Baxter Laboratories v. Don Baxter, Inc.

• Decision Date: 29 January 1951
• Docket Number: Special Patent Docket No. 45.
• Citation: 186 F.2d 511
• Parties: BAXTER LABORATORIES, Inc. v. DON BAXTER, Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

186 F.2d 511 (1951)

BAXTER LABORATORIES, Inc. v. DON BAXTER, Inc.

Special Patent Docket No. 45.

United States Court of Customs and Patent Appeals.

January 29, 1951.

Lyon & Lyon, Los Angeles, Cal., for Don Baxter, Inc., applicant-appellant.

Scrivener & Parker, Washington, D. C., for Baxter Laboratories, Inc., opposer-appellee.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON and WORLEY, Judges.

JOHNSON, Judge.

The decision of the Commissioner of Patents in this case (1) sustained the opposition filed by Baxter Laboratories, Inc. to the registration on the principal register sought by Don Baxter, Inc., and, in addition, (2) denied ex parte the registration of the applicant's mark.

The issue presented for the Commissioner's decision inter partes in the opposition proceeding was whether the applicant and opposer companies are related companies within the meaning of Section 5 of the Lanham Act, Trade-Mark Act of 1946, 15 U.S.C.A. § 1055. Don Baxter, Inc., sought registration of the mark "Baxter" on pharmaceutical preparations, claiming use of the mark by itself and by the Baxter Laboratories, Inc. as use by related companies, as provided by Section 5 of the Act. The mark was passed for registration under that provision of the Act, whereupon Baxter Laboratories, Inc. filed an opposition to the registration of the mark denying that Baxter Laboratories, Inc. and Don Baxter, Inc. are related companies. An issue was thus reached inter partes, and the Commissioner decided that issue in favor of the opposer. Registration of the mark on the basis of use by related companies was thus denied applicant, Don Baxter, Inc.

Before the Commissioner, the applicant, Don Baxter, Inc., also contended that it was entitled to registration of the mark "Baxter" for certain western states on the basis of concurrent user, relying on the concurrent registration provision of Section 2(d) of the Lanham Act, 15 U.S.C.A. § 1052(d). The Commissioner, on opposer's objection, declined to consider that question inter partes, but he did consider applicant's contention ex parte. As an ex parte matter, the Commissioner held that the applicant, Don Baxter, Inc., is not entitled to the registration for which it applied, considering its application as one for registration as concurrent user.

The applicant seasonably filed with the Commissioner its notice of appeal to the Court of Customs and Patent Appeals. The notice sets out twenty-one reasons of appeal, eleven of which are directed to the decision on the inter partes issue of use by related companies, and ten of which are directed to the Commissioner's ex parte denial of registration considering the application as one for registration as concurrent user.

The opposer, Baxter Laboratories, Inc., thereupon promptly filed with the Commissioner its notice of "election to have all further proceedings conducted as provided in R.S. § 4915."

The application and proceedings below are based upon the provisions of the Lanham Act, 15 U.S.C.A. § 1051 et seq. As to appeals from the decision of the Commissioner of Patents, Section 21 of the Act provides inter alia that any applicant for registration of a mark and any party to an opposition proceeding who is dissatisfied with the Commissioner's decision may appeal to this court or proceed under R.S. § 4915, 35 U.S.C.A. § 63. The applicant herein, Don Baxter, Inc., thus had the option to come here or go into a District Court of the United States in a proceeding de novo. He elected to come here.

Section 21 of the Lanham Act also provides, however, that any party who is satisfied with the Commissioner's decision may, upon the taking of an appeal here by any dissatisfied party, elect to have all further proceedings conducted under R.S. § 4915, as provided in R.S. § 4911, 35 U.S. C.A. §§ 63, 59a. R.S. § 4911 requires that an appeal brought here by a dissatisfied party shall be dismissed if his adversary within twenty days files his notice of election to proceed under R.S. § 4915. After such election and dismissal, the appellant (dissatisfied party) must within thirty days file his complaint in a District Court of the United States initiating a proceeding de novo in equity, or have the decision appealed from stand by his default.

Baxter Laboratories, Inc., therefore, as the satisfied party to an opposition decided by the Commissioner, had the right, after Don Baxter, Inc. filed its notice of appeal to this court, to elect to have all further proceedings in the opposition conducted in the District Court. The notice of such election filed by Baxter Laboratories, Inc. requires this court to dismiss the appeal from the Commissioner's decision in the inter partes proceeding. This, however, does not dispose of the appeal, since the applicant appealed not only from the Commissioner's inter partes decision sustaining the opposition, but also from the Commissioner's ex parte decision denying registration as concurrent user.

