Knickerbocker Toy Co., Inc. v. Faultless Starch Co.

• Decision Date: 12 October 1972
• Docket Number: Patent Appeal No. 8651.
• Citation: 467 F.2d 501,175 USPQ 417
• Parties: KNICKERBOCKER TOY COMPANY, INC., Appellant, v. FAULTLESS STARCH COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

175 USPQ 417, 467 F.2d 501 (1972)

KNICKERBOCKER TOY COMPANY, INC., Appellant, v. FAULTLESS STARCH COMPANY, Appellee.

Patent Appeal No. 8651.

United States Court of Customs and Patent Appeals.

October 12, 1972.

COPYRIGHT MATERIAL OMITTED

Stoll & Stoll, New York City, attys. of record, for appellant. Samuel J. Stoll, Robert S. Stoll, New York City, of counsel.

Nicholas John Stathis, Watson, Leavenworth, Kelton & Taggart, New York City, attys. of record, for appellee. Albert Robin, New York City, Claude W. Lowe, Kansas City, Mo., of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, and LANE, Judges, and ROSENSTEIN, Judge, United States Customs Court, sitting by designation.

RICH, Acting Chief Judge.

This appeal¹ is from the unreported decision of the Patent Office Trademark Trial and Appeal Board (TTAB) granting appellee's motion to strike portions of appellant's pleadings in an opposition² and two cancellations,³ all of which were consolidated below and all of which present the same issues.⁴ We modify and remand.

Background

Appellee, Faultless Starch, according to its brief,

* * * owns two registrations of a trademark consisting of a representation of a rag doll, Registration No. 829,632 issued on June 6, 1967, covering laundry preparations, namely, water softening agent, and a sizing and finishing agent for fabrics, and Registration No. 829,912, issued on June 6, 1967, covering laundry detergent. Appellee also has pending Application Serial No. 282,991 filed on October 20, 1967, to register the same trademark for laundry starch.

These are the registrations appellant seeks to cancel and the application which it opposes. They are not in the transcript of record, but we deem their presence unnecessary to decision of the issues on appeal. Compare In re Locher, 455 F.2d 1396, 1400-1401, 59 CCPA (1972).

Appellant owns trademark registration No. 837,049 of the word-mark RAGGEDY ANN for "Stuffed Rag Dolls"⁵ and a copyright registration⁶ of a "Stuffed Rag Doll" entitled "Raggedy Ann." The controversy before us concerns appellant's right, in proceedings before the Trademark Trial and Appeal Board, to rely on its copyright property in the doll. This is thus one of those often perplexing cases involving the interrelationship between various forms of intellectual property. Cf. Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954) (copyrights and design patents); In re Mogen David Wine Corp., 328 F.2d 925, 51 CCPA 1260 (1964); id., 372 F.2d 539, 54 CCPA 1086 (1967) (trademarks and design patents); and In re Thorington, 418 F.2d 528, 57 CCPA 759 (1969) (design patents and utility patents).

This controversy arises because appellee moved to strike those portions of appellant's pleadings pertaining to appellant's copyright and damage thereto, which damage appellant alleged it would suffer from appellee's registrations of its marks. The motions to strike were based on the grounds (1) that the Trademark Trial and Appeal Board lacks jurisdiction over the subject matter of those portions of appellant's pleadings and (2) that they consist of immaterial and impertinent matter. The damages which appellant alleged in those portions of its pleadings with which we are now concerned were (1) that appellee's publication of representations of appellant's copyrighted doll, "including publication in the Official Gazette of the Patent Office," without authorization and without the statutory copyright notice would, if not stopped, "destroy * * * appellant's entire right, title and interest in and to the copyright in said work," (2) that appellee's publication of representations of appellant's copyrighted doll would "deprive * * * appellant of the exclusive use of said copyrighted work, infringe said copyright, violate * * * appellant's rights therein, and expose * * * appellant to further violation thereof by others," and (3) that appellee's publication of representations of appellant's copyrighted doll would "diminish the commercial value of the copyright to * * * the appellant" in various ways.

Appellee did not move to strike the following two paragraphs from appellant's pleadings:⁷

25. Appellee\'s use of a copy or representation of appellant\'s copyrighted Raggedy Ann doll as a trademark for laundry products constitutes unfair competition with appellant, calculated to cause confusion in the marketplace with respect to origin of the goods, the relationship of appellee to appellant\'s goods, and the relationship of appellant to appellee\'s goods, there being no way for consumers to determine whether there is or is not any connection or relationship between appellant and appellee or between their respective Raggedy Ann goods.

