Application of Deister Concentrator Company

Decision Date02 June 1961
Docket NumberPatent Appeal No. 6608.
Citation289 F.2d 496
PartiesApplication of DEISTER CONCENTRATOR COMPANY, Inc.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

John H. Sutherland, St. Louis, Mo., (Philip B. Polster, St. Louis, Mo., of counsel), for appellant.

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

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.*

RICH, Judge.

This is an ex parte appeal from the refusal to register on the Principal Register, under section 2(f) of the Trademark Act of 1946, 15 U.S.C.A. § 1052(f), as a trademark for "ore concentrating and coal cleaning tables," the following alleged trademark:

Use of the above since 1906 is asserted and the application, Ser. No. 31,474 filed June 6, 1957, contains the following description:

"The trademark consists of a substantially rhomboidal outline, and is applied to the goods by configurating the working surface thereof so that the exterior outline of such surface is substantially rhomboidal in plan; and five photographs showing the mark as actually used are presented herewith."

The photograph, or specimen, shows in plan view the top surface or deck of a concentrating or cleaning table, otherwise known in this art as a shaking table. Except for trifling variations which we ignore, the "exterior outline" of the table shown in the photograph corresponds to what is sought to be registered as a trademark.

To be somewhat more specific about what the alleged mark is, it might be well to describe in more detail the device itself. A shaking table is a device for separating solid particles suspended in a flowing film of water on the basis of differences in their size, specific gravity, or shape. The table proper or deck is a plane surface, the size of which is of the order of six by fifteen feet, which is inclined slightly from the horizontal and shaken with a differential movement in the general direction of its long axis and washed at right angles to the direction of motion by a stream of water carrying the particulate material to be separated, thus effecting the desired concentrating or cleaning action. Part of the surface of the table may be covered with "riffles" or ridges for trapping particles and moving them in a desired direction. Separation is effected by virtue of the fact that one class of particles will run off the end of the table and another class will run off the side.

According to the affidavit of appellant's president, its competitors all make their tables with rectangular or very nearly rectangular decks whereas appellant's decks have the outline shape above shown and sought to be registered as a trademark. Appellant claims to have been using this "distinctive outline shape" for more than fifty years and in 1920 Reg. No. 130,483, still in force, was obtained of a mark consisting of a design including the words "Deister Overstrom Diagonal Deck." More recent advertisements of record indicate substitution of the name "SuperDuty Diagonal-Deck" table as the name of the product. One advertisement run in February 1940 includes the statement, "The SuperDuty No. 6 Deister-Overstrom Ore Concentrating Table, utilizing our exclusive and efficient Diagonal-Deck Design, is a complete new machine offered as the highest class job available today." The alleged mark, then, is the outline shape of the deck portion of a Deister-Overstrom table.

Rejection

The examiner's initial rejection was on the ground that "it does not appear to be capable of distinguishing applicant's goods from those of others." Applicant then replied with thirty affidavits and other evidence occupying seventy-one pages of the record here intended to show that those in the trade do in fact recognize shaking tables having tops with the above enterior outline shape as applicant's goods and do so by virtue of that shape. We have no reason to doubt that they do. However, the examiner again rejected, saying:

"It is apparent that the shape of applicant\'s deck tables table decks? is utilitarian and must be characterized as functional. It appears that applicant selected the rhomboidal shape or design to increase production and efficiency of its coal cleaning tables. It is believed that the rhomboidal outline design which applicant is seeking to register serves only to illustrate the shape of its table decks. In the case of Ex parte Alan Wood Steel Company, 101 U.S. P.Q. 209, the Examiner in Chief held that `The fact that the design is recognizable is not sufficient to make it registrable, for if this were the criterion then every article made by one manufacturer in a form somewhat different from articles of like kind made by others would be registrable as an alleged mark.\'"

On appeal, the rejection was affirmed, the board saying:

"There can be no question on the record presented but that the diagonal or rhomboidal design of the deck component of applicant\'s product is functional. As such, it is not a trademark. See: In re Bourns, 117 USPQ 38 (CCPA, 1958); Alan Wood Steel Company v. Watson, Comr.Pats., 150 F.Supp. 861 113 USPQ 311 (DCDC, 1957).
"Furthermore, since applicant\'s ore concentrating and coal washing machinery is made in accordance with an expired and a presently subsisting patent, others in the field have, or will have, upon expiration of the latter patent, the right to make similar machinery utilizing rhomboidal shaped decks."

