Martell & Co. v. SOCIETE ANONYME DE LA BENEDICTINE, ETC.

• Decision Date: 06 January 1941
• Docket Number: 4391.,Patent Appeals No. 4390
• Citation: 116 F.2d 516
• Parties: MARTELL & CO. v. SOCIETE ANONYME DE LA BENEDICTINE, DISTILLERIE DE LA LIQUEUR DE L'ANCIENNE ABBAYE DE FECAMP. SOCIETE ANONYME DE LA BENEDICTINE, DISTILLERIE DE LA LIQUEUR DE L'ANCIENNE ABBAYE DE FECAMP v. MARTELL & CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

116 F.2d 516 (1941)

MARTELL & CO. v. SOCIETE ANONYME DE LA BENEDICTINE, DISTILLERIE DE LA LIQUEUR DE L'ANCIENNE ABBAYE DE FECAMP. SOCIETE ANONYME DE LA BENEDICTINE, DISTILLERIE DE LA LIQUEUR DE L'ANCIENNE ABBAYE DE FECAMP v. MARTELL & CO.

Patent Appeals Nos. 4390, 4391.

Court of Customs and Patent Appeals.

January 6, 1941.

Maurice J. Moore, of New York City, for appellant.

Asher Blum, of New York City (Hugo Mock, of New York City, of counsel), for appellee.

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

JACKSON, Associate Judge.

The Benedictine Company, so referred to for convenience, organized under the laws of the Republic of France and doing business in France and in the United States, filed in the United States Patent Office its application for registration of a trade-mark as applied to an alcoholic beverage made by the applicant and which consists of equal parts of Benedictine and cognac brandy.

The mark which had been registered in France, and which is here sought to be registered, is in the following form:

The mark was duly examined and allowed and due publication made thereof. Thereafter a notice of opposition to the registration of the said mark was filed by Martell & Co., a firm domiciled in Cognac, France, and there engaged in the business of producing, packing and shipping cognac brandy.

The applicant is the owner of the trademark "Benedictine" as applied to a liqueur manufactured solely by applicant.

The opposition is directed to the registration of the trade-mark because of the notation "B and B" appearing thereon.

In the notice of opposition it is alleged that the Martell Company has continuously engaged in its business for over one hundred years; that its brandy has been imported into and widely distributed throughout the United States for upwards of fifty years, except during the period of prohibition; that the brandy has acquired a wide and favorable reputation in this country and has been extensively used as a component part of a beverage known as "B and B" (Benedictine and brandy); that the term "B and B", by reason of its long use, has become generic and belongs to the public domain and that it is descriptive of the beverage itself.

The Martell Company sets out its alleged injury as follows:

"6. That the Opposer is particularly injured and damaged by any claim of the Applicant to the exclusive use of the term B and B for liqueurs and cognac because the Opposer is engaged in the business of supplying cognac brandy for alcoholic beverages, which cognac brandy, as well as brandy of other manufacturers, is used in the making of B and B, and the granting of any registration to the applicant gives an apparent sanction to the claim of the applicant to the exclusive use of the name B and B as applied to liqueurs and cognac; and such apparent sanction by the United States Patent Office would mislead customers of Opposer in the belief that no one but the applicant has the right to use B and B as applied to liqueurs and cognac; and that sellers of beverages for immediate consumption by consumers would refrain from purchasing Opposer's brandy for the purpose of making the beverage known as B and B. That such discrimination would be most injurious and damaging to the opposer. That such registration would give to applicant statutory and prima facie trade mark rights to which it is not entitled.

"7. The Opposer alleges that applicant well knows that B and B as applied to liqueurs has been in general and extensive use for many years prior to May 16, 1936, in the United States of America as indicating a beverage composed partly of brandy and that no one has any right to exclusively appropriate B and B as applied to liqueurs and cognac in the United States of America, and has been fully aware of the general and extensive use of the descriptive term and name `B and B'.

"8. That on information and belief applicant seeks to obtain registration in the United States Patent Office for the main purpose of obtaining the sanction of the Patent Office to the registration applied for in order to enable the applicant to obtain an exclusive sale of the brandy in the beverage long known as `B and B'."

The Benedictine Company, in its answer to the allegations contained in the notice of opposition, admitted that the term "B and B" is widely and extensively used to designate an alcoholic beverage composed of equal parts of genuine Benedictine and brandy. It alleges that the Martell Company has no rights in the mark "B and B" itself; denies that opposer would be in any way injured by the registration and alleges that it has the exclusive right to manufacture and sell the beverage known as Benedictine "B and B" by reason of its ownership of the trade-mark "Benedictine". It further alleges that it has the sole and exclusive right to employ the designation "B and B" or Benedictine "B and B" for the reason that it has the sole and exclusive right to furnish one of the ingredients of the beverage, namely, Benedictine. It also denies that opposer has any such interest in the mark "B and B" as to entitle it to file a notice of opposition herein.

It will be observed that the Martell Company sought to draw in the "descriptiveness" clause of section 5 of the Trade-Mark Act of February 20, 1905, as amended, 15 U.S.C.A. § 85, as the statutory ground for denying the right of registration (section 7 of the said act, 15 U.S.C.A. § 87) claimed by the applicant.

Neither party took testimony and the issue was presented to the Examiner of Interferences upon an agreed statement of facts as follows:

"1. That the trade mark Benedictine is a good and valid trade mark, the property of the applicant, Societe Anonyme de...