Minnesota Min. & Mfg. Co. v. MINNESOTA LINSEED OIL P. CO.

• Decision Date: 20 January 1956
• Docket Number: Patent Appeals No. 6111-6113.
• Citation: 229 F.2d 448
• Parties: MINNESOTA MINING & MFG. CO., Appellant, v. MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellee. MINNESOTA MINING & MFG. CO., Appellant, v. MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellee. MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellant, v. MINNESOTA MINING & MFG. CO., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

229 F.2d 448 (1956)

MINNESOTA MINING & MFG. CO., Appellant, v. MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellee.

MINNESOTA MINING & MFG. CO., Appellant, v. MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellee.

MINNESOTA LINSEED OIL PAINT CO. (now by change of name Minnesota Paints, Inc.), Appellant, v. MINNESOTA MINING & MFG. CO., Appellee.

Patent Appeals Nos. 6111-6113.

United States Court of Customs and Patent Appeals.

January 20, 1956.

Harold J. Kinney and Mark W. Gehan, St. Paul, Minn., Carpenter, Abbott, Coulter & Kinney, St. Paul, Minn., of counsel for Minnesota Mining & Mfg. Co.

Arthur S. Caine, Minneapolis, Minn., for Minnesota Linseed Oil Paint Co. (now by change of name Minnesota Paints, Inc.).

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Associate Judges.

O'CONNELL, Acting Chief Judge.

These are three appeals from the decisions of the Commissioner of Patents acting through the Examiner-in-Chief. One of them is a cancelation proceeding, No. 5463, 98 U.S.P.Q. 74; the other two are opposition proceedings, No. 27,956, 98 U.S.P.Q. 76, and No. 28,468, 98 U.S.P.Q. 72. The issues in all three cases overlap each other to a great extent and were determined in the Patent Office on the same date, July 1, 1953. All the proceedings were based upon the same record and exhibits, and while the three decisions were rendered by the Commissioner of Patents, and separate briefs have been filed here in each case, we shall dispose of the appeals in a single opinion.¹

Appeal No. 6111

In this case appellant-applicant, Minnesota Mining, appeals from the decision of the Examiner-in-Chief, acting for the Commissioner of Patents, 98 U.S.P.Q. 76, affirming the action of the Examiner of Interferences sustaining the opposition No. 27,956 brought by Minnesota Paints against Minnesota Mining to prevent its "re-registration" on the principal register of the word "Minnesota," standing alone and nowise comprising any additional words or insignia, for use as a trade-mark on coated abrasives, such as sandpaper. Both parties took testimony, filed briefs, and were represented at the hearing.

The application for "re-registration" filed by Minnesota Mining alleged ownership of registration No. 346,318 for "Minnesota" issued May 18, 1937 under the Act of 1920 automatically renewed by law to May 18, 1957 on the supplemental register² for use upon coated abrasives, including abrasive, detergent, and polishing materials.

The specimen of the mark originally submitted with the application for the re-registration here in issue discloses a composite mark consisting of the words "Minnesota Buffing Paper" in combination with the notation "A 3-M Product" a monogram, and the name and address of the applicant, Minnesota Mining. The latter however subsequently filed a so-called "Substitute Declaration" and included therewith, as a specimen of the mark relied upon, the term "Minnesota," standing alone completely devoid of any other words or insignia and as defined by registration No. 346,318.

Minnesota Mining based its claimed right to "re-registration" of the mark in issue under the provision of section 2(f) of the same act which, so far as pertinent, provides:

"(f) Except as expressly excluded in paragraphs * * * of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant\'s goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant\'s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration."

Minnesota Paint in its notice of opposition alleged prior and continuous use of the notation "Minnesota" not only as the dominant part of its corporate name but also as a trade-mark registered in 1913 under the ten-year proviso of the Act of 1905, 33 Stat. 724, for paints and linseed oil and renewed to February 25, 1953. Minnesota Paint further alleged therein that it had thus established protective rights in the use of the term "Minnesota" in respect to linseed oil and paints made therewith, and that confusion would result from the application of that term by others to an abrasive or related product which a painter or house-holder might buy or use when preparing a surface for the application of paint, such as sandpaper.

