In re Bonide Chemical Co.

• Decision Date: 03 February 1931
• Docket Number: Patent Appeal No. 2575.
• Citation: 46 F.2d 705,18 CCPA 909
• Parties: In re BONIDE CHEMICAL CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

18 CCPA 909, 46 F.2d 705 (1931)

In re BONIDE CHEMICAL CO., Inc.

Patent Appeal No. 2575.

Court of Customs and Patent Appeals.

February 3, 1931.

Richard R. Martin, of Utica, N. Y., for appellant.

T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.

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

GARRETT, Associate Judge.

Appellant, Bonide Chemical Company, Inc., made application in August, 1928, for registration, under the Trade Mark Act of February 20, 1905 (15 USCA § 81-109), of the compound word "crow-tox" as a trade-mark for use on a "preparation for protecting seed against birds and animals and for invigorating seeds."

Registration was denied by the Examiner, and his decision was affirmed by the Commissioner of Patents. Appeal was then taken to this court.

It appears that when the Examiner first came to consider the application, after the formality of publication had been complied with, he reached the conclusion that registration should be denied upon the ground that the word was merely descriptive of the goods on which it was used, being of the impression that the preparation was poisonous in character and thinking "crow-tox" to be the equivalent of "crow-poison." He so held, citing Larvex Corporation v. Peter G. Walter, which appears to be 151 MS. Dec. 763, by the Commissioner of Patents, rendered September 7, 1928.

Thereupon appellant amended his original combined petition and statement by inserting therein the word "non-poisonous", so that it read: "* * * Has adopted and used the trade mark shown in the accompanying drawing for a non-poisonous preparation. * * *"

Upon consideration of the application as thus amended, the Examiner adhered to his former decision, saying: "It is immaterial whether or not a mark is truly or falsely descriptive. (See In re National Phonograph Co., 128 O. G. 1295, 1907 C. D. 530.)"

In affirming the decision of the Examiner, the Commissioner (Assistant Commissioner Moore) said:

"The law * * * specifically provides that no trade-mark which consists `merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods,' shall be registered; and the Courts have uniformly held that marks which are deceptive are not entitled to protection as a property right. * * *

"The trade-mark Act does not forbid registration of descriptive words or devices as trade-marks, but only those which are descriptive of the goods, or the character of quality of the goods, with which they are used. Therefore, in order to determine whether words or devices used as trade-marks are descriptive of the goods or are deceptive, it is necessary to ascertain the probable effect such words or devices, when given their usual meaning, have upon the public mind. The meaning of some descriptive words or devices used as trade-marks is so foreign to the qualities or characteristics of the class of goods with which they are used as to render it unlikely that they would ever be regarded as used descriptively or deceptively. In such cases the marks are arbitrary and fanciful and form proper technical trade-marks. It is where the meaning of the words or devices is descriptive of the qualities or characteristics of the class of goods with which they are used as trade-marks that their registration is prohibited by the trade-mark Act.

"The applicant's mark is primarily for a preparation for protecting seed against birds and animals. It is common practice to include a poison in preparations of this class. The applicant's trade-mark `Crow-Tox' would therefore suggest to the mind of the public that the goods with which the mark is used is a poison, the word `tox' being defined the same as `toxic' and `toxico' from the Greek `toxicon,' poison, a combining form.

"It is contended by the applicant, however, that its mark is not descriptive of the goods, as the goods contain no poison for crows. This being true, then the mark is deceptive, as one wishing to purchase a poison for crows would be deceived into purchasing the applicant's non-poisonous preparation."

The contention made before us appears to be, in substance, the same as that recited to have been made before the Commissioner. It is very frankly conceded by learned counsel for appellant that "crow-tox" has the same meaning as "crow-poison," and that, if the preparation of appellant were, in fact, poisonous, the word would be descriptive of the character and quality of the goods, and hence its registration would be barred by the express terms of the statute.

This concession as to the real meaning of "crow-tox" is, we think, correct. There are in common use in the English language many words derived wholly, or in part, from the Greek word "toxicon" which means poison. Examples are "toxic," "toxicant," "toxication," "toxicologist," "toxicomania," "toxiferous," "toxin," and the like. This class of words is related to, and carries to all the suggestion of, poison. This suggestion is, of course, conveyed by the use of the syllable "tox."

In Funk & Wagnalls New Standard Dictionary "tox" as a complete word is not found, but it is given and defined thus:

"Tox — 1. Same as toxico —

"Tox — 2. Same as toxo —

"Tox., toxicol., abbr. Toxicology."

"Toxic" as a word is there defined: "1. Pertaining to or having the nature of poison; poisonous; as, a toxic substance."

In Webster's New International Dictionary "tox" as a complete word is listed as being obsolete. It there appears thus: "Tox, v. t. To intoxicate. obs."

We think, therefore, that "crow-tox" is in all respects, as regards its meaning, the same as "crow-poison." Hence the effort to register it under appellant's amended application raises the somewhat novel question whether, under the Registration Statute, a word may be registered as a trade-mark when it is used upon a preparation which it, in fact, misdescribes. It does not speak the truth. If it did, admittedly, it would not be registrable. Since it speaks falsely, may it be admitted as not descriptive?

It is argued that this proceeding is purely statutory, and that the Patent Office and this court are bound by the naked words of the statute; that we have no concern, when descriptiveness is the only issue involved, except to ascertain the bald fact of whether the mark is merely descriptive, that is, whether it is truly descriptive; that the law is so drawn as to encourage registration, and that there is a requirement that no trade-mark shall be refused registration, except in designated cases, which "is just as imperative as the prohibition of the proviso against registration in cases specified," citing Beckwith's Estate, Inc., v. Commissioner of Patents, 252 U. S. 538, 40 S. Ct. 414, 64 L. Ed. 705, 274 O. G. 613, 1920 C. D. 471.

Fully recognizing the fact that the proceeding is purely statutory, we nevertheless cannot acquiesce in this contention to the extent that appellant's insistence would lead.

By the terms of the statute, ownership is an express prerequisite of the right to register. The opening words of the Trade-Mark Registration Act are: "That the owner of a trademark * * * may obtain registration. * * *" (Italics ours.)

This court,...