A. Leschen & Sons Rope Co. v. American Steel & Wire Co.

• Decision Date: 25 January 1932
• Docket Number: Patent Appeal No. 2788.
• Citation: 19 CCPA 851,55 F.2d 455
• Parties: A. LESCHEN & SONS ROPE CO. v. AMERICAN STEEL & WIRE CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

19 CCPA 851, 55 F.2d 455 (1932)

A. LESCHEN & SONS ROPE CO. v. AMERICAN STEEL & WIRE CO.

Patent Appeal No. 2788.

Court of Customs and Patent Appeals.

January 25, 1932.

H. G. Cook, of St. Louis, Mo., and Melville Church, of Washington, D. C., for appellant.

D. Anthony Usina, of New York City (Usina & Rauber, of New York City, of counsel), for appellee.

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

BLAND, Associate Judge.

This is an appeal from the decision of the Commissioner of Patents of the United States Patent Office in a trade-mark opposition proceeding in which the Commissioner reversed the decision of the Examiner of Interferences and held that he erred in sustaining the opposition and in adjudging that the applicant was not entitled to register.

The applicant's mark is for use on wire rope, and consists of a silver strand which is incorporated in the rope during its manufacture, and applicant alleges use of the same since March 14, 1922. In its application, it states that "No claim is made herein to the registration of the representation of the wire rope."

Upon this record there is some little confusion as to what kind of mark opposer relies upon. In its "Grounds of Opposition" it seems to rely upon a mark consisting of "a helical band of distinctive color applied thereto, such mark being usually applied by painting one of the strands of said rope." It does not definitely set up its registered trade-mark which is described in one of the decisions, hereinafter referred to, in the following language: "Trade-mark consisting of a red or other distinctively colored streak applied to or woven in a wire rope. The color of the streak may be varied at will, so long as it is distinctive from the color and body of the rope. The essential feature of the trade-mark is the streak of distinctive color produced in or applied to a wire rope. This mark is usually applied by painting one strand of the wire rope a distinctive color, usually red."

The third ground of appellant's opposition is to the effect that, by reason of its marking its wire rope as aforesaid, its product has become widely known as "Colored Strand" wire rope, and it is presumed that the appellant implied that its mark had acquired a secondary meaning. It is unnecessary for us to consider this phase of the case, since the record is barren of any evidence tending to establish such fact, and the allegation was denied in the answer to the opposition.

In its answer, appellee makes the following statement: "Applicant denies that Opposer is the owner of a trade-mark as described in Paragraph 2 of its notice of opposition broadly as a helical band of distinctive color, but admits that Opposer has applied to its wire rope continuously for many years a mark distinguished by painting red one of the strands of said rope."

In the agreed statement of facts it is said: "It is agreed * * * that the said A. Leschen & Sons Rope Company has marked wire ropes or cables of its manufacture with a helical stripe of uniform width and distinctive color produced by painting one of the strands of the rope red and has done this continuously for a period long antedating the use by said The American Steel and Wire Company of New Jersey of the mark claimed in its present application for registration; and has used this mark as its trade-mark."

The Commissioner of Patents treated the opposer's mark as one which "consists of the use of a red strand in a rope of like construction" to that of appellee. The Examiner of Interferences evidently did the same inasmuch as he remarks: "The goods of the parties are the same, namely wire rope, and the difference in the marks used by the parties is merely one of color."

The Examiner of Interferences said that the same question had been considered in A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Company, 36 App. D. C. 451, 454, and A. Leschen & Sons Rope Company v. American Steel & Wire Co. of New Jersey, 36 App. D. C. 456, and concluded that these cases decided the issue and that he was bound thereby, and sustained the opposition.

