Chemical Dynamics, Inc., In re, 87-1407

• Decision Date: 18 February 1988
• Docket Number: No. 87-1407,87-1407
• Citation: 839 F.2d 1569
• Parties: In re CHEMICAL DYNAMICS, INC.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1569

839 F.2d 1569

5 U.S.P.Q.2d 1828

In re CHEMICAL DYNAMICS, INC.

No. 87-1407.

United States Court of Appeals Federal Circuit.

Feb. 18, 1988.

McPherson D. Moore, Rogers, Howell, Moore & Haferkamp, St. Louis, Mo., argued for appellant.

Albin F. Drost, Asst. Sol., Office of the Sol., Arlington, Va., argued for appellee. With him on the brief were Joseph F. Nakamura, Sol. and Fred E. McKelvey, Deputy Sol.

Before FRIEDMAN, SMITH, and MAYER, Circuit Judges.

FRIEDMAN, Circuit Judge.

This is an appeal from a decision of the Trademark Trial and Appeal Board (Board) refusing registration of a trademark consisting of a portion of a registered mark, on the ground that the portion sought to be registered did not create a separate commercial impression. We affirm.

I

The appellant, Chemical Dynamics, Inc., markets plant fertilizer under the following registered trademark:

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

Chemical Dynamics also separately has registered on the Principal Register (1) the background picture of the watering can, medicine dropper and droplet, and (2) the words "7 DROPS."

Chemical Dynamics sought to register the medicine dropper and droplet as a separate mark. The examining attorney refused registration and the Board affirmed on the ground that the dropper and droplet did not create a separate commercial impression and that to separate them would involve mutilation of the mark as actually used. 37 C.F.R. Sec. 2.51(a) (1987).

The Board noted that

one may register a composite mark in connection with goods and/or services and, provided each of the elements performs a trademark function in and of itself, each may be registered for the goods or services on which it is used.

Although the Board agreed that "7 DROPS" "create[d] a commercial impression separate and apart from that engendered by the eyedropper and watering can design," it held that the eyedropper and watering can were not separable elements. The Board stated:

[T]he eyedropper intersects with the handle of the watering can and the drop of water [sic] is shown going into the watering can. We believe this clearly constitutes a unitary mark which creates a single commercial impression and that to try to separate out the eyedropper portion of the mark results in an impermissible mutilation.

II

A. The cases determining whether a portion of a trademark is separately registrable generally have dealt with background designs that are used in conjunction with word marks. Professor McCarthy states the general rule as follows: "A background design which is always used in connection with word marks must create a commercial impression on buyers separate and apart from the word marks for the design to be protectable as a separate mark." 1 J.T. McCarthy, Trademarks and Unfair Competition 200 (2d ed. 1984) (footnote omitted). In deciding whether the design background of a word mark may be separately registered,

the essential question is whether or not the background material is or is not inherently distinctive.... If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential.

In re E.J. Brach & Sons, 256 F.2d 325, 327, 118 USPQ 308, 310 (CCPA 1958) (emphasis in original). See also In re Schenectady Varnish Co., 280 F.2d 169, 170, 126 USPQ 395, 396 (CCPA 1960) (unnecessary to determine whether design is intrinsically distinctive when evidence is sufficient to show that the design, apart from the word, has become distinctive), and In re National Inst. for Automotive Serv. Excellence, 218 USPQ 744, 745 (TTAB 1983) (common shapes do not indicate origin of goods absent a showing of secondary meaning in the design) (quoting Permatex Co. v. California Tube Prods., Inc., 175 USPQ 764, 766 (TTAB 1972)).

The present case, however, does not involve an attempt to register the background separately from the word. The appellant already has done that by registering a mark consisting of the entire background, namely, the dropper, the droplet and the can, separately from the words "7 DROPS" shown on the can. Here the appellant is seeking to register separately a part of the background material: the dropper and droplet but...