206 F.2d 458 | D.C. Cir. | 1953
Lead Opinion
This is an appeal from a judgment of the District Court dismissing the complaint in an action instituted for the purpose of securing registration of appellant’s trademark “Breast-O’-Chicken” for canned tuna ’ fish.
For a proper understanding of the issues, a brief recital of the facts and a chronological resume of past proceedings are necessary.
In 1926, appellant’s predecessor in interest, the Westgate Sea Products Co.,
Finally, in 1948, after enactment of the Trade-Mark Act of 1946,
Appellant urges that the Patent Office erred and that the District Court misapplied the doctrine of res judicata when it failed to follow the two Ninth Circuit decisions on confusing similarity and relied instead upon the C.C.P.A. adjudication of that issue. But confusing similarity — or the lack thereof — was not even referred to in the second Ninth Circuit decision, and it was neither the ratio decidendi of nor necessary to the first decision, for the principal holding there, too, was descriptiveness. The C;C.P.A. so interpreted the decision and that interpretation takes on added plausibility from the fact that the Court of Appeals for the Ninth Circuit entirely discarded the similarity theory when it had another chance to pass upon the issues in 1932.
In any event, the "Circuit Court of Appeals never decided, never purported to decide, and had no power or jurisdiction to decide, that Westgate was entitled to register its mark. Under the statute, the duties of the C.C.P.A. in reviewing decisions of the Commissioner of Patents are quite different from those of the District Court or Circuit Court of Appeals in infringement actions. The jurisdiction of the former involves the question of the right to register, while the jurisdiction of the latter involves the right to use.
We realize that these decisions create a somewhat anomalous situation, in that Westgate’s mark is available for use but not for registration. But Congress provided for final adjudication of each of these issues by a different administrative and judicial process and the statutory scheme so prescribed may not be superseded by decisions in litigation over related but dissimilar questions.
The second principal issue raised by appellant relates to certain changes which are alleged to have intervened since the C.C. P.A. decision. We therefore must consider whether a change of such magnitude occurred in the law, in the applicable procedure, or in the facts and circumstances of the case during the period elapsed since the C.C.P.A. decision, as to make possible a re-adjudication on the merits of the issues adjudicated at that time.
Section 5(b) of the Trade-Mark Act of 1905, as amended,
Wesigate urges to the contrary that procedures now in effect differ from those applicable when the earlier case was decided and suggests that res judicata should not be applied because of that difference. While there is a considerable variance between the 1905 and the 1946 registration procedures, that variance again is not of such substantial and material character as lo preclude application of the doctrine. Under § 9 of the Act of 1905,
As for any possible change in the facts or circumstances, we are not certain that the issue is properly before this court, for appellant failed to object when Judge Letts struck the evidence introduced for the purpose of proving that there had been no actual confusion between the two marks. But to dispel any doubt as to our view, we discuss this matter briefly.
The conclusive effect of a judicial determination of the ultimate fact of confusing similarity should not be disturbed simply because some evidentiary facts from which the ultimate facts might have been inferred had not been considered or had been unavailable in the former proceeding.
We have considered the other points raised by appellant and we find no error. Our decision, however, is without prejudice to any application for concurrent registration under § 2(d) which appellant might wish to file in the Patent Office.
Affirmed.
. Since there is no material difference between the rights of appellant and those of its predecessor both will susbequontiy be referred to as Westgate.
. 33 Stat. 724 et seq. (1905), 15 U.S.C.A. § 81 et seq.
. Hereinafter referred to as Van Damp.
. Van Camp Sea Food Co. v. Westgate Sea Products Co., 9 Cir., 1928, 28 F.2d 957, certiorari denied, 1929, 279 U.S. 841, 49 S.Ct. 263, 73 L.Ed. 987.
. Van Camp Sea Food Co. v. Westgate Sea Products Co., 3 Pat.Q. 205 (1929).
. Van Camp Sea Food Co. v. Westgate Sea Products Co., 1931, 48 F.2d 950, 952, 18 C.C.P.A.,Patents, 1311.
. Van Comp Sea Food Co. v. Cohn-Hopkins, 9 Cir., 1932, 56 F.2d 797.
. 60 Stat. 427 et seq. (1946), 15 U.S.C.A. § 1051 et seq.
. And referring to its earlier decision, the Court of Appeals said that “[w]e there held that ‘Breast-O’-Chicken’ did not infringe the trade-mark ‘Chicken of the Sea’ for the reason that the word ‘chicken’ * * * was descriptive”. 56 F.2d at page 797. Derenberg, Trade Mark Protection, § 61, p. 693 (1936 ed.) comes to the same conclusion.
. Van Camp Sea Food Co. v. Alexander B. Stewart Org., 1931, 50 F.2d 976, 18 C.C.P.A.,Patents, 1415; Alumatone Corp. v. Vita-Var Corp., 1950, 183 F.2d 612, 37 C.C.P.A.,Patents, 1151.
. Compare Denver Bldg., & Const. Tr. C. v. N. L. R. B., 1950, 87 U.S.App.D.C. 293, 298, 186 F.2d 326, reversed on other grounds, 1951, 341 U.S. 675, 71 S.Ct. 943, 95 L.Ed. 1284.
. gee Van Camp Sea Food Co. v. Alexander B. Stewart Org., supra, note 10.
. 33 Stat. 725 (1905) as amended, 15 U.S.C.A. § 85(b).
. 60 Stat. 428 (1946), 15 U.S.C.A. § 1052(d).
. 33 Stat. 727 (1905), as amended by § 2(b) of the Act of March 2, 1929, 45 Stat. 1476 (1929), 15 U.S.C.A. § 89.
