Roselux Chemical Co. v. Parsons Ammonia Company

• Decision Date: 09 March 1962
• Docket Number: Patent Appeal No. 6715.
• Parties: ROSELUX CHEMICAL CO., Inc., Bonnie-Lan, Inc., and Proxite Products, Inc., Appellants, v. PARSONS AMMONIA COMPANY, Inc., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

132 USPQ 627, 299 F.2d 855 (1962)

ROSELUX CHEMICAL CO., Inc., Bonnie-Lan, Inc., and Proxite Products, Inc., Appellants, v. PARSONS AMMONIA COMPANY, Inc., Appellee.

Patent Appeal No. 6715.

United States Court of Customs and Patent Appeals.

March 9, 1962.

Amster & Levy, Edward F. Levy, and S. Stephen Baker, New York City, for appellants.

George B. Finnegan, Jr., New York City (John R. Murtha, Hamden, Conn., of counsel), for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

RICH, Judge.

Registration of "sudsy" is opposed. Opposers are appealing from the decision of the Patent Office Trademark Trial and Appeal Board (124 USPQ 524) dismissing three consolidated oppositions, Nos. 37,969, 37,975, and 37,976, all opposing the issuance of a Principal Register registration on appellee's application Ser. No. 38,558, filed October 8, 1957, of "sudsy" as a trademark for "aqueous ammonium hydroxide composition," as the goods are described in the application. Comprehension of the issues in this case requires a more accurate understanding of what the goods are. To that end we set forth some background.

Appellee, Parsons Ammonia Company, Inc. (hereinafter called "Parsons"), is the direct successor in business to one C. C. (Charles Chauncy) Parsons who, in 1876, introduced ammonia water, otherwise known as aqua ammonia, to the American housewife. Ammonia, in the technical sense, is a gas (NH3) which is very soluble in water and when dissolved therein it forms, in part, ammonium hydroxide (NH4OH), this solution being sometimes known loosely simply as "ammonia." According to "Chemicals of Commerce," by Foster Dee Snell and Cornelia T. Snell (1939), "In a somewhat modified form, usually containing a small amount of soap, it is sold as household ammonia." However, the record herein indicates "Household Ammonia" to be a registered Parsons trademark and the name under which C. C. Parsons introduced his product, which was aqua ammonia containing a small amount of vegetable oil, or possibly soap, the effect of which was to produce a cloudy appearance,¹ wherefore his product became widely and descriptively known as "cloudy ammonia."² This product, under the label "C. C. Parsons' Household Ammonia", continued substantially unchanged until 1948.

The application on appeal relies on section 2(f) of the Lanham Act (15 U.S.C. § 1052(f), 15 U.S.C.A. § 1052(f) ) and states:

"The mark has become distinctive of applicant\'s goods as evidenced by the showing submitted separately."

That showing consists of an affidavit of Parsons' president, Philip C. Ingham, who, before becoming president in 1955, had been with the company since 1938 as salesman, sales manager and vice president. To his affidavit there are attached numerous exhibits. One of them is a book published in 1951 on the 75th anniversary of Parsons' single product, "Household Ammonia." After reciting how the company and its product had weathered World War I, the Great Depression, and World War II, it says:

"The war over, the business continuously increased. But the world was changed and full of new ideas. The magic of modern chemistry had produced a host of synthetic detergents that were different and interesting. None of them appeared to take the place of ammonia as a cleanser, but they did have certain quite remarkable properties.

"In August 1946, it occurred to Mr. P. C. Ingham, Sales Manager of the Parsons Ammonia Co., that if these properties could be incorporated in Household Ammonia without destroying its essential character, he would have something that would be a salesman\'s dream come true: a product so obviously superior that no words, only a demonstration, would be needed to sell it. It was a good dream and experiments were enthusiastically undertaken. They were not encouraging; it was like trying to mix cats and dogs.

"But in September 1947 after a year of continuous experimentation and equally continuous failure, success was finally achieved. A compound was produced that looked so good that a patent on it was immediately applied for.

"This was Parsons Household Ammonia still, but something new had been added. It was not soapy yet it formed a thick suds at the slightest provocation. So it was decided to call the new product Parsons Sudsy Household Ammonia."

