In re Security Engineering Co.

• Decision Date: 08 July 1940
• Docket Number: Patent Appeal No. 4346.
• Citation: 113 F.2d 494
• Parties: In re SECURITY ENGINEERING CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

113 F.2d 494 (1940)

In re SECURITY ENGINEERING CO., Inc.

Patent Appeal No. 4346.

Court of Customs and Patent Appeals.

July 8, 1940.

Fred H. Miller, of Los Angeles, Cal. (Theodore A. Hostetler, of Washington, D. C., of counsel), for appellant.

Howard S. Miller, of Washington, D. C., for the Commissioner of Patents.

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

BLAND, Associate Judge.

The appellant has here appealed from a decision of the Commissioner of Patents, affirming that of the Examiner of Trademarks in refusing to register an alleged trade-mark for use on oil well reamers. The examiner refused registration on the ground that "what is presented is no more than an ornamental scheme for the entire goods."

The alleged trade-mark sought to be registered consists in painting the end portions of the main shaft of the reamer the color blue and a part of the middle portion — the reaming element — the color of aluminum. Appellant's counsel has submitted to the court a photograph in colors of the reamer as sold. The application drawing, lined to show the colors used, is herewith reproduced:

The reamer consists of a cylindrical heavy piece of metal several feet in length and probably from six to eight inches in diameter. In the middle portion of this cylinder there are four recesses into which are fitted rolling cutters. The cutters are so positioned that when the reamer is raised and lowered in the oil well, it reams or cuts out the walls of the well. The said central portion which is partially painted in aluminum is irregular, portions of it protruding out almost as far as do the cutters. In each of the four recesses where the cutters are placed there are bolts or screws which are removable when it is desired to remove the cutters. The cutters themselves apparently are not painted but have a black appearance. The structure surrounding the cutters which is painted in aluminum forms no design, and it is not claimed by appellant that any particular design is formed by such painting.

The Assistant Commissioner, speaking for the Commissioner of Patents, in a brief opinion, but one which we think is sound in every particular, had the following to say:

"In other words the reamer shaft is painted blue and the reaming element is painted aluminum. This arrangement, in the examiner's opinion does not result in a trade-mark, because the use of color is in no sense arbitrary, but is limited merely by the configuration of the goods.

"In the brief applicant refers to its mark as `an aluminum band surrounding a blue reamer,' and points to various band marks that have been published for registration. The propriety of such registrations is not here in question, but it may be observed that all of them are distinguishable from the instant application because applicant's mark may not properly be described as comprising a band. All applicant has done is to color one element of its goods blue and another aluminum, and I agree with the examiner that such use of color is without trade-mark significance."

Upon reconsideration, the commissioner noted the fact that the reaming cutters had not been painted, stated that this was immaterial, adhered to his views previously expressed, and in addition to what he had already said made the following comment: "I am still unable to agree that applicant's mark comprises a band or a series of bands. I am still of the opinion that applicant has merely colored one element of its reamer blue and another aluminum; that there is nothing arbitrary about such use of color; and that it is without trademark significance."

Appellant in this court has briefed the case with much thoroughness, calling attention to many decisions which are helpful in deciding the issue involved.

It is the well-settled law that for a mark to be entitled to registration it should be one which the law recognizes as being capable of distinguishing the goods of its owner from those of another. It is equally well settled that the validity of a mark and its right to registration may not depend upon color alone. Color may be an important feature of a valid and useful trade-mark, but color or colors alone when applied to the article as a whole, except under circumstances hereinafter particularized will not constitute a valid mark.

Nearly a third of a century ago the Supreme Court of the United States in A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Co., 201 U.S. 166, 26 S.Ct. 425, 426, 50 L.Ed. 710, handed down what has long been regarded as the leading trade-mark case where color was depended upon to constitute a mark. In spite of the fact of the narrowness of the issue therein considered and the obiter dictum indulged, this decision has long been used by the Patent Office and the courts as a yardstick in controversies similar to the one at bar. This and other courts have cited and considered this case so many times that ordinarily it would be regarded as unnecessary to indulge here in comment concerning the same. However, in view of appellant's most earnest contentions with respect to this case and other similar ca...