Contour Chair-Lounge Co. v. Englander Company

• Decision Date: 17 January 1964
• Docket Number: Patent Appeal No. 7011.
• Citation: 139 USPQ 285,324 F.2d 186
• Parties: CONTOUR CHAIR-LOUNGE CO., Inc., Appellant, v. The ENGLANDER COMPANY, Inc., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

139 USPQ 285, 324 F.2d 186 (1963)

CONTOUR CHAIR-LOUNGE CO., Inc., Appellant, v. The ENGLANDER COMPANY, Inc., Appellee.

Patent Appeal No. 7011.

United States Court of Customs and Patent Appeals.

November 14, 1963.

Rehearing Denied January 17, 1964.

Kingsland, Rogers, Ezell & Robbins, Estill E. Ezell, Edmund C. Rogers, St. Louis, Mo., for appellant.

Olson, Trexler, Wolters & Bushnell, Chicago, Ill. (Richard Bushnell, Chicago, Ill., of counsel), for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH and ALMOND, Judges.

RICH, Judge.

This is an appeal by the opposer in a consolidated opposition and cancellation proceeding wherein the Patent Office Trademark Trial and Appeal Board dismissed both the opposition and the petition to cancel. (133 U.S.P.Q. 573.)

The petitioner for cancellation, who was the applicant in the opposition, took no appeal from the dismissal of its petition, wherefore that proceeding (No. 7,462) has terminated and is not before us. The only decision here for review is the dismissal of the opposition, No. 36,890.

Appellee, The Englander Company, Inc., filed application Ser. No. 16,195, September 24, 1956, to register "Conturfoam" (written in upper and lower case script) on the Principal Register as a trademark for "Mattresses and Box Springs," claiming use since September 5, 1956.

Appellant, Contour Chair-Lounge Co., Inc., filed its notice of opposition to the registration on the basis of its ownership of the trademarks "CONTOUR," "CONTOUR CHAIR," and "CONTOUR CHAIR-LOUNGE." The last-named trademark is the subject of Reg. No. 520,737 of February 7, 1950, Principal Register. The board noted that on August 23, 1955, a combined affidavit under Secs. 8 and 15 of the trademark statute was filed, which was evidently accepted. The goods named in that registration are "Upholstered Chairs of the Elongated Type, which are Longitudinally Adjustable for Variation of Inclination."

The trademark "CONTOUR" is the subject of Reg. No. 642,944, registered on the Principal Register March 19, 1957, on an application filed August 23, 1956, for "Chairs." The opposition notice was filed February 26, 1957, which was during the pendency of this application. Ownership of the mark "CONTOUR" having been pleaded in the notice, we regard the date of registration as unimportant here and, of course, must take the registration into account. The date of its application antedates appellee's earliest claimed use.

Also introduced in evidence in both proceedings was opposer's Principal Register Reg. No. 696,071 of April 12, 1960, granted on an application filed August 19, 1959, for "Chairs, Beds, Mattresses, and Box Springs" of the trademark "CONTOUR COMFORT." The first use claimed in the registration for this mark is November 15, 1958.

The record before us, being that of the opposer and containing only matters relating to the opposition proceeding, contains only such incidental information about the cancellation proceeding as appears in the testimony and opinions of the board.¹ It is stated that applicant-appellee petitioned to cancel the registrations of "CONTOUR" and "CONTOUR CHAIR-LOUNGE" "on the ground that said terms are merely descriptive or generic designations as applied to opposer's goods." As aforesaid, the board dismissed that petition and no appeal was taken from that decision. The posture of the case in this court, therefore, is the same as though no such petition had been filed and we are obliged to treat opposer's registrations as valid and to consider opposer as entitled to all the benefits of such registrations provided by statute. (Having dismissed the cancellation petition, the board was likewise obliged to so treat the registrations.) Among the statutory benefits accorded registrations on the Principal Register are those of section 7(b) of the Trademark Act of 1946 (15 U.S.C. § 1057(b)) which reads:

"A certificate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registration, registrant\'s ownership of the mark, and of registrant\'s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein."

No conditions are stated in the certificates of registration.²

The starting point in this case is that opposer's registrations are valid and enjoy the benefits of section 7(b). The next point is that this is an opposition only and in an opposition, this court has always held, the validity of the opposer's registrations are not open to attack. E. Daltroff & Cie v. V. Vivaudou, Inc., 53 F.2d 536, 19 CCPA 715, 717; Skelly Oil Co. v. The Powerine Co., 86 F.2d 752, 24 CCPA 790, 792; Coty, Inc. v. Perfumes Habana, S.A., 190 F.2d 91, 38 CCPA 1180, 1185; Eureka Williams Corp. v. Willoughby Machine and Tool Co., 194 F.2d 543, 39 CCPA 832, 833. To the same effect, see the board's decision in The Julep Company v. Lipsey, 131 U.S.P.Q. 334. As long as a registration relied on by an opposer remains uncancelled, we treat it as valid, entitled to the section 7(b) presumptions, and take it at face value. General Shoe Corp. v. Lerner Bros. Mfg. Co., Inc., 254 F.2d 154, 45 CCPA 872.

In its handling of this case, the board has, in effect, violated the foregoing legal principles. Its decision in the opposition is found in the following paragraphs from its combined opinion on both issues:

"* * * the record in this case can only lead to a conclusion that the use in the trade of `CONTOUR\' to indicate generally a chair designed to conform to the contour of the human body has been so widespread and of such duration that it has come to signify any such chair rather than a chair of opposer\'s manufacture.

"With regard to the opposition, in view of the above conclusion that the term `CONTOUR\' does not identify opposer\'s goods and distinguish them from similar goods of others, it necessarily follows that issuance of the registration for which applicant has made application could not involve damage to opposer."

On petition for reconsideration, the board added these thoughts:

"While it is true, as opposer contends, that the validity of an opposer\'s registration may not be collaterally attacked in an opposition, the registrations of the instant opposer were directly attacked by applicant in a separate petition to cancel the same. * * * it is believed that the evidence introduced by applicant to show the lack of distinctiveness of the term `CONTOUR\' was properly considered by the Board in its finding in the opposition of no likelihood of confusion between the respective marks."

Opposer correctly notes that the original opinion of the board said nothing whatever about likelihood of confusion.

In denying a further petition to modify its opinion, the board said:

"The Board\'s finding in the decision in question meaning its original opinion that `CONTOUR\' does not identify opposer\'s goods and distinguish them from similar goods of others is believed proper and is accordingly adhered to."

Short of saying so in haec verba, the board could not have stated more clearly its opinion that opposer has no trademark rights in "CONTOUR" with respect to chairs. This...