Best Lock Corporation v. Schlage Lock Company
Decision Date | 23 October 1969 |
Docket Number | Patent Appeal No. 8154. |
Parties | BEST LOCK CORPORATION, Appellant, v. SCHLAGE LOCK COMPANY, Appellee. |
Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Watson, Leavenworth, Kelton & Taggart, New York City, attorneys of record, for appellant. Leslie D. Taggart and Albert Robin, New York City, of counsel.
Leo A. Rosetta, Washington, D. C., Marcus Lothrop, Lothrop & West, San Francisco, Cal., for appellee.
Before RICH, Acting Chief Judge, COLLINS and NEESE, Judges, sitting by designation, and ALMOND and BALDWIN, Judges.
This appeal is from a decision1 of the Trademark Trial and Appeal Board granting opposer's motion for summary judgment in an opposition involving appellant's application serial No. 195,501, filed June 12, 1964, for registration on the Principal Register of a design mark thus described in the application:
The mark consists of the numeral 8 formed by the line of division between the lock core and housing visible on the face of applicant\'s lock.
The amended application drawing is as follows:2
BACKGROUND
Appellant's locks include a housing (such as, for example, a door knob or padlock body) and a lock core mounted within an opening in the housing and having one of its ends flush with a face of the housing. The opening in the housing comprises two intersecting, parallel, cylindrical bores so that the line of division between the lock core and the housing, visible on the face of the lock, provides the design shown above which, for convenience, may be referred to as a figure 8.3 That design appellant seeks to register.
The record includes a copy of U. S. Patent No. 1,575,092, to F. E. Best, issued to appellant's predecessor in interest on March 2, 1926, disclosing a lock illustrated in the following figure from the patent drawing:
The patent describes both the hole 6 and counterbore 7 in housing 5 and the lock core 11 as being of figure 8 shape. It describes the lock face as "a flat plate of figure 8 shape arranged to fit snugly within the counterbored portion 7 * *." This is shown at 13, 14. As to advantages of the shape, the patent states:
The face being of figure 8 shape is reduced to the minimum size and requires only the minimum amount of metal in its construction.
A summary of the events preceding the board decision on appeal is as follows. In the ex parte prosecution, the examiner, after initially refusing registration on the ground that the mark proposed was "merely a decorative contour" which did not function as a distinctive mark of origin, later decided that "The mark * * * appears to be entitled to registration." The mark was duly published and, within the period for opposition, appellee, Schlage Lock Company, filed a Notice of Opposition accompanied, inter alia, by a copy of the aforementioned Best patent.
Subsequent to appellant's Answer to the Notice of Opposition, appellee filed a motion for summary judgment on the ground that "the subject matter of the opposed application is not a trademark subject to registration," relying on our decision in In re Application of Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952 (1961). The board denied the motion for the reason that:
Appellee's petition for reconsideration was denied by the board.
Shortly afterwards our decision in In re Application of Shenango Ceramics, Inc., 362 F.2d 287, 53 CCPA 1268 (1966), was handed down and appellee thereupon filed a renewed motion for summary judgment, pointing out that appellant's figure 8 configuration is disclosed as a functional feature in the expired Best utility patent. Appellee argued that the case was therefore controlled by Shenango in which the alleged trademark was a functional, circular strengthening rib on the underside of a plate, and likewise the subject of an expired utility patent, which we held not to be registrable as a trademark. The board again denied the motion, taking the position for the first time, apparently on its own initiative, that appellee Schlage lacked standing to oppose as it had not shown that it would be damaged by the registration. On request for reconsideration, appellee satisfactorily traversed the board's objections as to appellee's standing. The board then finally granted summary judgment, stating:
The board adhered to the decision on further reconsideration. The question here is whether, at long last, the board reached the right conclusion.
OPINIONOur problem is to decide whether summary judgment is appropriate here in view of what is disclosed in the Best patent as to the functionality of the mark — is there any possibility that there remains a genuine issue of material fact or is this evidence conclusive? A subsidiary question is whether the functionality is such as to conclude the question of registrability.
It is settled law that a configuration of an article cannot be registered as a trademark if the purpose of the configuration is to contribute functional advantages to the article in which it is embodied or if the configuration results from functional considerations.5 As we said in Shenango:
We think that the 1946 Act is premised on the idea that only nonfunctional configurations may be registrable thereunder.
This statement is not inconsistent with what we characterized in Shenango as "truism (4)" from our opinion in Deister which states:
A feature dictated solely by "functional" (utilitarian) considerations may not be protected as a trademark; but mere possession of a function (utility) is not sufficient reason to deny protection.
That truism in Deister, in its exception, merely reflects the obvious fact that some articles, made in a purely arbitrary configuration (e. g., the wine bottle considered in Mogen David) may perform a function, holding wine, which could equally well be served by containers of many other shapes, and in such circumstances the incidental function should not by itself preclude trademark registrability if the other conditions precedent are present. That is a quite different situation from a configuration whose purpose is to provide a...
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