BR Baker Co. v. Lebow Bros.

• Decision Date: 25 June 1945
• Docket Number: Patent Appeal No. 5030.
• Parties: B. R. BAKER CO. v. LEBOW BROS.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

66 USPQ 232, 150 F.2d 580 (1945)

B. R. BAKER CO. v. LEBOW BROS.

Patent Appeal No. 5030.

Court of Customs and Patent Appeals.

June 25, 1945.

James Atkins, of Washington, D. C., for appellant.

Mason, Porter & Diller, of Washington, D. C. (Herbert H. Porter and Charles R. Allen, both of Washington, D. C., of counsel), for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

BLAND, Associate Judge.

This is an appeal in a Patent Office trade-mark interference proceeding between appellant (hereinafter referred to as Baker) and appellee (hereinafter referred to as Lebow). The appeal is from the decision of the Commissioner of Patents, speaking through the First Assistant Commissioner, 60 USPQ 254, reversing the decision of the Examiner of Trade-mark Interferences, who had held Baker to be the first user and owner of the involved trade-mark and that Baker was entitled to register the same.

Baker's mark is a composite one, consisting of the words "Custom Imperial" at the top and the words "The B. R. Baker Co." at the bottom. Between the two lines of printing, there appears what Baker states is "a crest, a sort of a coat of arms, with a design of needle and thread, a spool of thread and a shears, a bolt of cloth and a spinning wheel." Lebow has two registrations involved in the interference, the first consisting of the words "Imperial Drape" ("Drape" disclaimed), registration No. 297,734, September 27, 1932, application for which was filed February 29, 1932, and the second consisting of the words "Custom Imperial" and other indicia not regarded as important here, registration No. 381,259, September 17, 1940, application filed April 1, 1940.

No question is raised as to the similarity of the marks or the identity of the goods of the parties. The only issue tried below and presented here is whether or not the proof appearing in the record introduced by Baker (Lebow took no proof and relied upon its filing date, February 29, 1932, of the "Imperial Drape" mark) is sufficient to prove priority of adoption and use of its said mark.

Baker's proof consists of the testimony, in the form of a deposition, of a single witness, Frank P. Baker, Vice-President and General Superintendent of the appellant company, and six exhibits which will be particularly described hereinafter.

We quote extensively from the nine pages of testimony the following, which we think is pertinent to the decision of the issue:

"Q9. And have you been general superintendent continuously ever since January 5, 1930? A9. Yes, sir.

"Q10. When did The B. R. Baker Company first use the trade name `Custom Imperial'? A10. As near as I can remember, it was 1928-1929 that we started to use it and, of course, the proof that we have here is 1930.

"Q11. Will you please state fully how the use of the trade mark or trade name `Custom Imperial' first came about, that is, the use by The B. R. Baker Company? All. Well, at that time there was a great deal of cut, make and trim garments used by the firm. As cut, make and trim, we bought the material and had the clothes made; one shop made the trousers and another shop made the coats, and we had to have some kind of a brand or make for that clothing. We adopted for a short time `Metropolitan Manor' which was given up and we used this label `Custom Imperial' from that time on. We have changed the design of it from time to time but have stuck to rather a similarity of this one that we are using at the present time.

"Q12. Please state what connection you had with the first use of the trade mark `Custom Imperial' by The B. R. Baker Company. A12. Well, the reason we gave up `Metropolitan Manor' was we didn't think that had any meaning, and another store in Dayton, Ohio, called the `Metropolitan Store' was using that label, and of course it was intended for their store and we were just copying their label, and we thought that the `Custom Imperial' label would be a better name and had more of a significance with the clothing. The named applied more, and we had a discussion on that and were told to go ahead and get some samples of labels made. which we did.

* * * * * *

"Q23. You stated The B. R. Baker Company first used the trade-mark `Custom Imperial' in 1928 or 1929 but that the records do not show that early a use. The adoption of this trade-mark which you have just told about occurred at about what time? A23. What time of the year?

"Q24. No; during what year and approximately what time of the year? A24. Well, I really couldn't answer that.

"Q25. Well, can you say approximately what year or time of year that you officially adopted this trade-mark `Custom Imperial'? A25. No, I couldn't say just when.

