Application of Helena Rubinstein, Inc.

• Decision Date: 15 May 1969
• Docket Number: Patent Appeal No. 8144,8145.
• Citation: 161 USPQ 606,410 F.2d 438
• Parties: Application of HELENA RUBINSTEIN, INC. (two cases).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

161 USPQ 606, 410 F.2d 438 (1969)

Application of HELENA RUBINSTEIN, INC. (two cases).

Patent Appeal Nos. 8144, 8145.

United States Court of Customs and Patent Appeals.

May 15, 1969.

Laforest S. Saulsbury, New York City, attorney of record, for appellant.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.

Before WORLEY, Chief Judge, McGUIRE, Judge, sitting by designation, and RICH, ALMOND and BALDWIN, Judges.

ALMOND, Judge.

We are confronted here with two separate appeals from a single decision of the Trademark Trial and Appeal Board¹ affirming the examiner's refusal to register on the Supplemental Register appellant's marks "PASTEURIZED"² and "PASTEURIZED" FACE CREAM SPECIAL³ for face cream, on the ground that the word "Pasteurized" was "so highly descriptive as to be incapable of distinguishing the goods." First use since March 1, 1923 is asserted.

We deem it appropriate to treat and dispose of both appeals in a single opinion.

It is stated in the examiner's Answer that the testimony in a prior case involving appellant, Helena Rubinstein, Inc. v. Ladd (U.S.D.C.D.C.1963), 219 F.Supp. 259, affd. 141 USPQ 623, indicates that appellant's goods are in fact pasteurized. The above-styled case involved an appeal from the refusal of the Patent Office to allow registration on the Principal Register of the word "PASTEURIZED" for face cream on the ground that the word was merely descriptive of applicant's goods. The District Court commented as follows:

The fact that plaintiff and its predecessor alone have used the term "PASTEURIZED" continuously in connection with facial and massage creams for over thirty years, and have been the only ones to do so, is not of itself sufficient to establish a secondary meaning of the term, and furthermore, the fact that the involved term has been used so extensively and over such a long period of time cannot * * * make it properly a term for registration as applied for, particularly in view of the fact that one of plaintiff\'s own witnesses in his deposition stated that the materials entering into the cream have been substantially pasteurized.

After citing Webster's Third New International Dictionary,⁴ the board, in affirming the examiner, stated:

It is clear enough * * * that the word "PASTEURIZED" is generically descriptive of any and all products which have been subjected to pasteurization, as it likewise is that it would be deceptively misdescriptive as applied to a product which could be but has not been subjected to pasteurization.

In view of the foregoing, and since applicant\'s face creams, as noted by the Court, have been "substantially pasteurized", we agree with the Examiner that the word "PASTEURIZED" does not possess the capacity to distinguish applicant\'s goods.

There can be no doubt that the issue of pasteurization was directly before and dealt with by the District Court on the basis of testimony substantially reproduced before us in appellant's brief. On this phase of the matter, appellant has had its bite at the proverbial cherry. Appellant's present insistence and argument that the District Court committed error in holding that the face cream had been "substantially pasteurized" is not within our competence to review, nor do we consider it the determinative factor of the issue we are called upon to resolve in the pending appeals. Suffice it to say that the opinion of the board, in the light of the dictionary definitions, holding that appellant's face cream had been "substantially pasteurized" finds ample support in the record. Certain it is that the product is amenable to and was subjected to the process of pasteurization.

Appellant in its brief cites an expired registration of PASTEURIZED CREAM, for facial and massage creams, under the Act of 1920 and argues that this constitutes "a recognition by the Patent Office of the fact that `PASTEURIZED' is a trademark"; that no intervening factual situation would prevent the mark from distinguishing appellant's goods, and that the continued exclusive use should enhance rather than diminish re-registrability. It is pointed out that this argument was not made before the board, hence is not properly before us. In re Osweiler, 52 CCPA 1427, 346 F.2d 617, 145 USPQ 691; In re Allen, 51 CCPA 809, 324 F.2d 993, 139 USPQ 492.

Appellant advances the argument that notwithstanding the assumption that the mark PASTEURIZED is not capable of distinguishing the goods from those of others, such finding, in itself, is not sufficient to preclude registration on the Supplemental Register, citing In re Simmons Co., 47 CCPA 963, 278 F.2d 517, 126 USPQ 52. In Simmons the court stated:

Second, and of more importance here, * * * it is suggested that a mark cannot be placed on the supplemental register unless it can be shown that the "average purchaser" recognizes it as a trademark. However, that is not the test set forth in the applicable statute (15 U.S.C. 1091), which provides, with certain exceptions not pertinent here, that "All marks capable of distinguishing applicant\'s goods or services and not registrable on the principal register" may be registered on the supplemental register. The test is not whether the mark, when registration is sought, is actually recognized by the average purchaser, or is distinctive of the applicant\'s goods in commerce, but whether it is capable of becoming so. In fact a mark which has become distinctive on an applicant\'s goods, if not otherwise barred, is registrable on the principal register, hence is expressly barred from the supplemental register. Emphasis original.

It is our view that the test applied in Simmons is to be taken subject to the construction placed on the applicable statute in In re Bourns, 45 CCPA 821, 252 F. 2d 582, 117 USPQ 38, and subsequently applied in In re Minnesota Mining & Mfg. Co., 51 CCPA 1546, 335 F.2d 836, 142 USPQ 366. In Bourns the court stated that a mark:

* * * cannot properly be registered as a trademark, even on the Supplemental Register, unless it is intended primarily to indicate origin of the goods and is of such a nature that the ordinary purchaser would be likely to consider that it indicated such origin. Emphasis supplied.

We do not consider that the above-noted conditions are met in the instant appeals. We think it apparent that the word "pasteurized" is highly descriptive of appellant's goods. So accepted, the logical inference follows that it was not primarily intended "to indicate origin of the goods." We find nothing of record to allay the impact of that inference. Nor do we believe that mere addition of the unquestionably descriptive words "face cream" and the common commendatory term "special" to the primary word "pasteurized" results in a mark which can be then considered as capable of distinguishing appellant's face cream from that of others. The specimens of record disclose that "PASTEURIZED" appears in association with the internationally well-known name "Helena Rubinstein." Such concurrent usage would, in our judgment, be emanative of the conclusion that the ordinary purchaser would not consider the mark indicative of the origin of the goods. Thus, the conditions prescribed in Bourns are not met. This view was aptly stated by the District Court in the Rubinstein case, previously adverted to, in the following language:

The use of "PASTEURIZED" as has been made by plaintiff herein is not of a nature calculated to cause purchasers to recognize this term as an indication of origin for plaintiff\'s face cream rather than as a term used merely to describe a face cream produced by plaintiff which could be or has been pasteurized. Emphasis added.

In re Minnesota Mining and Mfg. Co., supra, as here, involved registration under section 23 of the Lanham Act (15 U.S.C. § 1091). Therein this court pointed out that the mark for which registration is sought need not be a trademark but that it must be a mark "capable of distinguishing applicant's goods" from the goods of others. In brief, it might be a mark...