In re Keller, Heumann & Thompson Co.

• Decision Date: 27 January 1936
• Docket Number: Patent Appeal No. 3570.
• Citation: 81 F.2d 399
• Parties: In re KELLER, HEUMANN & THOMPSON CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

81 F.2d 399 (1936)

In re KELLER, HEUMANN & THOMPSON CO., Inc.^*

Patent Appeal No. 3570.

Court of Customs and Patent Appeals.

January 27, 1936.

Harold E. Stonebraker, of Rochester, N. Y., for appellant.

R. F. Whitehead, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.

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

LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents, affirming a decision of the Examiner, denying appellant's application for registration of the mark "Timely" as a trade-mark for men's suits, topcoats, and overcoats, made from cloth or woolen fabrics.

The basis of the rejection of appellant's application, by both of the Patent Office tribunals, is registration No. 291,742, issued February 23, 1932 to F. M. Hoyt Shoe Corporation, said registration being for the mark "Timely" as a trade-mark for "Boots and Shoes made wholly or in part of leather, fabrics, or combinations thereof." The word "Timely" in said registration is shown to be in capital letters, the horizontal line of the "T" being extended in something of a flourish over most of the balance of the word; similarly, the tail of the "Y" concluding the word is extended back and beneath the two preceding letters of the word. The mark, as shown in appellant's application, is formed of ordinary block letters.

Both tribunals of the Patent Office held that, the marks being identical, the sole issue was whether the goods to which the marks were applied were goods of the same descriptive properties, found that they were, and denied registration to appellant. Their decisions were in each instance based upon decisions of this court which were relied upon as warranting the view that the suits, topcoats, and overcoats to which appellant applies its mark are goods of the same descriptive properties as the shoes to which the prior registrant applies its mark.

Since we are clear that the differences in the style of type shown in the marks covered by the instant application and the registration above cited are so slight as to warrant the holding of the tribunals below that the marks are identical, and no issue is raised upon this point, we agree with those tribunals that the sole issue in the case is whether or not the goods of the respective parties are of the same descriptive properties.

We will first consider a contention made by appellant's counsel, viz., that while the consideration of the question of confusion of origin as to goods to which trademarks are applied is proper in opposition and cancellation proceedings, such confusion is not relevant in an ex parte application for registration of a trade-mark. This contention is stated in the brief of appellant as follows: "1. A trade-mark should not be denied publication in view of a prior registration unless the goods possess the same descriptive properties, and in construing the Act in an ex parte proceeding, only such confusion is to be considered as may grow out of the similar descriptive properties of the goods, damage or confusion as to origin of the goods which are pertinent in inter partes proceedings not being relevant in an ex parte application for registration."

We are not in agreement with this contention. It is elementary that the sole function of a trade-mark is to indicate the origin of the goods to which the mark is attached. Section 5 of the Trade-Mark Act of February 20, 1905, as amended (15 U.S. C.A. § 85) expressly prohibits the registration of a mark which is "identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties." Manifestly, it was the duty of the Patent Office tribunals in the case at bar to determine whether the goods to which appellant applies its mark are of the same descriptive properties as the goods to which the previously registered mark is applied; or, in other words, whether, for the purposes of said Trade-Mark Act, the shoes here involved are of the same descriptive properties as men's suits, topcoats, and overcoats, made from cloth or woolen fabrics.

The meaning of the phrase "merchandise of the same descriptive properties," as used in said Trade-Mark Act, has been many times considered by this court, and while it is true, as stated by appellant's counsel, that such consideration has always occurred in inter partes proceedings, we cannot assent to the proposition that the construction of this language is dependent upon the nature of the proceeding brought in which it is considered.

Nothing in any of the cases decided by this court, or by any other court so far as we are able to discover, has indicated that the construction of said phrase "merchandise of the same descriptive properties" should be different in an ex parte proceeding than in an inter partes proceeding.

A most anomalous situation might result if appellant's suggestion were followed in the case at bar. Under that theory, in determining the question of whether the shoes here involved are of the same descriptive properties as men's suits, topcoats, and overcoats made from cloth or woolen fabrics, we could not in this case consider the question...