Maremont Corporation v. Air Lift Company

• Decision Date: 27 July 1972
• Docket Number: Patent Appeal No. 8675,8676.
• Citation: 463 F.2d 1114,174 USPQ 395
• Parties: MAREMONT CORPORATION, Appellant, v. AIR LIFT COMPANY, Appellee. AIR LIFT COMPANY, Appellant, v. MAREMONT CORPORATION, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

174 USPQ 395, 463 F.2d 1114 (1972)

MAREMONT CORPORATION, Appellant, v. AIR LIFT COMPANY, Appellee.

AIR LIFT COMPANY, Appellant, v. MAREMONT CORPORATION, Appellee.

Patent Appeal Nos. 8675, 8676.

United States Court of Customs and Patent Appeals.

July 27, 1972.

James L. Dooley, Cushman, Darby & Cushman, Washington, D.C., for Maremont Corp., William Bullinger, Washington, D.C., of counsel.

John F. Learman, Learman & McCulloch, Saginaw, Mich., for Air Lift Co.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN and LANE, Judges, and CLARK, Justice (Ret.), United States Supreme Court, sitting by designation.

RICH, Acting Chief Judge.

These two appeals are from the single decision of the Patent Office Trademark Trial and Appeal Board, 161 USPQ 493 (1969), sustaining an opposition by Air Lift Company (hereinafter Air Lift) to the application of Maremont Corporation (hereinafter Maremont)¹ to register the word-mark LOAD-CARRIER for load-supporting and damping units for automobiles, automobile trailers, and small trucks.

Air Lift opposed on two grounds: (1) own mark LOADLIFTER, previously that Maremont's mark so resembles its registered for air springs for vehicles,² as to be likely, when applied to Maremont's goods, to cause confusion or mistake or to deceive and (2) that LOAD-CARRIER is actually the generic name for the goods sold by the parties under their respective marks.³ The board sustained Air Lift's opposition on the second ground (descriptiveness) after having indicated that it would not have done so on the first (confusion).

Appeal No. 8675 is the applicant Maremont's appeal from the board's decision, while Appeal No. 8676 is the opposer Air Lift's "appeal" from what the board said in its opinion concerning Air Lift's first ground of opposition. We reverse.

The Opinion of the Board

Concerning the likelihood of confusion issue, the board referred to both parties' marks as "highly suggestive designations" and indicated that, in its view, the third party registrations which Maremont had made of record, plus Air Lift's admissions,⁴ established (1) that it was a common practice in the trade to use trademarks comprising the word "LOAD" in combination with another word possessing suggestive connotations similar to, or related to, the second words in the marks of the parties and (2) that purchasers were therefore "conditioned" to "look principally" to the word or words with which the word "LOAD" is coupled. It accordingly held against Air Lift on its first ground.

Concerning the generic-name or descriptiveness issue, the board conceded that the record includes no admissible evidence of any use of the word "LOAD-CARRIER" by anyone in the trade other than Maremont. However, it stated that Maremont had consistently used the word "LOAD-CARRIER" in its advertising in exactly the same manner as it had used the term "shock absorber"—namely, as the common descriptive name for the product on which it was used. After reviewing the examples of such usage in the record at great length, the board concluded that:

* * * even though "LOAD-CARRIER" at the time of adoption, may not have been a merely descriptive term as applied to applicant\'s vehicle load supports, applicant has consistently used it merely as the apt or common descriptive name for these goods, as a result of which, it is believed that it is recognized and referred to as such by the average purchaser of the goods. Certainly, applicant has offered no evidence to suggest otherwise.

Accordingly, it sustained Air Lift's opposition on its second ground. In an opinion on reconsideration, the board stated that,

* * * contrary to applicant\'s assertion, while the Board indicated in its previous opinion an intent on applicant\'s part to adopt "LOAD-CARRIER" as a trademark, it did not, in any way, indicate that the specimens filed with the subject application did in fact show trademark use of the designation in question.

OPINION

I. Air Lift's Cross Appeal

Air Lift has filed a "petition for appeal or cross appeal" in this case purporting to bring before us for review the propriety of the board's refusal to rule in its favor on its first ground of opposition. A separate appeal number was assigned to this "appeal," and it was briefed and argued separately, although Maremont and Air Lift filed a combined record in their two appeals.

