JANTZEN KNITTING MILLS v. WEST COAST KNITTING MILLS
Patent Appeal No. 2503
Court of Customs and Patent Appeals
Jan. 12, 1931
April 27, 1931
46 F.2d 182
The Primary Examiner hеld that the involved claims read word for word upon the disclosures in the patents to Grogan et al., and Hansgirg, due to the fact that the claims were not limited to the application of heat at the surface of the oil. He further held that were the claims so limited, they would not be patentable over the prior art, as the process of applying heat at the surface only was disclosed in the other references. He then said:
“* * * It is pointed out that Hansgirg expressly states that one of his objects is to prevent decomposition of oil. Outside of the fact that Adams relates to cracking, this patent also fully meets the claim. This patent along with the remaining patents go to show the wide application of surface heating аnd the same does not involve invention.”
In affirming the decision of the examiner, the Board of Appeals held that the patent to Peuchen disclosed the essential features of surface heating of oils; that, although Peuchen did not mention maintaining the oil under pressure or vacuum, this feature was well known in oil distillation; and that the application of the process disclosed by Peuchen to oil under reduced pressure or vacuum would not produce unexpected results. The board then said:
“* * * It is disclosed in similar relation in both Grogan and Hansgirg. In each of these patents is found a method of heating which appears to be equivalent in accomplishing all the results desired by applicant. They disclose heating means in the oil as distinguished from a furnace under the retort. It appears that they would avoid the objection of heating at the extreme bottom only of the body of oil. However, we are convinced that with the disclosure of the use of vacuum in the processes of Grogan and Hansgirg, no patentable novelty is involved in associating it with the surface heater of Peuchen.
“It is further noted that the claims may be construed of such scope that they read directly on Grogan and Hansgirg. None of the expressions ‘applying heat to the liquid at the surface thereof,’ ‘in close proximity to the surface,’ and ‘near the surface’ positively exclude also applying it throughout the body of the bath of oil. Grogan and Hansgirg apply heat at the surface or ‘at оr near the surface of the oil‘--page 3 of applicant‘s specification--as effectually as applicant.”
Counsel for appellant contends that, although the patents to Grogan et al., Hansgirg, and Adams disclose the process of maintaining a vacuum at the surface, and although the heat is applied to the oil “internally of the still,” it is, neverthelеss, applied “more or less throughout the entire body of the liquid from a point near the surface thereof to a point near the bottom of the still,” and that, although the patents to Sutton and Peuchen disclosed the process of applying heat at the surface of the liquid, the results sought and obtained in those disclosures were entirely different from the results sought and obtained by appellant.
Counsel for appellant has presented very plausible arguments in support of his contention that the involved claims are patentable over the prior art. However, upon a careful consideration of the record, we are of opinion that the tribunals below reached the right conclusion, and that, in view of the referencеs of record, the claims of appellant are not patentable.
For the reasons stated, the decision of the Board of Appeals is affirmed.
Affirmed.
JANTZEN KNITTING MILLS v. WEST COAST KNITTING MILLS.*
Patent Appeal No. 2503.
Court of Customs and Patent Appeals.
Jan. 12, 1931.
Eugene E. Stevens, of Washington, D. C. (Edward D. Jones, of Chicago, Ill., and Albert L. Jacobs, of Washington, D. C., of counsel), for appellant.
Albert J. Fihe, of Chicago, Ill., for appellee.
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
LENROOT, Associate Judge.
This is an appeal from a decision of the Commissioner of Patents affirming a decision of the Examiner of Interferences, dismissing an opposition filed by appellant against the application of appellee for registration of a trade-mark for bathing suits, comprising a representation of a girl attired in a bathing suit, cap, and shoes about to dive from a springboard into water. The notation “Hollywood” аppears over this representation, which notation, however, is disclaimed apart from the mark shown. The mark is used by appellee as a trade-mark for swimming suits.
Appellant claims prior use upon the same kind of goods of a trade-mark comprising a girl with arms and limbs extended, attired in a bathing suit, cap, and stockings, appearing to be in the air as in the act of diving. Apрellant further pleads ownership of three registrations, No. 193298, dated December 23, 1924, No. 194451, dated January 27, 1925, and No. 213637, dated June 1, 1926. In each of the marks here under consideration approximately one-half of the figure of the girl is covered by a swimming suit.
Both parties took testimony, and the Patent Office tribunals found that appellant adopted and had continuously used its mark from a dаte over a year and a half prior to the earliest date that appellee alleged adoption and use of its mark. This was conceded upon the argument of the case before us. The goods upon which the marks are used are identical, and the only issue before us is whether or not the marks of the respective parties are confusingly similar within the meaning of
The Commissioner, in his decision affirming the decision of the Examiner, said:
“The opposer has shown large expenditures in advertising, the creation of a large business in connection with which its mark has been used and, presumably, is in possession of a valuable goоd will as an asset to its business. It being the first in the field, doubts, if any exist, in accordance with the usual rule, must be resolved against the late comer.
