Goodyear Tire & Rubber Co. v. Robertson

• Decision Date: 10 April 1928
• Docket Number: No. 2659.,2659.
• Parties: GOODYEAR TIRE & RUBBER CO. v. ROBERTSON, Commissioner of Patents.
• Court: U.S. Court of Appeals — Fourth Circuit

25 F.2d 833 (1928)

GOODYEAR TIRE & RUBBER CO. v. ROBERTSON, Commissioner of Patents.

No. 2659.

Circuit Court of Appeals, Fourth Circuit.

April 10, 1928.

Archibald Cox, of New York City (R. S. Trogner, of Akron, Ohio, William Pepper Constable, of Baltimore, Md., and William G. Henderson, of Washington, D. C., on the brief), for appellant.

T. A. Hostetler, Sol. U. S. Patent Office, of Washington, D. C. (J. F. Mothershead, of Washington, D. C., on the brief), for appellee.

Before WADDILL and PARKER, Circuit Judges, and WEBB, District Judge.

WADDILL, Circuit Judge.

A bill in equity was filed in this cause in the United States District Court for the District of Maryland to require the Commissioner of Patents of the United States to register a trade-mark under the Trade-Mark Act in accordance with an application theretofore filed by the complainant in the Patent Office on July 27, 1921. The bill was filed pursuant to the provisions of section 9 of the Trade-Mark Act of February 20, 1905 (33 Stat. 727 15 USCA § 89; Rev. St. § 4915, U. S. Comp. St. 1916, § 9460 35 USCA § 63), and the action taken was in accordance with the ruling of the Supreme Court of the United States in American Steel Foundries v. Robertson, 262 U. S. 209, 43 S. Ct. 541, 67 L. Ed. 953.

The application thus filed in the Patent Office set forth and alleged that the trade-mark sought to be registered was designed for use upon vehicle tires composed of rubber or rubber and fabric, the same being described as follows:

"The distinctive and distinguishing features of the trade-mark comprise a series of circumferentially disposed, outstanding blocks or elements, approximately diamond-shaped, and spaced by a series of grooves or lines which intersect each other at right angles, the blocks or elements being aligned on parallel cross-planes.

"The trade-mark is impressed or otherwise formed in the tread surface of the goods, or by printing it on the cover, container, or wrapper of the goods, or by attaching to the goods or to the wrapping thereof a tag or label bearing the mark."

The Patent Office rejected the application and denied the registration of the mark on the ground that the design was a part of the tire itself, and intended to prevent skidding of the tire, and that, while probably the tread of the tire had become so well known as to indicate the product of the applicant, this was immaterial, since there was no evidence to show that the design was originally adopted solely for trade-mark purposes. From this ruling of the Commissioner an appeal was taken to the Court of Appeals of the District of Columbia (55 App. D. C. 400, 4 F. 2d 1013), and that court affirmed the action of the Patent Office, saying in a memorandum opinion:

"The diamond-shaped projections, which appellant claims as a trade-mark, are clearly descriptive of the goods on which they are used, since they form a very essential part of the goods itself. In other words, these projections are molded on the face of a rubber tire, either to enhance the wear, or to prevent skidding, or both. Section 5 of the Trade-Mark Act of 1905 15 USCA § 85 among other things provides that `no mark, which consists merely in * * * devices which are descriptive of the goods with which they are used, * * * shall be registered.' As suggested in brief of counsel for the Patent Office, `the most accurate way of describing an article is possibly by the article itself.'"

Notwithstanding these rulings, the complainant, in its bill filed in this cause pursuant to the provisions of the federal statutes aforesaid, insists that it is entitled to the relief prayed for, and urges that it is not seeking to register the article itself, that is, the tire, but only such portion thereof as is indicated by the petition, which is composed of a tread pattern of diamond-shaped rubber figures. It is apparent that the words used in the application actually describe the trademark sought to be registered, and that the same may be applied to anything without affording the slightest information as to its nature or quality. Section 5 of the Trade-Mark Act (33 Stat. p. 725, supra) contemplates that even the name of an individual may be a trade-mark, if written, printed, impressed, or woven in some particular or distinctive manner; and it has been decided that it is no objection to the validity of an otherwise good mark that it is impressed upon or inherent in the article manufactured, as in the case of water-marks upon paper, a word or symbol blown into a glass bottle or jar, or an arbitrary mark on the head of a horseshoe nail. Samson Cordage Works v. Puritan Cordage Mills (C. C. A.) 211 F. 603-605, L. R. A. 1915F, 1107, and cases cited therein.

A careful consideration of this case demonstrates that complainant does not seek to register a certainly specified mark as an arbitrary symbol indicative of origin of the product, apart from the tire itself, but a mark which, if not an essential, at least is an important, part thereof, that is to say, the outstanding diamond-shaped blocks disposed circumferentially upon the tire, so as to form the tread....