Application of Pollak Steel Company, Patent Appeal No. 6937.
| Decision Date | 13 March 1963 |
| Docket Number | Patent Appeal No. 6937. |
| Citation | 314 F.2d 566 |
| Parties | Application of the POLLAK STEEL COMPANY. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Burton Perlman, Paxton & Seasongood, Cincinnati, Ohio, for appellant.
Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for the Commissioner of Patents.
Before RICH, Acting Chief Judge, and MARTIN, SMITH and ALMOND, Judges.
This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 131 USPQ 482, affirming the examiner's ex parte refusal of appellant's application to register its mark on the Supplemental Register, Ser. No. 91,837, filed February 29, 1960.
The board, in its opinion initially deciding this case on October 19, 1961, relied on our decision in In re Deister Concentrator Company, Inc., 289 F.2d 496, 48 CCPA 952. Our opinion in that case, handed down February 21, 1961, was first published, due to a petition for rehearing which delayed publication, on June 2, 1961, which was after appellant here had filed its brief in the appeal to the board. Appellant requested the board to reconsider and fully argued the relevancy of what we said in the Deister case. The board did reconsider and reaffirmed its original decision on December 8, 1961.
In our Deister opinion we pointed out that, in line with consistent decisions of the United States Supreme Court and other courts, nothing which the public has or would have a right to copy, in the absence of valid patent or copyright protection, can be the subject of a valid trademark registration and that this is so irrespective of public acceptance of the subject matter sought to be registered as an indication of source. We pointed out that this is a fundamental principle of the law of trademark ownership which is outside the provisions of the trademark statute (the Lanham Act), to which the provisions of that statute are subservient. We also pointed out that the principle applies without regard to the effort or money expended in an attempt to create trademark rights in something which the public has or will have the right to copy.
While the application herein is one for registration on the Supplemental Register, the principles stated in the Deister case are as applicable thereto as they were to the application here involved to register on the Principle Register. Section 23 of the Lanham Act, 15 U.S.C. § 1091, which governs registration on the Supplemental Register, permits registration only of marks "capable of distinguishing applicant's goods or services." How such capability must be judged is dealt with hereinafter.
Since the nature of the goods is of vital importance to the decision in this case we will describe them first, before describing the "mark."
Appellant seeks to register a mark for "metal fence posts." The record contains descriptive literature in which this merchandise is referred to as CREST LITE STUDTEE STEEL DRIVE REFLECTORIZED FENCE POST. "CREST LITE" is featured as a trademark and the remainder of the phrase appears to be descriptive. The posts are of steel and have a T-shaped cross section with studs down the flat top of the "T" to keep fence wire in place. The posts are designed to be driven into the ground. The advertisements feature the "Exclusive Reflectorized top" or "the exclusive Reflectorized Crest." This is further explained in one advertising piece as follows: Pictures showing road and driveway boundaries marked by shining fence post tops illustrate the text. So much for the goods.
The drawing of the mark sought to be registered shows the top portion of a "studtee" fence post, the uppermost few inches of which is denoted, by brackets and wording, as having "Reflective Coating." (The drawing is reproduced in the published board opinion, 131 USPQ at page 483.)
The application states, "The trademark is used by applying it directly to the goods and five drawing reproductions showing the mark as actually used are presented herewith." The Patent Office brief says that the "drawing reproductions" are colored and show "the reflective top of the post as gray and the rest of the post as green."
The application contains this descriptive paragraph:
"The mark consists of a coating, which can reflect a directed beam of artificial light, applied to a mental sic fence post, the coating being in the form of a design extending between a substantially straight boundry line normal to the axial length of the post a short distance below the top of the post, and the top of the post, as indicated in the accompanying drawing."
Appellant's arguments have made much of this "design." To get it into realistic perspective at the outset, we state that all the "design" amounts to is a solid coating of reflective coating material, without regard to color, covering a few inches of the top of the post. The application is rather vague as to how much of the top is thus coated, specifying only "a short distance." Evidence, together with the application drawing, indicates that, in practice, about 3½ inches of the top is coated.
There are references in the examiner's final rejection and Examiner's Statement, in the board opinion, and in appellant's brief to a disclaimer, apparently a part of the application as amended, shown in the record, however, only as "Insert B1," which insert has not been included though appellant relies on it. The solicitor's brief has helpfully stated that the disclaimer, consistently with the statements about it which are of record, is shown by the Patent Office records to read as follows:
"Applicant disclaims the reflective coating applied to the metal fence post except in the design shown in the accompanying drawing."
At first blush it would appear to be somewhat enigmatic that the mark consists of a reflective coating covering the top few inches of the post, which reflective coating is disclaimed "except in the design shown," which design resides in the solid coating of the top few inches of the post. It looks as though the mark sought to be registered is disclaimed. But since appellant's counsel obviously could not so intend, we will turn to the arguments which attempt to make a case for registration out of the above and other facts, with a view to developing what is left of the mark after giving effect to the disclaimer.
Appellant has introduced the affidavit of an officer and 12 affidavits from dealers and users. Several advertisements are identified by the officer. The main burden of the other affidavits, which have a certain family resemblance indicative of common origin, is that in the fence post business it had become customary to identify the producers by color on the tops of the posts. The most specific illustrative statement on this point is the following:
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