Application of Automatic Radio Mfg. Co., Patent Appeal No. 7994

• Decision Date: 16 January 1969
• Docket Number: 7995.,Patent Appeal No. 7994
• Parties: Application of AUTOMATIC RADIO MFG. CO., Inc. (two cases).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

160 USPQ 233, 404 F.2d 1391 (1969)

Application of AUTOMATIC RADIO MFG. CO., Inc. (two cases).

Patent Appeal Nos. 7994, 7995.

United States Court of Customs and Patent Appeals.

January 16, 1969.

David Wolf, Wolf, Greenfield & Hieken, Boston, Mass., for appellant.

Joseph Schimmel, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND, and BALDWIN, Judges.

RICH, Judge.

These are two ex parte trademark appeals from decisions of the Patent Office Trademark Trial and Appeal Board covered in a single opinion, 150 USPQ 70, and argued together in this court but on separate records.

In Appeal No. 7995 on application serial No. 176,347, filed September 5, 1963, appellant seeks to register the word-mark AUTOMATIC RADIO on the Principal Register for "portable radios, automobile radios, truck radios, boat radios, ignition systems, antennas in Class 21, and air conditioners in Class 34,"¹ claiming first use in 1920.

In Appeal No. 7994 on application serial No. 176,348 appellant seeks to register the word-mark AUTOMATIC for the same goods claiming the same date of first use.

By amendment, the first use dates were particularized to have been in 1920 on the radios, in 1960 on antennas, in 1961 on air conditioners, and in 1962 on ignition systems.

In order to cover goods in two separate classifications, Classes 21 and 34, appellant in each application paid additional fees, as required by section 30 of the Trademark Act (15 U.S.C. § 1112, as amended).

In its applications, as the board recognized, appellant relied on section 2(f) of the trademark statute (15 U.S.C. § 1052(f)) and alleged that the marks sought to be registered had "become distinctive of applicant's goods as a result of substantially exclusive and continuous use in interstate commerce for the five years next preceding the date of filing of this application."² This alleged distinctiveness of the marks, i. e., their acquisition of "secondary" (more accurately, a new primary) meaning, was argued to the examiner. It was supported by numerous affidavits. The principal affidavit was that of appellant's president establishing the amount of business done under the AUTOMATIC and AUTOMATIC RADIO marks. Briefly, it was shown that these marks have been used by appellant in connection with the sale of more than 150 million dollars worth of goods since 1920, more than 100 million of that being since 1958. An estimated 10 million radios bearing the marks have been sold, more than 3 million of them since 1958, representing approximately 90% of appellant's sales since 1958. Since adoption of the marks, 10 million dollars has been spent on advertising, half of that since 1958. Appellant's products are sold through about 1000 wholesale outlets and it has about 2000 sales and service stations throughout the United States. Appellant advertises nationally through trade publications, billboards, newspapers, radio, and television.

The examiner, in his Answers on appeal to the board, recapitulated his two-fold grounds of rejection: (1) he held the marks to be "an apt commercial name and not capable of distinguishing the goods of one entity from the goods of others," and held that as to goods other than radios the AUTOMATIC RADIO mark was deceptively misdescriptive; (2) his second ground in each application was predicated on the inadequacy of the specimens then on file to show trade-mark use and, in effect, the examiner called for additional specimens.

The first hurdle we must surmount is the Patent Office Solicitor's contention that, because the notice of appeal contains no reason of appeal directed to the second ground of rejection and there is no argument in appellant's brief thereon, we should dismiss this appeal under the ancient precedent of In re Boyce, 144 F.2d 896, 32 CCPA 718, (1944).

The notice of appeal in each case contains 14 reasons of appeal, including a very broad first reason. We do not think the solicitor has been misled or incommoded and we consider the reasons entirely adequate to raise this question, if it is in the case. However, we do not think it is in the case because of the following special circumstances of the prosecution.

In view of the implied request for additional specimens in the examiner's objection to their inadequacy, applicant, in advance of the hearing before the board, supplied four additional specimens together with an explanatory affidavit³ of applicant's president. In each application, a communication was sent to applicant by a member of the Trademark Trial and Appeal Board, reading:

The reply brief filed January 3, 1966 and the affidavit and specimens filed January 5, 1966 are noted.

These papers have been entered in the file and will be before the Board for consideration at the final decision.

The new specimens, or facsimiles, are in the record. We have examined them and it appears to us that they, together with the affidavit, must have overcome the examiner's stated objections. We believe that the board must also have been of that view since it made no reference whatsoever to the examiner's second ground of rejection based on specimens. In its usual summary of the examiner's grounds of rejection the board mentions only ground (1), supra. We think appellant made no argument on the second ground with good reason. Having submitted the new specimens, which were personally acknowledged by a board member and before the board at final hearing with no objection being made to their adequacy, appellant was justified in treating that issue as disposed of. We reject the solicitor's attempt to resurrect it as a reason for dismissal of the entire appeal, and we proceed to a consideration of ground (1).

The board thus restated ground (1): The Examiner of Trademarks has, in effect, refused registration on the ground that "Automatic" and "Automatic Radio" are merely descriptive terms as applied to applicant\'s goods, and, as such, are not proper subject matter for registration on the Principal Register.

The board agreed with the examiner whose reasoning was, as recited by the board, that radios (the only goods specifically discussed by the board) may and often do contain many diverse self-acting or self-regulating mechanisms or circuits such as the following: automatic gain control, automatic volume control, automatic frequency control, automatic FM stereo indicator, automatic modulation control, automatic noise limiter, and automatic audio passband control. Coupling this with a dictionary definition of "automatic," the board postulated that:

As so defined, there can be no question but that the word "Automatic" is generically descriptive of any and all products which operate automatically, or which contain self-acting or self-regulating control mechanisms; or that the word "Automatic" followed by the name of a product is a part of the descriptive name for such product. Emphasis added.

We cannot agree with the board. The above statement is unduly broad and contradicted by the evidence in this case, as well as by common knowledge.

We quite agree that "automatic volume control" is wholly descriptive of that feature of a radio receiver, but that does not make "AUTOMATIC" merely descriptive of the radio receiver. Nor does it make "AUTOMATIC RADIO" the name of the receiver. Cars containing automatic transmissions are not commonly known as automatic automobiles. Aircraft containing automatic pilots are not commonly known as automatic airplanes. Appellant has challenged the Patent Office throughout the prosecution to show an instance of a radio known as an automatic radio and none has been produced. The board cited our decision in Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 49 CCPA 931, to support its statement. We do not find it in point. All we held there was that "sudsy" was wholly descriptive of household ammonia that was in fact sudsy. The record there showed that people called it "sudsy ammonia," and that it was the name of the product. The record here does not show that anyone anywhere calls any radios "automatic radios" in a descriptive sense.

A substantial part of the record here consists of some twenty-four affidavits from wholesalers and retailers of appellant's goods who have been in the business for substantial periods, for the most part 10 or more years. They are all in agreement that throughout their business careers they have never heard anyone use "automatic" or "automatic radio" to describe a radio. They all agree that these terms indicate to those in the trade that radios so designated originate with appellant, and they all say they have observed members of the consuming public identifying or requesting radios made by appellant by asking for "Automatic" or "Automatic Radio" products. This shows the existence of "secondary" meaning in these terms with respect to appellant's goods, i. e., a new primary meaning in this field which indicates origin.

The board...