California Cyanide Co. v. American Cyanamid Co.

Citation17 CCPA 1198,40 F.2d 1003
Decision Date28 May 1930
Docket NumberPatent Appeal No. 2315.
PartiesCALIFORNIA CYANIDE CO. v. AMERICAN CYANAMID CO.
CourtUnited States Court of Customs and Patent Appeals

Pennie, Davis, Marvin & Edmonds, of New York City (Dean S. Edmonds, George J. Hesselman, and Ernest H. Merchant, all of New York City, and R. K. Stevens, of Washington, D. C., of counsel), for appellant.

H. S. Bierman, of New York City, for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal from the decision of the Commissioner of Patents reversing the decision of the Examiner of Interferences dismissing the notice of opposition of appellee and holding that appellant was entitled to the registration of the trade-mark "Calcyanide" for use on fumigants.

In its notice of opposition, appellee, the American Cyanamid Company, declared that it would be injured by the registration of appellant's trade-mark for the following reasons:

"1. That from a date prior to the date of alleged use of the trade mark sought to be registered, and continuously to the present time, the American Cyanamid Company has used the trade mark `Calcium Cyanide' in interstate commerce for fumigants, and that the trade mark `Calcyanide' is deceptively similar thereto."

The case was submitted to the Examiner of Interferences upon an agreed statement of facts. It appears therefrom that the goods of the parties possess the same descriptive properties; that the words "calcium cyanide" have been used on its goods by appellee since 1921; that appellant has used the trade-mark "Calcyanide" on its goods since December, 1925; that the goods of the parties are sold and used in practically all parts of the United States; that "calcium cyanide" is a chemical compound; and that the fumigant of appellant "contains commercially pure calcium cyanide," whereas that of appellee "contains crude calcium cyanide."

We quote from the agreed statement of facts:

"10. Eimer and Amend catalogue dated August, 1920, lists on page 194 the materials Calc-sinter and Calc-tufa as chemicals in stock and for sale. These names designate calcium compounds.

"11. The Pharmacopoeia of the United States of America (1926) lists calcium salts giving the word `Calcii' as the designation for calcium on pages 86-91. On pages 92 and 93 the word `calx' is used to designate lime.

"12. M. W. Randall and Victor I. Safro if called and examined as witnesses on behalf of applicant would testify that the term `Calcyanide' was coined and adopted by the applicant, California Cyanide Company, as a trade mark for its product because it suggests one of the ingredients of the product to which it is applied; because it suggests the name of the applicant — `Cal' being the abbreviation for California and `Cyanide' being the second word in applicant's name; and because it is in harmony with applicant's established trade marks `Calcy' and `Calcyco.'"

The sole question for determination is whether the term "calcyanide" is descriptive or merely suggestive of appellant's goods.

It is conceded that the words "calcium cyanide" used by appellee are descriptive, and that appellee is not the exclusive owner of those words for trade-mark purposes. If the term "Calcyanide" is descriptive, the opposition was properly sustained. If it is merely suggestive, appellant is entitled to registration of its mark.

The Examiner of Interferences held that the words "calcium cyanide" were purely descriptive of appellee's goods, that they did not perform the function of indicating origin, and that, as appellee was not the owner of the mark "Calcium Cyanide," it could not, under the statute, oppose the registration of appellant's mark "Calcyanide." The question of whether or not the mark "Calcyanide" was "descriptive" was not discussed in the decision.

On appeal, the Commissioner of Patents held that the opposer, appellee, had the legal right, if it could show that it would be damaged thereby, to oppose the registration of appellant's mark "Calcyanide," although, due to the fact that its mark "Calcium Cyanide" was descriptive, it (appellee) did not have the right to its exclusive use and was not the owner thereof. In support of his holding, the Commissioner of Patents cited the case of Touraine Co. v. F. B. Washburn & Co., 52 App. D. C. 356, 286 F. 1020, 1022, 1923 C. D. 174, and quoted the following from the decision of the Court of Appeals of the District of Columbia:

"Of course, a trade-mark use of a mark is not necessary in a proceeding of this kind. If the opposer can show in any way that he would probably be damaged by its registration to the applicant he may do so. The trade-mark statute (section 6, 33 Stat. 726 Comp. St. § 9491 (15 USCA § 86)) is our chart. There is nothing in it which says that a person must own a trade-mark, registered or not, before he can oppose the registration of the mark to another person. All that the statute requires of him, according to our interpretation, is to prove facts which, if true, would tend to show that he would probably be damaged by the registration."

In holding that appellant's mark "Calcyanide" was descriptive, and therefore not registerable as a trade-mark, the Commissioner said:

"A comparison of the two marks shows that they have the same essential characteristics as to appearance and meaning. The applicant's mark consists merely in writing calcium cyanide as one word, omitting the syllables `cium' of the first. By stipulation it is agreed that `calc' has been written for calcium in compound words including calcium; also, that it is common practice to write the words calcium cyanide either as two words or as a single word. It is also stipulated that calcium cyanide is the name of a chemical compound known for a number of years.

"With this understanding of the facts involved it must be held that the applicant's...

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6 cases
  • De Walt, Inc. v. Magna Power Tool Corporation, Patent Appeal No. 6638.
    • United States
    • United States Court of Customs and Patent Appeals
    • April 14, 1961
    ...or petitioner is one who has a sufficient interest in using the descriptive term in its business. California Cyanide Co. v. American Cyanamid Co., 40 F.2d 1003, 17 CCPA 1198 ("Calcyanide"), Model Brassiere Co., Inc., v. Bromley-Shepard Co., Inc., 49 F.2d 482, 18 CCPA 1294 ("ensemble"), Unit......
  • Wilson v. Delaunay, Patent Appeal No. 6279.
    • United States
    • United States Court of Customs and Patent Appeals
    • June 25, 1957
    ...that the opposer establish that he would probably be damaged by the registration of an applicant's mark. California Cyanide Co. v. American Cyanamid Co., 40 F.2d 1003, 17 C.C.P.A., Patents, It is to be noted moreover that, although the exact terms of the agreements between appellee and his ......
  • Vi-Jon Laboratories v. Lentheric, Patent Appeal No. 4659.
    • United States
    • United States Court of Customs and Patent Appeals
    • February 3, 1943
    ...necessary that appellee establish that it would probably be damaged by the registration of appellant's mark. California Cyanide Co. v. American Cyanamid Co., 40 F.2d 1003, 17 C.C.P.A., Patents, 1198; Trustees for Arch Preserver Shoe Patents v. James McCreery & Co., 49 F. 2d 1068, 18 C.C.P.A......
  • J. Greenebaum Tanning Co. v. Respro, Inc., Patent Appeal No. 3894.
    • United States
    • United States Court of Customs and Patent Appeals
    • February 28, 1938
    ...words, of course, will appear in the mark as used, and the mark must be considered as a whole." See, also, California Cyanide Co. v. American Cyanamid Co., 40 F.2d 1003, 17 C.C.P.A., Patents, 1198, and Trustees for Arch Preserver Shoe Patents v. James McCreery & Co., 49 F.2d 1068, 18 C.C.P.......
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