“The specimens showing the actual use of the applicant‘s mark indicate the bathing suit to be of a different color from that adopted by the opposer. It is in evidence, however, that the applicant in some instances uses rеd or orange as the color of the bathing suit exhibited in its mark. The opposer usually employs red as the color of the swimming
suit as well as the cap and stockings shown upon the figure. To this extent, there is some similarity in the two marks here under consideration. It must be noted that the respective representations of the figures in the two marks are quite dissimilar. There is nothing in the position of the figure of the applicant‘s mark which suggests the very unusual attitude or position of the figure of the opposer‘s mark. It may be truly said that both represent a diving girl but beyond this, except as to the color above noted, the similarity ends. Unless it can be held the opposer is entitled to the broadest possible interpretation of its trade mark rights in connection with the representation of a female figure wearing a bathing suit and in the act of diving, or even in the position preliminary to making a dive, opposer can not succeed in the instant case. It is in evidence, applicant‘s record page 19 and exhibits 7 to 13, that the pictorial representation of a girl clad in a swimming suit has been used by others before either of the instant partiеs entered the field. It may be said that such a representation could not be appropriated in any event as a trade mark for such goods since such a representation would be merely that of the goods themselves in the position in which they are ordinarily used and others engaged in this same business would have a right to so illustrate their goods. These facts, therefore, lead to the conclusion that the differences between the particular representations of the girls and their positions are such that confusion in trade would not be likely. Only in a broad sense can both marks be said to represent a diving girl since in one instance, that of the opposer, the girl is in the air, and in the other instance, that of the applicant, the girl is standing up upon the end of a plank or board.”
Appellant contends that the Commissioner erred in refusing to give a broad interpretation of its trade-mark rights in connection with the representation of a female figure wearing a bathing suit and in the act of diving, and insists that, as it was first in the field to use a diving girl as a trade-mark for swimming suits, it is entitled to the exclusive use of such representation as a trade-mark for such merchandise. If appellant is correct in this contention, the decision of the Patent Office should be reversed.
The first question, therefore, is whether appellant is, as a matter of law, entitled to the broad interpretation which it claims for its trade-mark. It will be observed that its trade-mark consists of the figure of a girl in the posture heretofore stated, clad only in a swimming suit, with cap and stockings. Appellant concedes that appellee has the right to adopt as a trade-mark the figure of a girl upon which to illustrate its swimming suits, but contends that no figure of a diving girl can be lawfully so used because of its prior rights to the exclusive use of such figure.
We do not think that appellant has a right to monopolize the figure of a diving girl clad in a swimming suit. It is a well-settled principle of trade-mark law that a mere representation of the merchandise on which the mark is used cannot be adopted as a trade-mark. Bristol Co. v. Graham, 199 F. 412 (C. C. A.); Ex parte American Paint & Color Co., 4 T. M. R. 40.
The reason for this rule is that such a mark indicates nothing in the nature of origin or ownership of the articles to which it is affixed. In Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S. Ct. 270, 273, 45 L. Ed. 365, the court, discussing the nature of a trade-mark, said:
“The term has been in use from a very early date, and, generally speaking, means a distinctive mark of authenticity, through which the products of particular manufacturers or the vendible commodities of particular merchants may be distinguished from those of others. It may consist in any symbol or in any form of words, but as its office is to point out distinctively the origin or ownership of the articles to which it is affixed, it follows that no sign or form of words can be appropriated as a valid trade-mark which, from the nature of the fact conveyed by its primary meaning, others may employ with equal truth and with equal right for the same purpose.”
A representation of the goods themselves may, however, if incorporated with other features of a mark which are sufficiently arbitrary and distinctive as in themselves to indicаte origin or ownership of the goods to which they are affixed, be adopted as a trade-mark.
An illustration of such a mark being allowed registration is found in Ex parte Cooper Underwear Co., 130 Ms. Dec. 325, 9 T. M. R. 525, where the mark consisted of the representation of a woman sitting upon a couch, having a wrapper draped in such manner as to reveal in part the knitted undеrwear which she wears, a child, also dressed in knitted underwear, sitting beside her, while another, similarly clad, stands upon one foot on the opposite side. The woman is represented as reading from a book. The
“If applicant‘s picture were merely a picture of its underwear, it would be clearly unregistrable. But it is an arbitrary, artistic arrangement of details in which the illustration of the goods is only one of many features. The couch, the woman reading from a book to the two children, convey an idea distinct from the underwear, and while any manufacturer is entitled to illustrate his underwear garments per se, he is not entitled to monopolize the arbitrary matter in applicant‘s picture, and there is enough of this matter to take this mark away from a mere representation of applicant‘s goods.”
