Application of Hollywood Brands

• Decision Date: 30 June 1954
• Docket Number: Patent Appeal No. 6008.
• Citation: 102 USPQ 294,214 F.2d 139
• Parties: Application of HOLLYWOOD BRANDS, Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

102 USPQ 294, 214 F.2d 139 (1954)

Application of HOLLYWOOD BRANDS, Inc.

Patent Appeal No. 6008.

United States Court of Customs and Patent Appeals.

June 30, 1954.

Theodore W. Miller, Chicago, Ill., for appellant.

E. L. Reynolds, Washington, D. C. (Clarence W. Moore, Washington, D. C., of counsel), for the Commissioner of Patents.

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and JACKSON (retired), Judges.

WORLEY, Judge.

This is an appeal from the decision of the Examiner-in-Chief, acting for the Commissioner, affirming the decision of the examiner refusing registration on the Principal Register of appellant's mark "Butter-Nut" as applied to candies. The application of appellant, Hollywood Brands, Inc., doing business as Hollywood Candy Co., was filed February 27, 1948, under Section 2(f) of the Trade-Mark Act of July 5, 1946, 15 U.S.C.A. § 1052(f). Appellant alleges November 20, 1916, as the date of first use of its mark.

The examiner denied registration on the theory that the mark was incapable of distinguishing appellant's goods from the goods of others; also that it was deceptive and therefore unregisterable under the provisions of Section 2(e). Upon appeal the Commissioner reversed the first rejection and observed that

"Section 2(e) of the Act prohibits registration of a mark that is merely descriptive of the goods. There is no doubt that applicant\'s mark is descriptive of at least some of the ingredients of his goods. Section 2(f), however, permits registration of such a mark if it has become so distinctive of applicant\'s goods in commerce that it primarily indicates the origin of the source of his goods rather than the goods itself."

and proceeded to hold that appellant had failed to prove that its mark was substantially capable of identifying the origin of the goods within the meaning of Section 2(f).

Appellant here contends that the commissioner's holding constitutes reversible error.

In determining that issue we quote the appropriate portions of the section involved:

Sec. 2. "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 —

* * * * * *

"(f) Except as expressly excluded in subsections (a), (b), (c), and (d) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant\'s goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant\'s goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration." 15 U.S.C.A. § 1052.

There is no doubt that Congress intended that the burden of proof should rest upon the applicant for registration, but it set up no standard by which the "distinctiveness" of a mark was to be determined other than to suggest that substantially exclusive and continuous use of a mark in commerce for the five years immediately preceding application for registration could be considered as prima facie proof that it had become distinctive.

The cases cited by the respective counsel have been examined but we find none of them sufficiently in point to be controlling; we do find, however, an increasing tendency to require more and still more proof from an applicant for registration under Section 2(f) than we think Congress fairly intended to impose. For example, the broad language used in the case of Master, Wardens, Searchers, Assistants and Commonalty of Co. of Cutlers in Hallamshire in County of York v. Cribben and Sexton Co., 202 F.2d 779, 40 C.C.P.A., Patents, 872, 878, was not necessary to the proper disposition of that controversy nor do we think it applicable to the facts at bar.

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