Ippolito v. Nancy Ann Dressed Dolls
| Citation | 184 F.2d 201 |
| Decision Date | 29 September 1950 |
| Docket Number | Patent Appeal No. 5694. |
| Parties | IPPOLITO v. NANCY ANN DRESSED DOLLS. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
J. Calvin Brown, Los Angeles, Cal. (Francis D. Thomas and Harry W. F. Glemser, Washington, D. C., of counsel), for appellant.
Hugh N. Orr, San Francisco, Cal., for appellee.
Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, and JOHNSON, Judges.
This is an appeal in a trade-mark opposition proceeding from a decision of the Commissioner of Patents, 77 USPQ 545, affirming that of the Examiner of Interferences sustaining a notice of opposition filed by appellee against the registration by appellant of the trade-mark "Nursery Rhymes," as applied to dressed dolls for children, under the Trade-Mark Act of 1905, 33 Stat. 724, as amended.
It appears that appellant, doing business under the fictitious name and style of Hollywood Doll Manufacturing Company of Glendale, California, filed an application for registration of his mark on March 25, 1945, alleging continuous use, as applied to said goods, since November, 1944.
On January 2, 1946, appellee filed its notice of opposition. It appears to be based upon the confusion in trade clause of Section 5 of the Trade-Mark Act of 1905.
Appellee has its principal place of business in San Francisco, California, and manufactures, sells and distributes dressed dolls and doll clothes. It is the owner of the following registered marks, all applied to dressed dolls:
Registration No. Registration Date
"Storybook" 389,114 July 22, 1941
"Polly Put Kettle On" 395,453 May 26, 1942
"Little Bo Peep" 395,454 May 26, 1942
"To Market" 403,235 Sept. 14, 1943
"One-Two" 403,237 Sept. 14, 1943
"Sugar and Spice" 403,240 Sept. 14, 1943
"Ring Around A Rosy" 403,241 Sept. 14, 1943
"Boy Blue" 404,575 Dec. 17, 1943
"Curly Locks" 404,581 Dec. 7, 1943
"Mother Goose" 413,233 April 17, 1945
and many other marks of similar character not necessary to set forth.
Testimony was taken on behalf of appellee and many exhibits were filed. Appellant took no testimony. Briefs were filed by both parties and they were represented at the hearing before the examiner.
It appears that the dressed dolls of appellee were first made by Miss Nancy Ann Abbott. From early girlhood she has been interested in dolls and the various personages and characters named in nursery rhymes, fairy tales or children's stories which appealed to her imagination and resulted in her making and dressing little dolls portraying the various characters as she imagined them to look. As early as about 1935 or 1936 she started the making and dressing of such dolls as a commercial undertaking so that eventually the business grew until about 5,000 of such dolls per day were being produced and sold in interstate and foreign trade. Miss Abbott personally designs all of the dresses of dolls sold by appellee and she is the planner and supervisor of their manufacture.
It is Miss Abbott's view that little girls fancy the collection of a family of dolls and in the pursuit of such hobby they endeavor to increase their collection until they are surrounded by as many of the dolls as they may be able to get, all appealing to their imagination as personifying figures of nursery rhymes, fairy tales and storybooks. Each little doll, she believes, makes real to its childish owner the person or character which is portrayed by it. Each doll is identified with its name on a little gold colored label attached to a wristlet and is encased in a box upon which a similar silver label is fastened. The labels contain excerpts from, or slightly modified selections of nursery rhymes from which the name of the individual doll is taken.
Buyers of department stores testified that appellee and others have sold dolls depicting characters in nursery rhymes and storybooks, as well as dolls intended to represent different characters in literature, history and nationality. Such practice has been stated to be widely known and such sales have been quite general.
