Gold Seal Company v. Weeks

• Decision Date: 20 April 1955
• Docket Number: 1102-52.,No. 1078-52,1078-52
• Citation: 129 F. Supp. 928
• Parties: GOLD SEAL COMPANY, Plaintiff, v. Sinclair WEEKS, Secretary of Commerce, and Robert C. Watson, Commissioner of Patents, and S. C. Johnson & Son, Inc., Defendants.
• Court: U.S. District Court — District of Columbia

129 F. Supp. 928

GOLD SEAL COMPANY, Plaintiff, v. Sinclair WEEKS, Secretary of Commerce, and Robert C. Watson, Commissioner of Patents, and S. C. Johnson & Son, Inc., Defendants.

Nos. 1078-52, 1102-52.

United States District Court, District of Columbia.

March 24, 1955.

Amendment to Opinion April 20, 1955.

COPYRIGHT MATERIAL OMITTED

Edward B. Beale, Washington, D. C. (Beale & Jones, Washington, D. C.), Floyd E. Thompson, Chicago, Ill. (Johnston, Thompson, Raymond & Mayer, Chicago, Ill.), Paul, Moore & Dugger, Maurice M. Moore and Robert P. White, Minneapolis, Minn., for plaintiff.

E. L. Reynolds, Washington, D. C., Solicitor for Patent Office.

Francis C. Browne, William E. Schuyler, Jr., Andrew B. Beveridge, Mead, Browne, Schuyler & Beveridge, Washington, D. C., and Harold F. Greiveldinger, Racine, Wis., for Johnson Wax.

YOUNGDAHL, District Judge.

Plaintiff Gold Seal Company seeks a decree authorizing the Commissioner of Patents to register as a lawful trademark the words Glass Wax, used by plaintiff in connection with its liquid composition for cleaning glass and metal. S. C. Johnson & Son, Inc., has intervened, opposing the application for registration of this mark, seeking a declaratory judgment that the words Glass Wax do not constitute a lawful trade-mark, and counterclaiming for injunctive relief, profits and damages on the ground that the mark constitutes a false representation and description of the goods, thereby causing Johnson damage or the likelihood of damage.¹

Plaintiff corporation adopted Glass Wax in September, 1945, as its mark for the product in question. Shortly thereafter plaintiff unsuccessfully invoked the provisions of the Trade-Mark Act of 1905 to obtain registration of the words (Gold Seal) Glass Wax.

Between 1945 and 1947 plaintiff's product met with significant commercial success. On December 16, 1947, plaintiff again filed an application to register the mark. This application was accepted and published on March 23, 1948. Four oppositions were filed against the application. Three were ultimately dismissed with prejudice. The fourth, filed by intervener Johnson, was the progenitor of the present controversy.

The opinion of the Examiner of interferences, who heard the opposition, was filed on May 4, 1950, while the Decision of the Commissioner was filed on September 14, 1951. The Examiner held the mark not deceptive, while the Commissioner found it unnecessary to determine this. Both of the Patent Office tribunals, however, denied registration of the mark, deciding that it was either merely descriptive or deceptively misdescriptive and refused to consider the application as one seeking registration based on secondary significance.

In the interest of clarity, the two principal questions involved — that of registrability and that of Johnson's counterclaims — will be treated separately.

I. Registrability of the Mark GLASS WAX:

Is the plaintiff, Gold Seal Company, entitled to have the words Glass Wax registered as a trade-mark for a "glass cleaner and polish" on the Principal Register under the Trade-Mark Act of 1946?

a. Contentions of the parties:

Plaintiff contends that Glass Wax is a "technical" trade-mark under Section 45 of the Lanham Act,² it being a combination of words "adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others";³ that it is not deceptive, nor is it merely descriptive, in that Glass Wax describes both a cleaner for glass and a cleaner for metal; that it is not merely deceptively misdescriptive in that it does not misdescribe a cleaner, a cleaner for glass, or a cleaner for metalware. Plaintiff further contends that should the Court find Glass Wax not a technical trade-mark, it should nevertheless register the mark in that it has acquired a "distinctive" or "secondary meaning" under Section 2(f) of the Lanham Act,⁴ even though evidence of such distinctiveness was not considered by the Patent Office; that it can and should be considered by this Court, the Patent Office having erroneously failed to do so; and that no estoppel exists to prevent plaintiff from presenting registrability under Section 2(f) in this court.

