Application of Mogen David Wine Corporation

Decision Date02 June 1964
Docket NumberPatent Appeal No. 7085.
PartiesApplication of MOGEN DAVID WINE CORPORATION.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Sidney Wallenstein, Chicago, Ill. (Ben Cohen, Washington, D. C., Charles B. Spangenberg, Chicago, Ill., of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for the Commissioner of Patents.

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

ALMOND, Judge.

Mogen David Wine Corporation appeals from the decision of the Trademark Trial and Appeal Board, 134 USPQ 576, refusing registration of the configuration of a decanter bottle, as a trademark for wines, on the Principal Register established by the Trademark Act of 1946.

The application,1 alleging use since November 1956, seeks registration of the following:

Appellant is the owner by assignment of an existing design patent2 described by the board as "covering the decanter bottle for which it seeks registration."

Specimens filed in the Patent Office with the application comprise photographs of the bottle as actually used. While some differences may be noted among the bottles depicted in the drawings of the design patent, the application drawing, and the photographic specimens, no issue was raised below as to whether all three relate to substantially the same configuration.

The board found the factual situation to be as follows:

"The evidence submitted by applicant in an effort to establish its claim of secondary meaning comprises an affidavit by its president, a series of photographs and advertisements, and a large number of affidavits from retailers and consumers of wine. According to the affidavit of applicant\'s president, one of applicant\'s predecessors began to use in 1935 a wine decanter bottle having a configuration slightly different from that shown above. Use of that decanter bottle continued with slight variations until approximately October 1956 when the decanter bottle in question began to be employed. Applicant has sold large quantities of wine in decanter bottles corresponding to the configuration of the present decanter or slight variants thereof, it being estimated that sales of wine bottled in decanters of such configurations by applicant and its predecessors throughout the United States from 1935 up to the present date (March 16, 1960) have amounted in retail value to a sum substantially in excess of fifty million dollars. Applicant and its predecessors have advertised and promoted its wines in such decanter bottles through radio and television, newspapers, magazines, billboards, point-of-sale displays and other media, at a cost during the period from 1935 to the present time of more than fourteen million dollars. The documentary material of record reveals that applicant has consistently and prominently featured a decanter bottle of its wine on telvision programs, on billboards, and in advertisements in nationally circulated consumer and trade publications.
"The affidavits by the retailers and dealers are to the effect that they have, for many years, been familiar with the particular bottles in which wines of various producers have been sold and that they associate wines bottled and sold in decanters of the configuration in question with only one company, namely, the firm selling `MOGEN DAVID WINES.\'"

The examiner took the position that the "container per se did not in fact function as a trademark to indicate origin of the goods in the applicant," stating that:

"* * * Since it does not appear from the record * * * that applicant has at any time, * * * by any * * * means, referred to the container per se as an indication of origin in applicant, the identical or substantially-identical form affidavits from consumers and dealers are not convincing that the container presented for registration does in fact function as a trademark to identify and distinguish applicant\'s wines from like goods of others."

The board in sustaining the examiner's refusal of registration rejected the reasoning applied by the examiner in denominating the issue as solely one of fact, attributing it to the examiner's misconstruction of or apparent confusion relative to the "law pertaining to the registration of the subject matter of an existing design patent on the Principal Register as distinguished from the registration of said matter on the Supplemental Register."

The board, citing In re The Pepsi-Cola Company, 120 USPQ 468 (TT&A Bd., 1959), and noting that the design patent here is due to expire in 1964, reasoned that inasmuch as registration on the Supplemental Register affords the owner no presumptive right to exclusive use, it could not extend the monopoly which the registrant enjoys under the grant of the design patent, while registration on the Principal Register avails to the owner thereof prima facie evidence of ownership of the mark and exclusive right to use it in commerce in connection with the recited goods with the consequent right to exclude others from the use and registration of the same or similar design for like or similar goods, for the duration of the registration, which is renewable every twenty years. The board concluded that issuance of the registration sought by appellant would be inimical to the rights of others conditioned under the patent grant to make fair use of the subject matter after expiration of the patent and would thereby, in effect, extend the monopoly of the patent contrary to the intent and purpose of the patent law.

