Andrew J. McPartland, Inc. v. Montgomery Ward & Co.

• Decision Date: 29 November 1947
• Docket Number: Patent Appeal No. 5304.
• Citation: 164 F.2d 603
• Parties: ANDREW J. McPARTLAND, Inc., v. MONTGOMERY WARD & CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

164 F.2d 603 (1947)

ANDREW J. McPARTLAND, Inc., v. MONTGOMERY WARD & CO., Inc.

Patent Appeal No. 5304.

Court of Customs and Patent Appeals.

November 29, 1947.

Pennie, Edmonds, Morton & Barrows, of New York City (Clarence M. Fisher, of Washington, D. C., and George E. Middleton, of New York City, of counsel), for appellant.

Henry R. Marshall, of Chicago, Ill., for appellee.

W. W. Cochran, of Washington, D. C. (Walter J. Derenberg, of Washington, D. C., of counsel), for the Commissioner of Patents, amicus curiae.

Sylvester J. Liddy, of New York City, for Lawyers' Advisory Committee of United States Trade Mark Association, amicus curiae.

Charles R. Allen, of Washington, D. C., for American Patent Law Association, amicus curiae.

Philip T. Dalsimer and A. S. Greenberg, both of New York City, for Trade Mark Committee of New York Patent Law Association, amicus curiae.

Condor C. Henry, formerly Assistant Commissioner of Patents, amicus curiae.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal in a trade-mark cancelation proceeding from the decision of the Commissioner of Patents, 67 U.S.P.Q. 240, affirming the decision of the Examiner of Interferences sustaining appellee's petition for the cancelation of appellant's registered trade-mark "Kwixtart" for use on electric storage batteries.

Appellant's mark, registration No. 326,257, was registered July 23, 1935, under the Trade-Mark Act of February 20, 1905, 15 U.S.C.A. § 81 et seq., on an application filed March 8, 1935.

Appellee's petition for cancelation of appellant's registered trade-mark was filed March 22, 1944.

It was claimed in the petition for cancelation that appellant's mark was descriptive of its goods and that it was, therefore, not registerable under section 5 of the Trade-Mark Act of February 20, 1905, which provides, among other things, that trade-marks which are "* * * merely in words or devices which are descriptive of the goods with which they are used, or of the character of quality of such goods, * * *" shall not be registered.

It appears from the record, including collective exhibit No. 26, that appellee, in describing its electric storage batteries over a number of years, used the following terms in its catalogues:

Fall-winter 1933-34, "quick starting."

Spring-summer 1935, "quicker starting."

Fall-winter 1935-36, "quicker starts" and "quick, sure start."

Spring-summer 1936, "quicker starts."

Fall-winter 1937-38, "quick starts."

Spring-summer 1938, "quick starts."

Spring-summer 1939, "quicker starts" and "quick starts."

Spring-summer 1940, "quick, sure starts" and "quicker starts."

Fall Bargain Book 1940, "Quick Sure Starting."

Christmas catalogue 1940, "quick, sure starts."

Spring-summer 1941, "quick start" phonetically spelled "Kwik Start."

Fall-winter 1941-42, and Spring-summer 1942, there is displayed a battery with the letters "Kwik Start" thereon.

Mid-summer 1942, "quick starts."

Fall-winter 1942-43, "M W Kwik Start."

In addition to the evidence hereinbefore referred to, counsel for appellee introduced in evidence advertisements of other manufacturers of electric storage batteries, including the Willard Storage Battery Company, in which the term "Quick Starts" and other words of similar import were used, prior to and subsequent to appellant's alleged first use of its mark, to describe the function or quality of the batteries sold by them. The purpose of the introduction of that evidence was to establish that the term "quick start" was a common, ordinary, descriptive term which was used in the trade to describe the character or quality of electric storage batteries. It is unnecessary that we state here in detail all of the evidence of that character.

It is further argued by counsel for appellee, and so held by the decisions of the Patent Office tribunals, and properly so, we think, that the term "Kwixtart" is but a phonetic spelling of the term "quick start" and was intended to describe merely that appellant's battery would start a motor or engine quickly.

The Examiner of Interferences, as did the Commissioner of Patents, relied to a considerable extent upon the case of Model Brassiere Co., Inc., v. Bromley-Sheppard Co., Inc., 49 F.2d 482, 484, 18 C.C.P.A. Patents, 1294. In that case the registered mark "Ensemble" was use on "garter-brassieres." It also appeared, as stated in the decision of this court, that the term "ensemble" "was commonly used by merchants and others to describe combination garments prior to, and since, appellant first used `ensemble' as a trade-mark" and in support of that statement the court referred to certain publications not published by appellee. The purpose of directing attention to those publications was to show that the term was generally understood to describe the goods or the character of such goods. It was there held that one who deemed himself injured by the registration of a descriptive mark might properly bring a petition for cancelation thereof.

