J. Kohnstam, Ltd. v. Louis Marx and Company, Patent Appeal No. 6503.
| Decision Date | 29 June 1960 |
| Docket Number | Patent Appeal No. 6503. |
| Citation | 280 F.2d 437 |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
| Parties | J. KOHNSTAM, LTD. v. LOUIS MARX AND COMPANY, Inc., and Linemar Co., Inc. |
Abraham A. Saffitz, Washington, D. C. (Emanuel R. Posnack, New York City, of counsel), for appellant.
James & Franklin, New York City (Maxwell James, New York City, of counsel), for appellees.
Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge C. WILLIAM KRAFT, Jr.1
This appeal is from the decision of the Assistant Commissioner of Patents affirming the decision of the Examiner of Interferences which sustained an opposition to the registration of "`Matchbox' Series" on the Principal Register as a trademark for "toy model vehicles and toy model machines."
J. Kohnstam, Ltd., a British corporation of London, England, filed an application to register the mark on April 21, 1955, serial No. 685,985, claiming first use April 1, 1954. Louis Marx & Company, Inc. and Linemar Co., Inc. joined to oppose the registration, alleging that they would each be damaged thereby. The Notice of Opposition was filed April 16, 1956.
The parties took no testimony but entered into two stipulations as to what their respective witnesses, if called, would testify. Numerous exhibits accompany the stipulations. Dealing at full arm's length, neither party admits the "correctness or truth" of any of the other's stipulated evidence, but neither contradicts the other so, perforce, we proceed on the basis that the facts are as shown by the stipulated evidence, at least for the purposes of this case.
The basis of the opposition is that in the context of its use the term "Matchbox" is descriptive opposers' position being well summed up in these excerpts from the conclusion of their brief:
What Opposer is seeking, is to thwart applicant\'s attempt to take away part of the English language which was always deemed to be in the public domain. * * * All who want to sell miniature toys in a matchbox should be free to do so, and all who do so should have the right to say so.
According to applicant-appellant's evidence, it has sold in this country from April 1, 1954 to October 31, 1956 about 2,410,000 units of toy model vehicles and machines including: "steamroller, dump truck, cement mixer, tractor, double decker bus, tipping lorry, milk delivery cart, caterpillar tractor, fire engine, open trailer truck, gasoline truck, jeep, tow truck, ambulance, lorry, trailer for lorry, moving van, bulldozer, M. G. sports car, open truck, long distance bus, coupe, house trailer, and mechanical shovel." These toys are packaged in little boxes made to look like the common slide-drawer type of box used with wooden safety matches, except that they do not have slide drawers but tuck-flap ends, the boxes being 2¼" long. The simulation of matchboxes is carried to the extent of using yellow labels on the front and back, printed in red and black ink, coloring the ends and one side dark blue, and coloring one side reddish brown to look like the usual safety-match striking surface containing red phosphorous. On the matchbox labels the words "`Matchbox' Series" extend arcuately across the top and the words "A Moko Lesney Product" extend across the bottom, in between which is a picture of the item contained within, together with its number in the form "No. —" on either side of the picture.
With two exceptions, the toys themselves do not bear any marking, the exceptions being a double-decker bus on the side of which, where advertising is usually carried on London trams, are the words "Buy `Matchbox' Series," and a moving van on the side panels of which are the words "Matchbox Removals Service."
There is testimony and there are exhibits showing advertising and other kinds of promotion of the "`Matchbox' Series" and total advertising expenditures by appellant of this series to October 31, 1956, in the total amount of $9,500, of which $7,500 was spent in the period November 1, 1955 to October 31, 1956. It will be noted that this opposition was filed in the middle of that period.
It is clear that the word-mark sought to be registered was adopted by reason of the deliberate simulation, by the packaging for the goods, of matchboxes and this is further emphasized by some of the advertising which includes such statements as "Individually packed in small multicolor Matchboxes (2¼" long)," "Matchbox Display," and "Best of all, they're packed in...
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...rights to it, no matter how much money or effort it pours into promoting the sale of the merchandise." J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 440 (C.C.P.A.1960); see 3 R. Callman, The Law of Unfair Competition Trademarks and Monopolies § 18.03 at 7 (4th ed. 1983) (herein......
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