Application of Honeywell, Inc.

• Decision Date: 23 May 1974
• Docket Number: Patent Appeal No. 8994.
• Citation: 497 F.2d 1344
• Parties: Application of HONEYWELL, INC.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

497 F.2d 1344 (1974)

Application of HONEYWELL, INC.

Patent Appeal No. 8994.

United States Court of Customs and Patent Appeals.

May 23, 1974.

Leroy Rice, atty. of record, for appellant; Molinare, Allegretti, Newitt & Witcoff, Chicago, Ill., of counsel.

S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents, R. V. Lupo, Associate Sol., Eugene F. Desmond, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

BALDWIN, Judge.

Honeywell Incorporated appeals from the decision of the Trademark Trial and Appeal Board, 169 USPQ 619, refusing registration of a configuration of a portion of a thermostat, as a trademark for thermostats, on the Principal Register.

The application,¹ alleging use since 1952, seeks registration of the following:

A smooth outer cover ring, or "decorator ring," and a center disc positioned concentrically therein are depicted. These features were a portion of the subject matter of an expired design patent² which the appellant had owned.

The trademark examiner had refused registration on the ground that the configuration was incapable of functioning as a trademark within the meaning of the statute since the outer ring and center disc were merely functional in nature and dictated by the configuration of the thermostat itself. The examiner contended that the configuration "is so fundamentally functional and utilitarian that the matter applied for is incapable of acquiring a legal recognizable secondary meaning or of becoming an enforceable trademark." The examiner had also mentioned that "the fact that applicant has secured a design patent . . . covering the shape does not enhance applicant's attempt to secure trademark protection for the same subject matter."

The board chose to rely only upon appellant's prior design patent to sustain the examiner's refusal of registration and stated:

Apart from any consideration as to whether applicant\'s configuration is essentially functional in character because it is formulated or designed to cover a round thermostatic device and is so arranged that the essential operating and temperature controlling and indicating mechanisms are visible to the operator thereof, registration must be refused on the ground that the registration sought by applicant would extend the monopoly which the applicant has enjoyed for a period of fourteen years from the issuance of the design patent on January 17, 1956. Applicant\'s design patent, which expired during the pendency of the subject application, protected applicant for the fourteen year period against another\'s making, using or vending a control instrument including a thermostat utilizing the ornamental design disclosed therein, admittedly substantially identical to the subject matter of the instant trademark application. Under Section 7(b) of the statute, a registration on the Principle sic Register affords the owner thereof, inter alia, prima facie evidence of the registrant\'s ownership of the mark and exclusive right to use the mark in commerce in connection with the goods recited therein, and hence by reason thereof, the right to exclude others from the use and registration of the same or a similar design for similar goods during the life of the registration which is subject to renewal every twenty years. Since applicant\'s design patent expired in 1970, it is apparent that the issuance of a registration for the same subject matter, including the same mark and goods, would be inconsistent with the right of others under the terms of the patent grant to make fair use of the ornamental design for control instruments including thermostats after the expiration of the patent and that it would serve, in effect, to extend the protection accorded the patented design contrary to the purpose and intent of the patent law.

Before the board, appellant had argued that the decision of In re Mogen David Wine Corporation, 328 F.2d 925, 51 CCPA 1260 (1964), was determinative of the "extension of monopoly" issue upon which the board later based its decision. In Mogen David this court held that trademark rights exist independently of the rights resulting from the grant of a design patent, and that these trademark rights do not extend the patent rights. However, the board distinguished Mogen David from the case before it by stating:

The Mogen David case relied on by applicant is clearly distinguishable from the instant case in that the applicant was seeking to register the subject matter of the design patent, namely, the design or configuration of a bottle or container for a product contained therein, namely, wine and not for a bottle or container, per se, whereas here applicant is seeking to register the design of the product for the product itself.

