Century Distilling Co. v. Continental Distilling Corp.

• Decision Date: 17 June 1938
• Docket Number: No. 9789.,9789.
• Citation: 23 F. Supp. 705
• Parties: CENTURY DISTILLING CO. v. CONTINENTAL DISTILLING CORPORATION.
• Court: U.S. District Court — Western District of Pennsylvania

23 F. Supp. 705

CENTURY DISTILLING CO. v. CONTINENTAL DISTILLING CORPORATION.

No. 9789.

District Court, E. D. Pennsylvania.

June 17, 1938.

Francis A. Burnett, of Philadelphia, Pa., and Mida, Richards & Murray, of Chicago, Ill., for plaintiff.

Leonard L. Kalish, of Philadelphia, Pa., for defendant.

MARIS, District Judge.

This bill in equity was filed under Section 4915 Revised Statutes, as amended (35 U.S.C. § 63, 35 U.S.C.A. § 63), to determine the right of the plaintiff to the registration of two trade-marks, the registration of which was refused by the Commissioner of Patents on July 2, 1937. The defendant filed an answer and a counterclaim alleging that the trade-marks sought to be registered by the plaintiff infringed certain prior registered trade-marks of the defendant. The counterclaim seeks an injunction and an accounting.

The defendant's registered trade-marks were "Dixie-Belle" and "Dixie Beaux." They were used by the defendant in connection with the sale of gin and the defendant's prior right to use these marks was not questioned in the patent office nor is it questioned here. The plaintiff's trade-marks are "Dixiana" used in connection with the sale of gin, and "Dixie Dew" used in connection with the sale of whisky.

When the plaintiff sought to register these marks in the patent office the defendant filed a notice of opposition upon the ground that the marks were not registerable under Section 5 of the Trade-Mark Act, as amended (15 U.S.C. § 85, 15 U.S.C.A. § 85), because they so nearly resembled the registered trade-marks owned and in use by the defendant and appropriated by it to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers. The Examiner of Trade-Mark Interferences in the Patent Office sustained the notice of opposition and upon appeal to the Commissioner his decision was affirmed. In each case the action was taken solely upon the statutory ground that the marks sought to be registered were deceptively similar to the defendant's marks.

Within six months thereafter the plaintiff brought the present bill under Section 4915, Revised Statutes, as amended (35 U.S.C. § 63, 35 U.S.C.A. § 63), to have its right to the registration of the trade-marks determined. This section, while by its express terms applicable only to patents, has been made applicable to trade-marks by the provisions of Section 9 of the Trade-Mark Act, as amended (15 U.S.C. § 89, 15 U.S.C.A. § 89). American Steel Foundries v. Robertson, 262 U.S. 209, 43 S.Ct. 541, 67 L.Ed. 953.

At the outset of the case I am confronted with a question of jurisdiction. The defendant has moved to dismiss the bill upon the ground that the Commissioner of Patents is a necessary party defendant and has not been joined. Admittedly if his joinder is necessary the bill must be dismissed since service upon him cannot be secured in this district.

This brings me to a consideration of Section 4915 Revised Statutes, as amended, which is the statutory basis for the present suit. That act authorizes an applicant whose trade-mark has been refused registration by the Commissioner to file his bill in equity within six months and gives the court jurisdiction to adjudge that the applicant is entitled to registration. It provides that such an adjudication, if it be in favor of the right of the applicant, shall authorize the Commissioner to act and directs that in all cases where there is no opposing party a copy of the bill shall be served on the Commissioner.

I think that the act makes a clear distinction between proceedings inter partes and proceedings ex parte. Proceedings inter partes are those in which the right to the registration of a given trade-mark is unquestioned and the controversy is solely between two parties as to the priority of their respective rights to the mark in question. In such a case no question is raised as to the validity of the mark or its registrability under the statute, no rights of the public are involved and the Commissioner is not a necessary party to a bill in equity brought to determine the rights of the parties.

Where, however, the question raised is as to the registrability of the trade-mark itself under the provisions of the act the proceeding is in its nature ex parte. The Commissioner in refusing registration in such a case is engaged in enforcing the prohibitions of the statute in the public interest and it is his duty to act even though no notice of opposition is filed by anyone. Four Roses Products Co. v. Small Grain Distilling & Drug Co., 58 App.D.C. 299, 29 F.2d 959. It follows that in such a case there is no opposing party to the proceeding within the meaning of the statute even though some person who conceives that his rights might be adversely affected by the registration may actually file a notice of opposition.

Such a case ex parte is presented where the Commissioner...