. As amended, 35 U.S.C.A. § 63.
. Rev.Stat. § 4911 (1875), as amended, 35 U.S.C.A. § 59a (1946).
. 1941, 74 App.D.C. 123, 124, 121 F.2d 897, 898, and see cases there cited.
. The principles of Hemphill Co. v. Coe, a patent case, are applicable to trademark cases as well.
. 33 Stat. 726 (1905), as amended, 15 U. S.C.A. § 86.
. 60 Stat. 432 (1946), 15 U.S.C.A. § 1062 (b).
. Compare Sunshine Coal Co. v. Adkins, 1940, 310 U.S. 381, 402, 60 S.Ct. 907, 84 L.Ed. 1263. And compare, generally, Southern Pacific Railroad v. United States, 1897, 168 U.S. 1, 48, 18 S.Ct. 18, 42 L.Ed. 355.
. The court said at page 952 of 48 F.2d:
“ * * * considering the similarity of the marks and other facts and circuirá stances of record, it would seem to be clear that the use by appellee of its trade-mark concurrently with the use by appellant of its trade-mark would cause confusion in the mind of the public * * (Emphasis supplied.)
. Hygienic Products Co. v. Huntington Laboratories, 1943, 139 F.2d 508, 512, 31 C.C.P.A.,Patents, 773.
. Celanese Corp. v. E. I. Du Pont, 1946, 154 F.2d 146, 147, 33 C.C.P.A.,Patents, 948. See also, In re American Fork & Hoe Co., 1944, 146 F.2d 510, 32 C.C.P.A.,Patents, 771.
. Compare In re Barratt’s Appeal, 14 App.D.C. 255, sub nom. Barratt v. Duell, 1899 C.D. 320 (1899); Taylor v. Marzall, 1952, 90 U.S.App.D.C. 350, 196 F.2d 592; Hemphill Co. v. Coe, supra.
. See Commissioner v. Sunnen, 1948, 333 U.S. 591, 596, 68 S.Ct. 715, 92 L.Ed. 898.
Dissenting Opinion
(dissenting).
I agree with all the reasons stated by Judge CLARK, except one, as to why the 1931 decision in Van Camp Sea Food Co., Inc. v. Westgate Sea Products Co., 1931, 18 C.C.P.A. 1311, 48 F.2d 950, is res judicata of the present case.
“ * * * nothing more than an opinion, the accuracy of which only the future might reveal. It was not a determination of an existing or passed fact or event, hut was of a speculative nature as to what was likely to subsequently occur. The issue here is not what may occur, hut what has actually taken place * * * ”
That case involved the right to use a mark, not to register it, as here, but the thinking of the court seems pertinent to the present problem. The purpose of res judicata, see Commissioner v. Sunnen, 1948, 333 U.S. 591, 597, 68 S.Ct. 715, 92 L.Ed. 898, is rendered no disservice by holding the doctrine inapplicable in the unique circumstances here presented, and where the “significant facts” have changed. 333 U.S. at page 599, 68 S.Ct. 715. Recurring litigation over the right to register the same mark, with no significant difference in the issues, must of course be avoided; and the mere availability at a later period of additional evidence is not enough to reopen a question adjudicated. But something more is here present. The public policy of those principles of the trade-mark law which are now before us is a continuing one requiring current administration. Current application of those principles calls for consideration of evidence of experience in the trade for the preceding twenty years, insofar as material to the question of confusion. I do not intimate how the question should he decided, only that it was open for decision notwithstanding the 1931 adjudication of the Court of Customs and Patent Appeals. If likelihood of confusion should now be found registration would not be authorized. On the other hand if such likelihood were not found no injury would be entailed by registration. The policy of the statute in cither event would be furthered.
The case is distinguishable on its controlling facts from Hemphill Co. v. Coe, 1941, 74 App.D.C. 123, 121 F.2d 897. Such cases as Chase v. Coe, 1941, 74 App.D.C. 152, 122 F.2d 198, and Taylor v. Marzall, 1952, 90 U.S.App.D.C. 350, 196 F.2d 592, where a decision of the District Court was sought in the same case after resort to the Court of Customs and Patent Appeals, are not in point. Of closer application is the reasoning in Sprague v. Woll, 7 Cir., 122 F.2d 128, certiorari denied, 1941, 314 U.S. 669, 62 S.Ct. 131, 86 L.Ed. 535. There the Interstate Commerce Commission had held that a certain interurban railroad line was not part of a general railroad system, an important holding bearing on the railroad’s obligations under the Railway Labor Act, 45 U.S.C.A. § 51 et seq. This decision was upheld by the Supreme Court. Thereafter the question was reopened by the Commission and decided differently. On review the Court of Appeals held that the Commission was not bound by the earlier decision of the Supreme Court. It followed that the reviewing court also was not bound.
In my opinion the appellant, plaintiff below, was not barred from a hearing and decision on the merits, that is, on the question of likelihood of confusion, notwithstanding the 1931 decision of the Court of Customs and Patent Appeals in Van Camp Sea Food Co., Inc. v. Westgate Sea Products Co., supra. I would reverse and remand.
. I agree with the position taken by the Commissioner of Patents in this court that dismissal of the complaint below was on the ground of res judicata, notwithstanding some ambiguity due to the fact that the court found and concluded that the mark “Breast-O’-Chicken” so nearly resembled the registered mark “Chicken of the Sea” as to be likely to cause confusion or to deceive purchasers. The court in the end struck out the evidence tentatively received on these subjects, ruling such evidence immaterial because of res judicata. Accordingly, the finding and conclusion of confusion are to be construed as based on the court’s decision that the issue had been adjudicated.