Dynamet Technology, Inc. v. Dynamet Inc.

• Decision Date: 08 March 1979
• Docket Number: Appeal No. 78-551.
• Citation: 593 F.2d 1007
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: DYNAMET TECHNOLOGY, INC., Assignee, by mesne assignment, of Dynamet Corporation, Plaintiff-Appellant, v. DYNAMET INCORPORATED, Defendant-Appellee.

593 F.2d 1007

DYNAMET TECHNOLOGY, INC., Assignee, by mesne assignment, of Dynamet Corporation, Plaintiff-Appellant, v. DYNAMET INCORPORATED, Defendant-Appellee.

Appeal No. 78-551.

United States Court of Customs and Patent Appeals.

March 8, 1979.

David Wolf, Boston, Mass. (Wolf, Greenfield & Sacks, P. C., Boston, Mass.) attorney of record, for appellant.

William H. Logsdon, Pittsburgh, Pa., attorney of record, for appellee, Webb, Burden, Robinson & Webb, P. A., Pittsburgh, Pa., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN, and MILLER, Judges, and FORD,^* Judge.

MILLER, Judge.

Dynamet Technology, Inc. ("plaintiff"), appeals from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board ("TTAB"),¹ awarding priority to Dynamet Incorporated ("defendant") in a trademark interference proceeding (No. 6,866)² declared January 21, 1971, involving plaintiff's application³ to register DYNAMET for sintered titanium metal and defendant's application⁴ to register DYNAMET for specialty metal products, namely: titanium rod and wire and nickel alloys rod and wire. We affirm on the priority issue and remand on the registrability issue.

Background

Plaintiff, during 1967 and the early months of 1968 (the critical time period involved herein), was engaged in research and development concerning special shapes to be produced from special alloys, and in producing and selling prototype titanium products. Its customers included members of the aircraft industry. The history of plaintiff begins in December of 1967 or January of 1968,⁵ when Stanley Abkowitz (currently plaintiff's president) and John Siergiej formed an informal partnership called "Dynamet" or "Dynamet Company." On January 31, the name "Dynamet Corporation" was registered with the Commonwealth of Massachusetts, and in May "Dynamet Corporation" was incorporated in Massachusetts. Prior to incorporation, business cards were printed in February; on February 25, Abkowitz attended an annual meeting of the American Institute of Metallurgical Engineers ("AIME"), where he chaired a program and was identified as associated with "Dynamet Corporation"; the partnership received supplies of raw titanium on or about February 1 and regularly thereafter; an order directed to "Dynamet" was received on February 13 from the Wyman-Gordon Company for one hundred pounds of processed powdered titanium; on March 12 this order was delivered in a drum on which "DYNAMET" was stenciled along with the company address; and on March 29, a prospectus was prepared which was distributed to potential investors.

Defendant's history begins in August of 1967, when Peter C. Rossin (currently president, chief executive officer, and treasurer of defendant) decided to form a company to manufacture and sell specialty metal products, particularly titanium rod and wire products, to, inter alia, the aircraft fastener industry. He prepared a prospectus, which was distributed by mail and personal contact in August or September of 1967 to potential investors. The name "Dynamet" was chosen in October 1967, and on November 13, 1967, defendant was incorporated in Pennsylvania as "Dynamet Incorporated." During its early stages, defendant's headquarters was located at Rossin's home. In December of 1967, Rossin obtained stationery, business cards, checks, and other corporation paraphernalia—all bearing the corporate name; opened a checking account under the corporate name; and arranged for a separate telephone for defendant which was billed to and paid for by defendant. Equipment necessary for defendant's manufacturing operations was ordered on December 18, 1967,⁶ a product price list, dated January 1, 1968, was prepared on defendant's stationery covering the titanium products which defendant intended to supply to its customers; the price list was mailed out or hand-delivered to potential purchasers; and on January 25, F. H. Lenway Co. of San Francisco became defendant's West Coast sales representative. In the following April, premises for defendant's plant were leased, employees were hired, equipment was installed, and raw materials were purchased. Thereafter, titanium and nickel mill products were made and shipped under the DYNAMET name or trademark. Meanwhile, Rossin had been promoting defendant by personally contacting essentially all of the aircraft fastener producers and informing them of defendant's intent to be a supplier of products for their use.⁷ One of the earliest contacts was on September 29, 1967, with Robert L. Sproat, a vice president of Standard Pressed Steel Company.

The TTAB found that plaintiff had made open and public use of DYNAMET as part of its trade name since February of 1968, relying for its finding upon plaintiff's solicitation of potential customers for its powdered titanium products and Abkowitz's attendance at the AIME meeting. The TTAB also found that the March 12, 1968, shipment further evidenced "an open and commercial use" of DYNAMET. (197 USPQ at 709.)

