Hollowform, Inc. v. Aeh

• Decision Date: 22 May 1975
• Docket Number: Patent Appeal No. 74-548.
• Parties: HOLLOWFORM, INC., Appellant, v. Delma AEH, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

515 F.2d 1174

HOLLOWFORM, INC., Appellant, v. Delma AEH, Appellee.

Patent Appeal No. 74-548.

United States Court of Customs and Patent Appeals.

May 22, 1975.

Robert D. Hornbaker, Los Angeles, Cal., attorney of record, for appellant.

Richard Hildreth, Fletcher, Heald, Rowell, Kenehan & Hildreth, Washington, D. C., attorneys of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the Trademark Trial and Appeal Board's decision, 180 USPQ 284 (1973), dismissing appellant's opposition to the registration of TOPKAT as a trademark for camping trailers and truck campers, application serial No. 394,999, filed June 16, 1971. Decision was rendered on applicant's motion to dismiss the opposition for failure to state a claim upon which relief can be granted.

The opposition was predicated on opposer's claim that it was the owner of the trademark TOP KAT for truck campers in twelve western states in which it used the mark before the applicant, doing business in Florida, had used her trademark in opposer's territory. However, the pleaded dates of opposer's uses were all subsequent to the applicant's filing date. Opposer has no registration.

The sole issue is whether the board erred in granting applicant's motion to dismiss the opposition because it failed to state a claim which, if proved, would defeat applicant's right to secure the unrestricted registration applied for. The only question before us is whether opposer's allegations, if true, would establish that applicant is not entitled to the registration.

The board's view was that "it must be pleaded by the plaintiff opposer that the registration of the mark which it is challenging is inconsistent with an equal or superior right of the plaintiff to the use of the same or a like term in connection with goods or services which are similar" and that "the salient question is whether applicant was the first to use the mark `TOPKAT' for camping trailers and truck campers in commerce which may lawfully be regulated by Congress." It found that opposer conceded applicant to be the first user. We find that opposer continues to make that concession. A sentence in the concluding paragraph of its brief is:

Opposer's first concurrent lawful use in commerce was on August 13, 1971, * * * which was after, not prior to, the Applicant's filing date June 16, 1971.

Conceding priority of use of what is in contemplation of law an identical mark on identical goods, appellant's only argument is that it has "alleged a common law use of the trademark in the twelve (12) western states that Applicant cannot stop." The board's answer was:

While it may be that opposer possesses superior rights in the mark "TOPKAT" in the several states enumerated by it, these asserted rights may be recognized in the Patent Office only in an appropriate concurrent use proceeding which may properly be instituted only after the filing by opposer of its own application for the registration of its mark on a concurrent use basis.¹

Opposer is not here asking that applicant's registration be territorially limited but that it be denied. Vandenburgh, Trademark Law and Procedure § 10.34(b) at 407 (2d ed. 1968), citing Aeronautical Electronics, Inc. v. Aerotron Radio Co., 120 USPQ 488, 489 (Com'r.Pats. 1959), says:

The prior user of the mark anywhere in the United States normally is entitled to an unlimited registration even though he may be only using in a portion thereof.

In the Aeronautical Electronics case Assistant Commissioner Leeds pointed out, in response to a request to restrict a registration territorially in an interference, that

* * * no authority is found for issuing a restricted registration to an applicant which has established its superior prior rights in a mark.

We agree with appellee that whatever common law rights opposer may have in its states of use are completely irrelevant here and that the fact that a subsequent user adopts a mark in good faith in a territory where the prior user's mark has not been known or used will not preclude registration of the prior user's mark. Since appellant's rights in the mark are not superior to appellee's right to registration, appellant cannot be legally "damaged," as that term has been construed, by the issuance of a registration to appellee. American Novawood Corp. v. U. S. Plywood-Champion Papers Inc., 426 F.2d 823, 57 CCPA 1276 (1970); 1 J. McCarthy, Trademarks and Unfair Competition § 20.2B (1973). We therefore agree that the opposition notice did not plead facts on which relief could be granted and the board properly granted applicant's motion to dismiss.

The decision of the board is affirmed.

Affirmed.

