Application of Cooper

• Decision Date: 23 May 1958
• Docket Number: Patent Appeal No. 6329.
• Citation: 254 F.2d 611,117 USPQ 396
• Parties: Application of Raymond K. COOPER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

117 USPQ 396, 254 F.2d 611 (1958)

Application of Raymond K. COOPER.

Patent Appeal No. 6329.

United States Court of Customs and Patent Appeals.

April 14, 1958.

Rehearing Denied May 23, 1958.

Marzall, Johnston, Cook & Root and John A. Marzall, Chicago, Ill., for appellant.

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

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

RICH, Judge.

The sole question raised by this appeal is whether an arbitrary, that is to say coined, term which is the title of a book, and the only designation the book has, is registrable as a trademark for books under the Trade-Mark Act of 1946, also known as the Lanham Act, 15 U.S.C.A. § 1051 et seq.

Facts.

September 28, 1953, appellant applied for the registration of Teeny-Big as a trademark for books, in Class 38, on the Principal Register under the Act of July 5, 1946, alleging first use and use in "commerce" on July 1, 1953. The specimen filed with the application appears to be the jacket of a book, the front cover portion bearing at the top the words Teeny-Big, underneath which is a picture and under the picture the statement "By R. K. Cooper with Illustrations by Dorothy Ashbrook Hobson." On the portion which would wrap around the back of the book are printed the title and author's name. On the back portion is the usual blurb from which one may gather that the work is a juvenile, that is to say a book for children, the principal character in which is a little elf with magic powers of self-expansion named Teeny-Big. It also appears that Raymond K. Cooper, the author and appellant here, Yale '22, is president of four large building and supply houses, grandfather of five and took "time out of his busy routine to capture within the covers of his new book the elusive spirit of childhood." In sum, the book contains a single story, the name of the story is Teeny-Big, the title of the book is Teeny-Big and the book has no other name, title, subtitle or any other designation except its generic name "book."

Decisions Below.

The Examiner of Trademarks refused registration "on the ground that the mark presented herein is merely the title of a book" and because "the author or proprietor of a literary work has no property in its name, which is merely a term of description which must be used in calling for the goods." Five decided cases and a text were cited as authorities.

Assistant Commissioner Leeds affirmed the decision of the examiner in an opinion published at 110 USPQ 323. Her reasons for refusing registration were essentially the same as those of the examiner but she made this concise statement as to her principal reason:

"The name which is the only name by which an article of merchandise may be identified — whether a book or any other — is not a trademark and is therefore not registrable. Since the subject matter of this application is the name and the only name by which the copies of applicant\'s book can be identified, it is not a trademark and is not registrable."

Appellant's Points.

It has so long been settled that the title of a book cannot be registered as a trademark, because it is not a trademark, that there has been some question in our minds as to whether the concurring decisions below should not be summarily affirmed with mere citation of some of the principal authorities. In re Page Company, 47 App.D.C. 195, alone would suffice. However, the apparent sincerity of appellant's arguments persuades us to a presentation of our views on the principal contentions which have been made and an explanation of the reasons why we believe the appellant's arguments to be unsound.

Wrong Question Asked.

At the outset, appellant misstates the question before us, asserting that it is "whether an arbitrary word may be used as a trademark for books in the same manner in which the same trademark could be used for ordinary commodities such as fruits, canned goods, shoe laces, locomotives, etc." This is not the issue, which is as we have stated it at the beginning of this opinion. No one has asserted that a word may not be used as a trademark for books or that there cannot be trademarks for books, in the form of a word or otherwise, or that trademarks for books cannot be registered under the Lanham Act. Appellant appears to assume that Teeny-Big has been used as a trademark for books in asking that it be registered, but that is what we have to decide. Nothing we say should be taken as implying that no trademark for books can be registered; but before there can be registration there must be a trademark and a trademark exists only where there has been trademark use.

Statutory Provisions.

Appellant's first point, as briefed, is that the 1946 Act entitles him to registration. It is urged that Teeny-Big is registrable by the express provision of Sec. 2 unless it falls within one of the prohibitions of that section and appellant contends that it does not.

