Willson v. Graphol Products Co., 5781.

• Decision Date: 10 April 1951
• Docket Number: No. 5781.,5781.
• Citation: 188 F.2d 498
• Parties: WILLSON et al. v. GRAPHOL PRODUCTS CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

188 F.2d 498 (1951)

WILLSON et al. v. GRAPHOL PRODUCTS CO., Inc.

No. 5781.

United States Court of Customs and Patent Appeals.

April 10, 1951.

Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa. (Jo. Baily Brown, Pittsburgh, Pa., of counsel), for appellants.

Cushman, Darby & Cushman, Washington, D. C. (William M. Cushman, Washington, D. C., of counsel), for appellee.

JOHNSON, Judge.

On May 4, 1944, appellee filed petitions to cancel appellants' registrations "Grafo" and "Grafolube" pursuant to section 13 of the Trade-Mark Act of 1905 (formerly 15 U.S.C.A. § 93, now 15 U.S.C.A. §§ 1064, 1068, 1070). The Examiner of Interferences sustained the petitions, whereupon the records were consolidated and appealed to the commissioner, and on his affirmance of the examiner, to this court. On January 6, 1948, an opinion was handed down remanding the case to the commissioner for the purpose of taking additional testimony, this court having found that section 19 of the Trade-Mark Act of 1946, 15 U.S.C.A. § 1069, relating to the defense of laches, was applicable. 165 F.2d 446, 35 C.C.P.A., Patents, 857. After both parties had taken testimony, the Examiner of Interferences again found for appellee, was affirmed by the commissioner, and appeal was again had to this court.

There is no dispute as to the facts, which appear to be as follows: Appellee is the owner or registration No. 194,841 for the mark "Graphol." The mark was registered January 27, 1925, as applied to "Rust Solvent and Penetrating Lubricant." Continuous use was stated to be since January 1922. Appellants are the owners of registration No. 316,676 for the mark "Grafo," granted September 4, 1934 as applied to "Lubricating Oil Compound," and registration No. 310,077 for the mark "Grafolube," granted February 13, 1934 as applied to "Lubricating Oil Compounds." Continuous use of both of these marks was stated to be since August 1933.

On May 4, 1944, about ten years subsequent to appellants' registration dates, appellee filed petitions to cancel both marks.

The marks of both parties have been in continuous use and have not been abandoned. Both parties claim a territorial distribution which covers the entire United States. Both organizations are small and do most of their selling by personal contact, correspondence and telephone. None of the goods are sold over the counter by retail dealers. Appellee's annual sales during 1944, its best year, amounted to approximately $25,000 and had fluctuated between $11,000 and $18,000 in the years preceding the recent war. Appellants' sales for the year 1944 were $58,000 and had averaged $30,000 per year in the years prior to the war. Appellants' witness stated that it would cost appellants many thousands of dollars and cause irreparable loss to their business if they were forced to change their marks.

At various times since 1935 appellants had advertised their merchandise with their marks attached in the following publications: "Jobber Topics," "Purchasing," "Manufacturers Register," "Thomas Register of American Manufacturers," "MacRae's Blue Book," and "Plant-Production Directory." There was undisputed testimony that appellee had no actual knowledge of the use of the trade-marks "Grafo" and "Grafolube" until shortly before the cancellation proceedings were brought.

Appellee's first actual knowledge of appellants' trade-marks was gained in February 1944, when, in contemplation of selling or recapitalization, counsel was retained to locate and eliminate any interfering marks. A search of the Patent Office records revealed the marks of appellants and cancellation proceedings were instituted.

The Patent Office tribunals held in the previous proceedings that the marks of appellants so closely resembled the mark of appellee that, when used on goods of admittedly the same descriptive properties, they would be likely to cause confusion in trade and deception of purchasers. These same tribunals in the later hearing of the case after remand considered only the defense of laches and held that there had been no actual knowledge; that the advertising was not of such a nature or extent that it might be assumed that the petitioner in its normal commercial activity would have seen it or otherwise heard of appellants' activity; that appellants' registrations did not constitute constructive notice, and consequently that appellee was not guilty of laches and was entitled to prevail.

Appellants contend that the commissioner erred in the following:

1. In refusing to consider issues other than laches on remand and thus refusing to look again at appellants' contentions that the marks are not confusingly similar, and that the record negatives actual or probable confusion and consequent injury.