The Commissioner of Patents regarded the cases of A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Company, 201 U. S. 166, 26 S. Ct. 425, 50 L. Ed. 710; Samson Cordage Works v. Puritan Cordage Mills (C. C. A.) 211 F. 603, L. R. A. 1915F, 1107, and A. Leschen & Sons Rope Company v. Fuller et al. (C. C. A.) 218 F. 786, as controlling, and said: "Now, if the opposer's mark, by being limited to a red stripe or strand, permits the use by others of wire ropes with strands of other colors, then it would seem to follow that the applicant has the right to use its silver strand as a trade-mark, notwithstanding the opposer's red strand trade-mark; and, if the applicant possesses the right to use its silver strand, no good reason is apparent why said mark should not be registered."

In addition to the above-quoted statement by the Commissioner, his decision contains the following: "If it were assumed, however, that a yellow strand so nearly resembles a red strand, when they are used to identify wire cables as to their origin or ownership, as to be likely to cause confusion or mistake in the mind of the public, still it is believed that such resemblance does not exist as between the applicant's silver strand and the opposer's red strand."

We do not agree with the correctness of the statement, "if the applicant possessed the right to use its silver strand, no good reason is apparent why said mark should not be registered," nor can we concur in the finding that there is such a difference between a yellow strand and a silver strand as to justify the conclusion reached by the Commissioner.

In A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 S. Ct. 425, 426, 50 L. Ed. 710, the court had before it the sole question as to whether or not appellant's registered mark, which in that instance consisted of any "distinctively colored streak applied to or woven in a wire rope," was a valid mark. It held that appellant's registered trade-mark covered all colors and was too broad to be valid, and intimated that it might have been held valid if the trade-mark had been limited to painting one strand red, and said: "It is true that the drawing annexed to the registration, a copy of which is here given, as well as the exhibits furnished, show one of the strands colored red; and if the trade-mark were restricted to a strand thus colored, perhaps it might be sustained; but the description of a colored streak, which would be answered by a streak of any color painted spirally with the strand, longitudinally across the strands, or by a circular streak around the rope, was held by both courts, and we think properly, too indefinite to be the subject of a valid trademark. Certainly a trademark could not be claimed of a rope, the entire surface of which was colored; and if color be made the essential feature, it should be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do. Upon the plaintiff's theory, a wire rope containing a streak of any description or of any color would be an infringement, and a manufacturer honestly desiring to distinguish his wire rope from that of the plaintiff's by difference in color might, by adopting a white streak running along the length of the rope across the strands, find himself an infringer, when his real object may have been to obtain a mark which would distinguish his manufacture from that of the plaintiff's. Even if it were conceded that a person might claim a wire rope colored red or white, or any other color, it would clearly be too broad to embrace all colors. So, although it might be possible to claim the imprint of a colored figure on a wire rope, the figure should be so described that other manufacturers would know how to avoid it. If the trademark be a colored streak, it should be, at least, described, and a statement of the mode in which the same is applied and affixed to the rope; and a trademark which may be infringed by a streak of any color, however applied, is manifestly too broad." (Italics quoted.)

It will be noticed that a red strand trademark was not before the Supreme Court, and necessarily its conclusions on that subject, intimating that a certain, definite, colored strand might be the subject-matter of a valid trade-mark, and that any other color which distinguished the goods of another might be the basis of a valid trade-mark, is not regarded as binding or controlling of our action in this case. It was not regarded as controlling, in an almost identical case between the same parties at bar, by the Court of Appeals of the District of Columbia, our predecessor in our present patent and trademark jurisdiction, in A. Leschen & Sons Rope Company v. American Steel & Wire Co. of New Jersey, supra., and also in A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Co., supra.

In A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Co., supra, the Court of Appeals had before it the red strand trade-mark of appellant and the yellow strand trade-mark of the Broderick & Bascom Rope Company. It held, in an opinion by Mr. Justice Robb, that the Supreme Court's decision holding invalid a registered trade-mark "does not deprive such owners of any property right which they may have acquired by the actual use of a good trade-mark" Italics ours, and said: "The opinion of the Supreme Court went no further than to deprive the present application of the presumption of ownership which a good registration would have afforded it."

Further along in the opinion, we find the following clear and forceful language: "We come now to the consideration of the question whether the two marks here involved are sufficiently alike as `to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.' 33 Stat. at L. 724, chap. 592,...