39 App. D.C. 535 | D.C. Cir. | 1913
Lead Opinion
of the Supreme Court of the District of Columbia, who sat with the Court in the hearing of the appeal, in the place of Mr. Justice Van Oes del, delivered the opinion of the court:
The appellant assigns, as reasons for the appeal, that the Commissioner of Patents erred in affirming the decision of the Examiner of Interferences; and that he erred in not holding said trademark to be used by others prior to and subsequent to its adoption by Kehlor Flour Mills Company; and that he erred in holding that there is no evidence of use of the mark by Jenkins & Hover prior to 1873; and that he erred in not holding that the Kehlor Flour Mills Company, by evidence of record in the United States Patent Office, had furnished evidence of the use of the mark by Jenkins & Hover prior and subsequent to the date of the adoption of the mark by said company; and that he erred in not holding that the Kehlor Flour Mills Company is estopped to deny use of the mark by Jenkins & Hover, prior to 1873; that he erred in not holding that Jenkins & Hover constructively abandoned the mark in 1878, and that said mark then became public property; and that the Sauers Milling Company, having established use since 1874, is entitled to continue such use, and to prevail in its opposition to the registration of the said mark. That he erred in not hold
Counsel for the appellant contend that their client was entitled to rely upon the statements of the appellee made under oath, that Jenkins & Hover began the use of the trademark “Brilliant” as early as 1868. That they are entitled to assume that fact from the pleadings in this case, and that there is nothing in the record to contradict it.
Assuming that to be true, they contend that the assignment, from Jenkins & Hover of the said trademark, to J. B. M. Kehlor, which was recorded in the Patent Office on June 25, 1878,. was invalid as an assignment, for the reason that an assignment of a trademark, and nothing more, being unaccompanied by tbe business or good will in which tbe trademark bad been used, is ineffectual for any purpose except to be evidence of an abandonment of tbe mark by tbe assignor.
Jackson Corset Co. v. Cohen, 38 App. D. C. 482.
This court held, in tbe American Stove Co. v. Detroit Stove Works, 31 App. D. C. 306, tbat tbe registration of a trademark under tbe old trademark law, which was declared unconstitutional, is nevertheless evidence of tbe use of tbe trademark by tbe registrant; and tbe fact of tbat use in tbis case having been alleged by tbe appellee repeatedly, under oath, and tbeir claims based upon it, it must be assumed tbat tbe opposer bad a right to rely upon tbat fact in tbis case.
If tbe trademark “Brilliant” was used as early as 1868, by Jenkins & Hover, and tbeir use of tbe same was not abandoned until 1878 by tbe assignment to Kehlor; and if no right to the use of tbe mark bad been received by Kehlor under tbe said assignment, then tbe appellee could have bad no exclusive right to tbe mark, or to have it registered under tbe application in tbis case, for tbe reason tbat tbe opposer was using tbe word “Brilliantine” as a trademark from 1874.
Tbe facts claimed to be established by tbe appellant would make tbe mark free property, after its abandonment by said Jenkins & Hover; and tbe appellee, not being tbe exclusive-user of tbe same, was not entitled to registration, and could not
Wo are disposed to think that the contentions of the appellant in this respect are well founded, and that said Sauers Milling Company has the right to assume the facts as stated in the answer of the Kehlor Flour Mills Company, and in its application herein, to be true, in the absence of anything in the-record to the contrary.
The purchase of the mill and other property by appellee’spredecessor, from Alex. H. Smith & Company did not include the trademark of said firm, if any it had, and therefore adds nothing to appellee’s title to exclusive use of the mark.
A second point strongly urged is that the word “Brilliant,”' which is the principal feature of this trademark, is not a word' that is entitled to registration as a trademark, because of its. descriptive character when applied to flour. The testimony shows that it indicates bright flour that shows up well, and is-of a superior quality, as distinguished from the darker brands; and that the bright flour is considered of greater value, and more sought after by purchasers than the darker brands.
The dictionaries define the word as synonymous with bright or splendid, and when applied to flour, the evidence, as well as-reason, would seem to indicate that it meant the bright, white product of the wheat flour, after the darker portions of the-grain had been removed.
This court has had many cases before it where trademarks have been denied registration, because they were descriptive of the quality or character of the goods on which they were to housed.
In one of the latest cases, Re Meyer Bros. Coffee & Spice Co. 38 App. D. C. 520, this court held that a trademark for coffee, which consisted of a representation of a loving cup, in. connection with the word “trophy,” should be denied registration, because the mark was descriptive of the goods, in that it indicated them to be of a superior quality, by reason of tile-presentation of a prize or “trophy.”
The word “standard,” as applied to phonographs (Re National Phonograph Co. 29 App. D. C. 142); the word “self-loading,” as applied to cartridges ( Winchester Repeating Arms Co. v. Peters Cartridge Co. 30 App. D. C. 505); the words “shredded whole wheat,” as applied to certain food preparations (Natural Food Co. v. Williams, 30 App. D. C. 348); the words “health food,” as applied to bread, crackers, etc. (Battle Creek Sanitarium Co. v. Fuller, 30 App. D. C. 411); the word “sterling,” as a trademark for ale, or for any other kind of goods (Worster Brewing Co. v. Rueter & Co. 30 App. D. C. 428); the words “circular loom,” as applied to conduits and coverings for electrical conductors (Re American Circular Loom Co. 28 App. D. C. 446); the words “ball bearing,” as •describing the goods on which it was to be placed (Re Schweinfurter Pracisions-Kugel-Lager-Werke Fichtel & Sachs, 38 App. D. C. 279); the word “crystal,” as applied to beer (Re New South Brewery & Ice Co. 32 App. D. C. 591); and the word “nextobeer,” as applied to malt beverages (Re Central Consumers Co. (32 App. D. C. 523), were all held to be descriptive of the goods on which they were to be used; and whether they are true descriptions, or whether they are deceptive, can make no difference with reference to their constituting valid marks for registration. They must either be true, or they are «deceptive, and would mislead the public, and for that reason would be refused registration.
Our review of the authorities, and consideration of this point, leads us to conclude that it was error not to hold the word '“Brilliant,” as applied to wheat flour, to be a word of description, and therefore not proper to be registered as a trademark. If it describes the flour of A as being bright, white, and of a superior or splendid quality, it must also describe the flour of B if of the same quality; and, being a word of description, any manufacturer of flour of the quality indicated by it has a right to use it.
We therefore conclude, on the whole case, that there is error
Concurrence Opinion
I concur in tbe opinion and judgment to tbe extent that “Brilliant,” as applied to flour, is descriptive.
Petition for rehearing denied Eebruary 10, 1913.