DEPT. OF JUSTICE, FBI v. Calspan Corp.
| Decision Date | 08 June 1978 |
| Docket Number | Appeal No. 78-501. |
| Citation | 578 F.2d 295 |
| Parties | DEPARTMENT OF JUSTICE, FEDERAL BUREAU OF INVESTIGATION, Appellant, v. CALSPAN CORPORATION, Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Joseph A. Hill, Louise O'Neil, Washington, D.C., attorneys of record, for appellant.
Allen J. Jaffe, Williamsville, N.Y., attorney of record, for appellee.
Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board ("board")1 denying appellant's petition2 to cancel appellee's registration3 of FINDER as a trademark for electro-optical computer equipment (card movers, scanners, pre-processors, control units, and parts therefor) for sensing, detecting, and locating minute features in fingerprint images. We affirm.
FINDER is an acronym derived from FINgerprint DEscription Reader, the name given an automated fingerprint identification system manufactured under a government-sponsored research and development contract entered into on June 19, 1967, between appellant Federal Bureau of Investigation ("FBI") and Cornell Aeronautical Laboratory, Inc. ("CAL") of Buffalo, New York, a corporation duly organized under the laws of the State of New York.
It appears that first use of FINDER to identify the fingerprint reader was by CAL's contract manager in a technical proposal dated February 12, 1971, which was accepted by the FBI as one of numerous modifications of the basic agreement. Subsequent communications between the parties routinely employed FINDER in referring to both the fingerprint reader and the research and development project itself.
The first published document in which the name FINDER appeared was a paper delivered by R. M. Stock, then a section head at CAL, at the Carnahan Conference on Electronic Crime Countermeasures, held April 19-22, 1972.4 The paper, which was included in the published proceedings of the conference, made reference to "The FINDER automatic fingerprint reader which is under development by Cornell Aeronautical Laboratory, Inc. for the Federal Bureau of Investigation. . .."
The prototype fingerprint reader was delivered to the FBI in Washington, D.C., on September 7, 1972, with each component having an attached identification plate bearing (1) the name FINDER in upper case, boldface letters directly above the words FINGERPRINT READER in smaller upper case letters, (2) CAL's name, (3) the name of the particular unit, e. g., SCANNER UNIT, and (4) the number of the contract under which the system was developed (J-FBI-6499).
By amendment to its certificate of incorporation on November 17, 1972, CAL changed its name to Calspan Corporation ("Calspan"). The amendment also expanded the scope of the corporation's business activities by providing, inter alia:
On October 18, 1973, Calspan filed an application to register FINDER as a trademark, claiming first use in commerce on September 7, 1972, the date of delivery of the prototype reader to the FBI.
On November 5, 1974, the very date that Calspan's application issued as Registration No. 997,283, the FBI filed the petition which is the subject of this action, alleging as grounds for cancellation: (1) "Calspan . . . is not the owner of the mark FINDER . . . as required by . . 15 U.S.C. § 1051, and is not, therefore, entitled to register the term as a trademark"; (2) "The Federal Bureau of Investigation . . . has continuously used . . . FINDER to signify a fingerprint reading device developed for petitioner . . . and . . . to identify its fingerprint reading device . . . long prior to the . . . application for registration . . . by Calspan . . ."; (3) "Through general useage sic . . . FINDER has been widely used and known throughout the law enforcement community of the United States as the fingerprint reading machine developed by the Federal Bureau of Investigation"; and (4) "The presumptions arising from registration of . . FINDER to Calspan . . . are inconsistent with petitioner's prior, continuous and exclusive right to use . . . FINDER to identify its fingerprint reading device, its . . . operations and its services." Emphasis added.
Apparently influenced by the FBI's claim of an exclusive right to use the name FINDER, the board, after a detailed review of the facts and the contentions of the parties, characterized the FBI's position as follows:
Petitioner, while contending that both it and respondent have used the term "FINDER" in a descriptive manner, nevertheless is claiming a proprietary right in such term on the basis that through general usage the name "FINDER" has been widely used and known throughout the law enforcement community of the United States as the fingerprint reading machine developed by the F.B.I.
Consistent with this view and with its surprising generalization that "the petitioner in a cancellation proceeding bears a much heavier burden of proof than the opposer in an opposition proceeding,"6 the board framed the issue as "whether petitioner has adequately met this heavy burden of proof and overcome the prima facie validity of respondent's registration and respondent's right of ownership and right to use the mark `FINDER'." In short, the board looked upon the controversy as one involving ownership of the mark. It resolved the issue adversely to the FBI, rejecting in the process the argument that Calspan had failed to make a valid trademark use of FINDER.
The dispositive issues presented by this appeal are: (1) whether FINDER is the common descriptive name of the goods described in Calspan's registration; (2) whether CAL satisfied the "used in commerce" requirement of 15 U.S.C. § 1051; (3) whether Calspan is the owner of the mark; and (4) whether the board's error in assessing the degree of burden of proof to be met by the FBI in this proceeding was harmless.
OPINIONNotwithstanding the FBI's arguments to the contrary, the mere fact that the parties to the research and development contract, as well as others, used FINDER to identify the fingerprint reader prior to Calspan's application for trademark registration does not warrant cancellation on the ground that FINDER is the fingerprint reader's common descriptive name. Our focus must be on the public's understanding of FINDER in determining whether it is the common descriptive name of the fingerprint reader. 1 J. Gilson, Trademark Protection and Practice, § 2.021 at 2-13 (1977). The relevant evidence, therefore, is not the communications between CAL and the FBI relative to performance of the contract which the latter has made of record, but the instances of public use of the name FINDER by the FBI, CAL, Calspan, or others. The record shows that virtually every public use of FINDER has identified CAL or Calspan as the source of the fingerprint reader.7 Moreover, in each instance FINDER has appeared entirely in upper case and has often had quotation marks around it. Therefore, on this record, we cannot agree that FINDER is the common descriptive name of the goods described in Calspan's registration.
Invoking the aphorism that one claiming trademark rights must be engaged in a trade, the FBI argues that CAL acquired no trademark rights in the name FINDER because it lacked an established production line in fingerprint readers and cannot rely on its single delivery in interstate commerce as a basis for registration of the mark.
The record clearly shows that CAL was engaged in the development and manufacture of a prototype fingerprint reader, which, by definition,8 rules out the existence of an established production line. Also, the fact that Calspan has made only a single sale of the fingerprint reader is not at all surprising, considering its enormous expense9 and the limited demand for such equipment. In any event, the nonoccurrence of additional sales certainly cannot be attributed to a lack of effort on CAL's part in attempting to generate interest in the fingerprint reader among potential purchasers. The board found as follows:
The record further substantiates respondent's claim of trademark rights in the term "FINDER" by the fact that prior to and...
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