APPLICATION OF STANDARD OIL COMPANY

• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Writing for the Court: KIRKPATRICK
• Citation: APPLICATION OF STANDARD OIL COMPANY, 47 CCPA 829, 275 F.2d 945, 125 USPQ 227 (Cust. Ct. 1960)
• Decision Date: 08 March 1960
• Docket Number: Patent Appeal No. 6493.
• Parties: Application of STANDARD OIL COMPANY.

125 USPQ 227, 275 F.2d 945 (1960)

Application of STANDARD OIL COMPANY.

Patent Appeal No. 6493.

United States Court of Customs and Patent Appeals.

March 8, 1960.

Leland L. Chapman, Cleveland, Ohio (Martin T. Fisher, Washington, D. C., of counsel), for appellant.

Clarence W. Moore, Washington, D. C., for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.¹

KIRKPATRICK, Judge.

This is an appeal from the decision of the Assistant Commissioner of Patents affirming the refusal of the Examiner of Trademarks to register the words "Guaranteed Starting" as a service mark under Section 3 of the Trademark Act of July 5, 1946, 15 U.S.C.A. § 1053. The application is to register the words as a service mark for "inspecting, conditioning, and otherwise servicing motor vehicles to facilitate their operation in cold weather, and starting or arranging for the payment of starting expense of motor vehicles which fail to start after being so serviced."

It appears from the record that, in practice, what is done includes testing the battery, adding certain anti-freeze ingredients to the fuel, installing special lubricants, etc. Some of these services the customer pays for and some are rendered without charge. Upon completion of the work, the applicant's service station operator gives to the customer a certificate containing an agreement to the effect that, if at any time during the winter a mechanic is required to start the car, the applicant will get it started or will reimburse the customer for the cost of starting, if paid by him.

The record shows an extensive and varied use of "Guaranteed Starting" by the applicant in connection with its "winterizing" motor service. However, the record nowhere shows that the words have become distinctive of the applicant's services in commerce (see Section 2(f) of the Trade-Mark Act, 15 U.S.C.A. § 1052 (f)) or that they have acquired any such secondary meaning in the minds of the public.

The Trade-Mark Act of 1946, Section 45, 15 U.S.C.A. § 1127, defines a service mark as "a mark used * * * to identify the services of one person and distinguish them from the services of others * * *." Section 2 (made applicable to service marks by Section 3) provides that no trademark "by which the goods of the applicant may be distinguished from the goods of others shall be refused registration * * * unless it * * * (e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive * * * of them."

The requirements of the statute for the registration of a service mark include (1) that of Section 45 that a mark, in order to be a service mark, must be "used * * * to identify the services of one person and distinguish them from the services of others" and (2) the provision of subsection (e) of Section 2 making unregistrable a mark which is "merely descriptive" of the goods (or services) of the applicant. Those requirements, as this court said in In re Cooper, 254 F.2d 611, 613, 45 CCPA 923, with respect to the corresponding trademark requirements, are "complementary and opposite sides of the same coin to the extent that a mark which is `merely descriptive' of the goods to which the applicant has applied it is not being used by him as a trademark for those goods and hence, in that use, is not a trademark."

In the present case it may be...