APPLICATION OF SUN OIL COMPANY

• Decision Date: 28 May 1970
• Docket Number: Patent Appeal No. 8320.
• Citation: 426 F.2d 401,165 USPQ 718
• Parties: Application of SUN OIL COMPANY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

165 USPQ 718, 426 F.2d 401 (1970)

Application of SUN OIL COMPANY.

Patent Appeal No. 8320.

United States Court of Customs and Patent Appeals.

May 28, 1970.

Donald R. Johnson, Philadelphia, Pa., attorney of record, for appellant.

Joseph Schimmel, Washington, D. C., for the Commissioner of Patents, D. Lenore Lady, Washington, D. C., of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation.

ALMOND, Judge.

Sun Oil Company brings this appeal from the decision of the Trademark Trial and Appeal Board, 155 USPQ 600 (1967), affirming the examiner's refusal to allow appellant's application to register "CUSTOM-BLENDED" for gasoline¹ on the ground that the mark is merely decriptive of applicant's goods within the meaning of section 2(e) (1) of the Trademark Act of 1946 (15 U.S.C. § 1052(e) (1)) and because the evidence submitted has not clearly established a secondary meaning, denoting that the mark has become distinctive of appellant's goods, within section 2(f) of the Act (15 U.S.C. § 1052(f)).

The application seeking registration on the Principal Register alleges use since 1956. The mark is displayed on special pumps, called "blending pumps," at appellant's service stations. The application is designated a continuation of an earlier application filed July 13, 1961, in which registration on the Principal Register was sought for the same mark for gasoline and refused by the Trademark Trial and Appeal Board on the ground that the mark was merely a descriptive connotation to purchasers of applicant's goods.²

In his Answer, the examiner predicated refusal of registration on the ground that CUSTOM-BLENDED is merely descriptive of appellant's goods within the meaning of section 2(e) (1) because it is so highly descriptive of appellant's blended gasoline that it is incapable of becoming distinctive as claimed. It was the examiner's opinion that the term CUSTOM-BLENDED merely informs purchasers that various grades of gasoline from appellant's blending pumps are custom blended for them; that the word "custom" is commonly used to indicate things made to order; that it has very little trademark significance when used in connection with blended gasoline; that appellant is not entitled to exclusive appropriation of this term, which so aptly describes custom-blended gasoline; and that the conclusion derived from surveys conducted by appellant is that purchasers who are acquainted with appellant's Blue Sunoco gasoline know that such gasoline is custom blended.

In affirming refusal of registration, the board stated that granted that the generic terms for appellant's blended gasolines are pump-blended and multplegrade gasolines, there is no question that "`CUSTOM-BLENDED' has a merely descriptive significance in that it will immediately indicate to patrons of applicant's service stations that the various grades of gasoline dispensed thereat are custom blended to their needs and requirements"; that in view thereof and the decision on applicant's prior application, it was incumbent upon applicant to show that the facts and circumstances since that decision have changed in that "`CUSTOM-BLENDED' now serves as an indication of origin of applicant's gasoline to the general public"; that the case, therefore, turned upon the sufficiency of applicant's evidence in that regard; that "the only definite conclusion that can be drawn from the surveys is that purchasers who are acquainted with applicant's `SUNOCO' gasoline know that such gasoline is custom blended"; that this manifestly does not support applicant's assertion that CUSTOM-BLEND has acquired a secondary meaning as an indication of origin for gasoline, and that upon the record presented CUSTOM-BLENDED does not possess anything "other than a descriptive significance to purchasers of gasoline."

We have given a synoptic analysis of the board's able, well-considered and exhaustive opinion without reiterating essential facts of record. These facts are detailed in their essence and relevancy and supportive of the board's conclusions so clearly and aptly enunciated in its decision. We, therefore, incorporate herein by reference the opinion of the board and affirm its refusal of registration. The decision of the Trademark Trial and Appeal Board is, accordingly, affirmed.

Affirmed.

RICH, Acting Chief Judge (concurring).

I agree with the result reached by the majority which is supported by an opinion largely relying on and incorporating by reference the opinion of the board. While I do not disagree with anything said in the majority's opinion, I do not accord the survey evidence, by which it was attempted to show "secondary meaning," the significance apparently accorded it by the board. The examiner accorded it none. I do not agree with the board's statement that "This case turns upon the sufficiency of applicant's evidence" of "secondary meaning."

The examiner in this case was of the view, as the board reported, that CUSTOM-BLENDED "is so highly descriptive of applicant's blended gasoline that it is incapable of becoming distinctive as claimed." (My emphasis.) If that is so, registration must be refused under 15 U.S.C. § 1052(e) (1) no matter what evidence of alleged "secondary meaning" is adduced; in other words, under the facts of this case the law proscribes the possibility of a de jure "secondary meaning," notwithstanding the existence of 15 U.S.C. § 1052...