Planten v. Gedney

• Decision Date: 22 June 1915
• Docket Number: 307.
• Citation: 224 F. 382
• Parties: PLANTEN v. GEDNEY.
• Court: U.S. Court of Appeals — Second Circuit

224 F. 382

PLANTEN v. GEDNEY.

No. 307.

United States Court of Appeals, Second Circuit.

June 22, 1915

S. J Cox, of New York City, for appellant.

May &amp Jacobson, of New York City (I. N. Jacobson, of New York City of counsel), for appellee.

Before LACOMBE, COXE, and WARD, Circuit Judges.

LACOMBE Circuit Judge.

The first registration, No. 51,356, registered April 10, 1906, is of a 'trade-mark for filled gelatin capsules,' and consists of the words and characters 'Planten's C. &amp C. or Black Capsules. ' The statement declares that the class of merchandise to which this trade-mark is appropriated is capsules, and the particular description of goods on which it is used is filled gelatin capsules. It also states that the trade-mark is usually displayed upon printed labels of various kinds intended for application to boxes containing such capsules and to packages of such boxes. The second registration, No. 66,108, registered November 12, 1907, is of a 'trade-mark for certain medicine * * * remedy for the treatment of chronic and acute gonorrhea' and other enumerated diseases. It is shown in the accompanying drawing as consisting of the letters 'C. & C.' printed in one color on a field of another color. The statement declares that it 'is applied or affixed to the goods by providing boxes containing the goods in gelatin capsules with labels and packages of such boxes with wrapper labels on each of which the trade-mark is printed.' The suit was begun June 24, 1914. It is not disputed that at and prior to that time defendant was offering for sale packages of boxes containing his gelatin filled capsules (inclosing the same two drugs) in a wrapper on which were printed the words and characters 'Gedney's C. & C. (Black) Capsules. ' Until about two years before the beginning of the suit the inscription of defendant's wrapper did not contain the words last above quoted; the most prominent inscription was 'Gedney's Capsules,' accompanied with the statement that they contained 'Balsam Copaiba and Oil of Cubebs. ' Under the decision of the Supreme Court in Thaddeus Davids Co. v. Davids, 233 U.S. 461, 34 Sup.Ct. 648, 58 L.Ed. 1046, and our decision in Warner v. Weiner, 214 F. 30, 130 C.C.A. 424, the trade-mark 'Gedney's C. & C. (Black) Capsules ' is a colorable imitation of 'Planten's C. & C. or Black Capsules.'

For very many years the letters 'C.C.' have been used by manufacturers and dealers in drugs as indicating Balsam Copaiba and Oil of Cubebs, just as the letters 'C.S.' have been used as an abbreviation of Cubebs and Sandal and 'C.O.' of Castor Oil. Also for many years purchasers of a remedy containing these ingredients have asked for it as 'C. & C.' It is therefore contended that the letters are descriptive and cannot be appropriated as an exclusive trade-mark by any one. It was on that ground that Judge Evans decided the case, and it is the principal matter in dispute here.

The act of 1905 was intended to crystallize the law as to trade-marks used in interstate commerce; the courts had been filled with cases presenting many questions not always harmoniously disposed of. Congress in this act, deals exhaustively with the subject. It provides that no future trade-mark shall be registered which is personal (giving the name of an individual), geographical, or descriptive. Wishing apparently not to destroy all existing rights which might have resulted from a 'secondary meaning' having been acquired by words ordinarily geographic, descriptive, or what not, it provides that nothing in the act contained shall prevent the registration of any mark used by the applicant or his predecessors in foreign or interstate commerce when such mark was 'in actual and exclusive use as a trade-mark of the applicant or his predecessors * * * for ten years next preceding the passage of this act'--i.e., for 10 years prior to February 24, 1905. Before a certificate can be issued the trade-mark must be published for 30 days in the Official Gazette, within which time any one may file objections. It will, of course, quite frequently happen that such published notice fails to reach some person interested and therefore objections which the Patent Office might have considered fatal to the application are not presented. In consequence registration will sometimes be improvidently granted; the Office being misled as the length in time of prior use, or as to its exclusive character. For such cases the act provides, in the thirteenth section, a remedy by application to the Commissioner of Patents for a cancellation of the registration. The remedy is full, fair, and summary, with appeal from examiner to Commissioner, and with no time limit for the application. It may be strongly argued that for an improvident registration this remedy should be exclusive, leaving it for the tribunal, which had decided on insufficient evidence that there had been 10 full years exclusive use, to reach a different conclusion on fuller testimony. be disposed of only in a suit-- title (as to which under section 16 registration is prima facie evidence),...