Application of Data Packaging Corp.

• Decision Date: 27 January 1972
• Docket Number: Patent Appeal No. 8592.
• Citation: 172 USPQ 396,453 F.2d 1300
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of DATA PACKAGING CORP.

172 USPQ 396, 453 F.2d 1300 (1972)

Application of DATA PACKAGING CORP.

Patent Appeal No. 8592.

United States Court of Customs and Patent Appeals.

January 27, 1972.

Stanley Sacks, Boston, Mass. (Wolf, Greenfield & Sacks), Boston, Mass., attorneys of record, for appellant.

S. Wm. Cochran, Washington, D.C., for Commissioner of Patents; Raymond E. Martin, Washington, D.C., of counsel.

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.

RICH, Judge.

This ex parte appeal¹ is from the decision of the Trademark Trial and Appeal Board, one member dissenting, 161 USPQ 52 (1969), affirming the examiner's rejection of appellant's application, serial No. 222,131, filed June 28, 1965, to register on the Principal Register as a trademark for computer tape reels a particular design applied thereto. The design consists of a narrow annular band mounted on the front reel flange, adjacent to and concentric with the hub of the reel, in a color which contrasts with the reel flange. Registration was refused by the examiner "as being prohibited by Section 1 of the Trademark Statute" because the band does not function as and is not a trademark. We reverse.

Inquiring further into the examiner's reasoning, it seems that his rejection was actually based alternatively on two separate rationales. First, the examiner seems to have felt that a colored design which could appear in different colors on different goods is inherently incapable of functioning as a trademark. Second, the examiner apparently felt that appellant's mark, if it was capable of ever becoming a trademark, was so weak that it was unregistrable absent "evidence to prove that there is a customer recognition of the metal² ring as a trademark for the computer tape reels." Appellant submitted such evidence after protesting that none was required, but the examiner apparently concluded that it was insufficient to establish that appellant's rings were in fact functioning as a trademark.

The board affirmed by a vote of 2 to 1. The majority opinion relies principally upon International Braid Co. v. Thomas French & Sons, Ltd., 150 F.2d 142, 32 CCPA 1092 (1945), in which it is stated that

* * * the law prohibits the registration of a mark which provides for the use of any color as its distinguishing feature; for the reason not only that such a mark possesses no defined feature which would tend to identify the origin of the goods, but also that the registration of such a mark would endow its owner with an implied monopoly of all the colors of the spectrum. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166 26 S.Ct. 425, 50 L.Ed. 710; Lufkin Rule Co. v. Master Rule Mfg. Co., 40 F.2d 991, 17 C.C.P.A., Patents, 1227; In re Johns-Manville, Inc., 55 App.D.C. 142, 2 F.2d 944; Samson Cordage Works v. Puritan Cordage Mills, 6 Cir. 211 F. 603 L.R.A., 1915F, 1107; In re Gotham Silk Hosiery Co., Inc., 57 App.D.C. 266, 20 F.2d 282.

Additionally, the majority stressed the nature of appellant's design, going so far as to question whether it is a "design" at all. Rather, in their opinion,

* * * the circular shape is dictated by the nature of the goods. That is to say, coloring around the hub of a computer reel necessarily takes on a circular shape and all that means is that a part of the goods has been colored, not that a design has been achieved. See Radio Corporation of America v. Decca Records, Inc., et al. 51 F.Supp. 493, 58 USPQ 531 (DCNY, 1943).

The majority did not specifically address itself to the examiner's second rationale, insufficient proof of customer recognition, but the solicitor has found some possible reference to it in their opinion and has argued that the examiner's refusal to register on that ground is still in the case. For purposes of this opinion, we have assumed that it is.

The dissenting member of the board said it was his "firm belief" that an applicant is not "bound, as a matter of law, to restrict its application to a particular color if its variety of contrasting colors are applied in an arbitrary design or arranged in a particular way." (Footnote omitted.) This belief he based on A. Leschen & Sons Rope Co. v. American Steel & Wire Co., 55 F.2d 455, 19 CCPA 851 (1932), the holding of which he stated to be that "where a specific color is used on an article of goods in a particular design it affords the user thereof property rights as against another party who merely uses a different color in the same manner or design." (Footnote omitted.) If the applicant, by prior use of the design on computer tape reels in blue, could prevent registration of the identical design for use on computer tape reels in red, why should it be prevented from registering its colored design without specifying a particular color, especially if, in fact, it uses the design in a plurality of colors? As to the second issue, the dissenting opinion says:

On the record in this case, I would conclude that applicant has made a prima facie showing that its contrasting color design is arbitrarily applied and does in fact identify its goods and distinguish them from the goods of others.

It notes that application of the examiner's (and the majority's) reasoning in cases where the applicant in fact uses as a trademark a design which may appear in various colors on different ones of the applicant's products,

* * * would necessarily result in the requirement that applicant file a series of trademark applications for each of its contrasting color designs in lieu of seeking protection thereof in one application. I believe that such a requirement is not prescribed as a matter of law where, as here, applicant\'s use and promotion of its mark is not directed to any one color.

The solicitor picks up this last point, implying that the trouble with appellant's application is that it is seeking "a monopoly of colors in a design * * * in a single registration * * *." Presumably, if the applicant had filed eight separate applications on the design in the eight colors which it has stated it is now using, the solicitor would have thought each separate application registrable upon submission of proof that the design was recognized as a trademark by those in the field.

OPINION

We agree with appellant and the dissenting member of the board that there is no reason why a registration may not be obtained which covers the use of the mark regardless of its color. Indeed, Trademark Rule 2.51(d) provides for an analogous situation: "If the application is for the registration only of a word, letter or numeral, or any combination thereof, not depicted in special form, the drawing may be the mark typed in capital letters on paper * * *." Clearly, such a registration envisions use of the mark not only in any form of type but in printing in "all the colors of the spectrum," to quote International Braid, supra. It seems to be well established that a single registration of a word mark may cover all of its different appearances, potential as well as actual. Similarly, it seems to us, there is no reason why an applicant should not be able to obtain a single registration of a design mark covering all the different colors in which it may appear, that is to say, not limited to a particular color.

It must be acknowledged that what we have just said is contrary to some things this court said in the International Braid case. That case involved an opposition by the owner of a closely similar mark to that sought to be registered, whereas here we have an ex parte rejection on the theory the ring design does not function as a trademark. In the International Braid case this court held that the opposition should be sustained, saying:

* * * a monopoly of all colors, which registration to appellant-applicant implies,

...