263 F. 643 | D.C. Cir. | 1920
Lead Opinion
This is an interference involving the right of Hudnut to obtain the registration of the word “Nara” as trade-mark for toilet articles such as talcum, sachet, and face powder. Phillips had registered the word “Nyra” and Mack the word “Myra” as marks
It is clearly established that Hudnut adopted the mark in question in September, 1914, and used it continuously thereafter. Phillips claims May, 1914, as the time he commenced the use of the mark. In that month he had no established place of business, but made some sample boxes of toilet powder, placed upon them the mark here involved, and then forwarded them from New York, through the house for which he was then working, to three dealers in goods of that character, one in Texas, one in Philadelphia, and one in New Orleans. The boxes were sent without previous request by the consignees, and the price paid for each was 5 cents, the usual sale price of such an article being about 50 cents. No other use of the mark was made by him until 1916. The Assistant Commissioner held that this was not “a bona fide business transaction — was not doing business on Phillips’ part, and was a mere laying basis for the filing of his application for registration, and created no trade-mark rights in Phillips.”
“The trade-mark recognized by the common law is generally the growth of a considerable period of use, rather than a sudden invention. * * * The exclusive right to it grows out of its use, and not its mere adoption.” Trademark Cases, 100 U. S. 82, 94 (25 L. Ed. 550); Macmahan Pharmacal Co. v. Denver Chemical Mfg. Co., 113 Fed. 468, 472, 51 C. C. A. 302; American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281, 287, 43 C. C. A. 233, 50 L. R. A. 609.
According to an authority cited by the appellant, the trader must apply the mark to a vendible commodity and “must actually put the commodity so marked on the market.” Nims on Unfair Competition and Trade-Marks (2d Ed.) § 216. In the light of these authorities we are persuaded that the Assistant Commissioner was right in holding that the use made by Phillips of the mark does not satisfy the statute. This being so, Hudnut is entitled to priority over .him.
The decision of the Patent Office is reversed, in so far as it relates to the action of the Examiner on Hudnut’s motion, and is affirmed in all other respects.
Modified.
Concurrence Opinion
(concurring in part). I concur in the ruling sustaining the decision of the Patent Office in awarding priority to Hudnut. However, Phillips having appealed to the Commissioner from the basic decision of the Examiners in Chief awarding priority to Hudnut, and the Commissioner having sustained the decision appealed from, it is my view that the Commissioner properly canceled the Phillips registration. The Commissioner’s decision, which this court sustains, definitely and finally determined that Phillips had no claim to the mark, and hence no right to register it. Just why Hudnut should be required to go through the .idle ceremony of filing an application to have the invalid registration canceled is not apparent to me, since such a proceeding can have but one result; the question already having been determined in the other proceeding.