Application of Meyer & Wenthe, Inc.

• Decision Date: 30 June 1959
• Docket Number: Patent Appeal No. 6447.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of MEYER & WENTHE, INC.

122 USPQ 372, 267 F.2d 945 (1959)

Application of MEYER & WENTHE, INC.

Patent Appeal No. 6447.

United States Court of Customs and Patent Appeals.

June 30, 1959.

Watson D. Harbaugh, Chicago, Ill., and Robert B. Harmon, Washington, D. C., for appellant.

Clarence W. Moore, Washington, D. C. (J. Schimmel, Washington, D. C., of counsel), for Commissioner of Patents.

Before WORLEY, Chief Judge, RICH, MARTIN, and SMITH, Judges, and Judge WARREN E. BURGER.¹

MARTIN, Judge.

This is an appeal from the decision of the Commissioner of Patents, acting through the Assistant Commissioner, affirming the decision of the Examiner of Trademarks refusing to register "Official" as a trademark for seal presses.

Appellant affixes the mark in question on a press designed to removably receive various dies for impressing embossed seals. The seals impressed may be of any character such as the familiar corporate or notarial seals, or otherwise personalized impressions.

The Commissioner held that the term "Official," as applied to such presses, "* * * has a single primary connotation which embraces at one and the same time the press, the die and the impression made." It was found that the impressions made by the dies are commonly used to attest or to authenticate documents and as such are "official seals," pertaining to the authority of some office. So finding, the Commissioner then concluded that "* * * the word does not and cannot, in the minds of ultimate purchasers, identify and distinguish applicant's goods."

In reaching the conclusion that "Official" "* * * does not and cannot * * *" become distinctive of applicant's goods, several affidavits submitted by applicant from manufacturers of competitive products and distributors of applicant's products, introduced in an attempt to show such distinctiveness, were considered.

Appellant contends that the Commissioner erred in determining "Official" to be descriptive of seal presses, as well as of the impressions made by such presses when containing appropriately stamped dies. Appellant urges that the vast majority of its sales are of presses with blank dies, and in no sense can such devices be described as "official seals" since they are incapable of delivering an impression.

It is further claimed that the affidavits submitted by the competing manufacturers, jobbers, and dealers are representative of 90% of the purchasers of appellant's seal presses, and that these affidavits are sufficient to establish that "Official" has become distinctive of the applicant's goods in commerce. Appellant therefore argues that the Commissioner erred in considering the "minds of ultimate purchasers" in reaching the conclusion that the word in issue "* * * does not and cannot * * * identify and distinguish applicant's goods."

There is no question but that the word "Official" is basically descriptive of seals and that its primary meaning in connection therewith relates to the authenticity of an impression or configuration of an authentic design, and of the device which imparts the impression of the design on soft substances. However, in spite of this primary meaning we do not believe that "Official" comes within the category of words which cannot become distinctive of an applicant's goods in commerce such as "Carillonic Bells" for electronically operated carillons,¹ or "Consistently Superior" for bakery goods.² If the proper proof of its distinctiveness is presented, we believe that "Official" can be registered as a trademark to identify the origin of an article which imprints authentic designs and of the dies upon which the designs are cast, under the provisions of section 2(f)³ of the Trade-Mark Act of 1946.

The United States Supreme Court and other courts, including ours, have discussed the type of evidence which is required to give descriptive words the characteristic of being distinctive in the trademark sense. In Kellogg Company v. National Biscuit Company, 305 U.S. 111, 59 S.Ct. 109, 113, 83 L.Ed. 73, the Court stated:

"* * * But to establish a trade name in the term `shredded wheat\' the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer. * * *"

This court in Master, Wardens, Searchers, Assistants and Commonalty of Co. of Cutlers in Hallamshire, York County v. Cribben and Sexton Co., 202 F.2d 779, 784, 40 CCPA 872, said:

"The proper construction of Section 2(f) of the Act of 1946 was exemplified by Federico, Examiner-in-Chief of Trade-Marks, acting for the Commissioner of Patents, in Ex parte Pocket Books, Inc., 91 USPQ 182, 184-185. There the Acting Commissioner held the burden of proof rests upon the applicant to establish that the mark of the applicant has become distinctive in commerce, and distinctiveness as a trade-mark should not be recognized without completely overwhelming proof with respect to all aspects of the matter:

"`It seems to me that before it can be stated that a word which is a generic designation of an article can be considered as having acquired the status of a trade mark of a single company for that same article, more should be shown than use by the applicant and the harmonious attitude of the trade. It would appear that before the word could be considered a trade mark, it must have become practically obsolete as a generic name for the article and must be recognized by the public as a trade mark rather than as a generic term of the English language.\'

"The factual situation upon which the applicant relies in the case at bar is strikingly similar to the situation in Ex parte Pocket Books, Inc. The mere affidavit of appellee\'s secretary together with the testimony of several witnesses clearly does not constitute a sufficient basis for appellee\'s registration of the mark `Sheffield\' for use on stoves and ranges in this and foreign countries."

However, in In re Hollywood Brands, Inc., 214 F.2d 139, 140, 41 CCPA 1001, our court reviewed the opinion in the Master case, and stated:⁴

"There is no doubt that Congress intended that the burden of proof should rest upon the applicant for registration, but it set up no standard by which the `distinctiveness\' of a mark was to be determined other than to suggest that substantially exclusive and continuous use of a mark in commerce for the five years immediately preceding application for registration could be considered as prima facie proof that it had become distinctive.

"The cases cited by the respective counsel have been examined but we find none of them sufficiently in point to be controlling; we do find, however, an increasing tendency to require more and still more proof from an applicant for registration under Section 2(f) than we think Congress fairly intended to impose. For example, the broad language used in the case of Master, Wardens, Searchers, Assistants and Commonalty of Co. of Cutlers in Hallamshire, York County v. Cribben and Sexton Co., 202 F.2d 779, 40 CCPA 872, 878, was not necessary to the proper disposition of that controversy nor do we think it applicable to the facts at bar."

As to the question of what evidence is required to establish that the purchasing public identifies the manufacturer by a specified mark our court in In re Duvernoy & Sons, Inc., supra, said 212 F. 2d 203, 41 CCPA 856:

"The appellant seemingly concedes that the term in question is, in a sense, laudatory or exclamatory and would require proof of the most convincing character to support a claim to distinctiveness. The affidavits relied upon to establish such distinctiveness, as applied to the appellant\'s goods, do not, however, sufficiently reflect the views of the purchasing public with respect thereto, being attestations from persons in close association and intimate contact with its business. We are in entire agreement with the Solicitor for the Patent Office in his statement that `such persons would be much more familiar with the words and devices employed by bakers than would members of the general public. It follows that the fact that these experts recognize a connection between the appellant and words

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