West Disinfecting Company v. Onorato, Patent Appeals No. 6242.

• Decision Date: 08 March 1957
• Docket Number: Patent Appeals No. 6242.
• Parties: WEST DISINFECTING COMPANY, Appellant, v. Samuel A. ONORATO (Valtex Products Company assignee substituted), Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

242 F.2d 197 (1957)

WEST DISINFECTING COMPANY, Appellant, v. Samuel A. ONORATO (Valtex Products Company assignee substituted), Appellee.

Patent Appeals No. 6242.

United States Court of Customs and Patent Appeals.

March 8, 1957.

Joseph J. Juhass, New York City, for appellant.

B. E. Shlesinger, Rochester, N. Y., for appellee.

Before JOHNSON, Chief Judge, and WORLEY, RICH, and JACKSON (retired), Judges.

RICH, Judge.

This is an appeal in a trademark interference. Appellant, the junior party, hereinafter called "West," filed an application to register "Savole" for liquid soap on February 18, 1952. Registration was refused because of appellee's prior registration of "Savol" for hand cleaning cream, No. 512,632 of July 19, 1949, issued on an application filed August 14, 1948, to Samuel A. Onorato doing business as Valtex Products Company. Appellee will hereinafter be referred by various combinations of the several Onorato brothers.

West, claiming use since January 1, 1915, requested an interference, which was instituted. Both parties took testimony. The Examiner of Interferences found that West's evidence established "continuous use by the junior party of its mark since many years prior to any use to which the senior party is here entitled" and adjudged West to be entitled to registration.

On appeal to the Commissioner of Patents the decision of the Examiner of Interferences was reversed on the ground that West had failed to meet the burden of proof upon it to show that it had rights in "Savole" superior to the rights of Valtex in "Savol" and appeal was taken to this court. No questions have been raised as to the similarity of the marks or of the goods and the only issue is which party is entitled to registration.

The burden of proof is, of course, upon the junior party, West, to show that it is entitled to the registration it seeks and, as against a registered mark, doubts are to be resolved against it. Baker Co. v. Lebow Brothers, 150 F.2d 580, 32 C.C.P.A., Patents, 1206, and Brewster-Ideal Chocolate Co. v. Dairy Maid Confectionery Co., 62 F. 2d 844, 20 C.C.P.A., Patents, 848.

At the outset there is a question of what West, as junior party, must prove to meet the burden upon it. The opinion of the Commissioner says (105 US PQ 126, 127):

"The burden is on the applicant to establish prior and continuous use of its mark on its goods."

The brief for Valtex states it somewhat differently, urging that West must establish not only priority of use but also either that it was using the mark continuously from the priority date it has established, or at least from a date prior to the date established by Valtex, until West's own filing date. West's brief appears to be confused on the question of what must be proved and says at one point, "All that the junior party had to prove, was to prove a date prior to 1948 the earliest date established by Valtex and instead of that * * * it went back to 1915 * * *."

Neither the Commissioner's opinion nor the briefs of the parties cite any authority on the question of what must be proved by the junior party to sustain its burden. Since we deem the nature of the burden of the junior party to be of decisive importance we shall state our view as to what it is.

West is an applicant seeking registration. Valtex, a registrant, is in the position of having, prima facie, superior rights by virtue of an earlier filing date than West, which rights must be overcome. Our view is that in this interference West must show that at the time when Valtex filed (assuming no earlier trademark rights to be established by Valtex) West was already in a position to register its mark, had it chosen to do so. Under Sec. 1 of the Trade-Mark Act of 1946, 15 U.S. C.A. § 1051, West, to have been entitled to registration at that time, would have had to be able to state in its application "that the mark is in use in commerce." (Emphasis ours.) In other words, a mark which is not in use cannot be registered. A mere showing by West of trademark use at some earlier time is not sufficient. Motlow v. Oldetyme Distillers, Inc., 88 F.2d 732, 24 C.C.P.A., Patents, 1094, at page 1097. (That case involved the Trade-Mark Act of 1905 but it contained the same requirement of present use at the time of applying for registration as the 1946 Act involved here.) On the other hand, it would be going too far to say that West must prove continuity of use from its first use. It is sufficient to meet the burden of proof if the junior party establishes that it was actually making trademark use of the mark at, or shortly prior to, the time when the senior party commenced to use it, as shown by the senior party's established date. The crux of the matter is proof of use by the junior party at the time the senior party entered the field, in which case the senior party's prima facie right is defeated. We turn now to a consideration of the evidence.

The date established by Valtex as its first use of "Savol" on hand cleaning cream we may take as sometime in 1948, which is definite enough for the purposes of our decision. This is tantamount to reliance on the filing date of the Onorato (Valtex) application, August 14, 1948. The first use "in commerce" alleged in that application was July 15, 1948. No earlier date is asserted in the brief for Valtex. The brief for West treats "1948" as the date established by Valtex.

The evidence produced by West has been accurately summarized and ably analyzed in the Commissioner's opinion (105 USPQ 126). We see no need to restate it here.

We are satisfied that West sold liquid soap under the trademark "Savole" during a period of years commencing possibly as early as 1915, the date alleged in its application, although the first sale established by evidence was in 1921. The latest activity with respect to the mark to be found in the...