In re Lyndale Farm

• Decision Date: 16 January 1951
• Docket Number: Patent Appeals No. 5736.
• Citation: 186 F.2d 723
• Parties: In re LYNDALE FARM.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

186 F.2d 723 (1951)

In re LYNDALE FARM.

Patent Appeals No. 5736.

United States Court of Customs and Patent Appeals.

January 16, 1951.

Clarence A. O'Brien and Harvey B. Jacobson, Washington, D. C., (John H. Lewis, Jr., Washington, D. C., of counsel), for appellant.

E. L. Reynolds, Washington, D. C., (W. J. Derenberg, New York City, of counsel), for the Commissioner of Patents.

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Judges.

JOHNSON, judge.

Lyndale Farm is a partnership in the business of breeding cattle at Floydada, Texas. It applied in September 1947 to the United States Patent Office for entry of the words "Lyndale Farm" upon the principal register under the Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., hereinafter more particularly described, as a trade-mark for live cattle. The firm alleged use of the mark in commerce beginning in September 1940 and stated that it was "applied to the crates in which the cattle are shipped by means of labels or tags on which the mark is shown." The specimen submitted to show actual use is a photograph of a crate, sufficiently large to enclose a cow or steer, to which is affixed a placard, "Lyndale Farm, Floydada, Texas."

The Examiner of Trade-Marks refused registration of the words "Lyndale Farm" on the ground that they are merely a trade name and lack the essential characteristics of a trade-mark. The firm promptly appealed to the Commissioner of Patents alleging that "Lyndale Farm" functions both as a trade name and a trade-mark. The Examiner's Statement, prepared by the Head of Trade-Mark Operations in the Patent Office, in response to the appeal, based the refusal to register on two grounds; viz., that the mark is primarily geographically descriptive, and that it is used merely as a trade name. The first ground was held to be ruled by In re Lamson & Co., 135 F.2d 1021, 30 C.C.P.A. (Patents) 1030. The second ground was premised upon the manner of use, the mark appearing to the examiner to be used on the crate as a shipping tag, merely "informing the outside world of the location and name of the farm from which the cattle originates."

The Assistant Commissioner of Patents in a well reasoned opinion, 80 U.S.P.Q. 45, agreed with appellant that the Lanham Act does not forbid registration of a trademark otherwise eligible merely because it is also a firm or trade name in whole or part, but observed that if such words are to qualify for registration it is necessary that their use be such as to identify the goods rather than the manufacturer or his location. The Assistant Commissioner thought that the cattle crate placard served merely to inform "the outside world of the location and name of the farm," and held that as so used the mark sought to be registered functioned not as a trademark but as a trade name and could not be entered on the principal register. He also concluded that the mark is unregisterable because primarily geographically descriptive.

Lyndale Farm by its counsel has appealed to this court from the decision of the Assistant Commissioner, 15 U.S.C.A. § 1071; R.S. § 4911, 35 U.S.C.A. § 59a, 28 U.S.C. A. § 1542. There thus comes before us the first appeal arising on an application for registration filed in the Patent Office subsequent to the effective date of the Lanham Act.¹

On behalf of the appellant it is asserted that "Lyndale Farm" functions in a dual capacity, as both a trade-mark and a trade name. Appearing on the placard placed on the side of the shipping crate, "Lyndale Farm" is said by appellant to "serve `to identify his goods and distinguish them from those — sold by others,'" satisfying thereby the definition contained in Sec. 45 of the Lanham Act: "The term `trade-mark' includes any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." The words "Floydada, Texas" also appearing on the placard, appellant thinks, do not detract from the trade-mark significance of "Lyndale Farm" but merely designate the location of the mark's owner. Thus it is, appellant states, that "Lyndale Farm" identifies its user's goods as well as indicating its business name, and functions in the dual capacity of trade-mark and trade name.²

On behalf of the Commissioner of Patents it is urged here that the use of "Lyndale Farm" with "Floydada, Texas" is the commercial use of a business name, and is not a trade-mark use, though counsel does not dispute that under some circumstances a name may be used both as a trade-mark and a trade name. It is advanced, however, that in this case the words "Lyndale Farm" do not identify a brand of cattle but merely serve as a shipping tag to state the location of the business whence the cattle originate.