Section 2, relied on by appellant, insofar as here pertinent provides:

"Sec. 2. Trade-marks registrable on the principal register

"No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

* * * * * *

"(e) consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them, * * *;" 15 U.S.C.A. § 1052.

The introductory clause and the quoted portion of subsection (e) are complementary and opposite sides of the same coin to the extent that a mark which is "merely descriptive" of the goods to which the applicant has applied it is not being used by him as a trademark for those goods and hence, in that use, is not a trademark. The decisions below are obviously predicated on Section 2 in holding Teeny-Big unregistrable on the grounds (a) that it is not a trademark and (b) that it is the name of applicant's book.

To eliminate any possible doubt on the matter, we proceed on the understanding that the name of a thing is descriptive of it, for the sense in which the trademark law uses the term "descriptive" includes the names of things as well as qualifying expressions. In lay language the name of a thing might be referred to as designative, as in the expression "red rose" the name "rose" is designative and the adjective "red" is descriptive, but trademark law lumps the names and the qualifying expressions in the descriptive category. Thus the names "orange," "bean" and "book" are clearly "descriptive" of oranges, beans and books respectively. Furthermore, such names are incapable of functioning as trademarks because they cannot distinguish the goods of one person from the goods of another.

Appellant asserts that his mark does not fall within any of the prohibitions of the Trade-Mark Act, that he has complied with all of its provisions and apparently assumes that Teeny-Big has been used by him as a trademark. We do not think this is an overstatement for at the beginning of the brief it is stated that "evidently the rejection of the application was based on the alleged premise that a valid trademark may not be had on the use of an arbitrary name as a trademark for books (not in series)" and the question is asked "what protection may he have when an arbitrary word or name is used as a trademark for his books?" (Emphasis ours.)

Appellant seems to be arguing that whenever an arbitrary term is applied to a commodity of commerce — which a book is, of course — it ipso facto becomes a trademark. For example, he says:

"The word `Potatoes\' may not be protected for potatoes, but `Zippo\' may be a valid trademark for potatoes or cigar lighters. `Zippo\', like `Teeny-Big\', being an arbitrary word for the goods or commodity by which the public designates the product to indicate the origin."

To this is coupled an argument, the main theme of the brief, as plausible as it is fallacious, which will best be understood from the following selected passages, illustrative of many others:

"The Examiner holds that the applicant may not have protection on the name or mark of his book, because there is no other way in sic asking for the book. That same kind of reasoning would be true with respect to any other goods, or to commodities such as canned beans, oranges, or what not.

* * * * * *

"To say that there is no other way of asking for a book than by its title, does not appear to be sound and logical because the same is true of any goods or commodity. If a person should ask for a book — and there are millions of books — the next question would be, `What book do you want?\', and the answer would be, `Teeny-Big\'.

* * * * * *

"In the same vein, if somebody asked for an orange or a dozen of oranges, the grocer would say, `What kind of oranges do you want?\' and, if `Sunkist\' oranges were wanted they would reply, `Sunkist\' oranges.

"If a purchaser would say, `I want some canned beans\', he would be asked, `What kind of canned beans do you want?\' He would reply by saying, `Libby\'s\', `Heinz\', or whatever other make he wants.

* * * * * *

"It does not seem to make any difference whether the goods be books, games, golf clubs, riding saddles, oranges, candy, canned goods, or any other item."

But it does make a difference. The purchaser of a book is not asking for a "kind" or "make" of book. He is pointing out which one out of millions of distinct titles he wants, designating the book by its name. It is just as though one walked into a grocery and said "I want some food" and in response to the question "What kind of food?" said, "A can of chicken noodle soup."

The fallacy in appellant's arguments resides in the comparison of the wrong terms. Teeny-Big must be compared to "oranges" and "canned beans" on the facts of this case, and not to "Sunkist," "Heinz," and "Libby's." Obviously, to support our statement of what terms must be compared, it behooves us to show that Teeny-Big is a...