The ground of opposition raised by Minnesota Paint comes within purview of section 2 and includes the confusion in trade clause of section 2(d) of the Act of 1946, which provides:

"Sec. 2. No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

* * * * * *

"(d) Consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers: * * *."

The tribunals of the Patent Office in their disposition of the case concurred in holding that the record clearly established that as between the parties, Minnesota Paint, the opposer in the instant case, was the prior user by many years of the notation "Minnesota" as alleged in its notice of opposition; and therefore the only remaining issue to be determined by them was that raised by the contention of Minnesota Mining that sand paper is a product nowise related to paint or its application, and, because of the wide differences in their physical characteristics and functions there would be no confusion in trade since purchasers would not be likely to attribute a common source of origin to sand paper and paint.

The tribunals of the Patent Office however rejected the arguments advanced by Minnesota Mining and agreed that the sale of sand paper and paint under the same mark would be very likely to cause confusion in trade regardless of the differences between paint and sand paper. In support of their position the Patent Office pointed out that the respective goods are sold through the same channels, namely paint and hardware stores, and to the same class of purchasers for a common or conjoint use in refinishing surfaces to be painted. The examiner further refuted the arguments of Minnesota Mining on the point in issue by quoting from its own advertisements, comprising applicant's Exhibit 12, as follows:

"Suggestive selling is probably one of the best build-ups for any Retail Hardware Store.

* * * * * *

"Have your sales people suggest related items; for example, if the customer asks for turpentine, paint, brushes, putty or putty knife, etc., always suggest * * * Sandpaper and Emery Cloth.

"When Customers Want to Paint Furniture Increase Your Sales by Selling Them Sandpaper

* * * * * *

In addition to Paint, Lacquer, Varnish and Enamel.

"Sandpaper should be used to smooth and level the surface * * *

Between each coat of paint lacquer, varnish or enamel."

The Examiner-in-Chief rightly concluded in his decision that it is also a matter of common knowledge that paint manufacturers and distributors recommend that surfaces be cleaned and smoothed by means of sandpaper before paint is applied thereto; and that the respective goods, paint and sandpaper, are generally sold to the same class of purchasers through paint and hardware stores.

Additional points raised by Minnesota Mining in respect to the instant case and in the companion proceedings were discussed and properly decided by the Commissioner of Patents. His decision in appeal No. 6111 reported below in 98 U.S. P.Q. 76 is accordingly affirmed.

Appeal No. 6112

This is an appeal by Minnesota Mining from the decision of the Examiner in Chief acting for the Commissioner of Patents and affirming the decision of the Examiner of Interferences, 98 U.S.P.Q. 72, dismissing the opposition No. 28,468 brought by Minnesota Mining against the registration of the single word "Minnesota" as defined in application serial No. 539,596 dated July 5, 1947 and filed under section 2(f) of the Act of 1946 by Minnesota Paint as a trade-mark for "ready mixed paints for general purposes, and wood stains."

There is no question here that Minnesota Paint was the prior user by many years of the term "Minnesota" not only as the dominant part of its trade-mark since 1888 but also as the dominant part of its trade name "Minnesota Paint" since 1870, to designate the state wherein its goods were manufactured and from which they were distributed.

Opposer Minnesota Mining in its notice of opposition pleaded ownership and continued use since September 18, 1906 of one or more of the following registrations containing the term "Minnesota," either "alone or in combination with other words," as a trade-mark for the coated abrasive products which it manufactures in Minnesota and sells in interstate commerce; namely, registrations No. 56,397, No. 353,500, No. 351,358, and No. 346,318.

Of the registrations thus enumerated and relied upon by Minnesota Mining, only the last, No. 346,318, establishes the term "Minnesota," standing alone, for use as a trade-mark. That registration was issued May 18, 1937, "for abrasive cloth and paper and buffing cloth and paper in Class 4, abrasive, detergent, and polishing materials" under the Act of March 19, 1920. Hence on the effective date of the Act of 1946, namely July 5, 1947, Minnesota Mining's mark, No. 346,318 had acquired the status of a registered mark on the supplemental register automatically continued under the law and maintained by the Commissioner of Patents.³

With respect to the additional marks hereinbefore described and relied upon by appellant, Minnesota Mining, the...