Singer Manufacturing Co. v. Birginal-Bigsby Corp., Patent Appeal No. 6948.

• Decision Date: 20 June 1963
• Docket Number: Patent Appeal No. 6948.
• Citation: 138 USPQ 63,319 F.2d 273
• Parties: The SINGER MANUFACTURING COMPANY and Singer Sewing Machine Company, Appellants, v. BIRGINAL-BIGSBY CORPORATION, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

138 USPQ 63, 319 F.2d 273 (1963)

The SINGER MANUFACTURING COMPANY and Singer Sewing Machine Company, Appellants, v. BIRGINAL-BIGSBY CORPORATION, Appellee.

Patent Appeal No. 6948.

United States Court of Customs and Patent Appeals.

June 20, 1963.

Chester A. Williams, Jr., New York City, Edward L. Bell, for appellants.

Curtis B. Morsell, Curtis B. Morsell, Jr., Arthur L. Morsell, Jr., Morsell & Morsell, Milwaukee, Wis., for appellee.

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

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board (132 USPQ 471) dismissing the opposition of appellants (herein called "Singer") to the registration by appellee of the word-mark AMERICAN BEAUTY on the Principal Register "for sewing machines and parts thereof and attachments therefor."

The sole ground of opposition asserted in this court is that AMERICAN BEAUTY is not registrable to appellee by reason of section 2(e) (2) of the Trademark Act of 1946 (15 U.S.C. 1052 (e) (2)). The relevant portions of the statute read as follows:

"Sec. 2. Trade-marks registrable on the principal register

"No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

* * * * * *

"(e) Consists of a mark which, * * *

"(2) when applied to the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, * * *."

The issue under this statute as formulated below, dealt with by the board, and apparently agreed upon by the parties is whether AMERICAN BEAUTY, when applied to applicant's goods, is primarily geographically deceptively misdescriptive of those goods. This, of course, involves two separate matters: (1) whether the mark AMERICAN BEAUTY is geographically descriptive under the circumstances of its use on appellee's goods and (2) the geographical origin of those goods. If the mark is an indication that the goods are of American¹ origin and the goods are in fact of foreign origin, then the mark is geographically misdescriptive. Misdescriptiveness of this character would, it seems to us, necessarily be deceptive.

The Origin of Appellee's Goods

Testimony was taken which established the origin of the goods on which the mark AMERICAN BEAUTY had been applied by appellee. The board opinion states the essential facts, as to which there is no dispute, as follows:

"Applicant obtains the basic machine, which is the sewing machine head, and various other components such as the accessory box and instruction book which accompany the machine, from American distributors of Japanese-made products. Thereafter, applicant adds certain American-made parts such as the motor, the motor controller, belt and the cabinet and also applies the metal plate and/or decalcomanias which bear the term `AMERICAN BEAUTY\' to the machine. The machines, when completely assembled, are clearly marked `Made in Japan\' on the heads, and `Made in U. S. A.\' on the motors thereof."

In a footnote, the board stated that the trademark admittedly had not been used on attachments, contrary to the statement in the application.

On the basis of these facts, we are of the opinion that the sewing machines, as articles of commerce, are of Japanese origin because the principal part of the completed article was made in Japan, namely the sewing machine head, which is the complete sewing machine except for its driving motor and supporting cabinet. Certainly one desirous of buying a sewing machine made in the United States would not accept such a machine.

The Mark as a Description of Geographic Origin

Two members of the board joined in saying,

"While the term `American Beauty\' may have overtones of a geographic nature, both the dictionary definition and common everyday meaning is that of a well-known rose. In view of all the foregoing, it is concluded that opposers have failed to establish that the term `American Beauty\' is primarily geographically deceptively misdescriptive within the meaning of Section 2(e) (2) of the Trademark Act."

The third member of the board dissented, writing a lengthy opinion in which he said, on the above point,

"Unquestionably, the term `AMERICAN\' standing alone is purely geographical. * * *. `AMERICAN BEAUTY\', moreover, has a meaning apart from that of a particular rose. `AMERICAN\' is defined, inter alia, in Webster\'s New International Dictionary, Second Edition (1947), as `of or pertaining to the United States of America\'. `BEAUTY\' is defined in the same dictionary as `a beautiful person or thing\' and `a particular grace, feature, ornament, or excellence\' and it is listed in the `American Thesaurus of Slang\', published by Thomas Y. Crowell Company (1947), as a synonym for something excellent. `AMERICAN BEAUTY\', therefore, also signifies an object of superior quality associated with or originating in the United States of America. Accordingly, it seems clear * * * its basic significance, unquestionably, is geographic in that it would immediately suggest to the average purchaser that a product sold thereunder originates in or is made in the United States. As applied to applicant\'s sewing machines which are made and assembled in Japan, `AMERICAN BEAUTY\' is clearly geographically misdescriptive."

We are of the opinion that the dissenting member of the board has taken the correct view of the matter. "AMERICAN BEAUTY" is not a term having only a single "primary" meaning. No doubt one looking it up in the dictionary, as a specific definable term considered without regard to the context of its use, will find, as did the majority below, that it is the name of a specific rose. Viewed in a nursery catalog it would have that meaning. Even in that context, however, it has geographical significance, meaning a beautiful American rose. But the primary significance of the term may change with use and what it is depends upon where it is used and how one encounters it. Florenz Ziegfeld, the great showman of what has come to be known, for no clear reason, as the "roaring twenties," the great "Glorifier of the American Girl," brought into being what were popularly termed at the time his "longstemmed American Beauties" which were not roses at all but show girls. And there was a strong geographical connotation in that expression. No doubt this was a play on words based on the preexisting name of a popular rose, but use of the term in a review of the Ziegfeld Follies would refer to Follies Girls, not roses, and that would there be its "primary" meaning. Not all of such meanings are to be found in dictionaries.

The record shows that the words "AMERICAN BEAUTY" have been applied in large prominent type on the arm of sewing machine heads, the machines being advertised by literature and newspaper advertisements using expressions such as: "The American Beauty...