Dena Corp. v. Belvedere Intern., Inc., 91-1156

Citation21 USPQ2d 1047,950 F.2d 1555
Decision Date04 December 1991
Docket NumberNo. 91-1156,91-1156
PartiesDENA CORPORATION, Appellant, v. BELVEDERE INTERNATIONAL, INC., Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

John M. Curtin, Leydig, Voit & Mayer, of Chicago, Ill., argued and James B. Muskal and Amy N. Cohen, Leydig, Voit & Mayer, Chicago, Ill., were on the brief, for appellant.

Donald L. Dennison, Dennison, Meserole, Pollack & Scheiner, of Arlington, Va., argued, for appellee.

Before MICHEL, PLAGER and RADER, Circuit Judges.

RADER, Circuit Judge.

In Opposition No. 81,365, Dena Corporation, opposer, appeals the Trademark Trial and Appeal Board's (Board) grant of summary judgment to applicant, Belvedere International, Inc. The Board found that Belvedere's mark--the words EUROPEAN FORMULA above a circular design--as applied to cosmetic products, is registrable as a unitary mark.

This court determines that the contested mark does not create a single commercial impression and, thus, the Board's holding to the contrary is erroneous. Because the Board's decision contains insufficient indication that it correctly considered the propriety of disclaimer under 15 U.S.C. §§ 1056 and 1057 (1988), this court vacates and remands.

BACKGROUND

Belvedere filed an application to register this mark (words and circular design on a dark background *) on the Principal Register:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The examiner required Belvedere to disclaim the words EUROPEAN FORMULA due to their descriptiveness.

Upon the mark's publication in the Official Gazette, Dena filed an opposition to registration. Dena complained that the terms EUROPEAN FORMULA are "so highly descriptive that they are unable to function as a trademark." In response, Belvedere admitted that "the words EUROPEAN FORMULA by themselves are unable to function as a trademark." Nonetheless Belvedere asserted that its mark--the circular design and the words--"is a Dena filed a motion for summary judgment. Dena contended that Belvedere had admitted that the words EUROPEAN FORMULA were too descriptive to serve as a trademark. Belvedere answered that it had only meant to admit that the words had not, at the time of filing, become sufficiently distinctive to function as a trademark. Belvedere had only used the mark a few months before applying for registration.

single unitary trademark creating a distinct commercial impression."

At this point, the administrative proceeding became complex as the parties argued about the meaning of Belvedere's admission. Dena produced evidence that Belvedere had used EUROPEAN FORMULA separately from the design element of its mark. Dena also produced affidavits and other evidence showing that other beauty care marketers used the words "European Formula" descriptively. In addition to affidavits from experts suggesting widespread use of the words "European Formula" in the cosmetics industry, Dena produced a computer printout showing that a company called Natural Apple intends to release "in January" a "European Formula" styling mousse. Throughout these proceedings, Belvedere submitted no statements, affidavits, surveys, or other independent evidence of unitariness or registrability.

After several motions, the Board noted that if Belvedere's application--the design and words together--defines a single unitary mark then any descriptiveness of the disclaimed terms EUROPEAN FORMULA is irrelevant. Dena renewed its motion for summary judgment. Dena contended that Belvedere's mark is not unitary and argued for deletion of EUROPEAN FORMULA from the mark. Dena also urged the Board to refuse registration of the mark on the Principal Register because EUROPEAN FORMULA is incapable of functioning as a mark with the design. Dena again produced extensive evidence about the descriptiveness and unregistrability of EUROPEAN FORMULA. Belvedere opposed the motion, but proffered no rebutting evidence.

The Board denied Dena's motion for summary judgment and sua sponte granted summary judgment to Belvedere. The Board concluded that the words and design constitute a single mark. Dena appealed.

ANALYSIS

The Federal Rules of Civil Procedure generally apply to Board proceedings. 37 C.F.R. § 2.116(1) (1988); see also, Pure Gold, Inc. v. Syntex (U.S.A.), 739 F.2d 624, 626-27, 222 U.S.P.Q. 741, 742-43 (Fed.Cir.1984). The Board may grant a party summary judgment "if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). Thus, the Board may grant summary judgment to Belvedere only if the record evidence shows no remaining material factual dispute and Belvedere's entitlement to a legal ruling in its favor.

Disclaimers

As early as 1920, the Supreme Court approved the United States Patent and Trademark Office's (PTO) policy of permitting applicants to disclaim unregistrable portions of composite marks. Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, 40 S.Ct. 414, 64 L.Ed. 705 (1920). In Beckwith, the applicant's mark featured the words MOISTAIR HEATING SYSTEM on a circle which also enclosed an Indian head. Because the Court of Appeals of the District of Columbia had disapproved disclaimers, Nairn Linoleum Co. v. Ringwalt Linoleum Works, 46 App.D.C. 64 (1917), the Office requested deletion of the descriptive terms MOISTAIR HEATING SYSTEM.

