EI Du Pont De Nemours & Co. v. Celanese Corporation

• Decision Date: 30 April 1948
• Docket Number: Patent Appeals No. 5360.
• Citation: 167 F.2d 484
• Parties: E. I. DU PONT DE NEMOURS & CO. v. CELANESE CORPORATION OF AMERICA.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

167 F.2d 484 (1948)

E. I. DU PONT DE NEMOURS & CO. v. CELANESE CORPORATION OF AMERICA.

Patent Appeals No. 5360.

Court of Customs and Patent Appeals.

April 2, 1948.

Rehearing Denied April 30, 1948.

Stone, Boyden & Mack, of Washington, D. C. (J. Hanson Boyden of Washington, D. C., of counsel) for appellant.

C. W. Levinson and I. Seltzer, both of New York City, for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal in a trade-mark cancelation proceeding from the decision of the Commissioner of Patents, 69 U.S.P.Q. 258, affirming the decision of the Examiner of Interferences granting appellee's motion to dismiss appellant's petition to cancel the registration of appellee's mark "Celanese," with the word "Brand" enclosed in smaller letters within the term "Celanese," for use on dyestuffs.

Appellee's trade-mark, registration No. 189,399, was registered September 16, 1924, under the Trade-Mark Act of February 20, 1905, 15 U.S.C.A. § 81 et seq., on an application filed April 15, 1924, by the American Cellulose & Chemical Manufacturing Company, Limited, which, by change of its name later, became the Celanese Corporation of America, a corporation organized under the laws of the State of Delaware. The registration was renewed September 16, 1944, to the Celanese Corporation of America.

On October 26, 1944, appellant, E. I. du Pont de Nemours & Company, filed its petition for cancellation of appellee's registered mark, in which it was claimed that on April 2, 1935, appellee had entered into a non-exclusive license with American Aniline Products, Inc., of New York, New York, granting to the latter company "`a non-exclusive license to employ said trade mark in connection with dyestuffs' and `the right — to publish advertising matter — in connection with the sale of dyestuffs, to the effect that such dyestuffs are designated by said trademark'"; that in accordance with said license agreement, American Aniline Products, Inc., "published from time to time, beginning in the year 1935, and running at least through the year 1943, numerous displays of advertising matter, such advertising matter appearing in the following periodicals (among others), namely: — `American Drycleaner,' `American Dyestuff Reporter,' `Cotton,' `Rayon Textile Monthly,' and `Textile Colorist,'" and in such advertisements, featured dyestuffs offered under the name "Celanese"; that said products under said trade-mark were advertised as the product of American Aniline Products, Inc., without any reference in any way to appellee; that it filled the orders received for dyestuffs and placed on such dyestuffs labels bearing the trade-mark and displayed its own name as the source of the goods "Celanese" and shipped such labeled goods directly to purchasers; that the trade-mark "Celanese" no longer served to denote origin in appellee and therefore, the trade-mark "Celanese," as applied to dyestuffs, has ceased to function as a trademark; and that appellee's registration has, therefore, been abandoned and is invalid.

Appellant further alleged, in order to establish that it deemed itself injured by the registration of appellee's trade-mark, that appellee had relied on its registration in a cancelation proceeding against appellant's registration No. 365914, for the mark "Zelan" by reasons of which cancelation proceeding appellant has been "grievously harrassed and otherwise seriously injured."

Subsequent to the filing of appellant's petition for cancelation, appellee, on November 10, 1944, filed a motion under Rule 12(e) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, requiring appellant to furnish appellee with a further and better statement of appellant's claims. Attached to the motion was a license agreement dated April 2, 1935, between the Celanese Corporation of America and American Aniline Products, Inc., designated as Exhibit A, together with photostat copies of two advertisements of American Aniline Products, Inc., appearing in Volume 32 of the American Dyestuff Reporter of April 26, 1943, and in Volume 10 of the American Drycleaner of November 1943, each respectively referred to in the motion as Exhibits B. and C.

