Alan Wood Steel Company v. Watson, Civ. A. No. 3819-54.

• Decision Date: 09 May 1957
• Docket Number: Civ. A. No. 3819-54.
• Parties: ALAN WOOD STEEL COMPANY, Plaintiff, v. Robert C. WATSON, Commissioner of Patents, Defendant.
• Court: U.S. District Court — District of Columbia

150 F. Supp. 861

ALAN WOOD STEEL COMPANY, Plaintiff, v. Robert C. WATSON, Commissioner of Patents, Defendant.

Civ. A. No. 3819-54.

United States District Court District of Columbia.

May 9, 1957.

John B. Armentrout, Washington, D. C., and Joseph Gray Jackson, Philadelphia, Pa., for plaintiff.

Clarence W. Moore, Washington, D. C., for defendant.

HOLTZOFF, District Judge.

This is an action against the Commissioner of Patents under 35 U.S.C. § 145, for an adjudication that the plaintiff is entitled to the registration of a trade-mark, which was denied by the Patent Office.

The plaintiff is a manufacturer of metal plates used as flooring material on decks of ships, floors of naval gun mounts, walkways of oil refineries, and numerous other installations where it is necessary to take precautions to prevent persons from slipping. For this purpose, floorplates of this type are covered throughout their entire surface with treads, ridges, protuberances, or projections of various kinds. It is the practice in this industry for each manufacturer to develop and use his own distinctive design for such surface markings in order to distinguish and identify his product. For example, the plaintiff employs a series of cigar shaped projections, or tapered ridges, arranged according to a particular pattern. The plaintiff unsuccessfully requested a registration of its peculiar markings as its trade-mark. This action seeks a judicial review of the adverse decision of the Patent Office.

The plaintiff's application was for registration on the Supplemental Register, rather than on the Principal Register. Such registrations are governed by Section 23 of the Lanham Act, 15 U.S.C.A. § 1091, the pertinent provisions of which are as follows:

"For the purposes of registration on the supplemental register, a mark may consist of any trade-mark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, or device or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services." (Emphasis supplied.)

The plaintiff contends that what it claims as a trade-mark, constitutes a "configuration of goods" and is, therefore, within the statute.

The Patent Office declined to register this design as a trade-mark on the ground that it was used primarily not as an arbitrary means of identifying the plaintiff's product, but to serve a utilitarian purpose, namely, to prevent persons from slipping on the floor. An object performing a utilitarian function may not be registered as a trade-mark even if it also identifies the applicant's product. A novel shape or appearance that is functional in character may not acquire any secondary meaning that would render it subject to exclusive appropriation as a trade-mark. J. R. Clark Co. v. Murray Metal Products Co., 5 Cir., 219 F.2d 313, 320. This court is, therefore, of the opinion that the decision of the Patent Office in this respect is sound. Were the law otherwise, it would be possible for a manufacturer or dealer, who is unable to secure a patent on his product or on his design, to obtain a monopoly on an unpatentable device by registering it as a trade-mark. The potential consequences to the public might be very serious, because while a patent is issued for only a limited term, a trade-mark becomes the permanent property of its owner and secures for him a monopoly in perpetuity.

The Patent Office has construed the phrase "configuration of goods" as not including the shape of an entire article, but as being confined to the form of a specific part or feature of...