American Novawood Corp. v. US PLYWOOD-CHAMP. P., INC., Patent Appeal No. 8274.

• Decision Date: 21 May 1970
• Docket Number: Patent Appeal No. 8274.
• Citation: 426 F.2d 823,57 CCPA 1276
• Parties: The AMERICAN NOVAWOOD CORPORATION, Appellant, v. U. S. PLYWOOD-CHAMPION PAPERS, INC., Assignee, By Merger and Change of Name of United States Plywood Corporation, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

57 CCPA 1276, 426 F.2d 823 (1970)

The AMERICAN NOVAWOOD CORPORATION, Appellant, v. U. S. PLYWOOD-CHAMPION PAPERS, INC., Assignee, By Merger and Change of Name of United States Plywood Corporation, Appellee.

Patent Appeal No. 8274.

United States Court of Customs and Patent Appeals.

May 21, 1970.

A. Donald Messenheimer, Washington, D. C., attorney of record, for appellant. (Burns, Doane, Benedict, Swecker & Mathis, and William L. Mathis, Washington, D. C., of counsel).

James M. Heilman and Heilman & Heilman, Washington, D. C., for appellee.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and ROSENSTEIN, Judge, United States Customs Court, sitting by designation.

RICH, Acting Chief Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 154 USPQ 505 (1967), dismissing an opposition to the registration of NOVOWOOD as a trademark for "Lumber and Wood Products, i. e., Particle Board With or Without Decorative Faces," serial No. 211,215, filed February 2, 1965. Applicant, U. S. Plywood-Champion Papers Inc.,¹ claims use of the mark since January 9, 1965, and also that this mark is the newest member of a family of "NOVO" marks previously registered by it in the Patent Office.

Appellant-opposer concedes in its brief that appellee has the following registrations:

                Trademark                       Reg. No.                Date Reg'd
                NOVOPLY                         542,445                  May 15, 1951
                              Board formed of wood particles, etc
                NOVIDOR                         572,330                  March 24, 1953
                              Flush doors
                NOVOCORE                        595,787                  Sept. 28, 1954
                              Boards and doors formed of wood particles adhesively secured
                              together both with and without facings of other
                              decorative materials
                NOVOTILE                        609,406                  July 26, 1955
                              Board formed of wood particles adhesively secured together
                NOVODOR                         670,823                  Dec. 9, 1958
                              Doors
                NOVOWALL                        672,043                  Jan. 6, 1959
                              Wall panels used principally for partitions
                NOVOTEX                         677,212                  April 21, 1959
                              Wood and lumber products, i. e., particle board or fiber
                              board
                

Admittedly subsequent to all of the foregoing registrations, opposer, The American Novawood Corporation, was incorporated on August 28, 1964, and began the use of the name "novawood" under the following circumstances.

The Atomic Energy Commission, Process Radiation Section of the Division of Isotopes Development, in a search for peacetime uses of atomic energy, developed a new wood product which was produced by impregnating ordinary wood with a synthetic resin monomer and then irradiating it with gamma ray energy to polymerize and solidify the resin. This irradiated wood-plastic combination, or "alloy" as it was called, was named "novawood" by the A.E.C. which then, in July of 1964, asked the Commissioner of Patents to place that name on file in the Trademark Division for search purposes, "to be cited against applications for registration of trademarks," as the request stated.² It was so placed on file. The A.E.C. then released publicity on novawood and solicited proposals for the design of a large-scale pilot plant to make it. Lawrence G. Barrett, president of opposer, being familiar with the project, decided to form a corporation to commercialize novawood and organized American Novawood Corporation. Members of the A.E.C. are said to have expressed pleasure at his willingness to accept and use the term novawood. In the latter part of 1964, opposer proceeded with its plans and distributed brochures and samples of the product to the wood-fabricating industry. The samples were stamped with the name novawood and a mark adopted by opposer which consisted of a rectangular, wood-grained panel occupied by the name in capital letters and with zig-zag lines having arrow heads pointing at the opposite ends of the panel, indicative of irradiation.³

United States Plywood, upon learning of the situation, called the attention of the A.E.C. to its family of "NOVO" marks and on January 12, 1965, the A.E.C. requested that the name novawood be withdrawn from the files of the Trademark Division, putting out a press release on the same day in which it said:

These wood-plastic combinations heretofore have been called "novawood." As explained later, use of that term has been discontinued.

* * * * * *

Use of the term "novawood," previously employed by the Commission to describe these radiation processed wood-plastic combinations, is being discontinued to avoid any possible confusion with proprietary terms used in industry and to assure that this new product enters the market place free from discord that might inhibit its use.

As above noted, United States Plywood had begun using its NOVOWOOD mark three days earlier on January 9, 1965, applied for registration within a month, and this opposition ensued.

While this was going on, United States Plywood was also petitioning the Commissioner of Patents, questioning the practice of placing generic names in its trademark search files and objecting to the presence there of the name novawood. This petition was denied but on a request for reconsideration after the A.E.C. had requested that the name be withdrawn, on February 3, 1965, the First Assistant Commissioner noted in a supplemental opinion that the request to withdraw had been granted, which disposed of the matter. United States Plywood, supra, note 2.

The board found, and the record appears to support the finding, that after the A.E.C.'s dropping of the name novawood,

* * * the designation W P C (meaning wood-plastic combination) has been used in lieu of "novawood" by writers in articles as the name for the wood product developed under the sponsorship of the Atomic Energy Commission. One company, other than opposer, indicated that it had adopted "Lockwood" as a name for this product. It does not appear that any company but applicant opposer? refers to this product by the term "novawood".

* * * * * *

* * * Apparently the trade, excepting opposer, has recognized applicant\'s rights by dropping "novawood" as a name and substituting "WPC" or some different designation therefor. In fact we note that opposer is not wholly consistent since it too has used in correspondence "WPC" as a generic name. We recognize that a product may have more than one name but opposer apparently is the only one using "novawood" as a name.

On the basis of the foregoing factual situation, the board dismissed the opposition on the ground that opposer could not be legally damaged by the registration of NOVOWOOD to applicant. The sole issue is whether it erred in so doing.

We do not find that the opposer raises any substantial issue as to any of the foregoing facts. As we view the matter, the basic question is whether applicant, United States Plywood, has a right to register NOVOWOOD which is superior to opposer's asserted right to prevent registration, which opposer predicates on prior use of novawood as a generic name and as a trade name, relying on section 2(d) of the statute (15 U.S.C. § 1052(d)). On the first point, while it is clear that opposer (and others) used novawood as a name prior to applicant's use of NOVOWOOD, and attempted to make a generic name of it, that attempt failed, and was bound to fail, in view of applicant's admittedly prior rights in the mark NOVOPLY for the same goods, together with a half-dozen other "NOVO" marks for other wood products. As the board pointed out, applicant was selling $20,000,000 worth of particle board under the trademark NOVOPLY in the year 1965. If applicant wished to expand its line or extend its family of "NOVO" marks to include NOVOWOOD products, as it has done, we cannot see that the short-lived attempt of the A.E.C. and opposer to constitute novawood as a generic name could prevent it. We think that, on the facts, applicant had the right and that it is superior to any right opposer has shown.

With respect to opposer's reliance on ...