The board had reference, in the last paragraph, to patents No. 2,582,302 and No. 2,242,562 which appellant introduced into the record in its brief before the board.

The Law

We shall first deal with the two cases relied on by the board. In re Bourns, 252 F.2d 582, 45 CCPA 821, we held that the appearance of a small potentiometer was unregistrable on the Supplemental Register because it was not capable of distinguishing the applicant's goods from those of others, within the meaning of Section 23, Trademark Act of 1946, 15 U.S.C.A. § 1091. As can be seen from our opinion, especially when considered with another one handed down the same day in a design patent case of the same applicant on the same subject matter, In re Bourns, 252 F.2d 579, 45 CCPA 817, the features and proportions of appellant's device were found to result from considerations of utility rather than appearance. The screw head in one end, the eyelets in the side, and the location of the eyelets at the corners of the channel member were all found to be utilitarian, and the appearance as a whole was made up of these features. There was no showing that appearance as a whole or any element of it was intended to indicate source or was capable of doing so.

In Alan Wood Steel Co. v. Watson, D.C. D.C., 150 F.Supp. 861, and Ex parte Alan Wood Steel Co., 101 USPQ 209 (P. O. Examiner in Chief), which seem to us indistinguishable in principle from the present case, the alleged mark sought to be registered was a raised non-skid pattern integrally produced on steel plate flooring. An illustration of it will be found in the opinion of Examiner-in-Chief Federico in 101 USPQ at p. 210. As his opinion also shows, some seventy affidavits were filed to establish that the design did in fact enable the affiants to recognize the plates as the product of the applicant. He concluded, nevertheless, that, in itself, that fact would not justify registration.1 The case was taken to the District Court for the District of Columbia under 35 U.S.C. § 145 where Judge Holtzoff sustained the refusal to register because the configuration of goods sought to be registered was "utilitarian" or "functional," citing The J. R. Clark Co. v. Murray Metal Products Co., 5 Cir., 219 F.2d 313. Judge Holtzoff said:

"Were the law otherwise, it would be possible for a manufacturer or dealer, who is unable to secure a patent on his product or on his design, to obtain a monopoly on an unpatentable device by registering it as a trademark. The potential consequences to the public might be very serious, because while a patent is issued for only a limited term, a trademark becomes the permanent property of its owner and secures for him a monopoly in perpetuity." 150 F.Supp. at page 862.

We agree with the philosophy underlying that statement. To give appellant the trademark registration it asks for here would give it a potential perpetual monopoly on the outline shape of its shaking table deck. The basic issue here is whether the law permits such a monopoly.

In the Clark case, supra, the article was an ironing board or table with a perforated top made of expanded metal. The suit was one for patent infringement and unfair competition and on the latter issue it was contended that the distinctive appearance of the ironing board had acquired a secondary meaning justifying injunctive relief. The Court of Appeals for the Fifth Circuit gave as one of its reasons for refusing relief, asked for on the basis of "secondary meaning" (which is but another way of saying that the appearance of the ironing board had become capable of indicating the source of the goods), that

"* * * the novel appearance of the flat expanded metal top of appellant\'s ironing table, being functional and a result of a well known manufacturing process, may not acquire any secondary meaning which would render it subject to exclusive appropriation by anyone in the trade." 219 F.2d at page 320.

Judge Holtzoff, in the Alan Wood Steel case, restated the proposition thus:

"A novel shape or appearance that is functional in character may not acquire any secondary meaning that would render it subject to exclusive appropriation as a trademark." 150 F.Supp. at page 862. Emphasis ours.

We agree with that statement but we observe that it does not tell us how to determine when a novel shape or appearance is "functional" or whether any shape that performs a utilitarian function falls in that category. Appellant argues that a mark whose primary significance is to indicate...

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