Without quoting the entire agreement between appellee and American Aniline Products, Inc., it is stated therein that American Aniline Products, Inc., was desirous of selling dyestuffs under the trade-mark "Celanese"; that it agreed "to acknowledge and does hereby acknowledge the validity" of the trade-mark "Celanese," and "further agrees that it will never do anything or use" the trade-mark "Celanese" "in any way to infringe the rights" of appellee in its trade-mark. It is further stated in the license agreement that American Aniline Products, Inc., was granted "a non-exclusive, non-transferable and personal license" to employ the trade-mark "Celanese" "in connection with dyestuffs and no other product"; that American Aniline Products, Inc., was appointed as one of appellee's agents "for the purpose of affixing labels bearing" the trade-mark "Celanese" to "packages containing said dyestuffs"; that American Aniline Products, Inc., agreed to attach such labels "only to dyestuffs manufactured by it and only so long as the right granted herein has not been terminated as provided in Clause 6 under this agreement"; and that "Nothing herein contained shall be construed to mean" that American Aniline Products, Inc., "has the sole and exclusive right to use" the trade-mark "Celanese" and appellee reserved the right to use said trade-mark and to appoint other agents to use the same.

It further appears from the license agreement that it was agreed that the trade-mark should be employed by American Aniline Products, Inc., "to designate only such dyestuffs which shall in quality be up to such standard as may be fixed or approved by the party of the first part and that for the purpose of ascertaining the quality of said dyestuffs," appellee "shall through such agents or representatives as it may designate, have the right to inspect and test from time to time, such dyestuffs before they are offered for sale"; that American Aniline Products, Inc., might publish in circulars or other advertising in connection with the sale of dyestuffs "to the effect that such dyestuffs are designed by" the trade-mark "Celanese" "until such time as the right granted herein has not been terminated as provided in Clause 6 under this agreement"; that notice of the fact that the trade-mark "Celanese" was registered and owned by appellee should be indicated in all such advertising matter and that before such advertising matter was published it should be submitted to appellee for its approval; and that in Clause 6 of the agreement, it is provided that the license agreement may be terminated by appellee upon six months notice in writing to the second party.

In Exhibit B, published by American Aniline Products, Inc., it appears that the trade-mark "Celanese" was merely used to indicate to the public a particular type or quality of dye.

Exhibit C is an advertisement of American Aniline Products, Inc., in which it stated, among other things, that Celanese dyes might properly be used for the purpose intended.

On November 24, 1944, appellant, in response to the motion filed by appellee under Rule 12(e) of the Federal Rules of Civil Procedure, acknowledged the existence of Exhibits A, B, and C, hereinbefore referred to, and stated that there were other advertisements similar to Exhibits B and C and particularly referred to a copy of an advertisement in the American Dyestuff Reporter of July 15, 1935, and apparently attached the same to its bill of particulars. That advertisement, however, does not differ substantially from Exhibits B and C, hereinbefore referred to, and does not indicate that American Aniline Products, Inc., is the owner of the trade-mark "Celanese."

On December 11, 1944, appellant moved to amend its petition for cancellation by adding thereto the allegation that American Aniline Products, Inc., with the knowledge and approval of appellee, "issued and distributed to the trade color books or `cards' illustrating various shades of `Celanese' colors or dyestuffs which were being offered, such color books or `cards' bearing only the name American Aniline Products, Inc., as the source of the `Celanese' dyestuffs described therein" and displayed its own name as a source of the dyestuffs. The motion to amend was granted by the Examiner of Interferences and appellant was granted until January 4, 1945, in which to furnish the particulars requested in appellee's motion hereinbefore referred to.

Appellee, on December 12, 1944, filed an additional motion under Rule 12(e) of the Federal Rules of Civil Procedure, to require appellant to file an additional bill of particulars.

On December 30, 1944, appellant, in response to the second motion for a bill of particulars, attached two photostat copies of the covers of color books or "cards" and stated further that the original books from which the attached photostats had been made, might be examined either in Room 7090 of the du Pont Building, Wilmington, Delaware, or in Room 866 of the National Press Building, Washington, D. C.

The two photostat copies attached to the bill of particulars refer to Celanese colors but do not indicate to the purchasing public that the trade-mark "Celanese" is owned by American Aniline Products, Inc., but rather suggests that the Celanese colors are of a particular quality.

The sole issue in the case, therefore, in accordance with the facts as stated is whether appellant's petition for cancelation, the record not containing any other matter of which we may take judicial notice, is sufficient to state a cause of action in accordance with section 13 of the Trade-Mark Act of February 20, 1905, in view of appellee's motion to dismiss the petition for cancellation, the...