Application of Mogen David Wine Corporation
Decision Date | 02 June 1964 |
Docket Number | Patent Appeal No. 7085. |
Parties | Application of MOGEN DAVID WINE CORPORATION. |
Court | U.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.
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 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 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:
A further citation of similar purport is Callmann in Vol. 1, "Unfair Competition and Trademarks" (2d Edition, 1950), at pages 252-253:
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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