32 App. D.C. 348 | D.C. Cir. | 1909
delivered the opinion of the Court:
The word “asbestos” is clearly descriptive of the goods manufactured by each party. Being descriptive, its registration as a trademark is prohibited by the statute. It is therefore open to use by the public at will, subject, of course, to such limitations as may be imposed by the courts in cases involving unfair ■competition.
The opposer in this case is not attempting to secure registration of the word for himself. Claiming to have used it as a tradename prior to its adoption by the applicant, and to have built up a considerable trade in his goods, he opposes its registration as an exclusive trademark, under sec. 6 of the statute, as a “person who believes he would be damaged by the registration.” If registration be allowed, it becomes prima facie evidence of the applicant’s ownership of it as a valid trademark, under sec. 16 of the act, in any action which he may institute against the op-poser or others who may use the word as a general tradename for similar articles of goods. Having used the word as such a tradename, although not entitled to ownership of it as a trademark, we think it is permissible for the opposer to make opposition to the registration by the applicant. Kentucky Distilleries & Warehouse Co. v. Old Lexington Club Distilling Co. 31 App. D. C. 223, 228.
We come now to the question whether the registration applied for amounts to the registration of the word “asbestos” as the trademark, or as an essential feature of the trademark. The Examiner of Interferences and the Commissioner
We have recently affirmed a decision of the Commissioner denying registration to a trademark showing the figure of an eagle, with the words “Oriental Cream” printed above it, and described as “Oriental Cream associated with an eagle holding a scroll in its beak.” “Oriental” was held to be a geographical term prohibited by the statute. Be Hophins, 29 App. D. C. 118. The figure of the eagle was as conspicuous in that case as is the figure of the ass in this; and the words descriptive of the nature of the goods were printed above it, so that it was in no wise obscured. There was no suggestion that, because the figure was registerable, the words could be treated as merely accessory. When an applicant describes and illustrates his trademark, and applies for its registration as so described, the Commissioner must likewise consider it in its entirety. We are of the opinion that, in this case, he should have denied registration as claimed, giving the applicant, at the same time, an opportunity to amend by disclaiming and omitting the word objected to.
For the reasons given, we must reverse the decision sustaining the demurrer to the opposition. It is so ordered, and that this decision be certified to the Commissioner of Patents.
Reversed.