2. In failing to hold that appellee had constructive notice of appellants' marks by means of the advertising shown.

3. In failing to hold that appellants' 1905 Act registration was constructive notice to appellee of appellants' marks.

4. In failing to hold that appellee was barred by laches from obtaining any relief.

Taking these points up in the order in which they appear, we find ourselves in agreement with the commissioner as to the similarity of the marks and the likelihood of confusion. We entertain no doubt that had appellee opposed the registration of these marks at the appropriate time it would have been successful. Assuming but not deciding, that appellee has shown such injury as to satisfy section 13 of the Trade-Mark Act of 1905 (formerly 15 U.S.C. § 93 now 15 U.S.C.A. §§ 1064, 1068, 1070), we proceed to the question of notice and laches.

As to the effect of the advertising, we agree with the commissioner, and adopt his observations: The advertising referred to was published in certain registers or directories and in certain trade publications. The testimony now presented for petitioner shows that it had no access to any of these publications until almost immediately before bringing the petitions for cancelation. Petitioner is a small concern and the only persons who might have had knowledge specifically testified that they had seen none of these publications and had never heard of the respondent's use of its mark until about the time the petitions were filed. It is clearly shown that no actual knowledge existed, nor is the advertising of such a nature or extent that it may be assumed that the petitioner in its normal commercial activity would have seen it or otherwise heard of respondent's activity. In fact, respondent who clearly had access to at least one of the registers in which petitioner's mark was also listed states that he had never heard of petitioner's mark prior to these proceedings. Based on actual knowledge or upon knowledge to be imputed because of advertising of respondent there clearly was no notice to petitioner of the existence of respondent's marks or the registration thereof.

We thus come to the question of the effect of the 1905 Act registrations as notice.

It is urged on behalf of appellee, and was held by the Examiner of Interferences, that registration under the 1905 Act is not legally constructive notice, citing United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 39 S.Ct. 48, 63 L.Ed. 141, and General Baking Co. v. Gorman, 1 Cir., 3 F.2d 891. These cases have been carefully studied as well as all others which could be found dealing with the principle therein laid down. Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713; U. S. Printing and Lithograph Co. v. Griggs, Cooper & Co., 279 U.S. 156, 49 S.Ct. 267, 73 L.Ed. 650; American Trading Co. v. H. E. Heacock Co., 285 U.S. 247, 52 S.Ct. 387, 76 L.Ed. 740; General Baking Co. v. Goldblatt Bros., 7 Cir., 90 F.2d 241; Griesedieck Western Brewery Co. v. Peoples Brewing Co., 8 Cir., 149 F.2d 1019; George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536; Standard Brewery Co. v. Interboro Brewing Co., 2 Cir., 229 F. 543; Arrow Distilleries, Inc., v. Globe Brewing Co., D. C., 30 F.Supp. 270. With the exception of Standard Brewery Co. v. Interboro Brewing Co., a decision which cited no authority, and which has never been followed, the foregoing cases are unanimous in denying that federal registration had any effect as notice. Before going any further, however, it is well to see exactly what problem these cases were treating and exactly what they decided. In each of these cases, except the Hanover case, where no registration was involved, an injunction was sought to prevent future infringement of a registered trade-mark by an alleged infringer whose use had innocently grown up in an area untouched by the plaintiff's trade. The issue thus was the effect of federal registration, the territorial scope of its protection, and whether a subsequent user innocent in fact could be innocent in law once the plaintiff's mark was registered. The conclusions are well known today. A trade-mark is not a grant, does not spring up through registration as do patents and copyrights, but is a right growing out of use. United Drug Co. v. Theodore Rectanus Co., supra. The federal trade-mark statutes did not attempt to create exclusive rights in marks, but attempted to provide appropriate procedure and to give protection and remedies for rights that already existed. American Trading Co. v. H. E. Heacock Co., supra. Thus federal registration was not such constructive notice as to make it impossible for a later good faith user to gain rights in the mark in an area into which the registrant's trade had not extended. To have held otherwise would have given federal registration the effect of a grant, a grant to the registrant of trade-mark rights beyond the common law rights he had acquired by use.

Clearly the case before us presents a different aspect of constructive notice. As has been pointed out many times in the past, the Patent Office and this court pass upon the statutory question of the registrability of trade-marks and not upon the common law right...