Powermatics, Inc. v. Globe Roofing Products Co.

Decision Date11 February 1965
Docket NumberPatent Appeal No. 7281.
Citation341 F.2d 127,144 USPQ 430
PartiesPOWERMATICS, INC., Appellant, v. GLOBE ROOFING PRODUCTS CO., Inc., Appellee.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Burgess, Dinklage & Sprung, New York City (Arnold Sprung, New York City, of counsel) for appellant.

Robert C. Williams, D. D. Allegretti, Chicago, Ill., for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

WORLEY, Chief Judge.

Powermatics appeals from the decision of the Trademark Trial and Appeal Board awarding priority to Globe, senior party, in a trademark interference between Globe's Registration No. 704,1791 for "PANELUME" as a trademark for aluminum clapboard siding, and Powermatics' application2 for registration of the same term as a trademark for substantially identical goods.

Globe took no testimony and is restricted to its February 18, 1960 filing date as the date of first use of the mark. Kiekhaefer v. Willys-Overland Motors, Inc., Etc., 236 F.2d 423, 43 CCPA 1013.

The board apparently regarded Powermatics to be the prior user, stating:

"In this connection, the junior party has offered the testimony of the president of its corporation and a considerable amount of documentary exhibits from which it is deemed conclusively to appear that the junior party continuously used the mark `PANELUME\' or the phonetic equivalent thereof `PANELUME\' for insulated aluminum building panels from as early as December 1959 to some indefinite time in November 1960. * * *"

However, it noted that the business of Powermatics had been "dormant" since November 1960 when its physical assets were sold to satisfy a government lien, and further stated:

"The junior party\'s president has testified that he is presently in the employ of the Panelume Corporation of America, a stranger to this proceeding, which is said to be manufacturing aluminum paneling under the mark `PANELUME\'; that he supervises the manufacture of the product; and that he has a verbal agreement `with this gentleman very shortly that I will resume under the name Powermatics, and he will distribute this product for me.\' There is, however, nothing in the instant record to show that the Panelume Corporation of America is using the mark under a license agreement with the junior party, as distinguished from its president, and, so far as can be ascertained herein, the use made of the mark by such third person has been in its own behalf rather than in behalf of the junior party."

The board concluded that "the senior party's rights in the mark here involved are superior to those of the junior party."

While Globe agrees with the board's reason for awarding priority, it urges that we also consider the propriety of the board's ruling that appellant had continuously used "PANELUME" or "PAN-ELUM" from December 1959 to some time in November 1960. As the winning party below, it is entitled to raise that issue for reasons similar to those set out in Klemperer v. Price, 271 F.2d 743, 47 CCPA 729.

From our evaluation of the record we conclude that the board erred in finding that Powermatics has established priority of use.

Powermatics, as junior party, has the burden of proving that it is entitled to the registration it seeks and, as against a registered mark, doubts are to be resolved against it. Brewster-Ideal Chocolate Co. v. Dairy Maid Confectionary Co., 62 F.2d 844, 20 CCPA 848; B. R. Baker Company v. Lebow Brothers, 150 F.2d 580, 32 CCPA 1206. Powermatics must show that, at the time Globe filed, Powermatics was already in a position to register its mark, had it chosen to do so, and that it would have been able to state in its application "that the mark is in use in commerce," as required by section 1 of the Trademark Act of 1946. West Disinfecting Co. v. Samuel A. Onorato, 242 F.2d 197, 44 CCPA 834.

The following testimony of Powermatics' president on direct examination is pertinent to the issue of priority:

"Q26. And to your recollection, when is the first time that you used this mark? A. To my recollection, it was about the first week in December or possibly the second week in December, 1959.
"Q27. And would you describe how you used this mark? A. Yes. We did various forms of advertising, particularly in The New York Sunday News, where we would have the trade name, the name Panelume Pan-elum?, I should say, written right across in big letters in the newspaper, and had certain stickers made around that time, where most of the panels that went on out? would have stickers on with the name Panelume Pan-elum?.3
* * * * * *
"Q40. Did you actually ship goods * * * in response to that ad? A. Yes, we did.
"Q41. Were the goods marked? A. I can\'t say, to my recollection, whether they were or not. They were supposed to be, but I didn\'t have all the control in the factory, whether they did or not.
"Q42. Was it the standard practice to mark the goods. A. Yes. They were instructed so to label all the goods. But sometimes they might have missed. I can\'t say for sure if they did on every one.
"Q43. Do you, to your recollection, recall the shipping of any panels with the name Panelume Pan-elum? in response to this ad? A. To my recollection, I can\'t say for sure but if it was in the month of December they there had to be panels going out with the name Panelume Pan-elum? on them. I just don\'t know which ones.
* * * * * *
"Q48. And when did you first ship goods in interstate commerce with the spelling Panelume? A. To my recollection, it would probably have been February of 1960 or possibly early March, 1960.
"Q49. When you changed over from the previous form? A. Yes.
* * * * * *
"Q56. And was it your normal practice to ship panels in response to such orders with the mark Panelume on them? A. Yes. It was normal practice to ship anything that went out with our names on it.
* * * * * *"

On cross-examination, the witness testified:

"XQ112. Did you also use gummed labels for shipping or anything of that character? A. Gummed labels?
"XQ113. Yes. A. Well, we would — if we ship anything, it would have a — that we would type. We would type a gummed label, a blank gummed label. We would type the person\'s name that it came from.
"XQ114. But that did not carry the Panelume trade mark. A. Not to my — I can\'t say for sure if it
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