The Patent Office, defendant, contends that the mark is in fact deceptive and does mislead; that such deception constitutes an absolute bar to registration regardless of what the Gold Seal Company intended, and regardless of whether or not any purchaser was injured; that the Government cannot and should not approve the use of any mark which actually misrepresents the goods to which it is applied, and since the product involved contains no wax or any border-line substance which might be considered a wax, since the word "wax" has a reasonably definite meaning, and since the words Glass Wax on a container of a liquid recommended for use on glass indicates that the product contains a wax in material amounts, the mark is deceptive. And further, the Patent Office maintains that since it is not such an anomalous false label in relation to the product that no one would be deceived by it, especially since some glass polishes do contain wax, it is not entitled to registration. If it is not deceptive in this way, the Patent Office asserts that the mark is merely descriptive or deceptively misdescriptive, for if the product does contain wax it is descriptive; if it does not, it is deceptively misdescriptive, since Glass Wax would be generally understood as referring to a product which, when applied to glass, leaves a wax film, or at least contains wax; that further, the way the seal is placed on the product indicates that Gold Seal represents the producer and Glass Wax describes the product; that plaintiff is cognizant of this as indicated by the fact that Glass Wax has never been used without being accompanied by the mark Gold Seal. Then, states the Patent Office, since the question of whether the plaintiff was entitled to registration under 2(f) was not before it, due to the form of plaintiff's application and failure of the required type of proof, so that no ruling was made on the merits of that question, this Court cannot now consider whether the refusal to accept the application as under 2(f) was correct and proper, nor the merits of plaintiff's claim under 2(f); that the claim for a technical trade-mark being distinct from a claim for a trade-mark based upon secondary significance, the Court, as well as the Patent Office tribunals, can pass upon one without having to pass upon the other. In short, the Patent Office takes the position that since registrability under 2(f) cannot be reviewed and considered here, the mark is not entitled to registration, but even if the Court were to consider, erroneously, secondary significance on the merits, plaintiffs have not established secondary significance.

S. C. Johnson & Son, Inc., intervener, backs up the assertions of the Patent Office and further contends that the words Glass Wax have not really been used as a trade-mark by Gold Seal Co.; that the controlling finding of the Patent Office that the words Glass Wax are deceptively misdescriptive must be accorded the presumption of correctness, which has not been overcome, and which could only be overcome by a showing of distinctiveness which this Court is not entitled to consider since the Patent Office had not first considered this on the merits.

b. Conclusions of fact and law:

This is a trial de novo.⁵ A long standing and consistent policy of this Court is to accord considerable weight to the rulings of the Patent Office, skilled and experienced as that office is presumed to be in the field of trade-mark law. Such rulings will not be overturned unless shown to be clearly erroneous or new and substantial evidence is offered. National Lead Co. v. Kingsland, D.C. D.C.1948, 74 F.Supp. 985, Abbott v. Coe, 1949, 71 App.D.C. 195, 109 F.2d 449. At the same time, the Court is entitled to rely more heavily on its own judgment where the case, as here, does not require intricate scientific analysis.

1. Section 2(a) — Deceptiveness

Under Section 2(a), a mark cannot be registered if it "consists of or comprises * * * deceptive * * * matter". The Examiner of Interferences decided that the words Glass Wax were not deceptive under Section 2(a) while the Commissioner found it unnecessary to determine the issue.⁶ The Court is well satisfied that the conclusion of the Examiner was correct and justified. He found that:

"* * * the record fails to show that the word Glass Wax is, in fact, deceptive under Section 2(a). On the contrary, the conclusion seems justified from the voluminous record presented by the applicant that the term may be at most misdescriptive in the sense that such suggestion of deceptiveness may be overcome by a showing of distinctiveness under Section 2(f)."⁷

Of more immediate bearing, the Examiner decided:

"* * * While it would be naturally expected that housewives when asked whether Glass Wax contained wax, would answer the question in the affirmative, there is noththing in the Roper survey or in opposer's record which would show that anyone would have felt actually deceived if informed that there was no wax in the product. Both opposer's and applicant's records show, on the contrary, that practically all those who have actually used the product are highly pleased with its action whether it may contain wax or not."⁸

The Commissioner analyzed the problem in the following way:

"Expert opinion as to the chemical constitution of a wax (there are a number of waxes and sometimes several are used in a `wax' composition sold over the counter) would be of little or no interest to the average customer who uses opposer's products, for the ordinary customer knows nothing of the chemical composition of a can of wax and cares less so long as the product satisfies his need."⁹

With this reasoning the Court agrees. No evidence introduced here shows it to be erroneous or without...