APPLICATION OF SHAKESPEARE COMPANY
| Citation | 289 F.2d 506 |
| Decision Date | 02 June 1961 |
| Docket Number | Patent Appeal No. 6629. |
| Parties | Application of SHAKESPEARE COMPANY. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Kenyon & Kenyon, New York City, Robert U. Geib, Jr., Washington, D. C. (Ralph L. Chappell, New York City, 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, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.*
This case has to do with marks on fishing rods which appellant claims to be and desires to register as a trademark. The appeal is from the refusal of the Patent Office to do so.
The application, Ser. No. 16,977, filed October 4, 1956, says:
A drawing was filed which is supposed to show the mark, and does so as well as a drawing can, but its true nature must be gathered from the specimens actual fishing rods of resin-bonded glass filaments. The mark will best be understood from a consideration of how it is made, as described in United States Patent No. 2,571,717 to Howald and Meyer. Appellant's rod has been advertised as the "patented Howald-Process Wonderod."1
The Howald et al. patent discloses a rod and a method of making it wherein the rod is constructed by covering a core with a layer of longitudinally extending glass filaments which have been pre-coated with a hardenable synthetic resin adhesive such as a polymerizable unsaturated polyester or a diallyl ester. The core is some light wood or resin material strong in compression and may be tapered. It is fed into a machine wherein the resin-coated glass filaments are applied to it from bobbins and bound around it by a temporary spiral wrapping of binding tape. While still bound by the tape the assembly passes through an oven wherein the resin is set and after leaving the oven the tape is unwound. According to the patent specification, the tape may be a steel ribbon, a cellophane strip, or other tough smooth material. According to the record, cellophane is used in practice.
This manufacturing process leaves its mark on the rod. It is this mark which appellant wants to register. Until the mark has had attention called to it, it is not very apparent. Inspection of samples shows that a tape about 4 mm. wide has been wrapped spirally on the rod with an overlap of about 0.5 mm. The setting of the resin within this smooth wrapping leaves a glassy surface with a slight spiral rib of no greater height than the thickness of the cellophane wrapping, produced by the overlap of its adjacent turns. In other words, one can see where the edges of the tape were located during the curing of the resin. It might be considered more of a tactile mark than a visual mark because this surface roughness is easier to feel than to see. It is apparent that it got there as a necessary result of the process of manufacture, as an incident of the process used, and was not applied arbitrarily for the purpose of indicating origin or identifying the goods. In fact, such use was admittedly an afterthought. Goods made by this process necessarily bear this mark and if it is not to remain, it must be removed by a further processing step, such as grinding, which, it can be presumed, would involve further manufacturing cost.
Appellant tells us, by way of argument, that it recognized in the beginning that these markings might be a definite handicap to sales and considered the desirability of grinding them off to make a smooth rod. It then says:
"Appellant, however, decided against this step and adopted the spiral markings as a trademark and then started a campaign aimed at teaching the public that the spiral mark was a Shakespeare trademark."
On the basis of the assumed success of the advertising campaign, which we accept, arguendo, appellant says the mark has become distinctive of its goods in...
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Eco Manufacturing LLC v. Honeywell Intern., Inc.
...In re Deister Concentrator Company, Inc., 48 C.C.P.A. 952, 289 F.2d 496, 129 USPQ 314 (CCPA, 1961); In re Shakespeare Company, 48 C.C.P.A. 969, 289 F.2d 506, 129 USPQ 323 (CCPA, 1961); In re Shenango Ceramics, Inc., 53 C.C.P.A. 1268, 362 F.2d 287, 150 USPQ 115 (CCPA, 1966); Best Lock Corpor......
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Schwinn Bicycle Co. v. Murray Ohio Manufacturing Co.
...J. R. Clark v. Murray Metal Products Co., supra; Alan Wood Steel Co. v. Watson, supra, at 862. See also Application of Shakespeare, 289 F.2d 506, 508, 48 C.C.P.A. 969 (1961). In summary, the Court finds that Murray did not infringe Schwinn's registered mark, the invalidity of a trademark be......
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Shakespeare Co. v. Silstar Corp. of America, Inc.
...... grounds" not provided for in the Lanham Act). 9 This case is very similar to another case involving Shakespeare. In In re Shakespeare Co., 289 F.2d 506 (C.C.P.A.1961), the Court of Customs and Patent Appeals held that certain markings on Shakespeare's "Wonderod" which necessarily result......
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Vornado Air Circulation Systems, Inc. v. Duracraft Corp.
...utility patents. But there was case law denying protection to a closely related type of nonfunctional design. In In re Shakespeare Co., 289 F.2d 506, 508, 48 CCPA 969 (1961), the Court of Customs and Patent Appeals denied trademark registration to a recognizable spiral marking on fishing ro......
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...F.3d at 1509 (criticizing Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512 (9th Cir. 1989)). (131) See id. (comparing In re Shakespeare Co., 289 F.2d 506, 508 (C.C.P.A. 1961) with Clamp Mfg., 870 F.2d at (132) See id. (citing Shakespeare, 289 F.2d at 506). In Shakespeare, the Court of Customs ......