United States Steel Corp. v. Vasco Metals Corp.

• Decision Date: 23 May 1968
• Docket Number: Patent Appeal No. 7937.
• Citation: 157 USPQ 627,394 F.2d 1009
• Parties: UNITED STATES STEEL CORPORATION, Appellant, v. VASCO METALS CORPORATION, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

157 USPQ 627, 394 F.2d 1009 (1968)

UNITED STATES STEEL CORPORATION, Appellant, v. VASCO METALS CORPORATION, Appellee.

Patent Appeal No. 7937.

United States Court of Customs and Patent Appeals.

May 23, 1968.

Donald G. Dalton, Pittsburgh, Pa. (Matthew P. McDermitt, Pittsburgh, Pa., of counsel), for appellant.

Cushman, Darby & Cushman, Edward M. Prince (George T. Mobille, Washington, D. C., of counsel), for appellee.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK,^* JJ.

ALMOND, Judge.

United States Steel Corporation (opposer below) seeks reversal of the decision of the Trademark Trial and Appeal Board¹ granting the motion of appellee, Vasco Metals Corporation, for summary judgment and dismissing appellant's opposition. The mark here in issue is the plain capital letters CVM. The application² asserts use since July 31, 1964. The goods involved in the application are heat-resisting alloys, low alloy steels for bearings and springs, high-strength alloy steels, tool steels and high speed steels, stainless steels, electronic alloys, nuclear reactor materials — namely, zircaloy and zirconium alloys, investment castings, and special analysis alloy.

Appellant produces some of the steels embraced by the aforementioned CVM application and filed opposition to the registration, asserting that these letters (CVM) are an abbreviation of "consumable vacuum melt," and that the letters and the phrase are common descriptive designations for steel produced by the consumable vacuum melting process practiced by both parties as well as by other steel producers. It appears that the consumable vacuum melting process is a method of further refining high grade alloy steel by melting a cast electrode of the alloy in a vacuum, with the electrode being consumed by melting in an arc struck between it and like material in the base of the vacuum chamber.

Appellee filed answer to the notice of opposition, took a discovery deposition and then filed motion for summary judgment from which emanates the issue here presented. The motion was predicated on several grounds. The decision of the board, however, was based solely on the ground that appellant is estopped from opposing the registration of CVM by its prior agreement to appellee's registering the following mark:³

The above mark was opposed by appellant on the same grounds as the instant application. However, the opposition was terminated and registration granted pursuant to the following stipulation of dismissal:

The proceedings in this opposition be suspended pending entry of the aforesaid disclaimer and that the opposition be dismissed upon entry thereof.

The terms of the "aforesaid disclaimer" recited in the registration read:

The words "Consumable," "Vacuum," and "Melted" are disclaimed apart from the mark as shown.

Appellant asserts that it agreed to nothing beyond the matters, in manner and form above cited, and gave no other manifestation or consent or concession, and was totally unaware of appellee's intention to file application for registration of CVM, per se, which was filed on September 2, 1964 following the above registration on August 18, 1964. We find nothing of record in derogation of this assertion.

The board, in taking the position that appellant is estopped "from now asserting that the same designation is not registrable merely because it is presented alone and not in association with other matter," reasoned as follows:

In the earlier opposition, opposer had consented to the registration of a mark which featured as its salient element the letters "CVM." Although these letters were presented as a portion of the words "CONSUMABLE VACUUM MELTED," the mark was nevertheless dominated by the three letters. Furthermore, in stipulating that the mark could be registered upon entry of applicant\'s disclaimer of the words "CONSUMABLE VACUUM MELTED" apart from the mark as shown, opposer in effect conceded that the undisclaimed portion of the mark, the designation "CVM," dominated the mark and was the only registrable element thereof. * * *

The board adhered to its decision on reconsideration, holding that the disclaimer "applied only to the words `CONSUMABLE VACUUM MELTED' and did not include the distinctively displayed letters `CVM,'" reasoning that while part of a mark may be disclaimed, "an entire mark cannot be disclaimed and yet be registered." (Citations omitted.)

In our opinion the facts disclosed by this record do not warrant the application of summary judgment predicated on the principle of estoppel. It is well settled that the function of summary judgment is to avoid a useless trial. It is, however, to be cautiously granted. As stated in 6 Moore's Federal Practice ¶ 56.153 (2d ed. 1966):

The courts are in entire agreement that the moving party for summary judgment has the burden of showing the absence of any genuine issue as to all the material facts, which, under applicable principles of substantive law, entitle him to judgment as a matter of law.

The record discloses that appellant is a practitioner of consumable vacuum melting and produces some of the products set forth in appellee's application. Appellant asserts that its sole objective in the prior opposition, as well as in the instant one, is to preserve its right to use descriptive words and abbreviations in their primary descriptive sense when offering and selling its product. As a result of the agreement of dismissal and entry of the disclaimer, it appears that appellant achieved this objective as to "consumable vacuum melted."

In our view the instant application presents a new issue beyond the scope of the issue resolved upon termination of the prior proceeding. The stipulation filed in the previous action was to the effect that the specific, composite, distinctively displayed mark now shown in Reg. No. 775,220 and reproduced above might be registered upon entry of a disclaimer which reads as set forth in the registration and as quoted above. The consent was thus specific to the registration of this particular mark. It did not include a different mark. By...