The Examiner of Interferences pointed out that in the notice of opposition it was alleged that appellant's mark "is a generic term" and that it "cannot serve to identify its goods to the exclusion of the like products of opposer, * * *." He held that even though the expression "Nursery Rhymes" had not been shown to have been used by appellee other than orally, that such mark "is generically descriptive of the entire line of dolls sold by the opposer under the names of nursery rhyme characters," and that therefore appellee and its customers are entitled to use the designation "Nursery Rhymes" to identify their line of dolls representing characters from "Nursery Rhymes." The examiner was of opinion that the exclusive use by appellant of its mark sought to be registered would inevitably lead to confusion and deception of purchasers, resulting in injury to opposer and that under such circumstances it was immaterial that opposer had not used such expression. In support of that holding the examiner cited the cases of Burmel Handkerchief Corp. v. Cluett, Peabody & Co., Inc., 127 F.2d 318, 29 C.C.P.A., Patents, 1024; and Martell & Co. v. Societe Anonyme de la Benedictine, Distillerie de la Liqueur de l'Ancienne Abbaye de Fecamp, 116 F.2d 516, 28 C.C. P.A., Patents, 851.
The examiner further rejected the registration ex parte, for the stated reason that the mark would be understood by the purchasing public as referring to any and all doll reproductions of fictional characters from "Nursery Rhymes" as a class. He held that every producer of dolls had the right freely to make and sell his conception of "Nursery Rhyme" characters familiar to everyone from childhood days and that the common right to make any article is inseparable from the right to use words which aptly describe it, citing Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L.Ed. 118; Beckwith's Estate, Inc., v. Commissioner of Patents, 252 U.S. 538, 40 S.Ct. 414, 64 L.Ed. 705. He therefore held that the descriptiveness clause of Section 5 of the involved act was deemed to constitute a bar to the registration of appellant's mark.
On appeal the commissioner sustained all of the reasoning advanced by the Examiner of Interferences.
We are of opinion that the decision of the commissioner is without error.
While we do not consider the mark "Nursery Rhymes" descriptive of dolls generally, we do consider it highly suggestive of a class of dolls in particular. The suggestive mark "Nursery Rhymes" is generic to the specific marks registered to appellee, each of which is individually suggestive of a segment of the group of which appellant's contested mark is suggestive. It is apodictic, in our opinion, that confusion as to the origin of the goods of the parties would follow if registration were granted to appellant. "Boy Blue," "Little Miss Muffett," "To Market," "Polly Put Kettle On," to mention just a few of the registered marks of appellee hereinbefore set out, are certainly "Nursery Rhymes." Clearly then, likelihood of confusion would follow upon the registration of "Nursery Rhymes" to appellant with consequent damage to the appellee.
Both appellant and appellee are in accord in challenging the action of the tribunals of the Patent Office in the rejection of the registration of the mark ex parte. Appellant, in this case, can properly bring that issue before this court on appeal. Appellee, however, is not the public and therefore has no right in circumstances such as appear here. The Commissioner of Patents represents the public and has the right and duty, in safeguarding public interest, to decide whether or not an applicant has a right to register. Schering & Glatz, Inc. v. Sharpe & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A., Patents, 827; Columbia Broadcasting System, Inc., v. Technicolor Motion Picture Corp. et al., 166 F.2d 941, 35 C.C.P.A., Patents, 1019.
It has been held so often by this court, that it is not only the right of the examiner but his duty to consider and determine the registrability of a mark ex parte without reference to the issues raised in the notice of opposition, as to be trite. Our holding in the case of Revere Paint Co. v. 20th Century Chemical Co., 150 F. 2d 135, 32 C.C.P.A., Patents, 1096, reaffirmed that principle in the many cited cases appearing in that opinion.
For the reasons hereinbefore set out, the decision of the Commissioner of Patents is affirmed.
Affirmed.
Numerous fallacies in the court's decision in this case are explicitly disclosed in authoritative detail (1) by the following opinion prepared and submitted months ago with the view that it would be adopted as the majority opinion, and (2) by the citations following that opinion which point to the entirely contradictory attitude of the court not only in the case at bar but also in other cases upon which the court has relied.
It should be noted at the outset that the majority opinion states that "On appeal the commissioner sustained all of the reasoning advanced by the Examiner of Interferences."
The commissioner, however, reversed the examiner's decision which held that the marks were confusingly similar, 77 USPQ 545, 546, column 2, lines 15-18, as hereinafter pointed out. The majority opinion also stated that "While we do not consider the mark `Nursery Rhymes' descriptive of dolls generally, we do consider it highly suggestive of a class of dolls in particular."
A term merely descriptive of an article cannot at the same time be merely suggestive of it. In re One Minute Washer Company, 95 F.2d 517, 25 C.C.P.A., Patents, 978; Celanese Corporation of America v. E. I. Dupont De...
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