Rosengart v. Ostrex Co.

• Decision Date: 03 May 1943
• Docket Number: Patent Appeals No. 4720.
• Citation: 30 CCPA 1046,136 F.2d 249
• Parties: ROSENGART v. OSTREX CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

30 CCPA 1046, 136 F.2d 249 (1943)

ROSENGART v. OSTREX CO., Inc.

Patent Appeals No. 4720.

Court of Customs and Patent Appeals.

May 3, 1943.

Asher Blum, of New York City (Charles R. Allen, of Washington, D. C., and Hugo Mock and Alex Friedman, both of New York City, of counsel), for appellant.

Richard L. Underwood, of Washington, D. C., for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

BLAND, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents, affirming the decision of the Examiner of Interferences sustaining the petition of Ostrex Company, Inc., for cancellation of trade-mark registration No. 343,513, dated February 23, 1937, in the name of Sylvain Rosengart, which is assigned to the appellant, Euromerica Medical Products, Inc. The trade-mark sought to be cancelled is the notation "Optrex" for a "liquid treatment for diseases and affections of the eyes."

The petitioner-appellee relied upon registration No. 332,107, issued February 4, 1936, to one Joseph Breyer for the mark "Ostrex Tonic" (the word "Tonic" being disclaimed) for a "general health tonic, in tablet form." This mark was, by its registrant, duly assigned to appellee herein on July 7, 1936, and on July 11, 1936, said assignment was recorded in the United States Patent Office under the authority of section 10 of the Trade-Mark Act of February 20, 1905, 15 U.S.C. § 90, 15 U.S.C.A. § 90. The instrument bears a notary public's certificate of acknowledgment.

Petitioner-appellee took no testimony in the instant case, but it was permitted, under Patent Office Rule 157, 35 U.S.C.A. Appendix, to use testimony taken in Oppositions No. 17,022 and 17,302, Ostrex Company, Inc. v. Euromerica Medical Products, Inc., reported in 40 U.S.P.Q. 297, 499 O.G. 792. In said opposition proceedings, appellant herein was denied registration of two new "Optrex" marks. Appellant there based its right to register the the new marks upon its claimed ownership of the registered marks "Optraex" and "Optrex," the latter of which is involved in this appeal.

In said opposition proceedings, the petitioner-appellee herein relied upon its said registered mark "Ostrex." The deposition of Joseph Breyer, the registrant of that mark, was introduced, and it shows that he was president of the Ostrex Company, Inc., and since 1934 had been doing business as the Ostrex Company; that the company is a corporation and at the time of testifying was using the "Ostrex" mark. The certificate of registration was introduced. Breyer testified that the mark had been sold to the Ostrex Company, Inc., and the deed of assignment from Joseph Breyer to the Ostrex Company, Inc., was offered in evidence and marked "Opposer's Exhibit No. 6." The said document, on its face, shows that the written assignment was duly recorded in the United States Patent Office in accordance with the provisions of said statute and that the assignment had been acknowledged before a notary public.

Much of the testimony introduced by the opposer in the said opposition proceedings is objected to by appellant here as being hearsay in character. On this question the Commissioner of Patents said: "* * * Apparently the examiner considered only such portions of the testimony as were relevant and material, and I have done likewise. In so doing I have necessarily excluded from consideration all evidence to which counsel now object as hearsay, because it has no bearing upon any issue here presented. In so far as relevant and material, it was properly used under the express terms of the rule."

Appellant's main contention here is to the effect that a naked assignment of a registered trade-mark, without proving the execution of the assignment, is not sufficient to show the ownership or use of the mark at the time of filing the petition for cancellation.

The Examiner of Interferences held that the opposition proceedings "related to substantially the same issues and upon the record here presented the nature thereof may only be ascertained from the rulings made by the examiner and the Commissioner in Opposition No. 17,022, copies of which rulings accompanied petitioner's brief."

The question of failing to prove ownership of the "Ostrex" mark seems not to have been seriously considered before the examiner, but it was pressed before the commissioner, and he held that the rulings in the opposition proceedings were res judicata of the question of ownership of the marks. He further held that regardless of the former judgment, appellant's registration should be cancelled upon the merits of the question.

No issue was there raised or is here raised with reference to the confusing similarity between the marks "Ostrex" and "Optrex," nor is it questioned but that the goods upon which the marks are used are of the same descriptive properties, and we deem it unnecessary to discuss this phase of the case.

The commissioner's decision reads in part as follows:

"Respondent points out that the instant proceeding was commenced some two years after petitioner's testimony was taken, and contends that petitioner thus failed to establish use of its mark at or about the time the petition to cancel was filed. In support of this contention is cited the case of Old Monk Olive Oil Co. v. Southwestern Coca-Cola Bottling Co., 118 F.2d 1015, 28 C.C.P.A., Patents, 1091, 49 U.S.P.Q. 192, where it was held by the Court of Customs and Patent Appeals that testimony taken five years before a petition for cancellation was filed did not prove use of the petitioner's unregistered trade-mark at the time of filing. The case is not in point, for the reason that the present petitioner's mark is registered. There being no evidence to the contrary, its registration proves ownership, and ownership implies use. Ely & Walker Dry Goods Co. v. Sears, Roebuck & Co., 90 F.2d 257, 24 C.C.P.A., Patents, 1244. Respondent challenges the sufficiency of petitioner's proof that it owns the registration here in question, but in my opinion such ownership is amply established.

"For the reason stated the decision of the examiner of interferences is affirmed."

On the question raised by appellant with reference to the alleged failure to prove the legal execution of the assignment from Joseph Breyer to the Ostrex Company, Inc., we are of the opinion that in view of the statute on the subject of trade-mark assignments and of the provisions for recording assignments in the Patent Office, the introduction of such assignment under the circumstances shown in this record made a prima facie case, proving that the ownership of said mark was in appellee from the date of its assignment. A similar question was before this court in Goodyear Tire & Rubber Co. v. C. Kenyon Co., Inc., 56 F.2d 670, 671, 19 C.C.P.A., Patents, 1037. We there said:

"Only the appellee took testimony in the case, but appellant filed printed copies of a number of its registrations with certified copies of the abstracts of title thereto.

"These are deemed sufficient to establish ownership of the marks claimed by appellant."

To hold that the execution of an assignment of a trade-mark, where the assignment was acknowledged and duly recorded in the Patent Office in accordance with law, had to be proved, it seems to us, might result in very great hardships. The execution of many such assignments could not possibly be proved by any living witness. The assignment may not be conclusive upon such fact when questioned, but such a document as we have described here, we think, should be sufficient to make a prima facie case of ownership of the mark so assigned. The cases relied upon by appellant are either not in point or are not controlling.

Section 16 of the Trade-Mark Act of February 20, 1905, 15 U.S.C. § 96, 15 U.S.C.A. § 96, provides, among other things: "That the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership. * * *"

Appellant argues, in effect, that while the statute makes registration prima facie evidence of ownership of the mark by the party who registered it, unless the assignment is properly proved, no title in the assignee is shown. It seems to us...