APPLICATION OF THUNDERBIRD PRODUCTS CORPORATION

• Citation: 406 F.2d 1389,160 USPQ 730
• Decision Date: 06 March 1969
• Docket Number: 8085.,Patent Appeal No. 8084
• Parties: Application of THUNDERBIRD PRODUCTS CORPORATION.
• Court: United States Court of Customs and Patent Appeals

160 USPQ 730, 406 F.2d 1389 (1969)

Application of THUNDERBIRD PRODUCTS CORPORATION.

Patent Appeal Nos. 8084, 8085.

United States Court of Customs and Patent Appeals.

March 6, 1969.

Eugene F. Buell, Buell, Blenko & Ziesenheim, Pittsburgh, Pa., for appellant.

Joseph Schimmel, Washington, D. C. (Joseph F. Nakamura, Washington, D. C., of counsel) for the Commissioner of Patents.

Oral argument January 9, 1969 by Mr. Buell and Mr. Nakamura

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN and KIRKPATRICK,^* Judges.

RICH, Judge.

These two appeals from decisions¹ of the Trademark Trial and Appeal Board are treated together in this opinion as the same parties are involved and the issues are almost identical.

The appeals are in appellant's applications² for registration on the Principal Register of the trademarks "DUAL CATHEDRAL HULL" (No. 8084) and "CATHEDRAL HULL" (No. 8085) for "Boats, Particularly of Molded Fiber-Glass and the Like."

Notices of Publication that the respective applications were to be published on November 19 and 26, 1963 were issued. Although no adverse party opposed either application, the examiner refused registration of the marks by identically worded letters dated April 27, 1965. (The record here does not show what occurred in the interval.) In them, he quoted extracts from various publications, hereinafter discussed, referring to "cathedral hull" boats and, in addition, reproduced textbook definitions of an aeronautical term, "cathedral angle."³ It was apparently the examiner's position that the term "cathedral hull," as applied to boats, is a reference to a type of hull design and therefore not capable of distinguishing appellant's boats.

The board, in its opinion affirming the rejection of both applications, found there was substantial support for the examiner's position that "cathedral hull" identifies a hull type, stating:

It seems clear that applicant has used the designation "cathedral hull" to indicate a type of hull rather than to indicate origin. The specific reference in the newspapers and magazines noted by the examiner indicate an acceptance of said term to describe a specific type of hull rather than a boat produced by applicant.

It is clear that the underlying, but not specifically expressed, reason registration has been refused is because the Patent Office does not consider the marks sought to be registered to be marks by which appellant's goods "may be distinguished from the goods of others" as required by section 2 of the Trademark Act of 1946 (15 U.S.C. § 1052) because the term "cathedral hull" applied to a boat is descriptive of a type of hull configuration. The descriptive nature of the marks is supposed to arise not so much from the usual architectural or aeronautical connotations of the word⁴ as from an alleged general recognition by the boating public.

We are thus presented with a situation in which an unopposed mark is refused registration because the mark is alleged to have entered general usage to designate a particular type within the class of goods for which registration is sought. It is therefore necessary for us to consider the literature references which the examiner and the board relied upon, to see whether they support the examiner's position. As the record is deficient in not including the original publications cited, we must refer to the following extract from the letter of the examiner:

The following is noted; In Rudder April, 1965 page 78, "When sailboat designers turned to fiberglass, they retained the same form, although their cousins, the outboard designers, have tried all kinds of shapes; witness the cathedral hulls". In The Washington Post, Feb. 21, 1965 (Potomac Section) page 26; "Outboard runabouts are going more and more to fiberglass and to the deep V longitudinal-step hull and the cathedral form hull, two design ideas that have grown fast in popularity because of their seaworthy, smooth-ride characteristics". In Yachting, Boat Owners Buyers Guide, 1965; page 18, "Cathedral-hulled Maritime 1700 has a bigger sister cruising in our 1B: Metal listings (Maritime Prods. Corp.)"; page 36 "* * IB/OB-powered 20\' all-welded aluminum cathedral-hull cruiser; fully-enclosed head and forward bunks: Maritime Products Corp * * *"; "* * Arapaho 20\' day cruiser, Cherokee 28\' sportfisherman, Formula Jr. 17\'3 ski runabout. Fiberglass; cathedral hulls except Formula which has longitudinal deep-V step design: Thunderbird Corp. * * *"

Reviewing these uses of the term "cathedral hull," it appears to us that the term, by 1965 at least, was in general use to describe a specific type of hull rather than a boat produced by applicant, as found by the board. Furthermore, we think that the use of the term appearing in a national newspaper and two boating publications has a significance greater than that of a few sporadic unauthorized uses, as appellant argues.

One question remains, however, and that is whether the fact that the mark had become descriptive by 1965 should defeat trademark application filed in 1963, at which time, as far as the record shows, the mark was suitable for registration. In DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 48 CCPA 909 (1961), involving an opposition to the proposed mark "Power Shop" which the opposer (not having a registration of the proposed mark) contended he had been using descriptively, we said:

The first step toward that decision is our conclusion that where opposer is not

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