"Q26. You have just testified, Mr. Baker, that you started using this trade mark in 1928 or 1929. Describe the use of the trade mark `Custom Imperial' in 1928 and '29 by the B. R. Baker Company. A26. As I can remember, it seems to me it was in the Fall of one of those years because that was when Mr. O'Neil returned to the firm. He was absent for a while.

"Q27. I hand you a paper marked `Exhibit No. 2.' Will you please tell what that paper is and from what file or record you procured that? A27. Well, this is an advertisement in the Toledo Times on January 5th.

"Q28. Of what year? A28. 1930. It was a tear sheet taken from our tear sheet book.

"Q29. Was that a book regularly kept by The B. R. Baker Company as part of its records? A29. Yes.

"Q30. Does that advertisement of January 5, 1930, in the Toledo Times marked Exhibit No. 2 contain any advertisement of the trade mark `Custom Imperial'? A30. Yes, it does, several times.

"Q31. Was the B. R. Baker Company on January 5, 1930, using the trade mark `Custom Imperial' on its clothing? A31. Yes.

"Q32. On what clothing was it using the trade mark `Custom Imperial'? A32. On what makes?

"Q33. On what garments? A33. On men's suits and top coats and also overcoats.

"Q34. And overcoats? A34. Yes, sir.

"Q35. Has the B. R. Baker Company used this trade mark since January 5, 1930? A35. We have been using it ever since.

"Q36. The use has been continuous ever since January 5, 1930? A36. Yes, sir.

Baker's application was filed August 23, 1940. In the application it was stated under oath that the "trade-mark has been continuously used and applied to said goods in applicant's business since November 26th 1936." On September 14, 1940, Baker amended its application, claiming first us on January 5, 1930.

The examiner's first action in rejecting Baker's application for registration of the mark was in view of five registered marks, the filing date of the earliest of which was February 29, 1932 — that of Lebow. The examiner stated that the mark was passed to publication but was subject to interference. After Baker amended its application, it requested the interference, and the request was granted by declaring the present interference between Baker and Lebow.

It will be observed from the above-quoted testimony that the witness was testifying to events which occurred as far back as fourteen years, and that Baker, at one time before using the "Custom Imperial" mark, used a mark "Metropolitan Manor" upon the same kind of goods. It will also be observed that when first queried about the early use of the involved mark, the witness could not say approximately what year or time of year the mark was adopted. His answer to the question was, "No, I couldn't say just when." His counsel (Lebow was not represented and there was no cross-examination) then proceeded to ask him a number of leading questions. To counsel's leading question, "You stated The B. R. Baker Company first used the trademark `Custom Imperial' in 1928 or 1929 but that the records do not show that early a use," the witness finally replied that he could not answer; and he was then asked whether he could state approximately what year, and he replied, "No, I couldn't say just when." Then counsel asked him this question, "You have just testified, Mr. Baker, that you started using this trade mark in 1928 or 1929. Describe the use of the trade mark `Custom Imperial' in 1928 and '29 by the B. R. Baker Company," and the witness replied, "As I can remember, it seems to me it was in the Fall of one of those years because that was when Mr. O'Neil returned to the firm. He was absent for a while." There is nothing in the record to disclose when Mr. O'Neil returned to the firm, nor is it disclosed why O'Neil's return would refresh the memory of the witness that the mark was first used in a trade-mark sense in 1928 or 1929. The witness' later positive statements that the mark was used on clothing in 1930 and continuously thereafter must be considered in the light of all his testimony, which, for the most part, was responsive to questions unusually leading in character. Moreover, it was not definitely stated that the marks so used were their own or those of others.

Baker then introduced certain exhibits. Exhibit No. 1 is a piece of silk-satin cloth containing Baker's mark, which was to be attached to the inside pocket or some other place on a garment. There is no showing that this particular piece of cloth or one like it was used in a trade-mark sense on any of Baker's goods prior to the critical date of February 29, 1932.

Exhibit No. 2 is an advertisement in the Toledo Times, upon which so-called tear sheet appears, in green ink, a rubber-stamped date, "Times Jan 5 '30." This exhibit consists of what appears to be a half-or full-page advertisement of a clearance sale on the part of Baker, in which the following appears:

"This greatest of all clearances offers the finest of selections * * * Fashion Park and Custom Imperial Tailored suits and overcoats at clearance prices. * * If you want the superlative in style, quality and tailoring — and the superlative in fine values — here it is!"

It is not contended by Baker that this exhibit, which is an...