On certiorari, the Supreme Court reversed the court of appeals' anti-disclaimer ruling. The Court stated that deletion of the descriptive portion of this composite mark could destroy the mark's commercial impression "in actual trade." Beckwith, 252 U.S. at 545-46, 40 S.Ct. at 416-17. Instead, the Court permitted the application The Court of Customs and Patent Appeals also permitted disclaimers following the Beckwith decision. In re American Cyanamid & Chem., 99 F.2d 964, 39 U.S.P.Q. 445 (CCPA 1938); In re Effervescent Prods., 132 F.2d 142, 56 U.S.P.Q. 163 (CCPA 1942). This court's predecessor, however, did not permit disclaimers for every suspect composite mark. For instance, the court did not allow applicants to disclaim parts of a word. In re American Steel & Wire Co., 81 F.2d 397, 28 U.S.P.Q. 348 (CCPA 1936) (Applicant sought to disclaim all but the letter "A" in "American."). Similarly, the court did not allow an applicant to disclaim all elements of a composite mark. In re Midy Labs., 104 F.2d 617, 42 U.S.P.Q. 17 (CCPA 1939). The court regarded a disclaimer of all elements of a composite mark as an admission that the entire mark was descriptive and nonregistrable. Andrew J. McPartland, Inc. v. Montgomery Ward & Co., 164 F.2d 603, 76 U.S.P.Q. 97 (CCPA 1947), cert. denied, 333 U.S. 875, 68 S.Ct. 904, 92 L.Ed. 1151 (1948).

                to proceed as long as the applicant claimed no exclusive rights in the descriptive words.   Thus, to preserve the established commercial impression of the MOISTAIR mark, the Court permitted a disclaimer
                

After Beckwith, the Commissioner of Patents also denied registrations based on disclaimers in some instances. The Commissioner refused to permit applicants to register composite marks dominated by nonregistrable matter, even with a disclaimer of the nondistinctive portions. Ex parte American Bearing, 59 U.S.P.Q. 166 (Dec. Comm'r Pat. 1943). Thus, if the registrable portions of a mark were relatively insignificant next to the nonregistrable portions, a disclaimer would not cure the defect. Ex parte Wells Lamont Smith Corp., 71 U.S.P.Q. 12 (Dec. Comm'r Pat.1946); Ex parte Commercial Solvents Corp., 71 U.S.P.Q. 106 (Dec. Comm'r Pat. 1946).

The 1946 Lanham Act

In light of this background, the Lanham Act included section 6 on disclaimers. The 1946 Act stated:

The Commissioner shall require unregistrable matter to be disclaimed, but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor shall such disclaimer prejudice or affect the applicant's or owner's rights of registration on another application of later date if the disclaimed matter has become distinctive of the applicant's or owner's goods or services.

15 U.S.C. § 1056 (1946) (citation omitted). The Court of Customs and Patent Appeals determined that this enactment codified existing disclaimer practice:

A study of the legislative history of the 1946 Act convinces us that the part of section 6 stating "The Commissioner shall require unregistrable matter to be disclaimed, * * * " is essentially declaratory of the disclaimer practice as then existing under the sanction of the Beckwith decision.

In re Hercules Fasteners, 203 F.2d 753, 756, 97 U.S.P.Q. 355, 357 (CCPA 1953).

Under the Act, for instance, the Commissioner continued to refuse registration, despite disclaimers, to composite marks dominated by nonregistrable matter. Phillips Petroleum Co. v. L.P.G. Equip., 78 U.S.P.Q. 212 (Dec. Comm'r Pat. 1948). The 1946 Act, in effect, incorporated this aspect of disclaimer practice. Thus, the Act continued to prevent an applicant from registering a mark simply by combining a nonregistrable symbol with another nondescript and insignificant element.

In the mid-1950s, the PTO recognized that an applicant need not disclaim an element of a single unitary mark. "X" Labs. v. Odorite Sanitation Serv., 106 U.S.P.Q. 327 (Dec. Comm'r Pat. 1955) (disclaimer unnecessary for "tire" in TIRE-X); Humko Co. v. Favia, 103 U.S.P.Q. 239 (Dec. Comm'r Pat. 1954); Canada Dry Ginger Ale v. Lipsey, 102 U.S.P.Q. 447 (Dec. Comm'r Pat.1954) (disclaimer unnecessary for "Canadian" in ROYAL CANADIAN). In essence, the Commissioner reasoned that a descriptive element in some marks may lose its descriptive significance if integrated In the wake of the 1946 Act, the Commissioner also recognized that removal, rather than disclaimer, may best cure...

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