Gold Seal Co. v. Weeks

• Decision Date: 07 January 1954
• Docket Number: No. 11631.,11631.
• Parties: GOLD SEAL CO. v. WEEKS, Secretary of Commerce et al.
• Court: U.S. Court of Appeals — District of Columbia Circuit

93 US App. DC 249, 209 F.2d 802 (1954)

GOLD SEAL CO. v. WEEKS, Secretary of Commerce et al.

No. 11631.

United States Court of Appeals For the District of Columbia Circuit.

Decided January 7, 1954.

Mr. Edward B. Beale, Washington, D. C., Mr. Maurice M. Moore, Minneapolis, Minn., on the brief, for appellant.

Mr. Francis C. Browne, Washington, D. C., Messrs. William E. Schuyler, Jr. and Andrew B. Beveridge, Washington, D. C., on the brief, for appellee S. C. Johnson & Son, Inc.

Mr. E. L. Reynolds, Solicitor, United States Patent Office, for appellees Sinclair Weeks, Secretary of Commerce, and Robert C. Watson, Commissioner of Patents.

Before STEPHENS, Chief Judge, and WILBUR K. MILLER and PRETTYMAN, Circuit Judges.

STEPHENS, Chief Judge.

This is a motion by the appellee, S. C. Johnson & Son, Inc., hereafter referred to as Johnson & Son, to dismiss an appeal from a purported final judgment of the United States District Court for the District of Columbia entered purportedly, in accordance with 28 U.S.C. § 1291 (Supp.1952) and Rule 54(b) of the Federal Rules of Civil Procedure, 28 U.S.C. A., as a final judgment upon one of a plurality of claims for relief. The judgment was entered in an action, filed by the appellant Gold Seal Company, hereafter referred to as Gold Seal, under Rev.Stat. § 4915, 35 U.S.C. § 63 (1946) (in its present form 66 Stat. 803 (1952), 35 U.S.C.A. § 145 (1952 Supp.)), and under 60 Stat. 435 (1946), 15 U.S.C. § 1071 (1946), seeking an adjudication authorizing the Commissioner of Patents to register a trade-mark. The motion to dismiss the appeal is upon the ground that the judgment does not finally adjudicate one of a plurality of claims for relief within the meaning of Rule 54(b) and is not a final decision within the meaning of that phrase as used in Title 28, Section 1291, i. e. is not a final disposition of the entire action. The appellant contends that the judgment satisfies the requirements of 28 U.S.C. § 1291 and Rule 54(b). The dispute in essence reduces itself to the question whether or not the action presents a plurality of claims upon one of which, as a distinct claim, the judgment sought to be reviewed was entered. For the reasons set forth below, we conclude that the appeal must be dismissed.

I

An understanding of the question presented requires an acquaintance with certain of the provisions of the Trade-Mark Act of July 5, 1946, 60 Stat. 427, 15 U.S.C.A. § 1051 et seq., hereafter sometimes referred to as the Act, and with the pleadings and proceedings in the District Court which led to the entry of the judgment in question. The pertinent provisions of the Act are set forth in the margin.¹ Primarily involved are the provisions of Section 2(e) (1), which, when read in connection with the introductory language of that section, forbids refusal of registration of a trade-mark by which the goods of the applicant may be distinguished from the goods of others unless it, when applied to the goods of the applicant, is merely descriptive or is deceptively misdescriptive of them, and the provisions of Section 2(f) providing that, except as expressly excluded in paragraphs (a), (b), (c), and (d) of the Section, nothing therein shall prevent the registration of a mark used by the applicant which has become distinctive of his goods in commerce.

The complaint of Gold Seal filed in the District Court alleges, so far as here pertinent, in substance and effect that:

Gold Seal, a corporation of North Dakota, is the sole owner of a trade-mark, "Glass Wax", acquired at a date not made certain in the complaint from certain predecessors in interest. Such predecessors and Gold Seal prior to September 1945, and Gold Seal alone thereafter, offered for sale and sold in commerce a certain glass cleaner and polish under the trade-mark described, the same having been adopted as an "arbitrary, fanciful and distinctive" word combination or symbol to designate said glass cleaner and polish. Gold Seal and its predecessors widely advertised and promoted the sale of the glass cleaner and polish under said trade-mark and the same is associated with Gold Seal's goods and means, and is understood to mean, that the goods described come from Gold Seal; and the goods so sold under said trade-mark have acquired a wide and enviable reputation. The trade-mark "Glass Wax" is "arbitrary, fanciful and distinctive" of Gold Seal's goods in commerce, has a secondary meaning in the trade, and means only Gold Seal's goods and distinguishes the same from the goods of others — all within the meaning of Section 2 of the Act. The mark is not such a mark as is precluded from registration on the Principal Register by any provision of the Act.

