Bose Corp., In re, 84-1592

• Citation: 227 USPQ 1,772 F.2d 866
• Decision Date: 09 September 1985
• Docket Number: No. 84-1592,84-1592
• Parties: In re BOSE CORPORATION. Appeal
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 866

772 F.2d 866

227 U.S.P.Q. 1

In re BOSE CORPORATION.

Appeal No. 84-1592.

United States Court of Appeals Federal Circuit.

Sept. 9, 1985.

Charles Hieken, Boston, Mass., argued for appellant.

John W. Dewhirst, Associate Sol., U.S. Patent and Trademark Office, Arlington, Va., argued for appellee. With him on brief was Joseph F. Nakamura, Sol., Washington, D.C.

Before NIES, NEWMAN and BISSELL, Circuit Judges.

NIES, Circuit Judge.

Bose Corporation appeals from the decision of the Trademark Trial and Appeal Board affirming a refusal to register a design shown in application Serial No. 127,803 on the Principal Register as a trademark for "loudspeaker systems." The basis for PTO action is that the design is functional and, therefore, cannot serve as a mark for the goods. We affirm.

I. Background

Application Serial No. 127,803 has had a long and tortuous prosecution history, which will be discussed in part in connection with a question of this court's jurisdiction over a portion of the board's decision. Briefly, Bose filed the subject application on May 24, 1977, which includes a drawing for a five sided speaker enclosure, claiming use "as early as September 1976" of the following design:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The application contains the following description and claim of distinctiveness:

The mark comprises an enclosure and its image of substantially pentagonal cross section with a substantially pentagonal-shaped top parallel to a substantially pentagonal-shaped bottom and has become distinctive of applicant's goods as a result of millions of dollars worth of loudspeaker systems having been sold under applicant's similar registered trademark registered September 10, 1974, Registration No. 992,982.

The design mark shown in Reg. No. 992,982 is the following:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The board, in a decision reported at 215 USPQ 1124 (1982), found that the new design was functional and, therefore, unregistrable subject matter. It did not reach the question of whether the design might have acquired distinctiveness. In a first appeal to this court, the case was remanded for a determination of the latter issue. On remand, Bose's proffers of additional evidence on the issue of functionality and on the issue of distinctiveness were refused. In a decision reported at 216 USPQ 1001 (1983), the board found that the design had acquired distinctiveness, but that such significance was merely "de facto" public recognition. Overall, the board continued to hold that the design was "functional" under the standard set out in In re Morton-Norwich Products, Inc., 671 F.2d 1332, 213 USPQ 9 (CCPA 1982).

Bose seeks to overturn the board's decision on the merits in this appeal or to obtain a remand for consideration of additional evidence on the functionality issue. Before the merits are addressed, however it is necessary to consider a challenge made by Bose to the composition of the board which rendered the first decision and a counter challenge by the Solicitor to our jurisdiction over the latter issue.

II. Validity of Board Decision

Bose asserts, as a preliminary matter, that the board's decision in this appeal is invalid because of defective procedures following a change in members of the board.

The first board decision dealing with functionality was signed by three board members, only two of whom were on the three member panel which had heard the oral argument. The third signatory replaced the original third panel member who resigned shortly after the argument. Bose was unaware of the change in composition of the panel until receipt of the decision. Bose immediately moved for rehearing on the ground, inter alia, that the new panel had not "heard" the case, and, therefore, had no authority to decide it. The substitution of one member for another after the oral argument, per Bose, violates the "spirit" of 15 U.S.C. Sec. 1067, insofar as the statute requires, in pertinent part:

Each case shall be heard by at least three members of the Board, the members hearing such case to be designated by the Commissioner. [Emphasis added.]

Bose interprets the requirement for the case to be "heard" by three board members as a right given to an appellant to oral argument before the three members who render the decision. While conceding that a case can be decided without oral argument, Bose argues that a party who has requested oral argument should have the option of rearguing before a newly constituted panel or of proceeding on the basis of the record.

