Weiss Noodle Co. v. Golden Cracknel and Specialty Co.

• Decision Date: 02 June 1961
• Docket Number: Patent Appeal No. 6685.
• Citation: 290 F.2d 845,129 USPQ 411
• Parties: WEISS NOODLE COMPANY, Appellant, v. GOLDEN CRACKNEL AND SPECIALTY COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

129 USPQ 411, 290 F.2d 845 (1961)

WEISS NOODLE COMPANY, Appellant, v. GOLDEN CRACKNEL AND SPECIALTY COMPANY, Appellee.

Patent Appeal No. 6685.

United States Court of Customs and Patent Appeals.

June 2, 1961.

Herbert J. Jacobi, Washington, D. C., for appellant.

Thomas L. Poindexter, Detroit, Mich., for appellee.

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

RICH, Judge.

This is a cancellation proceeding. The Trademark Trial and Appeal Board granted the petition of Golden Cracknel and Specialty Co. to cancel registration No. 627,468 of May 22, 1956, granted to Weiss Noodle Co. on application Ser. No. 644,651, published March 6, 1956, in Class 46.

The mark registered was "Ha-Lush-Ka" (the quotes being part of the mark) for "Egg Noodles; and Egg Noodle Products — Namely, Macaroni, Spaghetti, and Egg Noodle Novelties in Different Shapes, All Having the Required Egg Contest." The registration shows on its face that it was granted under section 2(f) and the asserted date of first use is Aug. 18, 1952.

The registration was cancelled on the ground that "Ha-Lush-Ka" is nothing more than a hyphenated, phonetically spelled version of the Hungarian word "haluska" which means, inter alia, noodles and as such is the "common descriptive name for egg noodles." Significant statements in the board's opinions (one on a request for reconsideration) are as follows:

"Petitioner\'s record shows that it is a competitor of respondent in the sale of noodles; and that it has, since the end of 1957, used `Ha-Lush-Ka\' to identify a type of noodle of its manufacture. `Haluska\' is listed in a Hungarian-English Dictionary as the equivalent of `Galuska\', which term is defined as `noodles, dumplings\'. A Hungarian born member of petitioner\'s firm testified that `Haluska\' is pronounced as `Halushka\' in the Hungarian language.

* * * * * *

"Respondent\'s exhibits comprise five packages of the various types of noodles which it sells * * * one `Ha-Lush-Ka\'. The back portion of the `Ha-Lush-Ka\' bag bears a Hungarian-Slavic recipe for `Kaposzta Hal-Lush-Ka or (Galuska)\'. `Kaposzta\' is a Hungarian word meaning cabbage and the recipe is for making a cabbage noodle dish.

* * * * * *

"It is clear from the record in this case that `Galuska\' means noodles; `Haluska\' is the equivalent of `Galuska\'; `Halushka\' is the phonetic equivalent of `Haluska\'; and that respondent, as well as the petitioner and others in the trade, have used `Ha-Lush-Ka\' to identify a particular type of noodle."

And on petition for reconsideration:

"* * * attention is directed to `A Dictionary of the Hungarian and English Language\' by Arthur B. Yoland and `English-Hungarian Dictionary\' by Franz De Paula Bizonfy, copies of which are available for inspection in the Patent Office, wherein `Haluska\' is respectively defined as `a kind of paste\' and `an edible paste\', and wherein the former, on page IX of the introduction, it is indicated that in the Hungarian language, the letter `S\' is pronounced like the (sh) in shut, wish, and the like."

As to the dictionary definitions, appellant, while not disputing their existence, argues that there is "no such word as `Ha-Lush-Ka' in the Hungarian language." While the statement is true in the narrowest possible sense, the argument is without substance. The Hungarian word "haluska" is pronounced as though it were spelled "Halushka" (to an English-speaking person) and merely to hyphenate the phonetic version does not destroy its identity. Furthermore, Mr. Weiss, managing partner of the appellant company, owner of the registration, testified:

"XQ249. How old were you when you came to the United States? A. I was ten years old.

"XQ250. Had you ever heard the word, Hungarian word spelled h-a-l-u-s-k-a, before you came to the United States at any time? A. I had heard that word, yes."

On review of the record, we are compelled to regard the subject matter of the registration as the name, in Hungarian, of at least some of the noodle products enumerated in the registration. As such it falls within the statutory Prohibition of section 2(e) which proscribes the registration of merely descriptive words. The name of a thing is the ultimate in descriptiveness. In re Cooper, 254 F.2d 611, 45 CCPA 923. It is immaterial that the name is in a foreign language. In re Northern Paper Mills, 64 F.2d 998, 20 CCPA 1109.

Appellant appears to rely principally on the argument that even if "Ha-Lush-Ka" ever was descriptive, it has become distinctive of appellant's product, has acquired a "secondary meaning" as an indication of the origin of appellant's product, which justified if, indeed it did not compel, the granting of the registration in the first place and now justifies continuance of the registration.

While it is true that the registration was granted after objection by the examiner that "Ha-Lush-Ka" is descriptive and "not capable of distinguishing applicant's goods in commerce from similar goods of others," which rejection was retreated from after a showing by appellant, the question here is whether the examiner erred in not adhering to his rejection. If he committed error, it is no more binding in this cancellation proceeding than is the issuance of the registration in any other. Appellant argues here, as it argued on the petition for reconsideration, that the board over-looked the fact that registration was granted under section 2(f) because it had become distinctive and complained that the board cited no authority for cancelling a registration issued under section 2(f). Before us appellant cites the case of Bavarian Brewing Co., Inc. v. G. Heileman Brewing Co., 107 U.S. P.Q. 245 (Com'r.), apparently for the proposition that upon a showing of distinctiveness a mark must be considered to be registrable, or at least for the proposition that such a showing imposes on petitioner here a very heavy burden which has not been discharged.

The board's answer to this...