We further stated in that decision "That appellee was not required to show use of the word `ensemble' on the date the petition was filed" and, accordingly, held that a merely descriptive term was not registerable under the Trade-Mark Act of February 20, 1905. (Italics not quoted.) See also the decisions in the cases of United Shoe Machinery Corp. v. Compo Shoe Machinery Corp., 56 F.2d 292, 19 C.C.P.A., Patents, 1009, and Cridlebaugh v. Montgomery Ward & Co., 158 F.2d 646, 34 C.C. P.A., Patents, 742.

In the instant case it clearly appears that appellee and others were using words to describe their electric storage batteries which were similar to and the equivalent of appellant's registered mark. Accordingly, so far as the Trade-Mark Act of February 20, 1905, is concerned, it is apparent that the trade-mark "Kwixtart" is merely descriptive of the goods on which it is used or of the character or quality of such goods and, therefore, was not entitled to registration.

Furthermore, it appears from the record that in appellant's registration it was stated that "No claim is made to the individual syllables of the mark, each apart from the other." That statement amounts to saying that the mark as a whole is merely descriptive of the goods upon which it was used. A somewhat similar situation is presented in the case of In re Midy Laboratories, Inc., 104 F.2d 617, 26 C.C.P.A., Patents, 1294, where it was held, in substance, that although a part of the mark might be disclaimed for registration purposes, the entire mark could not be properly disclaimed as descriptive for that purpose. The gist of the decision in that case is that such a mark is merely descriptive and, therefore, is not registrable. We have mentioned this particular phase of the case solely for the purpose of pointing out that appellant, at the time of the registration of the mark, was of opinion that the mark as a whole was merely descriptive of the goods or of the character or quality of the goods on which it was used. Each of the tribunals of the Patent Office referred to that particular fact, as well as to other facts hereinbefore stated, and properly concluded that the mark was merely descriptive of the goods on which it was used and, therefore, was not entitled to be registered under the Trade-Mark Act of February 20, 1905.

At the time of the oral arguments in this case, it was intimated from the bench that there was a possibility that the Trade-Mark Act of July 5, 1946, effective July 5, 1947, Chap. 540, 60 Stat. 427 et seq., 15 U.S.C.A. § 1051 et seq., might have application to the issues here involved. In view of the importance of that question to the members of the bar, the court was of opinion that it would be advisable to request briefs on that question, not only from counsel in the case, but also from others who might be interested. In accordance with that suggestion, supplemental briefs have been filed by counsel for the parties. Briefs of amici curiae have also been filed by W. W. Cochran, Solicitor of the Patent Office, and Walter J. Derenberg, on behalf of the Commissioner of Patents; Sylvester J. Liddy for the Lawyers' Advisory Committee of the United States Trade-Mark Association; Charles R. Allen for the American Patent Law Association; Philip T. Dalsimer and A. S. Greenberg for the Trade-Mark Committee of the New York Patent Law Association; and Conder C. Henry, formerly Assistant Commissioner of Patents. The court wishes to acknowledge with appreciation those additional briefs which have been fully and carefully considered in the disposition of the issues here presented.

Although each of the parties is of opinion that the Trade-Mark Act of July 5, 1946, effective July 5, 1947, has application to the issues here involved, they disagree as to the interpretation to be placed on section 2(e) of that act. Counsel for appellant argues that section 2(e) should be interpreted as meaning that the Congress intended to change the law as it existed in section 5 of the Trade-Mark Act of February 20, 1905, which reads in part that trade-marks which are "merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, * *" shall not be registered.

Counsel for appellee insists that Congress, by the provision in section 2(e) of the new Trade-Mark Act effective July 5, 1947, which is in accordance with the common law of trade-marks as announced by the Supreme Court, did not intend to change the meaning of the quoted provision in the Trade-Mark Act of February 20, 1905; furthermore, that the term "merely descriptive" contained in section 2(e) of the Trade-Mark Act effective July 5, 1947, being consistent with the common law, has not changed the meaning of the quoted language in section 5 of the Trade-Mark Act of February 20, 1905.

Each of those who filed briefs as amicus curiae is of opinion that the...