Air Lift's cross appeal was pure surplusage. Appellees in trademark oppositions are entitled to reargue issues which they raised below but on which either they lost or the board did not rely. Popular Merchandise Co. v. "21" Club, Inc., 343 F.2d 1011, 1014-1015, 52 CCPA 1224, 1228-1229 (1965). See also Myers v. Feigelman, 455 F.2d 596, 604, 59 CCPA (1972) (patent interferences), and Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127, 128, 52 CCPA 950, 951 (1965) (trademark interferences). However, Air Lift did file the cross appeal, and the question arises whether that action had any effect other than payment of an unnecessary filing fee and the printing of separate briefs.

In Klemperer v. Price, 271 F.2d 743, 47 CCPA 729 (1959) (per curiam), which was a patent interference, the appellant, like Air Lift here, sought review of the board's unfavorable ruling on an alternative contention, which ruling did not effect the board's decision. We dismissed the appeal on appellee's motion, saying that if the appellee (the loser below) later sought review of the board's decision by way of its own appeal, the appellant (the winner below) would be entitled to raise in that appeal the issues he was prematurely seeking to raise by way of a separate appeal.

We see no reason why a different rule should obtain in inter partes trademark cases than in patent interferences in this respect. However, we will not dismiss Air Lift's cross appeal sua sponte, since to do so at this late date would unreasonably confuse matters to no purpose. Here, in contrast to Klemperer v. Price, the losing party below has taken an appeal, so there can be no question that a "case or controversy" is properly before us, and the only question is whether Air Lift's action in separating some of its arguments into an unnecessary cross-appeal disables us from considering them. We conclude that it does not.

II. The Generic-Name Issue

Both parties and the board have apparently assumed that the common descriptive name of an article cannot be registered as a trademark and that an opposition may be sustained on that ground. There is no dispute on this point.

Maremont breaks its argument down into three steps: (1) "LOAD-CARRIER" was capable of functioning as a trademark on its vehicle load supports as of the date of Maremont's first use, (2) Maremont's initial use of the word "LOAD-CARRIER" on its goods was a trademark use, and (3) Maremont did not use the word "LOAD-CARRIER" between its first use and the date thirteen months later when the opposition was filed in such manner and to such an extent as to cause the term to become recognized by the average purchaser of such goods as an "apt or common descriptive name" for the goods.

Air Lift takes the position that Maremont's first point is irrelevant, Maremont having chosen to use "LOAD-CARRIER" as the common descriptive name of its goods rather than as a trademark. It focuses on the numerous exhibits in this case, which Maremont conceded to be "representative and to illustrate the manner of use of the term LOAD-CARRIER" by Maremont and its predecessor in interest,⁵ arguing that Maremont has used the word "LOAD-CARRIER" in exactly the same manner as it has used the term "shock absorber." It distinguishes the cases cited by Maremont on the ground that they "are all cases wherein a valid trademark at one time existed and the question was one of erosion," in contrast to "the present situation," where "Maremont adopted a generic term which it used to describe, rather than a trademark indicating origin."

We think Maremont's analysis represents the correct approach, and we agree with the result which it urges us to reach.

On descriptiveness, we do not think that there can be any serious question. The word "LOAD-CARRIER" is no doubt highly suggestive of the function of the class of goods produced by both parties, but it is equally suggestive of many other things—e. g., wheel barrows, dump trucks, freight cars, steamships, and elevators. Air Lift has not asserted that the term was in use as a generic name for overload support devices prior to Maremont's use, and we cannot agree that it is so obviously descriptive that it was incapable of use as a trademark from the start.

The second point is, perhaps, Maremont's weakest. As it concedes, this question boils down to whether its use of "LOAD-CARRIER" in the manner shown by the specimens submitted to the Patent Office constituted trademark use. These specimens were photographs of the cartons for the articles. One is reproduced as an Appendix hereto. As may be seen, on the cartons were printed the words "Gabriel® LOAD-CARRIER", two drawings of the goods (one of a unit by itself and one of two units installed), a slogan, and various other matter not relevant here. No generic name for the devices was printed on the carton, and the term "LOAD-CARRIER" was not associated with any symbol, word, or other specific indication that it was intended to be a trademark.

With respect to the possible effect on the board's reasoning of the absence of any generic term on the cartons, Maremont argues that:

* * * there is no need for the presentation of a generic term when the mark is affixed to the object in question, or is presented on a carton in juxtaposition to a clear and definitive picture of the goods. Emphasis in original.

This argument is not very weighty, for it assumes that "LOAD-CARRIER" was presented on the carton as a "mark," and the very cartons in question are Maremont's principal evidence that "LOAD-CARRIER" was a trademark for the goods. It will be seen that "LOAD-CARRIER" is...