OPINION

Request for Dismissal

Before addressing ourselves to the merits of this appeal, we must first consider a jurisdictional issue raised by the solicitor. Since this is a jurisdictional matter it is proper to raise it at any time. The solicitor calls to our attention that appellant has presented only one reason of appeal, which concerns the alleged error of the board in its interpretation of the Mogen David decision as applied to the facts of this case. Since the examiner had refused registration on the additional ground of functionality, which the board's decision did not explicitly reverse, the solicitor, apparently relying upon the rule formulated in In re Wagenhorst, 64 F.2d 780, 20 CCPA 991 (1933) and expounded upon in In re Boyce, 144 F.2d 896, 32 CCPA 718 (1944), submits that the examiner's position on that issue must be viewed as having been affirmed by the board. Accordingly, the solicitor urges that appellant's failure to file a reason of appeal³ challenging the propriety of that ground of refusal does not fulfill the minimum requirements of the statute⁴ for perfecting appeals to this court. Therefore, the solicitor, citing two additional patent cases, In re Gruschwitz, 320 F.2d 401, 50 CCPA 1498 (1963) and In re Dichter, 110 F.2d 664, 27 CCPA 1060 (1940), requests dismissal of this appeal.

We hold this request to be without merit inasmuch as the instant case is not a patent case; nor does it involve multiple rejections which were presented in the cases relied upon by the solicitor. There was a single refusal of registration of a single alleged mark by the examiner. The board affirmed that refusal. The single reason, though perhaps not artfully drawn and unduly specific in referring to the Mogen David decision, when carefully read unquestionably states that the board erred in its decision that appellant cannot have a trademark registration for subject matter on which it had a design patent because such subject matter cannot be a trademark. The facts of this case which are of record show that what appellant is seeking to register was a portion of the subject matter of its design patent. The reason of appeal clearly brings before us the question of the registrability of that subject matter. The appeal, after all, is from the decision of the board, not the supporting reasoning in its opinion. There was one decision of unregistrability here and one reason of appeal —even though unnecessarily detailed— which is enough to bring it before us.

In recent years this court has liberally construed the requirement for reasons of appeal and a continuance of that policy dictates that we decline the Patent Office invitation to dismiss on a technicality.

For these reasons we hold that appellant's single reason of appeal was sufficient to perfect its appeal to this court.

Extension of Patent Rights

Since the board predicated its decision solely upon appellant's prior design patent and expressed no opinion on the examiner's functionality reasoning, and that issue has not been briefed here, we treat herein only the design patent issue and intimate no view on whether or not appellant's trademark is functional.

The solicitor has presented for our consideration a chain of authorities— Singer Manufacturing Co. v. June Manufacturing Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L.Ed. 118 (1896); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938); and Scott Paper Co. v. Marcalus Manufacturing Co., 326 U.S. 249, 66 S.Ct. 101, 90 L.Ed. 47 (1945)—which is said to stand for the principle that under the patent law, upon the expiration of a patent, the public may freely exercise its right to make, use, and sell the subject matter that was once protected by the patent grant. Therefore, the solicitor argues that registration of appellant's trademark would serve to extend the rights to exclude that had existed during the life of appellant's patent, contrary to the purpose and intent of the patent law. While we agree that the above principle is substantially correct;⁵ the application of that principle will not always lead to the result urged by the solicitor. We believe the solicitor has failed to draw a crucial distinction between functional subject matter disclosed in utility patents and subject matter disclosed in design patents, which may or may not be functional, in the context of their relationship with trademarks. We believe that the decisions of this court have correctly recognized this distinction and are in harmony with the holdings of the Singer, Kellogg and Scott Paper decisions relied upon by the solicitor.

When federal trademark rights have been sought for functional subject matter disclosed in a utility patent, the decisions of this court, notably Best Lock Corp. v. Schlage Co., 413 F.2d 1195, 56 CCPA 1472 (1969), In re Shenango Ceramics, Inc., 362 F.2d 287, 53 CCPA 1268 (1966), In re Shakespeare Company, 289 F.2d 506, 48 CCPA 969 (1961), and In re Deister Concentrator Company, Inc., 289 F.2d 496, 48 CCPA 952 (1961), indicate that the acquisition of such rights will not be allowed in view of the "overriding public policy of preventing their monopolization, of preserving the public right to...