26. The confusion which is likely to be caused in the marketplace as between appellant\'s Raggedy Ann goods and appellee\'s Raggedy Ann goods will be highly injurious to appellant.

The board granted appellee's motions in their entirety.⁸ It started from the proposition, which it termed "well settled" though it cited no authority, that:

* * * the Trademark Trial and Appeal Board has no jurisdiction to determine the validity of or infringement of a copyright. That authority rests with the federal courts.⁹

The board then stated that the "sole question" before it was

* * * whether the averments sought to be stricken comprise a claim of copyright infringement and 2 whether such a question can be determined by the Board as a collateral matter to the question of damage within the meaning of the Trademark Act of 1946.

It answered the first question in the affirmative and the second in the negative, apparently in considerable part because it feared that an affirmative answer to the second question would have required it to "adjudicate the validity of the pleaded copyright," appellee having stated in its motions to strike that, if its motions were not granted, it "would be obliged to plead that * * * appellant's purported copyright is invalid¹⁰ and that it has not infringed the same." The board also relied on Merrick v. Sharp & Dohme, Inc., 185 F.2d 713, 717, (7th Cir. 1950), cert. den. 340 U.S. 954, 71 S.Ct. 573, 95 L.Ed. 687 (1951), which it characterized as

* * * holding that * * * a trademark infringement action involves private litigation whereas * * * a trademark opposition is an administrative matter that is held in the interest of the public with the Patent Office as the public\'s representative.

The board stated its belief that:

* * * the claim against Faultless predicated on the adverse party\'s alleged copyright falls in the category of a private matter because the objected to averments and exhibits are, in essence, directed to a claim of misuse of the subject matter of the pleaded copyright.

It therefore concluded that it was "precluded from considering this question either directly or otherwise" and granted appellee's motions to strike.¹¹

OPINION

I. Jurisdiction of This Court

At oral argument, we asked the parties to brief the question of jurisdiction of this court over an appeal from a decision of the Trademark Trial and Appeal Board granting a motion to strike some, but not all, of a party's pleadings. Up to that time the parties had assumed we had jurisdiction. We referred them to United States Treasury v. Synthetic Plastics Co., 341 F.2d 157, 52 CCPA 967 (1965); Seamless Rubber Co. v. Ethicon, Inc., 268 F.2d 231, 46 CCPA 950 (1959); and Master, Warden, etc. v. Sheffield Steel Corp., 215 F.2d 285, 42 CCPA 726 (1954), all of which stand for the general proposition that this court does not have jurisdiction over interlocutory appeals from the Trademark Trial and Appeal Board.

Neither party has asked us to overrule the above cases, but both have asked us to decide this appeal despite them. Appellee has asked us to do so because the board's decision "finally disposed of and eliminated from consideration the major portion of the matters in dispute, both in terms of the pleadings and the issues." Appellant, for the stated purpose of "rendering said board decision final" by removing from the case all issues other than "the issues raised by this motion to strike" moved under Rule 15(a) of the Federal Rules of Civil Procedure to amend by cancelling those portions of its pleadings dealing with its trademark registration of the word-mark RAGGEDY ANN. The Trademark Trial and Appeal Board granted appellant's motion March 10, 1972,¹² and appellee has not questioned the method by which or the late date at which the cancellation was accomplished.

The portions of appellant's pleadings which have not been struck pursuant to either party's motion recite appellant's name and address and appellee's ownership of its registrations and its application, describe appellee's mark, and conclude with amended paragraphs 25 and 26 set forth supra. Appellant concedes that its "amendments to the pleadings leave certain portions of paragraphs 25 and 26 supra intact and that these portions have not technically been adjudicated." It argues, however, that the logic of the board's opinion "encompasses these non-adjudicated portions fully as well as the adjudicated paragraphs" and that, practically speaking, it has transformed the interlocutory decision into a final adjudication by deleting all references to its trademark.

Appellee, while arguing that the court would have had jurisdiction to decide the appeal even if appellant had not cancelled the above-mentioned portions of its pleadings, contends that,

* * * if the decision from which the instant appeal was taken lacks sufficient finality to be appealable at this time, then the amendments to the pleadings which appellant proposes are not sufficient to give it the requisite finality.

Appellee's alternative position is based primarily on the remaining portions of paragraphs 25 and 26, which it contends raise issues which still have not been adjudicated below.

Appellee refers us to Gillespie v. United States Steel Corp., 321 F.2d 518 (6th Cir. 1963), aff...