Rand McNally & Company v. Christmas Club, Patent Appeal No. 6248.

• Decision Date: 29 March 1957
• Docket Number: Patent Appeal No. 6248.
• Citation: 242 F.2d 776
• Parties: RAND McNALLY & COMPANY, Appellant, v. CHRISTMAS CLUB, a Corporation, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

242 F.2d 776 (1957)

RAND McNALLY & COMPANY, Appellant, v. CHRISTMAS CLUB, a Corporation, Appellee.

Patent Appeal No. 6248.

United States Court of Customs and Patent Appeals.

March 29, 1957.

John Rex Allen, Jules L. Brady, Chicago, Ill., Francis C. Browne, Washington, D. C. (Schroeder, Hofgren, Brady & Wegner, Chicago, Ill., Mead, Browne, Schuyler & Beveridge, Washington, D. C., of counsel), for appellant.

Eugene T. McQuade, E. C. Sanborn, New York City (Tompkins, Boal & McQuade, Fish, Richardson & Neave, New York City, of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON (retired), Associate Judges.

O'CONNELL, Judge.

This is an appeal from the decision of the Assistant Commissioner of Patents acting for the Commissioner in a cancelation proceeding instituted by Rand McNally & Company, the appellant here, against Trademark Registration No. 225,139, issued to appellee on March 15, 1927 and republished under the Act of 1946 on February 15, 1949, for the mark "Christmas Club" as applied to a magazine. The petition for cancelation was based on the allegation that the mark in question is descriptive of the goods to which it is applied, and that contention was upheld by the Examiner of Interferences, who sustained the petition and recommended cancelation of the registration. On appeal from that decision, however, the Assistant Commissioner held that the mark was not descriptive and that no facts appeared from which damage to the petitioner could be presumed. 105 U.S.P.Q. 499. She accordingly reversed the decision of the Examiner of Interferences, and this appeal followed.

The principal issue raised by the appeal is whether or not the mark is descriptive as applied to a magazine. The record shows that the words "Christmas Club" have been commonly applied for many years to Christmas savings plans and printed matter associated therewith and that neither party has any exclusive rights on that basis to those words per se. In fact, as noted by the Assistant Commissioner, appellee, on August 23, 1921, obtained a registration of "Christmas Club" under the 1920 Act for printed books, pamphlets, posters, cards, advertising cards and circulars, which registration was surrendered for cancelation on December 27, 1921, on the ground of non-exclusive use of the term.

Both parties to this appeal are engaged in the business of selling supplies and advertising material to banks for use in connection with Christmas Club savings accounts, and such supplies and material often feature the words "Christmas Club."

Since about 1926 appellee has published a small magazine under the title "Christmas Club." In recent years it has had a circulation of approximately five thousand, of which less than one hundred copies have gone to paying subscribers. Practically all the remaining copies — at least ninety-six per cent of the total — are distributed to banks which are actual or prospective customers of appellee.

It is well settled that the title of a magazine is descriptive if it describes the contents of the magazine Crime Confessions, Inc., v. Fawcett Publications, Inc., 139 F.2d 499, 31 C.C. P.A., Patents, 760; Warner Publications v. Popular Publications, 2 Cir., 87 F.2d 913; McGraw-Hill Publication Co., Inc., v. American Aviation Associates, 73 App. D.C. 131, 117 F.2d 293. However, while the magazine here involved contains matter advertising Christmas Clubs, such matter forms a relatively small part of the whole. More than eighty per cent of the magazine is devoted to editorials, jokes, and quotations derived from various sources. Accordingly, we are of the opinion that the words "Christmas Club" cannot properly be said to be descriptive of the actual contents of the magazine in issue.

It is contended by appellant, however, that the sole purpose of the magazine is to advertise or promote appellee's Christmas Club business and that a title descriptive of the purpose of the goods is descriptive of the goods themselves so far as the trademark statutes are concerned. In support of that contention appellant cites In re W. A. Sheaffer Pen Co., 158 F.2d 390, 391, 34...