MILLER, Judge (dissenting).

This appeal involves, as the majority puts it, "what is in contemplation of law an identical mark on identical goods." The issue is whether, accepting the allegations as true, appellant-opposer's notice of opposition states a claim on the basis of which the board could have granted relief. If it does, the Board erred in granting appellee-applicant's motion to dismiss the opposition.

Section 13 of the Lanham Act (15 U.S.C. § 1063) provides that any person who believes he would be damaged by the registration of a mark upon the principal register may institute an opposition proceeding. After referring to appellee's application for registration (which recites that she believes herself to be the owner of the trademark TOPKAT) and stating its belief that it will be damaged by registration of applicant's mark, appellant's notice of opposition alleges, among other things, that opposer is the owner (with "superior and paramount rights") of the trademark TOP KAT for truck campers in twelve states, having adopted and first used said trademark in each of said states in good faith; that applicant has never used her trademark TOPKAT in any of said states; and that contemporaneous use by applicant of her trademark in said states will dilute or impair opposer's trademark rights in said states. Under such circumstances, an unrestricted registration of applicant's mark on the basis of her standing as the owner of the mark for purposes of section 1 of the Lanham Act (15 U.S.C. § 1051) supports belief that opposer will be legally damaged,¹ notwithstanding that the dates of opposer's good faith uses in the twelve states were all subsequent to applicant's filing date.²

An applicant who is a prior user in commerce does not have an absolute right to an unrestricted registration of its mark

The position of the majority is that, assuming appellant-opposer's allegations to be true, these will not preclude unrestricted registration of applicant's mark because applicant is the prior user in the United States; that appellant-opposer's common law rights are "completely irrelevant." The majority quotes from the discussion of "Grounds for Obtaining a Concurrent Use Registration" in Vandenburgh, Trademark Law and Procedure § 10.34(b) at 407 (2d ed. 1968):

The prior user of the mark anywhere in the United States normally is entitled to an unlimited registration even though he may be only using in a portion thereof. Emphasis supplied.

However, Vandenburgh then says (also at 407):

To the extent that there is an area or areas in which an adverse use, or uses, exists which the prior user cannot stop, either because he voluntarily relinquished the right or because of the application of the common law principles, it would seem to be consistent, that the prior user's registration should be diminished only to the extent of carving out such area or areas, as opposed to giving the prior user in such case a registration only covering the limited portion of the United States in which he is using the mark. The first user is entitled to a registration from which is eliminated only those areas in which the second user has established substantial rights, or an area that is within the normal field of expansion of the second user's business, except where the applicant only has asked for less, in which case he will be granted only what he requested. Neither is entitled to a registration for any area in which there is a "lawful" use by another. A lawful use would be one which could not be stopped by court action. Emphasis supplied and footnotes omitted.

The clear implication is that in a concurrent use proceeding, neither of the parties to that proceeding is entitled to a registration for any area in which another has a lawful use under common law. Indeed, this court has stated that, in concurrent use proceedings in which neither party owns a registration, an applicant who is the prior user is only prima facie entitled to a registration covering the entire United States. In re Beatrice Foods Co., 429 F.2d 466, 474, 57 CCPA 1302, 1311 (1970).

Apart from concurrent use proceedings, there is ample authority to refute the idea that the Lanham Act clothes an applicant for registration with a right which is superior to the common law rights of others. Where neither party holds a registration, a good faith junior user is entitled to injunctive relief against the senior user if the senior user attempts to enter a distant area where the junior user has established common law trademark rights. Sweetarts v. Sunline, Inc., 380 F.2d 923, 154 USPQ 459 (8th Cir. 1967); Gold Master Corp. v. Miller, 380 F.2d 128, 154 USPQ 457 (2d Cir. 1967); Food Fair Stores, Inc. v. Square Deal Market Co., 93 U.S.App. D.C. 7, 206 F.2d 482, 98 USPQ 65 (1953). The Supreme Court has held that a good faith junior user in an area "remote" from the senior user's areas of use could not be enjoined by the senior user from using its mark in the junior user's area. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713 (1916); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141 (1918). Although these two cases were decided long before the Lanham Act, the majority has cited nothing in the...