Montgomery Ward & Co. v. Sears, Roebuck & Co., Patent Appeal No. 2703.

• Citation: 18 CCPA 1386,49 F.2d 842
• Decision Date: 25 May 1931
• Docket Number: Patent Appeal No. 2703.
• Parties: MONTGOMERY WARD & CO., Inc., v. SEARS, ROEBUCK & CO.
• Court: United States Court of Customs and Patent Appeals

18 CCPA 1386, 49 F.2d 842 (1931)

MONTGOMERY WARD & CO., Inc., v. SEARS, ROEBUCK & CO.

Patent Appeal No. 2703.

Court of Customs and Patent Appeals.

May 25, 1931.

Wm. Nevarre Cromwell, of Chicago, Ill., Earle D. Crammond, of Washington, D. C. (Charles B. Fullerton and James L. McManus, both of Chicago, Ill., of counsel), for appellant.

C. Paul Parker, of Chicago, Ill., for appellee.

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

GARRETT, Associate Judge.

This is a trade-mark registration interference proceeding in which Montgomery Ward & Co., Incorporated, has appealed from a decision of the Commissioner of Patents, affirming a decision of the Examiner of Interferences awarding to Sears, Roebuck & Co. priority of use and right of registration of the word "Sta-Klean" for use on ammunition in Patent Office class 9, explosives, firearms, equipments, and projectiles, and denying to appellant right of registration of the word "Staclean" for use on the same type of goods.

The goods upon which the respective parties are using, and propose to use, the respective marks, are identical in character. The words are the same, except that appellee hyphenates its word and uses the capital letter "K" where appellant uses the small letter "c" in spelling "clean." Appellee also makes a somewhat fanciful arrangement of its word, while appellant uses plain letters, but this difference is not urged as having any bearing upon the issue. So the question in the case is that of which party first used the mark in the sense of the Trade Mark Registration Act of February 20, 1905 (15 USCA §§ 81-109).

The application of appellee for registration was filed in the Patent Office September 14, 1927, and alleged continuous use "since June 28, 1927." Appellant filed its application December 10, 1927, alleging use "since May 11, 1927."

The interference was declared January 13, 1928, and on April 18, 1928, appellee moved to amend by substituting March 2, 1927, for June 28, 1927, as its date of beginning use. Consideration of this motion was postponed by the Examiner of Interferences "until after the termination of this interference." We do not find in the subsequent decisions where either tribunal of the Patent Office formally passed upon the motion, but it seems to have been treated as granted, and, in the argument before us, appellant agrees that it should be so treated.

It is the contention of appellant, however, that upon the fact of the sale, claimed by appellee to have been made on March 2, 1927, the evidence is conflicting as to some details, and does not satisfactorily establish such a sale of goods bearing the mark as to give appellee ownership thereof in the sense of the Trade Mark Registration Law. Upon the fact of the sale, we have the concurring findings of both tribunals of the Patent Office, and the rule that this court will not disturb such findings unless convinced by the evidence that they are manifestly wrong is applicable.

We do not feel that these findings were erroneous. It appears that appellee, in the fall of 1926, or in January, 1927, began to consider the question of dealing in ammunition of a new type which would not foul the bore of the guns in which used, and that it took up the subject with the Western Cartridge Company, which furnished appellee's ammunition supplies; that in January, 1927, after considering different names for trademark use, "Sta-Klean" was decided upon; that on January 21, 1927, the supervisor of appellee's sporting goods department wrote the advertising department to take steps to register the mark, and that these steps were taken; that in February, 1927, drawings were made of the design for the mark, followed by photostatic copies of the drawings; and that plans were under way to have the goods listed, under the Sta-Klean mark or label, in the catalogue which was to be issued July 1, 1927, which plans were duly consummated.

It further appears that one Emil O. Strauss, a commercial artist in the employ of an engraving company which did work for both parties to this suit, learned in some way — we do not regard it as material just how — of appellee's ammunition to which the Sta-Klean mark was applied, or was to be applied, and under date of February 28, 1927, addressed a letter, which is in evidence, to the company placing an order for "two hundred rounds of Sta-Klean ammunition for a .22 short caliber rifle," and stated in his letter: "I am enclosing 70 cents. I do not know whether this is the right price, as I have no catalogue to order from."

The order was filled; the merchandise being shipped by express. The receipt of the express company is in the record, and along with it a statement showing...