Application of Bourns

• Decision Date: 18 February 1958
• Docket Number: Patent Appeal No. 6355.
• Citation: 252 F.2d 582,117 USPQ 38
• Parties: Application of Marlan E. BOURNS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

117 USPQ 38, 252 F.2d 582 (1958)

Application of Marlan E. BOURNS.

Patent Appeal No. 6355.

United States Court of Customs and Patent Appeals.

February 18, 1958.

Raymond W. Colton, Washington, D. C., for appellant.

Clarence W. Moore, Washington, D. C., for the Commissioner of Patents.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, and RICH, Judges.

WORLEY, Judge.

This is an appeal from the decision of the Commissioner of Patents, 111 U.S. P.Q. 351, affirming the action of the examiner in finally refusing registration on the Supplemental Register of appellant's alleged trademark for potentiometers consisting of an elongated rectangular body provided with eyelets on two of its long sides and having a U-shaped channel member covering three of such sides except for narrow marginal portions. An adjusting screw head is located in one end.

Refusal to grant registration was on the ground that the subject matter is not capable of distinguishing applicant's goods in commerce.

In a companion appeal, 252 F.2d 579, decided of even date herewith, appellant seeks to obtain a design patent on the same device.

Section 23 of the Lanham Act (Trademark Act of 1946) 15 U.S.C.A. § 1091, provides for registration on the Supplemental Register of any package or "configuration of goods" which is "capable of distinguishing the applicant's goods or services." It is contended in the brief on behalf of the Commissioner that "configuration of goods," as used in section 23, "must be restricted to the configuration of a particular part or feature of the article and may not extend to the shape or design of the entire device." We find it unnecessary to rule on that contention, however, since we are of the opinion the alleged configuration of appellant's potentiometer is not capable of distinguishing it from the goods of others within the meaning of section 23.

The provision for the registration of "configuration of goods" appeared in the trademark laws for the first time in the Lanham Act and has not previously been adjudicated by this court. However, a somewhat similar question has been passed on with respect to packages, and it would seem the same principles would be fairly applicable in both cases. In fact, in some instances, such as perfumes or beverages sold in ornamental bottles designed to be used after the contents have been disposed of, the line of distinction between the package and configuration of the goods is quite vague.

The case of In re Burgess Battery Co., 112 F.2d 820, 27 C.C.P.A., Patents, 1927, involved batteries having alternating black and white stripes "applied entirely about the goods and packages." The record showed that customers generally recognized such batteries as the products of appellant and sometimes called for them as "striped batteries." In holding that the striped design did not constitute a trademark the court said:

"* * * The primary object of such design or ornamentation not being for the exclusive purpose of indicating origin or ownership in a trade-mark sense, the design or ornamentation cannot be considered as a valid trade-mark. * * *

"We think it is apparent from the record that appellant\'s alleged trade-mark is a mere `dress\' which gives a distinctive external appearance to appellant\'s goods; that it is such distinctive appearance which is recognized by `some\' of the purchasing public as

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