The foregoing is advertising. The record in this case shows that the formulation for the new sudsy product, essentially a combination of synthetic detergent and aqua ammonia, was worked out for Parsons by Foster D. Snell, Inc., consulting chemists in New York City, carrying out an idea conceived by Mr. Ingham.³

The record also shows that to avoid deteriorating the value of the old "C.C. Parsons' Household Ammonia" on hand in stores, the new synthetic detergent-containing product was gradually substituted as new orders were filled, beginning in 1948, without making any change in the front labels on the bottles. Bottles also carried a back label, however, and in 1948 it was modified to have a light blue background of small soap bubbles and to say at the top, "PARSONS' Sudsy HOUSEHOLD AMMONIA." The "Directions" printed at the bottom read, in part:

"Two ounces to each gallon of water — SWISH UP SUDS in dish pan or pail. Use more or less PARSONS\' HOUSEHOLD AMMONIA as required * * * speedy penetrating suds."

In 1949, Mr. Ingham testified, Parsons put "NEW" and "SUDSY" on the front label where previously it had said "ONE QUART" (see illustration, infra) but, when viewing a bottle on the shelf, he said, "It was so small you couldn't see it." A new back label was designed in which a little more prominence was given to the word "Sudsy" in the heading, that word being enlarged, in blue, and in quotation marks, but still in the same phrase as in 1948. The directions still told the user to "swish up suds," as they do to this day.

In 1950 the word "sudsy" in prominent lower-case type was added to the top of the front label, located in a rectangular panel with a relatively inconspicuous background representing bubbles, as shown in the facsimile we have here reproduced together with the top portion of the back label and a reproduction of the application drawing.

Since Parsons has not relied for registrability on the bubble backgound, but only on the significance of the word "sudsy," we are disregarding the background in this discussion.

The specimen front label attached to the application contains one added feature not shown in the above illustration, namely, a panel, about half the height of the top panel in which "sudsy" appears, extending across the label directly beneath the word "AMMONIA" and filled by the words "ALL-PURPOSE CLEANER." Mr. Ingham said this change was made in 1956. The label shown above therefore represents the one in use during most of the period between first use in 1948 and the filing of the application in 1957. At the time of application, therefore, the prominent words on the front label, where one would expect to find whatever trademark was being used on the product, were "SUDSY C.C.PARSONS' HOUSEHOLD AMMONIA ALL-PURPOSE CLEANER." "C.C.PARSONS' HOUSEHOLD AMMONIA" is in white letters on a black background, the lattice-work design is black on a gold background, the "sudsy" panel is printed in red on white and the "ALL-PURPOSE CLEANER" panel in white on red. The antidote notice is red on white.

The board summed up opposers' position thus:

"Each of the opposers alleges that it is engaged in selling ammonia for home use; that the term `sudsy\' describes a characteristic of such product; that it and others use the term `sudsy\' on labels for their ammonia products for purposes of description; and that a registration of `Sudsy\' to applicant would interfere with the right to use that term in conection with the merchandising and sale of ammonia."

Does "sudsy" Describe The Product?

The first issue which emerges in this case is the descriptiveness of the common English word "sudsy" in the context of its use on "C.C.Parsons' Household Ammonia." This necessitates consideration of the characteristics of the product.

The pre-1948 Parsons' ammonia, the cloudy type, did not form substantial suds when shaken in its bottle nor did it make a solution, when diluted for use, in which suds could be worked up. The change in the product which took place in 1948, the addition of or combination with a synthetic detergent,⁴ resulted in a new product which did both. The first advertisement which launched the promotion of the new product was headed, "NEW Parsons' Household Ammonia now with exclusive `SUDSY' ACTION." An early promotion technique involved a display set up in stores surmounted by a panel reading, "It's New TRY THE `SUDSY' TEST Shake the Bottle" and provided two bottles hanging by strings labeled "Old" and "New". Mr. Ingham testified as follows about the name and the display:

"XQ368. With regard to your adoption of the name for the product, you mentioned that `Sudsy\' had a close association with the product. What, particularly, did you mean by that? A. Well, as I say, it was really sudsy, and when you put it in water, it sudsed. Other ammonias wouldn\'t.

"XQ369. You mean the cloudy one? A. The `Sudsy\' ammonia would. No, cloudy ammonias across the country won\'t do it today, unless they have detergents in them.

"XQ370. Incidentally, with regard to Exhibit 6, which I don\'t have handy, but which was the photograph of the display which said `Try the "Sudsy" Test,\' what was the `Sudsy\' test? A. I will tell you that, not because I am the instigator. The `Sudsy\' test was this: You took one bottle, put regular ammonia, whether it was A & P or whatever it was, in there with water, equal amounts, and did the same thing with `Sudsy.\' You shook them up. Nothing happened with the regular ammonia. `Sudsy\' ammonia, the suds almost threw the cap off. So the woman could shake it on the thing there and find the difference immediately."

We add thereto...