Estate of Beckwith v. Commissioner of Patents
| Decision Date | 19 April 1920 |
| Docket Number | No. 178,178 |
| Citation | 252 U.S. 538,40 S.Ct. 414,64 L.Ed. 705 |
| Parties | ESTATE OF P. D. BECKWITH, Inc., v. COMMISSIONER OF PATENTS |
| Court | U.S. Supreme Court |
Mr. Harry C. Howard, of Kalamazoo, Mich., for petitioner.
Mr. Assistant Attorney General Davis, for respondent.
The petitioner, a corporation, filed an application in the Patent Office for the registration of a trade-mark, which is described as follows:
'A design like a seal, comprising the head of an Indian chief surmounting a scroll bearing his name, 'Doe-Wah-Jack' and surrounded by a circle, outside of which appeared the words 'Round Oak' and 'Moistair Heating System' in a circle, and the whole being surrounded by a wreath of oak leaves.'
It will be useful to reproduce the drawing filed with this application:
[NOTE: MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (GRAPHIC OR TABULAR MATERIAL)]
It was averred that the petitioner had used the mark for more than 18 months before the application was made by applying it to 'hot-air and combined hot-air and hot-water heaters and furnaces by having the same cast into the metals of which the systems were constructed.'
The Commissioner found tha the mark did not conflict with any other that was registered, and that the petitioner was entitled to the exclusive use of it excepting the words 'Moistair Heating System.' It was ordered that the mark might be registered if the excepted words, objectionable because descriptive, were 'erased' or 'removed' from it, but that the filing of a disclaimer would not suffice to secure registration.
Not satisfied with this result, the petitioner appealed to the Court of Appeals for the District of Columbia, and its judgment affirming the decision of the Commissioner of Patents is before us for review.
The ground of both decisions is that the words 'Moistair Heating System' are merely descriptive of a claimed merit of the petitioner's system—that in the process of heating moisture is added to the air—and that one person may not lawfully monopolize the use of words in general use which might be used with equal truthfulness to describe another system of heating. For this reason it was held that the case falls within the proviso of the Registration Act of 1905, declaring that no mark consisting merely in words or devices which are descriptive of the goods with which they are used or of the character or quality of such goods shall be registered under the terms of the act. Act Feb. 20, 1905, § 5, 33 Stat. 725, amended by Act Jan. 8, 1913, 37 Stat. 649 (Comp. St. § 9490).
No question of patent right, or of unfair competition, or that the design of the trade-mark is so simple as to be a mere device or contrivance to evade the law and secure the registration of non-registrable words, is involved. Nairn Linoleum Co. v. Ringwalt Linoleum Works, 46 App. D. C. 64, 69.
This statement makes it apparent that the question presented for decision is: Whether the applicant may lawfully register the words 'Moistair Heating System,' when combined with the words 'Round Oak,' as a part of its purely fanciful and arbitrary trade-mark design, as shown in the drawing filed, and when claim to exclusive use of the words apart from the mark shown in the drawing is disclaimed on the record.
An account of the process of decision, in the Patent Office and in the Court of Appeals, by which the result in this case was arrived at, as it appears in the brief of the Commissioner of Patents, is suggestive and useful. From this we learn that, when a mark has been presented for registration consisting merely (only) of descriptive words or devices, registration has been uniformly refused. When 'composite' marks—such as contain both registrable and nonregistrable matter—have been presented for registry with features in them which conflicted with earlier marks, registered by other than the applicant, the complete rejection, 'eradication,' of the conflicting portions has been uniformly required before registry was allowed. But where there was no such conflict, and the only objection was that descriptive words were used, the practice of the Patent Office prior to the decision, in 1909, of Johnson v. Brandau, 32 App. D. C. 348, was to permit the registration of marks containing such words, where they were associated with registrable words or were a part of an arbitrary or fanciful design or device; it being considered not necessary to delete the descriptive matter, even when it was an essential part of the composite trade-mark as it had been used by the applicant, provided it was clearly not susceptible of exclusive appropriation under the general rules of law. After the decision of Johnson v. Brandau, 32 App. D. C. 348, a practice grew up in the Patent Office, not provided for in the statute, of allowing an applicant to disclaim objectionable descriptive words in cases where to require their actual removal would result in so changing the mark that it would not readily be recognized as that shown in the drawing or specimen filed with the application. The customary form of such disclaimer was a statement filed that no claim was made to the designated words, as, for example, 'Moistair Heating System,' apart from th mark shown in the drawing—this was interpreted as meaning that only when taken in connection with the remaining features of the mark did the applicant make claim to their exclusive use. Ex parte Illinois Seed Co., 219 O. G. 931.
Such disclaimer became a part of the applicant's statement in the record and necessarily formed a part of the certificate of registration as it would appear in the copies of it furnished to the applicant and the public, pursuant to section 11 of the act (Comp. St. § 9496).
Then came the decisions in Fishbeck Soap Co. v. Kleeno Manufacturing Co., 44 App. D. C. 6, and Nairn Linoleum Co. v. Ringwalt Linoleum Works, 46 App. D. C. 64, which, says the Commissioner of Patents, were understood as disapproving the practice of disclaimer, and since they were rendered, registration of merely descriptive matter has not been allowed in any form, but its actual deletion from the trade-mark drawing has been required, with, however, an apparent exception in the Case of Rinsburger, 8 T. M. Repts. 567, 128 MS. Dec. 141. The judgment we are considering, requiring, as it does, the 'elimination' of the descriptive words, shows that the Commissioner correctly interpreted these two decisions of the Court of Appeals.
It is apparent from this rehearsal that the Commissioner of Patents has promptly and cordially accepted for his guidance the decisions of the Court of Appeals, and, although he avoids a controversial attitude in his brief and gives a colorless history of the practice of his office still it is manifest that, in this case and in others, the court has very radically changed that practice with respect to permitting registry of composite trade-marks, and that its decisions have turned upon the construction of the second proviso, referred to, in the fifth section of the Registration Act, which is made the basis of the judgment we are reviewing.
The Registration Act of 1905 (33 Stat. 724), amended in 1906 (34 Stat. 168) and in 1909 (35 Stat....
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