The Commissioner has not only the right but the duty in an opposition proceeding to determine ex parte and without reference to the issue raised by the notice of opposition whether the applicant's mark is entitled to registration. Dubonnet Wine Corp. v. Ben-Burk, Inc., 121 F.2d 508, 28 C.C.P.A., Patents, 1298; Columbia Broadcasting System, Inc. v. Technicolor Motion Picture Corp., 166 F.2d 941, 35 C.C.P.A., Patents, 1019. When an appeal is before the court in such a case, the opposer has no right to be heard on the ex parte ground, Chrysler Corp. v. Trott, 83 F.2d 302, 23 C.C.P.A., Patents, 1098, 1106; Revere Paint Co. v. Twentieth Century Chemical Co., 150 F.2d 135, 32 C.C.P.A., Patents, 1096, 1101, as only the Commissioner of Patents is qualified to represent the interests of the public in ex parte registration proceedings. Island Road Bottling Co. v. Drink-Mor Beverage Co., 132 F.2d 129, 30 C.C.P.A., Patents, 708; McKesson & Robbins, Inc. v. Isenberg, 167 F.2d 510, 35 C.C.P.A., Patents, 1095; Derenberg, The Patent Office as Guardian of the Public Interest, 14 Law and Contemp. Problems 288, 317-18. An opposer may, under Section 21 of the Lanham Act, by exercising his right of election, force a dissatisfied applicant-appellant to challenge the Commissioner's inter partes decision in the opposition proceeding in an action de novo in equity in a District Court of the United States or not at all, but an opposer is without standing to affect a dissatisfied applicant's appeal to this court from an ex parte decision of the Commissioner denying registration of a mark. Island Road Bottling Co. v. Drink-Mor Beverage Co., supra; see Schering & Glatz, Inc. v. Sharpe & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A., Patents, 827.

The effect of the opposer's notice of election in this case, therefore, is to require the court to dismiss the appeal from the Commissioner's decision on the inter partes issue of registrability based on use by related companies, but to retain jurisdiction of the appeal from the Commissioner's decision in the ex parte denial of registration to Don Baxter, Inc. of the mark "Baxter" sought on the basis of concurrent user. The applicant-appellant should perfect his appeal here in the normal manner appropriate for an ex parte appeal.¹

In order that there may be no misunderstanding by the parties, the court takes notice of a point of possible confusion in connection with the retaining of the appeal in the ex parte case concerning the Commissioner's denial of registration under the concurrent use provision of the Lanham Act, Section 2(d) which is that this court, even if it should disagree with the Commissioner's decision on the point, would have to remand the case to the Patent Office for further proceedings there. Section 2(d) requires as a condition precedent to passing a mark for registration based on concurrent use, that "The Commissioner shall give not less than thirty days' written notice to all applicants, registrants, and users specified by any of the parties concerned of any application for concurrent registration and of the time and place of the hearings thereon." Such notice was not given in this case, so while the court could reverse the Commissioner as to the particular grounds on which the Commissioner denied registration of applicant's mark based on the concurrent use section, the case would have to be remanded so that the Commissioner could give proper notice to interested parties and give them a hearing on the issue of the registrability of applicant's mark based on concurrent user. After all that has been done, if the mark were to be passed for registration again, it would still be subject to opposition proceedings.

Mention is made of this because the opposer herein may otherwise interpret the court's retaining of jurisdiction in the ex parte issue to mean that the court may possibly reverse the Commissioner without remanding, that is, reverse in such a way as to authorize the Commissioner to register the mark forthwith without regard to the requirement of notice above mentioned. In so saying, the court would not be understood as intimating any conclusion on the merits of the ex parte issue.

O'CONNELL, Judge (dissenting).

Our court, the courts of equity, and the Supreme Court of the United States have constantly recognized and repeatedly held that Congress in the enactment of the respective statutes as they now stand purposely intended to cut down and limit, but not to multiply and prolong, the number of appeals or new trials which the tribunals named in the statutes may hear and determine.

The universal trend imposed at this time throughout the nation by legislation and judicial decision is to the same effect and includes all kinds of litigious proceedings. Certainly, the case-splitting device, by which two points of a single proceeding are divorced from one another, and all further proceedings as to each respective point directed to be conducted in different jurisdictions, has no valid basis,...