The board's view was stated as follows:

"It thus seems clear that while applicant\'s decanter bottle, although the subject matter of a subsisting design patent, may in view of the distinctive character of the decanter and the record adduced by applicant be capable of distinguishing applicant\'s wines and hence be registrable on the Supplemental Register, it is precluded as a matter of law during the life of the design patent from constituting subject matter which may properly be registered on the Principal Register. See: In re The Deister Concentrator Company, Inc. 289 F.2d 496, 48 CCPA 952, 129 USPQ 314 (CCPA, 1961). The question whether or not the decanter bottle has acquired a secondary meaning and therefore serves as a trademark to identify and distinguish applicant\'s wines is one which can be considered, if at all, only after the expiration of the design patent."

It is clear that the board refrained from passing judgment on the factual issue as to whether the evidence submitted served to establish that appellant's mark functions as a trademark to identify and distinguish appellant's wines.

The ultimate issue posed here, therefore, is whether or not, as a matter of law, appellant is precluded from obtaining registration for its recited goods on the Principal Register for its bottle configuration trademark during the life of its design patent. This precise question is one of first impression in this court.3

We believe that a proper resolution of the issue here requires recognition of the distinction in purpose underlying the protection accorded designs under the patent laws and that protection accorded trademarks under the common law of unfair competition, including the law of trademarks which is a part of it, and the statutory trademark law, on the basis of secondary meaning.

This distinction is recognized by a number of leading text writers in the field of patent and trademark law. In support of its contention in this respect appellant cites Nims, in Vol. 1, "Unfair Competition and Trade-Marks (4th Edition, 1947), at page 390, where it is stated:

"The good will of the patentee survives the patent. His popularity as manufacturer or merchant may create a demand for the product as made by him which may be represented by a trade-mark, by non-functional decorative features which have acquired a secondary meaning, or by dress such as a label or wrapper of peculiar design by which the article and its maker have become associated in the public mind. These features have nothing to do with the patent rights. They are property of the patentee which survives the patent. As to them, the general rules with regard to trade-marks and the dress of the goods apply as though no patent were involved. As a manufacturer, one may make any unpatented article, but as a vendor, he may be restricted in the interest of fair competition."

A further citation of similar purport is Callmann in Vol. 1, "Unfair Competition and Trademarks" (2d Edition, 1950), at pages 252-253:

"A design patent is a hybrid which combines in itself features of both a patent and a copyright. From the patent it borrows the peculiarity that it is industrial and that its exclusive right is one to `make, use and vend\' as distinguished from the copyright which reserves the right to copy and represent the work to the public. Similar to the copyright its purpose is not to protect a technical idea but to protect an artistic or ornamental form.
The design must be ornamental and is, of course, non-functional in nature; during and after the life of the patent protection may be granted against unfair competition on the ground of secondary meaning."

In further advancement of its thesis that "patent protection does not, in principle, exclude trademark protection or what is tantamount thereto, namely, protection under the law relating to unfair competition where secondary meaning has been established," appellant cites the following cases: Lucien Lelong, Inc. v. George W. Button Corporation, 50 F. Supp. 708 (D.C.S.D.N.Y., 1943); Oneida, Ltd. v. National Silver Co., 25 N.Y.S.2d 271 (N.Y.Sup.Ct., 1940); Prince Matchabelli Inc. v. Anhalt & Co., Inc., 40 F. Supp. 848 (D.C.S.D.N.Y., 1941), and Falcon Industries, Inc. et al. v. R. S. Herbert Co., Inc. et al., 128 F.Supp. 204 (D.C. E.D.N.Y., 1955).

In Lucien Lelong imitation by defendant of the design of a bottle covered by an unexpired design...

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