Plastilite Corporation v. Kassnar Imports

• Decision Date: 09 January 1975
• Docket Number: Patent Appeal No. 74-556.
• Citation: 508 F.2d 824
• Parties: PLASTILITE CORPORATION, Appellant, v. KASSNAR IMPORTS, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

508 F.2d 824

PLASTILITE CORPORATION, Appellant, v. KASSNAR IMPORTS, Appellee.

Patent Appeal No. 74-556.

United States Court of Customs and Patent Appeals.

January 9, 1975.

H. Robert Henderson, Henderson & Strom, Des Moines, Iowa, attorney of record, for appellant.

Keith D. Beecher, Jessup & Beecher, Sherman Oaks, attorney of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

MILLER, Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board, abstracted at 180 USPQ 527 (1973), granting appellee-petitioner's petition for cancellation of appellant-respondent's trademark registration. We affirm.

FACTS AND PROCEEDINGS BELOW

Appellant owns registration No. 863,462, dated January 14, 1969, on the principal register. This issued on application serial No. 274,889, filed June 27, 1967, alleging first use in commerce on February 1, 1967, for the following mark for "Fishing Floats":

The application indicates that "the drawing is lined on the upper half of the sphere for the color yellow and on the lower half of the sphere for the color orange" and states that "the mark is used by manufacturing the actual floats with the upper half thereof in yellow and the lower half thereof in orange."¹

Appellee is an importer and, in April 1971, imported spherical fishing floats having an upper hemisphere colored yellow and a lower hemisphere colored orange through U. S. Customs in Seattle and delivered them to its customer. Pursuant to 19 U.S.C. § 1499² the Customs Service required the floats to be returned for destruction for allegedly infringing appellant's registration. Some of them were returned and destroyed, and a penalty was assessed for those not returned.

Appellee petitioned for cancellation of appellant's registration on the ground that:

the registration was issued by the United States Patent Office erroneously and in contravention to established trademark law, so as to create in Respondent an invalid proprietorship in a color combination of a common object.

In finding that appellant's mark does not serve as an indication of origin and granting the petition for cancellation, the board said:

In this regard, there is of record herein a copy of respondent's catalog of goods for each of the years 1968 through 1972 wherein its "GLO-BOB" orange and yellow floats are pictured in close association with its "PLASTI-BOB" red and white floats, but, in none thereof, with the exception of the 1972 catalog, is there any indication that the orange and yellow design in question was intended to be anything other than ornamental. In the last mentioned catalog, a registration notice appears on the orange portion of the "GLO-BOB" float pictured therein.

Considering that the orange and yellow design of respondent's floats is certainly ornamental, that it has long been the practice in the trade to color floats, and the fact, as further shown by the record in this case, that respondent has not promoted its floats to the general public, we are in full agreement with the petitioner that to the ultimate purchasers thereof the orange and yellow design in question would be regarded as mere ornamentation rather than as an indication of origin.

OPINION

Throughout the proceedings it has been impliedly assumed — and we agree — that appellee has standing to petition to cancel appellant's registration as a person who believes he is or will be damaged by such registration. (Section 14 of the Lanham Act, 15 U.S.C. § 1064.) Such belief would arise from the destruction of some of appellee's imported floats, being assessed a penalty on others, and being deterred from importing such floats.

Although neither appellee-petitioner nor the board cited any section of the Lanham Act as the basis for cancellation, such action would obviously rest on a finding that appellant's mark is not a "trademark" within the meaning of section 1 (15 U.S.C. § 1051), the preamble of section 2 (15 U.S.C. § 1052), and the definition in section 45 (15 U.S.C. § 1127). See In re Soccer Sport Supply Co., Cust. & Pat. App., 507 F.2d 1400.

Color or colors used as mere surface decoration cannot be monopolized by a claim to trademark rights therein. See In re Swift & Co., 223 F.2d 950, 955, 42 CCPA 1048, 1053 (1955). Color may, however, be part of a trademark where it is used in a particular manner. See In re Hehr Mfg. Co., 279 F.2d 526, 47 CCPA 1116 (1960). Ornamentation will not prevent registration so long as a mark with the color(s) used in a particular manner primarily indicates source. If the mark is inherently distinctive, it is registrable. If not, there must be evidence showing that the mark has become distinctive. See In re Soccer Sport Supply Co., supra; In re Hehr Mfg. Co., supra.

Is Mark Inherently Distinctive?

The record establishes that prior to appellant's adoption and use of its color scheme,³ floats had been sold having the upper half of the sphere white and the lower half red. Thus, appellant merely changed the color scheme from red and white to yellow and orange. While, under these circumstances, the yellow and orange colors certainly have been applied in a particular manner, they cannot be regarded as having been applied in an arbitrary or distinctive manner compared to the color scheme of the red and white floats. Accordingly, we hold that appellant's mark is not inherently distinctive.

Has Mark Become Distinctive?

Appellant's principal means of advertising has been its products catalog, distributed to its customers (jobbers and wholesalers) — not the ultimate consumers.⁴ Not only did appellant fail to submit any evidence on the number of catalogs distributed, but the catalogs themselves fail to show that the yellow-orange design as applied to spherical...