Englander v. Continental Distilling Co.

• Decision Date: 04 April 1938
• Docket Number: Patent Appeal No. 3949.
• Citation: 95 F.2d 320
• Parties: ENGLANDER v. CONTINENTAL DISTILLING CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

95 F.2d 320 (1938)

ENGLANDER v. CONTINENTAL DISTILLING CO.

Patent Appeal No. 3949.

Court of Customs and Patent Appeals.

April 4, 1938.

Louis B. Englander, of Newark, N. J., for appellant.

Leonard L. Kalish, of Philadelphia, Pa., for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences sustaining appellee's notice of opposition and holding that appellant was not entitled to the registration of a composite trademark comprising the words "Silver Bar" in association with the picture of a man in "apparently medieval times costume holding a shield," for use on whiskey, gin, rum, brandy, and alcoholic cordials.

In its application, appellant stated that it had used its trade-mark on its goods since January 12, 1934.

Although the words "Silver Bar" in appellant's mark are associated with a pictorial design, they are the dominant feature of the mark.

Appellee's mark, consisting of the words "Silver Shield," for use on "Whiskey, Gin, Rum, Rye, Brandy, and Cordials," was registered March 13, 1934, No. 311,048, on an application filed November 22, 1933.

It will be observed that the goods of the parties are substantially the same.

In opposing the registration of appellant's trade-mark, appellee relied upon the confusion in trade clause of section 5 of the Trade-Mark Act of February 20, 1905, as amended, 15 U.S.C.A. § 85.

Evidence was introduced by appellee for the purpose of establishing that it used its mark prior to the first use by appellant of its mark, and that the marks of the parties were confusingly similar.

The time for the taking of testimony in the case having expired, counsel for appellant, on July 24, 1936, filed an application (naming therein the witnesses he desired to interrogate) for permission to take testimony for the purpose of establishing appellant's good faith in the adoption and use of its mark; that appellee had not, in fact, used its trade-mark on its goods on November 17, 1933, the date of alleged first use in appellee's application for the registration of its mark; and that appellee "fraudulently procured the certificate of registration for `Silver Shield.'"

In explanation of the delay in taking the testimony of the witnesses named in the application, counsel for appellant stated that it had been his desire to "first examine the president of the" appellee company, whose residence address he had theretofore been unable to ascertain. Those facts, it was stated, were set forth in previous motions. (No such motions appear of record.)

On July 29, 1936, the Examiner of Interferences, in denying the application, among other things, said:

"The record discloses that on March 30, 1936, the examiner denied a motion filed March 23, 1936, by the applicant, for an extension of time for taking testimony, by reason of noncompliance of the latter with Rule 154(d). In this last mentioned motion the applicant indicated a desire to take testimony of officers of the opposer corporation, but stated that he was then unable to locate them.

"In the motion filed July 24, 1936, one of the applicant's proposed witnesses is identified as the president of the opposer corporation, it being indicated therein that the applicant has now ascertained the location of this person. However, the motion fails to disclose the steps taken by applicant to locate said witness or the dates when efforts to this end were made.

"The motion is accordingly deemed not yet to comply with all the provisions of Patent Rule 154(d) and it is therefore denied." (Italics ours.)

It does not appear from appellant's application to take testimony, and the affidavit in support thereof, that, for the reasons stated by the examiner, he had fully complied with rule 154(d) of the Rules of Practice in the United States Patent Office. Accordingly, appellant's application was properly rejected.

