In re General Petroleum Corporation of California

• Decision Date: 27 May 1931
• Docket Number: Patent Appeal No. 2755.
• Citation: 49 F.2d 966
• Parties: In re GENERAL PETROLEUM CORPORATION OF CALIFORNIA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

49 F.2d 966 (1931)

In re GENERAL PETROLEUM CORPORATION OF CALIFORNIA.

Patent Appeal No. 2755.

Court of Customs and Patent Appeals.

May 27, 1931.

Wm. Wallace White and Wallace White, both of New York City (Joseph W. Milburn, of Washington, D. C., of counsel), for appellant.

T. A. Hostetler, of Washington, D. C., for the Commissioner of Patents.

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

GARRETT, Associate Judge.

Appellant is, and for some time has been, engaged in the business of selling gasoline sold in bulk. In June, 1928, it began to introduce into its product a sufficient quantity of violet coloring matter to give a violet hue to the entire mass of gasoline so treated. The claim is that the introduction of this coloring matter was and is for no functional purpose, but solely for the purpose of distinguishing appellant's gasoline from the gasoline marketed by other dealers, thus indicating origin. This is claimed to be a trademark use of the violet color, and in July, 1928, appellant filed, in the United States Patent Office, application for the registration of the violet color for use in gasoline as a trade-mark for such gasoline, under the Trade-Mark Registration Act of February 20, 1905 (15 USCA §§ 81-109).

In the application it was stated: "The trade mark is applied to the goods by the addition of a violet coloring matter which permeates the goods."

Registration was refused by the examiner on the ground that, as a general proposition of law, color alone cannot constitute a trade-mark. Upon appeal the decision on this ground was affirmed by the Commissioner of Patents, and the instant appeal to this court was then taken.

There are several assignments of error, but all of these may be treated as comprehended in No. 9 thereof, reading: "The Commissioner erred in rejecting the application on account of the nature of the mark."

Appellant's drawing discloses the figure of a conventional stand, such as is used at gasoline filling stations, showing the usual transparent receptacle at the top from which gasoline flows by force of gravity. By means of diagonal lines, drawn on the representation of the transparent device, indication is given that the gasoline within the receptacle is colored, and on one side of the receptacle, with an indicating arrow, the word "violet" appears. Nothing is claimed, however, for the figure of the stand nor for the word, the latter being inserted merely to explain what the color is. The claim is confined entirely to the color itself, independent of any figure, word, device, symbol, or design.

In the opinion of the commissioner it is stated: "In the brief the appellant proposes to amend the application to state `the mark consists of violet coloring matter intimately mixed or dissolved in the gasoline.'"

There does not appear to have been any formal ruling upon this amendment, but it seems fairly inferable that the commissioner treated it as being allowed and we are content so to treat it.

We are not persuaded that the concurring decisions of the tribunals of the Patent Office are erroneous. The issue presented is somewhat novel, so far as the cases that have reached this court are concerned; but persuasive authority for their decisions herein is to be found in numerous decisions of other courts.

Independent of the authorities, in the absence of any controlling adjudications to the contrary, it seems to us that, in all good reason, it must be held that the trade-mark registration statute did not contemplate color alone, as appellant here applies it, as a mark to be registered as a trade-mark.

Appellant has quite earnestly stressed the statement of the statute: "That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class be refused registration as a trade mark on account of the nature of such mark. * * *"

We fully appreciate the binding force of the quoted language, but before it can be applied the matter which it is proposed to register must be a mark, in a trade-mark sense. The word "nature" in the statute must be construed with that understanding of the meaning of the word "mark."

Trade-mark ownership carries with it a monopoly upon the mark, but does not, of itself, carry with it the right of a monopoly upon the product or goods to which the mark is applied. If the mere color of violet applied to gasoline in the manner described, so as to render the entire volume of the gasoline violet-hued, could be treated as a trade-mark, it would result that appellant would secure a potential monopoly for an indefinite period, not simply upon the mark, but upon violet-colored gasoline itself. Such a mark we think would not be a good trade-mark at common law, and, repeatedly, we have held, following numerous authorities, that, since the registration statute created no new rights of trade-mark ownership, it did not contemplate the registration of marks incapable of common-law ownership. B. F. Goodrich Co. v. Kenilworth Mfg. Co., 40 F.(2d) 121, 17 C. C. P. A. 1105; Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.(2d) 116, 17 C. C. P. A. 1034; American Steel Foundries v. Robertson, 269 U. S. 372, 46 S. Ct. 160, 70 L. Ed. 317; In re Bonide Chemical Co., 46 F.(2d) 705, 18 C. C. P. A. ___, with their respective citations.

The authorities cited in the decisions of the Patent Office tribunals and in the brief of the solicitor for the patent office are very persuasive, if not absolutely controlling. A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 S. Ct. 425, 50 L. Ed. 710; Ex parte Pearson Tobacco Co., 1898 C. D. 643, 85 O. G. 287; Diamond Match Co. v. Saginaw Match Co. (C. C. A.) 142 F. 727, 729; Newcomer & Lewis v. Scriven Co. (C. C. A.) 168 F. 621; Taylor v. Bostick (C. C. A.) 299 F. 232; Coca-Cola Co. v. Williamsburgh Stopper Co. et al. and Coca-Cola Co. v. Whittemann et al., 2 T. M. Rep. 234; Goodyear Tire Co. v. Thomas E. Robertson, Commissioner of Patents (C. C. A.) 25 F.(2d) 833; Ex parte Landreth, 1885 C. D. 90, 31 O. G. 1441.

All these cases sustain the general principle very well stated in the Diamond Match Co. Case, supra: "Sometimes a color, taken in connection with other characteristics, may serve to distinguish one's goods, and thus be protected by the courts, * * * but, as a rule, a color cannot be monopolized to distinguish a product."

Appellant's fifth assignment of error is as follows: "The Commissioner erred in disregarding and refusing entirely to consider the cited decision of the Texas Court of Appeals holding that color as a means of identification in the manufacture and sale of goods is governed by the same rule as the use of geographical names in...