Sections 1 and 2 of the Lanham Act, 15 U.S.C.A. §§ 1051 and 1052, specify that it is "trade-marks" which are registrable on the principal register, while Sections 3 and 4, 15 U.S.C.A. §§ 1053 and 1054, permit the registration of service marks, collective marks, and certification marks in the same manner and effect as trade-marks and with entitlement to the same protection as the Act accords trade-marks, though the Commissioner is authorized to establish a separate register for such marks. Section 7(b) of the Act, 15 U.S.C.A. § 1057(b), accords to the certificate of registration of marks registered on the principal register prima facie evidence of valid registration, ownership in the registrant, and his exclusive right to use the mark in commerce on specified goods or services. Section 15, 15 U.S.C.A. § 1065, adds the important feature of incontestability of right to use a mark which has been in continuous use for five consecutive years following the date of registration, subject to four provisos, the fourth of which states that "no incontestable right shall be acquired in a mark or trade name which is the common descriptive name of any article * * *." (Emphasis supplied.) Since incontestability is only conferred upon marks registered on the principal register, the mention of "trade name" in the above proviso may be thought to supply an inference that trade names are registrable as such on the principal register.³ Section 23 of the Act, 15 U.S.C.A. § 1091, provides for a supplemental register upon which marks and names capable of distinguishing an applicant's goods or services and not registrable on the principal register may be registered. Such marks by Section 26, 15 U.S.C.A. § 1094, are not eligible for many of the procedural and substantive benefits conferred by the Act upon marks registered on the principal register. Section 32(1) of the Act, 15 U.S.C.A. § 1114(1), provides for a civil action by the registrant against one who infringes a registered mark, and Section 33(a), 15 U.S.C.A. § 1115(a), makes the certificate of registration of any mark registered on the principal register prima facie evidence in such an action of the registrant's exclusive right to use the mark in commerce on the specified goods or services, and conclusive evidence of that right if the mark has become incontestable under Section 15 of the Act, 15 U.S.C.A. § 1065. The conclusive evidentiary nature of the certificate of an incontestable mark is, however, subject to seven special defenses. Section 39, 15 U.S.C.A. § 1121, confers jurisdiction upon the federal courts of all actions arising under the Act regardless of the amount in controversy or the presence or lack of diversity of citizenship of the parties.

Section 44(b) of the Act, 15 U.S. C.A. § 1126(b) entitles persons who are nationals, domiciliaries, or doing business in any foreign country a party to conventions or treaties relating to trade-marks, trade names, or unfair competition to which the United States is a party, to the benefits of the Lanham Act so far as required to give effect to the conventions or treaties. Section 44(c, d, e, and f), 15 U. S.C.A. § 1126(c, d, e, and f), provide for the registration by persons identified by Section 44(b), 15 U.S.C.A. § 1126(b) of their marks on the principal and supplemental registers. Section 44(g), 15 U.S. C.A. § 1126(g) relates to trade names owned by such persons and states that they "shall be protected without the obligation of filing or registration whether or not they form parts of marks." Section 44(h), 15 U.S.C.A. § 1126(h) makes available to such persons the remedies specified in the Act for infringement of marks in protecting those persons against unfair competition. Section 44(i), 15 U.S.C.A. § 1126(i) confers upon United States citizens or residents the same benefits granted the persons identified by Section 44(b), 15 U.S.C.A. § 1126(b). Thus it is that a federal cause of action exists in behalf of a United States citizen or resident whose trade name is unfairly used in a manner affecting commerce whereby the remedies of the Lanham Act provided for the infringement of registered marks are made available in repressing such acts of unfair competition affecting unregistered trade names.⁴

Trade-marks and trade names are distinct legal concepts within the ambit of the law of unfair competition. A trademark is fanciful and distinctive, arbitrary and unique.⁵ A trade name may be descriptive, generic, geographic, common in a trade sense, personal, firm, or corporate.⁶ A trade-mark's function is to identify and distinguish a product, whereas a trade name's function is to identify and distinguish a business.⁷ Prior to the Lanham Act⁸ the general requirement was that a trade-mark be affixed to the goods it was to identify and distinguish,⁹ while it was unnecessary to attach a trade name to merchandise.¹⁰ Trade-marks have traditionally been protected by actions for trade-mark infringement; trade names, by actions to restrain passing-off or unfair competition.¹¹ The distinction between trade-marks and trade names has been so well and so long established that we would not...