Application of Pennsylvania Fashion Factory, Inc., Appeal No. 78-577.

• Decision Date: 18 January 1979
• Docket Number: Appeal No. 78-577.
• Citation: 588 F.2d 1343
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: Application of the PENNSYLVANIA FASHION FACTORY, INC.

588 F.2d 1343

Application of the PENNSYLVANIA FASHION FACTORY, INC.

Appeal No. 78-577.

United States Court of Customs and Patent Appeals.

December 7, 1978.

Rehearing Denied January 18, 1979.

Hymen Diamond, Pittsburgh, Pa., attorney of record, for appellant.

Joseph F. Nakamura, Washington, D.C., for the Commissioner of Patents; Fred W. Sherling, Washington, D.C., of counsel.

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

LANE, Judge.

This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (TTAB), reported at 198 USPQ 568 (1978), affirming the examiner's refusal of appellant's application¹ to register on the Principal Register THE FASHION FACTORY and design as a trademark for costume jewelry; handbags; and ladies' and juniors' dresses, slacks, sweaters, blouses, bathing suits, jackets, and gloves. We affirm.

Background

Appellant, whose trade name is THE FASHION FACTORY, is a retail merchant which predominantly sells juniors' and misses' clothing and related accessories. The goods specified in the application, as set forth supra, are those which it sells and are those for which it seeks to register as a trademark the following stylized version of its trade name:

The specimens² submitted with the application are paper bags on which the stylized version of its trade name appears. The goods are sold in appellant's store, and after being purchased by a customer are placed in these bags for the convenience of the customer in carrying them away.

A majority of the TTAB, 198 USPQ at 570, in agreeing with the examiner, concluded that the specimens did not evince a trademark use of the words proposed for registration but, instead, identified the appellant as an establishment.

The dissent, 198 USPQ at 570, could see no reason to refuse registration to appellant. According to it, section 45 of the Trademark Act, 15 U.S.C. § 1127, specifically contemplates the acquisition of a trademark by a "merchant," and specifically sanctions the use of a mark on "containers" for goods. Since paper bags are containers for appellant's goods, and since merchants are not disqualified from acquiring a trademark registration, it would grant registration to appellant. The dissent's reasoning substantially reflects appellant's position on appeal.

OPINION

Simply stated, the issue to be decided is whether the use of THE FASHION FACTORY in the above-described manner constitutes use as a trademark or use as a trade name. For reasons to be discussed hereinbelow, we hold that the specimens evidence only trade name usage.

Section 2 of the Trademark Act, 15 U.S.C. § 1052, provides, inter alia, that "no trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register . . . ." Section 45, 15 U.S.C. § 1127, distinguishes trade names and trademarks as follows:

The terms "trade name" and "commercial name" include individual names and surnames, firm names and trade names used by manufacturers, industrialists, merchants, agriculturists, and others to identify their businesses, vocations, or occupations; the names or titles lawfully adopted and used by persons, firms, associations, corporations, companies, unions, and any manufacturing, industrial, commercial, agricultural, or other organizations engaged in trade or commerce and capable of suing and being sued in a court of law.

The term "trade-mark" includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.

Thus, as can be seen from the above, the Trademark Act mandates that a line be drawn between trade name use and trademark use since trade names qua trade names do not qualify for registration.

Since THE FASHION FACTORY is the trade name for appellant's retail store, there is a presumption that the present usage is also that of a trade name. See In re Walker Process Equipment Inc., 43 CCPA 913, 233 F.2d 329, 110 USPQ 41 (1956). With this as a premise, we now turn to the facts.

The paper bags submitted as evidence of usage are of the variety normally found near cash registers of retail stores, and normally used by salespersons to insert merchandise purchased by customers. The record, albeit scant, does not suggest that appellant is using its paper bags in a manner which differs from the normal usage. Moreover, both the examiner and the TTAB construed appellant's usage of its bags in the same...