In re Northern Paper Mills
| Decision Date | 29 May 1933 |
| Docket Number | Patent Appeal No. 3266. |
| Citation | 64 F.2d 998 |
| Parties | In re NORTHERN PAPER MILLS. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Chauncey P. Carter, of Washington, D. C. (T. K. Bryant and James T. Newton, both of Washington, D. C., of counsel), for appellant.
T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
The appellant filed its petition in the United States Patent Office for the registration of its trade-mark, "Gasa," used as a trade-mark for toilet paper. The Examiner of Trade-Marks refused registration on the ground that the mark was either descriptive or misdescriptive. The commissioner affirmed this decision, and, thereafter, on an application for rehearing, reaffirmed his former decision.
It is admitted, in argument, that the word "Gasa" is a Spanish word meaning gauze. The word "gauze," as it appears from the lexicographers, was so called because it was presumed that the thin, slight, transparent fabric, to which the name has been, and is, applied, was originally produced in the city of Gaza — a city of Palestine.
It was thought by the commissioner that the word, as applied to toilet paper, was descriptive of the supposed quality of the paper, and was, therefore, descriptive as so applied. If it was not so descriptive, it was thought to be plainly misdescriptive.
The appellant has brought the case here, and now contends that the word "Gasa," being a word in a foreign language, is not necessarily descriptive in this country, where the English language is the language of the people. It further insists that the word cannot properly be held to be descriptive and is, at most, suggestive only.
The question whether a word in a foreign language and not adopted into the English language can be held to be descriptive when used as a trade-mark in the United States has not heretofore been before this court. However, we believe the rule has been well established by other courts, particularly the Court of Appeals of the District of Columbia, the predecessor of this court in its trade-mark jurisdiction, that a word taken from a well-known foreign modern language, which is, itself, descriptive of a product, will be so considered when it is attempted to be registered as a trade-mark in the United States for the same product.
Counsel, in this case, have given us the benefit of extensive research along this line, and have cited numerous authorities on the subject. Some of these cases are as follows:
In Re Hercules Powder Co., 46 App. D. C. 52, it was said: "A descriptive word in a foreign language, though meaningless to the public generally, would fall within the statute, since it is the real signification of the word or device, and not the idea which it may, or may not, convey to the general public, which brings it within the act."
In Re Bradford Dyeing Association, 46 App. D. C. 512, the French word "E'clatant" was held descriptive as a trade-mark for cotton piece goods.
In Re Maclin-Zimmer-McGill Tobacco Co., 49 App. D. C. 181, 262 F. 635, the Spanish words "El Gallo" were held to be not registrable because the equivalent, "Our Rooster," and a picture of a rooster, had been registered as a trade-mark in the United States theretofore.
McKesson & Robbins v. Phillips Chemical Co. (C. C. A.) 53 F.(2d) 342, and Id. (C. C. A.) 53 F.(2d) 1011, held that the Spanish words "Leche-de-Magnesia" were descriptive, the word "leche" being the equivalent of the English word "milk."
The French word "thermogene," meaning "caloric," was held to be descriptive in Thermogene Co. v. Thermozine Co. (C. C. A.) 234 F. 69.
A foreign word used in the country of its origin, in a descriptive way, cannot be used as a trade-mark in this country. Coty v. Le Blume Import Co. (D. C.) 292 F. 264, 267.
The Italian words, "Conserva Di Tomate," were held descriptive of tomato preserves or paste, and were involved in Roncoroni v. Gross, 92 App. Div. 221, 86 N. Y. S. 1112.
The Italian...
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