Burmel Handkerchief Corp. v. Cluett, Peabody & Co.

• Decision Date: 27 April 1942
• Docket Number: Patent Appeal No. 4580.
• Citation: 127 F.2d 318
• Parties: BURMEL HANDKERCHIEF CORPORATION v. CLUETT, PEABODY & CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

127 F.2d 318 (1942)

BURMEL HANDKERCHIEF CORPORATION v. CLUETT, PEABODY & CO., Inc.

Patent Appeal No. 4580.

Court of Customs and Patent Appeals.

April 27, 1942.

Raymond J. Mawhinney, of Washington, D. C., for appellant.

Roberts, Cushman & Woodberry, of Boston, Mass. (Charles D. Woodberry, Robert L. Thompson, and John D. Woodberry, all of Boston, Mass., of counsel), for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

JACKSON, Associate Judge.

On September 1, 1938 appellant filed in the United States Patent Office its application to register its trade-mark "Handkerchiefs of the Year" as applied to handkerchiefs, the word "Handkerchiefs" being disclaimed. The application alleges continuous use of the mark since March 16, 1937.

Notice of Opposition to the registration was filed by appellee December 7, 1938, setting out the grounds for opposition as follows:

"1. The Opposer, Cluett, Peabody & Co., Inc., is a manufacturer of handkerchiefs, collars, shirts, underwear, neckties, and other articles of dress and apparel, its business is an old and established one, and its products have been and are widely sold throughout this country and the principal foreign markets of the world.

"2. On February 7, 1933, the Opposer obtained Letters Patent of the United States Design No. 89,175 (a copy whereof is hereto annexed) for a new, original and ornamental design for a Handkerchief having as its dominant feature the conventional and most commonly used symbol of the year, namely, the calendar of the year. Very large quantities of handkerchiefs embodying said design have been made and sold by the Opposer and its licensee under said patent, all said handkerchiefs embodying the design as shown in said patent except that subsequent to 1933, the numeral and calendar of the year has been those in which the said handkerchiefs were sold. And the Opposer avers that the said design is of great value and that `Handkerchiefs-of-the-Year' is descriptive of said handkerchiefs bearing said design which Opposer and its licensee alone have the right to make and sell.

"3. And the Opposer avers that as applied to handkerchiefs in general, the phrase `Handkerchiefs-of-the-Year' is synonomous with `Handkerchiefs of the Season' and in either form is a descriptive term meaning that because of their material, quality, workmanship, style, or for some other reason, they are the most desirable handkerchiefs of the year, or season or are peculiarly adapted for use in the year or season as being the vogue or fashion thereof, and that therefore the phrase is one which the Opposer, in common with all other handkerchief manufacturers, has a right to use upon and in connection with the sale of its handkerchiefs.

"4. And the Opposer is informed and believes and therefore avers that it is and long had been an established commercial custom to employ advertising slogans consisting of the name of the goods associated with such words as `of the day', `of-the-week', `of-the-month', `of-the-year', `of the season' or similar terms; that the public is thoroughly famil-ar with such trade custom and understands that such slogans are not used as marks of origin or to be relied upon as marks of origin but merely as references to the character or quality of the goods; and the Opposer avers that the mark Serial No. 410,170 is neither adapted to indicate origin, nor will be understood or relied upon by the public as a mark of origin, and is therefore not a mark susceptible of exclusive appropriation as a trade mark.

"5. And the Opposer pleads all of said facts, both as bars against Applicant's right of registration of said alleged trade mark and as objections to its registration, and avers that the registration of the said mark to the Applicant will interfere with and embarrass the Opposer in the exercise of its right to describe its handkerchiefs, including its said design patented handkerchiefs, as `Handkerchiefs-of-the-Year', and that for all the reasons aforesaid it will be damaged by said registration."

On February 6, 1939, appellant moved to dismiss the Notice of Opposition on the grounds that it was insufficient in that it alleged no facts, but only conclusions of law, to sustain the contention that the mark is descriptive and that it failed to allege facts sufficient to entitle appellee to contest appellant's right to register its mark. In the opinion of the Examiner of Interferences the question as to appellee's right to make the contest was not sufficiently clear. He therefore denied the motion but granted both parties the opportunity to take testimony.

On April 3, 1939, appellant filed its answer to the Notice of Opposition and renewed its motion to dismiss.

On September 8, 1939, a stipulation between the parties was filed in lieu of testimony. In the stipulation the corporate entity of appellee and its business is set out together with the statement that its general house trade-mark consists of the word "Arrow". There was stipulated in evidence an exhibit which is a specimen of a handkerchief made in accordance with its design patent and sold during the year 1933. No other sale of such article by appellee is shown in the stipulation. Other exhibits which consist of salesmen's portfolios illustrating certain of appellee's articles of clothing and advertisements published by appellee in a certain magazine are in evidence under the stipulation, together with exhibits of advertising by appellee for wearing apparel, such as "Arrow's Choice for September", "Arrow's Choice for the Month", "The Pick of Esquire this Month" and "Smartest Feature in Esquire this Month". Other exhibits on behalf of appellee received in evidence are published advertisements, by others, such as "The Dress of the Month", "The Belt of the Month", "Smartest Hat of the Season", "Dress of the Week", "The Velvet of the Year", "Man of the Year", "Sportsman of the Year", "Playwright of the Year", "The Car of the Year", and others of like import. An advertisement by appellant of ladies' handkerchiefs, which are the only kind of handkerchiefs made and sold by appellant, is likewise in evidence. The advertisement comprises the expression "Handkerchief of the Month". That expression is a registered trade-mark of appellant. One of those handkerchiefs is in evidence. It bears a tag with the printed words "Handkerchief of the Month by Burmel as seen in Vogue".

The decision of the Examiner of Interferences is dated April 12, 1940. The examiner in his decision stated as follows:

"Accordingly, the evidence filed by the opposer is deemed to establish a fact of which judicial notice might well be taken, namely, that phrases such as `of the year,' `of the month' and the like, when used in connection with any particular thing in the manner of the notation used by the applicant, are mere laudatory expressions, descriptive of the character or quality of the subject concerned. Registration upon the application involved herein is therefore deemed to be inhibited by the `descriptiveness' clause of Section 5. The rulings in the following cases involving the notation indicated are believed to be pertinent here:

"`Hit of the Week' for phonograph records, Ex parte Durium Products Co., 15 U. S.Pat.Q. 57;

"`January' for hosiery, Holeproof Hosiery Co. v. Joseph F. Lerner, 27 U.S.Pat.Q. 457.

"It is accordingly adjudged that the applicant is not entitled to the registration for which it has made application."

In ruling upon the...