Goodyear Tire & Rubber Co. v. Robertson

• Decision Date: 02 April 1927
• Docket Number: No. 1123.,1123.
• Parties: GOODYEAR TIRE & RUBBER CO. v. ROBERTSON, Commissioner of Patents.
• Court: U.S. District Court — District of Maryland

18 F.2d 639 (1927)

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

No. 1123.

District Court, D. Maryland.

April 2, 1927.

Wm. G. Henderson, of Washington, D. C., and Wm. Pepper Constable, of Baltimore, Md., for complainant.

A. W. W. Woodcock, U. S. Atty., of Baltimore, Md., and T. A. Hostetler, of Washington, D. C., for defendant.

SOPER, District Judge.

The bill of complaint in this case was filed under the provisions of section 9 of the Trade-Mark Act of February 20, 1905 (chapter 592, 33 Stat. 724; Comp. St. § 9494), and section 4915 of the Revised Statutes (Comp. St. § 9460), in accordance with the ruling laid down in American Steel Foundries v. Robertson, 262 U. S. 209, 43 S. Ct. 541, 67 L. Ed. 953. The purpose of the suit is to secure an adjudication authorizing the commissioner of patents to register a mark under the Trade-Mark Act in accordance with an application therefor filed by the complainant in the Patent Office on July 27, 1921. The petition in the Patent Office alleged that the trade-mark was designed for use upon vehicle tires composed of rubber or rubber and fabric, and described it 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 alined 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 refused the application, on the ground that the design was a part of the tire itself, and was intended to prevent the slipping or skidding of the tire. It was thought probable that the tread of the tire had become so well known as to indicate the product of the applicant, but that this was immaterial, since there was no evidence to show that the design was originally adopted solely for trade-mark purposes. On appeal the Court of Appeals of the District of Columbia affirmed the ruling of the Patent Office in a memorandum opinion reported at 55 App. D. C. 400, 4 F.(2d) 1013. The court said:

"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 * * * 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.'"

The complainant nevertheless contends that it is not seeking to register the article itself — that is, the tire — but only so much thereof as is indicated by the words "a band of diamond-shaped figures." These words, it says, accurately describe the mark and may be applied to anything in the world, without affording the slightest information of its nature or quality. Section 5 of the Trade-Mark Act (Comp. St. § 9490) 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 a watermark 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.

But it is quite clear that the complainant does not seek to register a definitely specified mark as an arbitrary symbol indicative of the origin of the goods, apart from the goods themselves, but a mark which, if not an essential, is at least an important part thereof. It consists of outstanding diamond-shaped blocks disposed circumferentially upon the tire so as to form the tread. If an attempt were made to register as a trade-mark applicable to automobile tires the words "diamond-shaped tread," no one could contend that the words were not descriptive of the goods. It is certain that the complainant is no better off by adopting the diamond-shaped tread itself to convey the idea.

The complainant suggests that certain facts, now the subject of stipulation between the parties, were not brought out or clearly understood in the Patent Office, and were not mentioned in the opinion of the Court of Appeals. The mark in question was adopted in 1908 to indicate origin. It was available for appropriation since, prior to the Goodyear tire, no tire bearing the mark or any confusing resemblance thereof had been made or sold. Thus for nearly 20 years it has been applied to many millions of tires, so that the purchasing public in the United States and foreign countries has long been familiar with it, as identifying the goods of the complainant. The diamond tread, presenting a broken surface molded into rubber, does tend to prevent slipping and skidding; but the particular Goodyear design is not an essential element, since any rough or broken tread has the same effect, and the size, shape, and arrangement of the projections and depressions may vary within wide limits without affecting the operation.

The argument seems to be that, even although the mark is descriptive of the goods to which it is attached, nevertheless it is registerable, since it now indicates to all men the origin of the goods, and its exclusive appropriation by Goodyear has not interfered and will not interfere with the use by other manufacturers of nonskid devices of equal efficiency. But the prohibition in section 5 of the Trade-Mark Act against the registration of descriptive words is unqualified. It does not authorize their registration, if adopted to indicate origin, or if publicly used for any particular period of time. No matter how long the use continues, the mark will never become a technical trade-mark. Judge Lurton in Vacuum Oil Co. v. Climax Refining Co. (C. C. A.) 120 F. 254, 256, said that "the descriptive word or sign or symbol, * * * may acquire a secondary significance denoting origin or ownership, * * *. But this secondary significance is not protected as a trademark, for a descriptive word is not the subject of a valid trade-mark; the only office of a trade-mark being to indicate origin or ownership. When a descriptive word * * * comes by adoption to have a...