Application of Minnesota Mining and Manufacturing Co.

• Decision Date: 27 August 1964
• Docket Number: Patent Appeal No. 7174.
• Citation: 142 USPQ 366,335 F.2d 836
• Parties: Application of MINNESOTA MINING AND MANUFACTURING COMPANY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

142 USPQ 366, 335 F.2d 836 (1964)

Application of MINNESOTA MINING AND MANUFACTURING COMPANY.

Patent Appeal No. 7174.

United States Court of Customs and Patent Appeals.

August 27, 1964.

Mark W. Gehan, Charles H. Lauder, St. Paul, Minn. (Carpenter, Abbott, Coulter & Kinney, St. Paul, Minn., of counsel), for appellant.

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

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

RICH, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board (136 U.S.P.Q. 676, abstract) refusing to register, on the Supplemental Register, appellant's mark on the sole ground that it constitutes the overall configuration of the goods and as such "does not constitute proper subject matter for registration" on the Supplemental Register. No reference is relied on.

The board so held after expressly admitting that section 23 of the Lanham Act (15 U.S.C. § 1091) "specifically provides for the registration of a mark which consists of a `configuration of goods'." To this we would add the proviso in the statement in section 23 of what the term "mark" includes, that "such mark must be capable of distinguishing the applicant's goods from the goods of others" (our emphasis), which limitation the board unquestionably assumed.

The board appears to have sustained the examiner's refusal to register for the same reason stated by the examiner in his Answer, namely, that the term "configuration of goods" as used in section 23 must be so interpreted as to restrict it to "the configuration of a particular part or feature of the article and must not extend to the shape or design of the entire device." The board said the same thing in substance. But section 23 contains no such limitation.¹

We had this precise contention before us in In re Bourns, 252 F.2d 582, 45 CCPA 821, wherein we said:

"It is contended in the brief on behalf of the Commissioner that `configuration of goods,\' as used in section 23, `must be restricted to the configuration of a particular part or feature of the article and may not extend to the shape or design of the entire device.\' We find it unnecessary to rule on that contention, however, since we are of the opinion the * * * configuration of appellant\'s potentiometer is not capable of distinguishing it from the goods of others within the meaning of section 23." Emphasis added.

In that case we also pointed out that the provision for the registration of "configuration of goods" had not previously been adjudicated by this court, adding,

"However, a somewhat similar question has been passed on with respect to packages, and it would seem the same principles would be fairly applicable in both cases. In fact, in some instances, such as perfumes or beverages sold in ornamental bottles designed to be used after the contents have been disposed of, the line of distinction between the package and configuration of the goods is quite vague."

We have recently decided In re Mogen David Wine Corp., 328 F.2d 925, 51 CCPA ___, in which we reversed a refusal to register, as a trademark on the Principal Register, the overall configuration of an ornamental container for a beverage. There the board, for reasons it is not necessary to go into here, had refused to consider evidence that the bottle configuration functioned as an indication of origin so as to be a trademark. We remanded the case for a decision on that issue because we deemed the overall configuration of the bottle to be capable of indicating origin, doing so without passing on the issue of whether it did so in fact.

The present application is to register on the Supplemental Register and, as we stated in Bourns, section 23, which establishes that register, provides for the registration of "configuration of goods," without qualification as to kind, if "capable of distinguishing applicant's goods." Whether they do or not in fact, it is unnecessary to consider.

Two conditions to registration on the Supplemental Register, stated in Bourns, were relied on by the examiner in refusing appellant a registration. They are: (1) that the configuration must be "intended primarily to indicate origin of the goods" and (2) "that the ordinary purchaser would be likely to consider that it indicated such origin." Initially, the examiner refused registration because of the "absence of evidence" on either of these points, saying that in the absence of such evidence an overall configuration will be "presumed" not to be a "mark." We assume that he had reference, in that reference to "mark," to the statement in section 23 of what marks are intended to be included in the section as subject to registration thereunder. Section 23, of course, does not require that the subject matter to be registered thereunder be a "trademark," as is required for registration on the Principal Register.²

To sum up the statutory law applicable to this case, since this application is to register on the Supplemental Register, the overall configuration of appellant's goods need not be a trademark but only a "mark capable of distinguishing applicant's goods" from the goods of others, in other words a mark which might be a trademark registrable on the Principal Register, upon proof of established secondary meaning. Applicable in addition to the statutory considerations are those policy considerations, which could prevent registration on the Principal Register, considered in our opinion in In re Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952, which apply equally to registration on both registers.

We turn now to the specific facts and issues before us. The goods here involved consist of a promoter-chemical in solid form used in a process of non-electrolytic metal plating. The metal articles to be plated are tumbled in a rubber-lined barrel with plating metal in the form of powder or dust, glass particles, and the promoter-chemical which causes the plating metal to "migrate" to the surfaces to be plated and welded thereto.

The application³ now contains the following amended description of goods:

"Chemical composition in solid form for use in a mechanical, non-electrolytic system adapted to plate metal parts, said system being to tumble said parts in a tumbling barrel with powdered metal, small spherical particles (e. g., glass beads) and said chemical composition, the tumbling action causing the powdered metal to form into a dense, continuous, adherent coating on said metal parts."

The mark sought to be registered is the overall configuration of the promoter-chemical of undisclosed size having a shape only partially disclosed in the application. The application as filed contained a drawing (objected to as not showing the shape in three dimensions) and a photograph of a cake of chemical showing one face only, head on. Subsequently a photograph in perspective was filed but while it shows one edge and the thickness, it still shows only one face, the other side being as much an unknown to us as the other side of the moon in pre-sputnik days. During prosecution of the application, the Patent Office draftsman was requested to make a new drawing from the photograph and did so but it is not a very accurate representation of what the photograph shows. We reproduce it here to give a general idea of the configuration.

Request to cancel the original figure and enter the new figure in its place was deferred by the examiner "until the mark is found to be registrable."

Since the mark is the overall configuration of the goods,⁴ we deem the proposed drawing and photographs on file inadequate in that they do not disclose the overall configuration, but we have enough knowledge to decide the case. As shown, the goods are formed into...