The board found, from analogy to cases where there was an unavoidable change in the judge during court proceedings, that it must, as an adjudicatory body, have discretion (absent an express statutory direction to the contrary) in handling the matter of substitution of one member for another who resigned during proceedings. Exercising such discretion, the board concluded that Bose's objections were without merit, and that argument before the reconstituted panel was not necessary. Following that decision, Bose promptly sought review by filing a petition to the Commissioner of Patents and Trademarks under 37 C.F.R. Sec. 2.146. In ruling on that issue, the Assistant Commissioner (acting for the Commissioner) held that "the Board did not commit clear error or abuse its discretion" by substituting a board member and not allowing reargument. Bose has noticed an appeal from that decision, as well as from the decision by the board.

The government maintains that the Commissioner's decision contains no reversible error and, as an initial matter, questions the jurisdiction of this court to review a decision of the Commissioner. According to the solicitor, 15 U.S.C. Sec. 1701 provides jurisdiction in this court to review a decision of the Commissioner on trademark matters only with respect to decisions under 15 U.S.C. Secs. 1058 and 1059, ¹ which do not include decisions relating to composition of the board.

On the jurisdictional question, Bose urges that, having properly appealed here from a final decision of the board, it is entitled to raise the issue of whether the board was properly constituted under the statute. On that issue, in view of the circumstances in this case, we agree with Bose. As will become apparent, the solicitor confuses jurisdiction over the Commissioner with jurisdiction over the issue.

Section 21(a)(1) of the Lanham Act, 15 U.S.C. Sec. 1071(a)(1), provides, in pertinent part, for a right of appeal to this court as follows:

An applicant for registration of a mark ... who is dissatisfied with the decision of the Commissioner or Trademark Trial and Appeal Board, may appeal to the United States Court of Appeals for the Federal Circuit....

Under our precedent, the Solicitor is correct that the above statute does not provide a right of appeal generally from decisions of the Commissioner but rather such right is limited to those decisions relating to affidavits of use or to renewals. See, e.g., In re Holland American Wafer Co., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed.Cir.1984). The reasons behind this interpretation are fully explained in In re Marriott-Hot Shoppes, 411 F.2d 1025, 1028, 162 USPQ 106, 109 (CCPA 1969), which review was denied, and will not be repeated here. As held therein, an appellant's remedy against the Commissioner is generally by way of mandamus in district court. See also In re Makari, 708 F.2d 709, 218 USPQ 193 (Fed.Cir.1983); In re Wiechert, 370 F.2d 927, 938, 152 USPQ 247, 255 (CCPA 1967). However, this case presents the type of situation specifically left open by the Marriott-Hot Shoppes decision. As stated therein:

Appellant's brief argues that we have jurisdiction to decide whether the three-member panels of the board had or have jurisdiction to hear the ex parte appeals--in the sense of being legally-constituted boards. While we might be able to reach that question, if properly raised, in an appeal to us from one or more board decisions on the merits of the applications, In re Weichert, 370 F.2d 927, 54 CCPA 957 (1967), ⁵ appellant has made it amply clear that this is not such an appeal; in fact, there is as yet no final board decision in any of the three applications, so far as we are advised. [Emphasis in original.]

411 F.2d at 1029, 162 USPQ at 110.

In the present case, an appeal has properly been taken from a final decision of the board. The question of the propriety of substituting a member in the deciding panel underlies the validity of that decision. Thus, it is appropriate for this court to determine whether a valid decision is before us before addressing the merits of that decision. The matter of the board's composition is logically related to, indeed, inseparable from the merits and can be raised in the appeal from the board's decision. No basis for questioning our jurisdiction over the issue is asserted, only our jurisdiction over the Commissioner. Nor is it asserted that it was necessary to petition to preserve the issue for review. Thus, had there been no petition, we would not hesitate to resolve the board composition question. As the Commissioner merely affirmed the board, we do not need to hold specifically that his decision is before us to address that issue. Accordingly, we determine only that, under the circumstances here, the petition has no effect on our jurisdiction to determine the validity of the board's decision.

Turning to the validity of the board's decision, we hold that there was no error in substituting a board member without allowing reargument. The statutory requirement that a case be "heard" by three board members means judicially heard, not physically heard. Appeals are routinely heard in a judicial sense with no oral argument.

Bose's assertion of lack of due process ignores the nature of an ex parte proceeding before the board. There is no de novo hearing in appealing an examiner's refusal to register. Rather, the...