of and was not this is merely dictum de- by an which was in the mark of the case exclusive decision a respondent [appellee]; than the and the of between cided on the a contract basis Hollingshead case and parties directly in the doctrine enunciated in M. involved R. Soap Co., supra, is Davies-Young with a third contract not on the basis of a upon bearing present case. therefore have no deemed to as is involved party fully question respondent’s [appellee’s] shows of Examiner Interferences The (R. 30). registration.” decision of this the irrelevance $* *» ignored decision examiner That appellee fact conceded the out- from case Hollingshead basic in the issue set, had that it no to the exclusive existing appellant’s validity was the use of the mark under the trade-mark, agree- virtue thereby granted had its con- forth, raised there ment therein set goods. current use another for identical court, opposition proceeding. The in an “ * * * Appellee in its brief here states opinion, might have properly in the stated present case, In the was not en- appealed from that affirmed the decision stop titled to mark trade alone, thereby required that ground since was a Aniline, can- decided in a the issue be deferred and license.” provided by section proceeding as celation connection, Act of 1905. The In this it will Trade-Mark be noted however, rely court, elapse was not content to months must six the actual procedure upon appellee’s the issue terms of the before decided merits, that case intent on its had been could done to terminate possibly take by the tribunals of the Patent Office. effect. varied, quoted principle crit- While the -facts reference
With applied by refusing nowhere of icism noted law court in registration a the the contended or evinced belief that of the mark in the La granting proper applicable an cited is constitutes Monte hereinbefore present has it re- in the abandonment of the nor case to effect that the quotation lied “on the effect” the exclusive use of trade-mark is to that indicate Hollingshead case, quotation origin, there is no when the mark dis- loses feature, quotation tinguishing in that case. that effect That an in- considered pertinent Furthermore, together mark. with other facts valid the Fisk case opinion cited, presents prevailing case are recited a state quite herein. similar to those in in- facts case, upon stant the basis of a court effect, correctly court held, there competent authority wide accumulation decision, a unanimous that a license held that a trade-mark case, use, present as in the of mark for may be inferred circumstances evi- other, apart particular product, and on a dencing the intention owner to dis- had with which the mark the business continue the distinctiveness of used, constituted an abandonment of indicating origin. Furthermore, rightfully so. Appellant also asserted invalidity relied case, present Hollingshead authority proceed- as in other cases by appellant challenged ings begun bas- on the heretofore the Patent Office. parties between the direct- The commissioner stated a contract reference agreement. ly of such involved two citations: *10 of the in the “Petitioner cites Macmahan irrelevance decision Pharmacal Mfg. Co., Hollingshead by no has been Denver case Chemical F. means v. by Examiner of which C.C.A. shown Interferences the Court anjmne Appeals Columbia, decision District of else. examiner’s agreement Mayer Virginia- case was that in the instant Fertilizer & Co. v. Junk “* * * Co., App.D.C. parties does not Chemical between the Carolina following cited, state- 1905 and 399, quoted the authorities hereinbefore C.B. appellant prevail obviously ment: was entitled to in the proceedings begun “ it had heretofore assigned, or ‘A trade-mark cannot he ap- ground Patent Office on the except its as incidental to a licensed, pellee’s mark has abandoned. become property in transfer business or of the opinion compe- The prevailing no cites been which it has used.’ connection with authority any tent constitutes valid which license, “The latter did involve case expressed (he basis for conclusion therein however; interesting to and it is note to the Hol- effect that the doctrine two the decision was rendered less than lingshead point case on the here in issue Mathy months decision in the after merely and should overruled. dictum case, supra, by were written and that both because, That is an erroneous action in ad- opinion judge. And in the same dition to what has been hereinbefore stat- taken, quoted was language which the it ed, Hollingshead the doctrine of the case properly as dictum.” be characterized accepted prin- is based the universally noting thus interest that the In de- ciple in such- is used the mark where Mayer was cision in the rendered less manner as to cause lose months after the decision than two the significance origin as an indication of Mathy opinions were case and both written public, -to deceive use effects the judge, commissioner failed the same registra- abandonment of the and its judge wrote note that who both Appellee by tion should be canceled. opinions applied the same doctrine in his own has established the existence admission disposition quot- he of the case that bar, of the in the case at same situation ed from the Macmahan Pharmacal Co. principle and in accordance with that effect, Moreover, court, case. has cited, under authorities hereinbefore question applied recently the doctrine the decision of the of Pat- Commissioner assignment which no a case in was in- ents should of that be reversed. view Brothers, Inc., Laskin volved. In re See unnecessary conclusion, it is deemed to dis- supra. points cuss herein other which questionable has held in number of cases prevailing opinion. have been made registration that the of an invalid or aban- 5, 1946, July With reference to the Act doned cannot be maintained taken force and effect since against proceeding party a cancelation decision rendered the Commissioner injured subject who deems himself Patents, that, my contrary view injury further the maintenance such appellee’s contention, provisions of sec- registration. Photographic See applied 5 of the new tion act not be Publishing Publishing Co. Ziff-Davis v. subject appeal ap- matter of the supra; Corp., etc., Plough, Penetrene pellee’s benefit, application since such C.C.P.A.,Patents, Inc., 121 specifically provided not otherwise for in Robbins, McKesson & required 46(a) ; the act as section Phillips supra; H. Chemical Charles equitable principles estoppel that the Hollingshead Davies-Young R. M. applied acquiescence, as analogous co., supra. Soap situation the Fisk case cit- hereinbefore ed, applied by should be the court to the Therefore, since mark admit- appeal subject of the for the bene- longer tedly serves to indicate appellant against fit of appellee, solely in described injured is deemed For the reasons stated, and since provisions registration, decision Commissioner of Patents of section Trade-Mark Act of should reversed.