The validity of a registered mark cannot be challenged in an opposition proceeding. Sharp & Dohme v. Parke, Davis & Co., 37 F.2d 960, 17 C.C.P.A., Patents, 842; American Fruit Growers v. Michigan Fruit Growers, 38 F.2d 696, 17 C.C.P.A., Patents, 906; California Packing Corp. v. Tillman & Bendel, Inc., 40 F.2d 108, 17 C.C.P.A., Patents, 1048; Standard Oil Co., New Jersey v. Clarence W. Epley, 40 F.2d 997, 17 C.C.P.A., Patents, 1224; H. G. MacEachen v. Tar Products Corporation, 41 F.2d 295, 17 C.C.P.A., Patents, 1264; Revere Sugar Refinery v. Joseph G. Salvato, 48 F.2d 400, 18 C.C.P.A., Patents, 1121; George H. Ruth Candy Co., Inc. v. Curtiss Candy Co., 49 F.2d 1033, 18 C.C.P.A., Patents, 1471; E. Daltroff & Cie v. V. Vivaudou, Inc., 53 F.2d 536, 19 C.C.P.A., Patents, 715; Richard Hellman, Inc., v. Oakford & Fahnestock, 54 F.2d 423, 19 C.C.P.A., Patents, 816; Walgreen Co. v. Godefroy Manufacturing Co., 58 F.2d 457, 19 C.C.P.A., Patents, 1150; Breakstone Bros., Inc. v. Gerber & Co., Inc., 58 F.2d 419, 19 C.C.P.A., Patents, 1224; Aktiengesellschaft Für Feinmechanik, Vormals Jetter & Scheerer v. Kny-Scheerer Corp., 68 F.2d 974, 21 C.C. P.A., Patents, 877; Ely & Walker Dry Goods Co. v. Sears, Roebuck & Co., 90 F. 2d 257, 24 C.C.P.A., Patents, 1244.

In those cases, applicants for registrations were attempting to attack the validity of registered marks of opposers. In some instances, it was claimed that the registrations were invalid because of prior registrations of such or similar marks on goods of the same descriptive properties.

In the case of Walgreen Co. v. Godefroy Manufacturing Co., supra, the validity of a registered mark was questioned on the ground of descriptiveness. It was held that that issue could not be raised in an opposition proceeding.

In the Ely & Walker Dry Goods Co. Case, supra, the applicant for registration alleged that the opposer's registered mark was invalid because the application for registration was not in accordance with the requirements of the Trade-Mark Act, supra; that the opposer was not using the registered mark as a trade-mark; and that, for other reasons, the registration was invalid. We there again held that the validity of a registered mark could not be attacked in an opposition proceeding.

It was pointed out in our decisions in some of those cases that the Congress specially provided, in section 13 of the Trade-Mark Act, supra, 15 U.S.C.A. § 93, for proceedings for the cancellation of a trademark registration by one who deemed himself injured by such registration, and that, if an interested party desired to question the validity of a trade-mark registration, he should proceed in accordance with the provisions of that section.

We have also held in several cases, some of which are hereinbefore cited, that, in opposition proceedings, the Patent Office tribunals are not limited to the precise issues presented in notices of opposition, but, on the contrary, by virtue of the provisions of section 7 of the Trade-Mark Act, supra, 15 U.S.C.A. § 87, may dispose of any question relating to a proposed registration that might properly be considered in an ex parte proceeding, and that, if an applicant's mark be identical with a registered mark owned by another, or confusingly similar thereto, and the goods of the applicant are of the same descriptive properties as those of the registrant, the application for registration should be denied, regardless of the issues raised by the notice of opposition. Furthermore, the Congress has provided in section 7, supra, for an interference proceeding, under proper circumstances, between applicants for registration, and between an applicant and a registrant, to determine the question of priority of use of their marks. Accordingly, testimony relating to the question of the validity of appellee's registration, which counsel for appellant desired to submit, is wholly irrelevant to the issues in this case.

It appears from the decision of the Examiner of Interferences that counsel for appellant contended in his brief on final hearing before the Examiner that appellee's notice of opposition was invalid, because, it was argued, it was not accompanied by evidence of the authority of the vice president of the appellee company to file the notice of opposition. No motion of any kind raising that issue was filed by counsel for appellant, nor was there anything in the answer of appellant to indicate that that question would be raised.

In holding that the notice of opposition was sufficient, the Examiner of Interferences said: "The applicant contends that no valid notice of opposition has been filed herein by reason of the lack of proof of the authority of the vice president of the opposer corporation to sign this notice of opposition. The Office has long...