In 1947 (December 16) Gold Seal filed in the Patent Office an application for registration of the trade-mark "Glass Wax" and in 1948 (February 16) filed a "Petition to Make Case Special" informing the Commissioner of Patents that Gold Seal was seeking registration of "Glass Wax" under Section 2(f) of the Act. Thereafter "Glass Wax" was held registrable by the Patent Office and was published in the Official Gazette. Johnson & Son then filed a Notice of Opposition, and Opposition No. 27543 was instituted. Gold Seal filed an answer and counterclaim in the Opposition, and proceedings were taken in the Patent Office including the taking of depositions by Gold Seal and by Johnson & Son. Thereafter the Examiner of Interferences ruled as follows:

". . . it is the examiner\'s opinion that the opposer was entitled to institute this proceeding, and that the opposition must be sustained for the reason that the application now before the examiner seeks registration of the word `GLASS WAX\' as a technical trade-mark, without having been presented under Section 2(f) of the Act of 1946, under which section alone, in the examiner\'s opinion, applicant\'s mark might qualify for the principal register. Accordingly, the opposition is hereby sustained and it is further adjudged that the applicant is not entitled to the registration of the word `GLASS WAX\' as sought in the present application."

Finally the Commissioner of Patents, hereafter referred to as the Commissioner, in the following terms, affirmed the decision of the Examiner of Interferences:

"Applicant is not precluded by the decision in this case from applying for registration under Section 2(f) of the Act on a new application appropriately worded for this purpose, and the decision herein is without prejudice to consideration of registrability of the mark on such an application. The decision of the examiner of interferences sustaining the opposition is affirmed."

Pursuant to the described proceedings, the Commissioner and the Secretary of Commerce, hereafter referred to as the Secretary, refused to register the trade-mark "Glass Wax" and refused to issue to Gold Seal a Certificate of Registration.

The complaint contains also certain argumentative material which may be summarized as follows:

This decision of the Commissioner and the Secretary unlawfully denies to Gold Seal registration of the trade-mark "Glass Wax". The decision is erroneous in ruling that that trade-mark is not registrable in view of Section 2 (e) of the Act because if it contains wax it is descriptive and if it does not it is deceptively misdescriptive; and is erroneous in ruling that it is not registrable under Section 2(f) of the Act because the application filed by Gold Seal can not be considered an application under Section 2(f); and is erroneous in ruling that the question of distinctiveness was therefore not in issue, and that nothing was presented to the Examiner to show a right to register the trade-mark on the basis of Section 2(f).

Upon the basis of the foregoing allegations and charges of error, the complaint prays for a decree by the District Court that Gold Seal is entitled to registration of "Glass Wax" as a trade-mark and to receive a Certificate of Registration therefor.

To the complaint thus filed by Gold Seal the Commissioner and the Secretary filed an answer in which they assert that Gold Seal is not entitled to the registration of "Glass Wax"; the detail of the answer is not here pertinent. An answer was filed also by Johnson & Son in which that defendant asserts that Gold Seal, because of failure to show compliance with the conditions of Section 2(a), (e), and (f) or with any of the conditions of the Act, is not entitled to the registration of "Glass Wax" as a trade-mark; the detail of that answer is also not here pertinent. Johnson & Son also filed a counterclaim; its terms are not material to the issue presently before this court. Johnson & Son also filed a cross-claim against the Secretary and the Commissioner. The cross-claim alleges, so far as here pertinent, in substance and effect that:

The words "Glass Wax" sought to be registered by Gold Seal have been used on goods which in fact contain no wax, and the words thus comprise deceptive matter and therefore registration is prohibited by Section 2(a) of the Act. The words "Glass Wax" have not been used by Gold Seal to identify its goods and distinguish them from those manufactured or sold by others, and therefore the words are not a trade-mark within the meaning of Sections 1 and 45 of the Act. The words "Glass Wax" when applied to the goods of Gold Seal are descriptive, or are deceptively misdescriptive, and therefore registration is prohibited by Section 2(e) of the Act. The application by Gold Seal was not filed under the provisions of Section 2(f) and therefore the Commissioner and the Secretary can not register "Glass Wax" thereunder on the basis of the present application. Section 2(f) can not be relied upon to overcome the prohibition of Section 2(a), and can not be relied upon to make the words "Glass Wax" a trade-mark within the meaning of Section 1 or within the definition of Section 45 of the Act.

The cross-claim prays for a declaration by the District Court that the words "Glass...