Application of Standard Elektrik Lorenz Aktiengesellschaft
Citation | 371 F.2d 870,152 USPQ 563 |
Decision Date | 09 February 1967 |
Docket Number | Patent Appeal No. 7709. |
Parties | Application of STANDARD ELEKTRIK LORENZ AKTIENGESELLSCHAFT. |
Court | United States Court of Customs and Patent Appeals |
C. Cornell Remsen, Jr., New York City (Donald J. Goodell, New York City, of counsel), for appellant.
Joseph Schimmel, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for the Commissioner of Patents.
Before WORLEY, Chief Judge, and RICH, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.*
Appellant appeals from the decision of the Trademark Trial and Appeal Board affirming the examiner's refusal to register the mark "SCHAUB-LORENZ" on the Principal Register, 145 USPQ 163.
Appellant, organized under the laws of the Federal Republic of Germany, alleged in its application1 prior registration of the mark in the Federal Republic of Germany.2 Registration is sought here under section 44(e), Trademark Act of 1946 (15 U.S.C. § 1126(e)), which provides, in part:
A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein provided. * * *
The board in its opinion set forth the position of the examiner and its reasoning as follows:
In addition to the evidence submitted by appellant as to the meaning of SCHAUB and LORENZ, appellant argues that various city telephone directories3 do not disclose any listing of SCHAUB-LORENZ. The examiner cites the fact that various city telephone directories4 disclose listings of SCHAUB and LORENZ individually.
Appellant also argues here that the mark has become known and registered in many countries.5 The solicitor replies that no evidence to this effect was submitted by appellant.
Appellant also cited Registration No. 386,174 of March 25, 1941, for LORENZ, now expired, as evidence that the mark here is not primarily merely a surname. The examiner replied that registration under the Trademark Act of 1920 does not support repairability on the Principal Register.
Concerning legal precedents, the examiner and the board relied on the decision in Kimberly-Clark, supra, wherein the court affirmed the District Court's refusal to order registration on the Principal Register of "Kimberly-Clark." The court in its opinion reasoned that if neither Kimberly or Clark was registrable, as being primarily merely surnames, then a combination of the two could not be registered. Appellant argues this decision is inapplicable here because, unlike Kimberly-Clark, evidence has been submitted showing that each term has meaning other than as a surname and appellant itself does not use the combination as its corporate name.
Appellant argues the board failed to apply the correct test in resolving the issue of whether the mark is primarily merely a surname, citing Ex parte Rivera Watch Corp., 106 USPQ 145 (Com'r. Dec. 1955). This opinion states the proper test as being, "What is the primary significance of the mark to the purchasing public?" The mark Rivera was held not to be primarily merely a surname. The opinion also comments that an opposite conclusion in Kimberly-Clark might have been reached if the above test had been applied. Appellant argues in its brief:
The sole issue here is whether the mark sought to be registered, SCHAUB-LORENZ, was properly refused registration under section 2(e) (3) of the Trademark Act of 1946 as being primarily merely a surname. This provision of the act has been productive of diverse and not easily reconcilable decisions by the Trademark Trial and Appeal Board as well as by the courts. As stated by Assistant Commissioner Leeds in the Rivera case, 106 USPQ at 146:
The decisions interpreting the phrase "primarily merely a surname" are not altogether consistent, nor do they establish clear guide lines for future determinations.
The examiner and the Trademark Trial and Appeal Board rely to a large extent on the Kimberly-Clark case, supra, which involved two cases consolidated on appeal. The first case concerned a mark whose dominant portion was "Kimberly Clark." It was refused registration under paragraph 5 of the Trademark Act of 1905 which denied registration of a mark which consisted merely of the name of a corporation. There is no similar issue present here as the mark sought to be registered is not the name of the appellant corporation. In an action brought by appellant in the U. S. District Court, D.C., under R.S. 4915, the complaint was dismissed and the appeal...
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