With respect to defendant, the TTAB found that, since December of 1967, it had made "open and notorious use" of DYNAMET "in connection with the promotion of its corporate activities through contact with potential customers of its goods in the air-craft fastener field." It particularly relied upon the testimony of potential customer Sproat and defendant's offering of its products to potential customers in the price list dated January 1, 1968. (197 USPQ at 711.) It found that defendant's first use of DYNAMET in commerce was on a shipment on June 12, 1968, from Pittsburgh to New Jersey of a single titanium rod in a reinforced envelope. The TTAB held that, as between the parties, defendant possessed superior rights in DYNAMET. Accordingly, it refused registration to plaintiff.

Before the TTAB, plaintiff raised the issue of the sufficiency of the June 12, 1968, shipment to entitle defendant to a trademark registration. To this, the TTAB responded (197 USPQ at 712):

There is no doubt but that plaintiff's comments relative to the June 12, 1968 shipment see note 4, supra involve to some extent speculation, surmise, and hearsay; but nevertheless beneath all of this smoke, a serious question remains as to the bona fide character of the shipment that requires clarification before a registration can issue to defendant on the application involved in this proceeding....

The TTAB concluded that determination of the bona fide character of the June 12, 1968, shipment was a task initially for the examiner and that the application should be remanded to the examiner for further action.

OPINION

There are two questions involved in this appeal: (1) As between plaintiff and defendant, which party has superior rights, i. e., priority of use, in DYNAMET? (2) Is the party having superior rights entitled to a trademark registration for DYNAMET?⁸

In a trademark interference proceeding, the time period of a party's trade-name use of a word may be tacked onto its first date of trademark use on goods in interstate commerce for the purpose of establishing priority of trademark use. Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 1400, 59 CCPA 1016, 1019-20, 173 USPQ 673, 675 (1972); Alfred Electronics v. Alford Manufacturing Co., 333 F.2d 912, 51 CCPA 1533, 142 USPQ 168 (1964); see 15 U.S.C. § 1052(d).

It is well established that no property rights in a trademark for goods arise except in connection with its use thereon by an existing business entity.⁹ Similarly, it would seem that there can be no property rights in a trade name except in connection with its use with a business entity that has engaged in sufficient activities to have acquired goodwill, because a trade name is representative of the goodwill of a business entity.¹⁰See American Steel Foundries v. Robertson, supra 269 U.S. at 380, 46 S.Ct. 160; In re Walker Process Equipment Inc., 233 F.2d 329, 330-31, 43 CCPA 913, 915, 110 USPQ 41, 42 (1956); Lawyers Title Insurance Co. v. Lawyers Title Insurance Corp., 71 App.D.C. 120, 109 F.2d 35 (1939), cert. denied, 309 U.S. 684, 60 S.Ct. 806, 84 L.Ed. 1028 (1940); 15 U.S.C. § 1127. See also 1 J. McCarthy, Trademarks and Unfair Competition §§ 4:4, 16:4 (1973); E. Vandenburgh, Trademark Law and Procedure § 1.21(e) (2d ed. 1968). Accordingly, to establish its right to tack the time period of its trade-name use of a word onto its first date of trademark use of the word on goods for the purpose of establishing priority of trademark use, a party must furnish evidence that, during the time period sought to be "tacked," it was a business entity and had engaged in sufficient activities to have acquired goodwill.

A review of the evidence persuades us that by January of 1968 defendant was a business entity possessed of goodwill, that it was making trade-name use of DYNAMET, and that this use continued until June 12, 1968, the claimed date of first trademark use of DYNAMET, and thereafter. By January of 1968, all of the necessary corporate organization formalities had been performed, i. e., a prospectus had been prepared and distributed to potential investors, commitments for financial support from some twenty-three investors had been obtained, and the defendant had been incorporated under a name that included DYNAMET; a corporate office had been established;¹¹ Rossin had visited potential purchasers of defendant's products;¹² and other activities, each involving use of the corporate name, had been carried out—obtaining telephone service, checking account, checks, stationery, and business cards, ordering equipment necessary for manufacturing operations,¹³ and offering products to be manufactured in the price list dated January 1, 1968. Some of these activities, considered together, might not be sufficient to enable a business entity to acquire the goodwill required for trade-name use. See Steer Inn Systems, Inc. v. Laughner's Drive-In, Inc., 405 F.2d 1401, 56 CCPA 911, 160 USPQ 626 (1969) (a business office door sign,...