In Ex parte Thompson Piano Mfg. Co., 130 Ms. Dec. 311, 9 T. M. R. 523, a representation of a grand piano and a woman standing by the piano polishing the same was granted registration as a trade-mark for furniture polish; the Commissioner of Patents holding that there was sufficient arbitrary matter to warrant allowance of the mark.
In Ex parte Scholl Mfg. Co., 130 Ms. Dec. 113, 9 T. M. R. 321, a mark for instep arch supports, consisting of a perspective view of the underside of a foot supported on a mechanical arch, held in turn by a hand, was refused registration upon the ground that it wаs descriptive.
As heretofore observed, the swimming suits appearing upon appellant‘s and appellee‘s marks both cover approximately one-half of the respective figures of the girls. We think it is clear that the only ground upon which either is registrable is that it has such distinctive elements that its registration does not in fact preclude others manufacturing similar goоds from illustrating the same upon girls in a diving, swimming, or any other general position in which a girl clad in a swimming suit would ordinarily be seen; the only limitation upon such manufacturer would be that he would have no right to illustrate swimming suits made by him upon the figure of a girl, employing in such representation arbitrary features which had theretofore been adopted by another as a trade-mark, or so closely resembling the same as to cause confusion in the mind of the public.
We hold, therefore, that appellant‘s trade-mark rights are limited to the figure of a girl in substantially the position shown in its registered mark, and not to the figure of a diving girl generally.
We think that the representation of a diving girl wearing a swimming suit is generic in character, and the registration of such a representation as a tradе-mark cannot exclude others from using any representation of a diving girl wearing a swimming suit, but only from using the representation of a diving girl in substantially the same position and posture as that shown by its mark. The test of similarity producing confusion is therefore not whether the two marks represent diving girls, but whether the appearance or position which gives to appellant‘s mark its exclusive right has been so nearly simulated by appellee in its mark as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers.
Applying this test to the two marks in issue, we are clear that the resemblance is not such as to prevent registration of appellee‘s mark. We think no purchaser would confuse the posture of a girl with arms and limbs extended, as in the act of diving through the air, with the posture of a girl standing on a diving board with her arms held back as if about to spring or dive into water. We may add that the diving board adds further distinctiveness to appellee‘s mark.
The decision of the Commissioner of Patents is affirmed.
Affirmed.
BLAND, Associate Judge (dissenting).
I cannot agree either in the conclusion reached or the reasoning employed in the decision of the majority, for the reason, chiefly, that it permits the registration of appellee‘s trade-mark, when, to me, it is obvious that confusion, within the meaning of the trade-mark statute, will result. The opinion of the majority seems to rest chiefly upon the rights existing between the parties, and takes no consideration of the public‘s rights with reference to confusion.
If the diving girl trade-mark of appellant is a valid one and entitled to registration, it would seem that appellee‘s trade-mark should not be registered for use on goods of the same descriptive properties, since the trade-marks so nearly resemble each other as to be likely to cause confusion or mistake in the mind of the public and will deceive purchasers. If the trade-mark of appellant is invalid, it ought not to have been registered, and of course the same applies to appellee‘s trade-mark which so nearly resembles it.
The effect of the majority holding will probably be that trade-marks of many different kinds, representing diving girls, in bathing suits, in slightly different postures, will be registered, resulting in conditions which Congress sought to prevent.
HATFIELD, Associate Judge, concurs in the dissenting opinion.
SEPPMANN v. RODEN et al.
Patent Appeal No. 2538.
Court of Customs and Patent Appeals.
Jan. 12, 1931.
Bair & Freeman, of Des Moines, Iowa (W. P. Bair and Will Freeman, both of Des Moines, Iowa, of counsel), for appellant.
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
HATFIELD, Associate Judge.
This is an aрpeal in an interference proceeding from the decision of the Board of Appeals affirming the decision of the Examiner of Interferences awarding priority of invention to appellees, John J. Roden, Paul W. Quinn, and David C. Roden.
The alleged invention relates to an automobile brake-testing device.
Count 3 is illustrative of the five counts involved in the issue. It reads:
“3. A brаke-testing device adapted for application to a vehicle wheel and comprising a primary lever, a secondary lever pivoted to the intermediate portion of said primary lever, grapple-acting bars pivoted to said primary lever at different points, and a spring scale applied between said primary and secondary levers and serving to indicate force applied to said secondary lever in a direction to rotate the wheel, said grapple-acting bars at their free ends being engageable with the exterior of a wheel tire to which the device is applied.”
Appellees filed their application on March 5, 1924, and a patent was issued to them on January 23, 1925.
Appellant‘s application was filed on January 19, 1927.
Appеllees, relying upon their filing date, submitted no testimony.
Considerable evidence was submitted by appellant in an effort to establish conception and reduction to practice as early as July 8, 1922.
Appellant testified that he owned and operated a garage on his farm near Lake Crystal, Minn.; that for many years he had been engaged in inventing various kinds of new and useful tools and apparatus for use in con-