A. Leschen & Sons Rope Co. v. American Steel & Wire Co.

55 F.2d 455, 19 C.C.P.A. 851, 1932 CCPA LEXIS 37

Opinions

BLAND, Associate Judge.

This is an appeal from the decision of the Commissioner of Patents of the United States Patent Office in a trade-mark opposition proceeding, in which the Commissioner reversed the decision of the Examiner of Interferences and held that he erred in sustaining the opposition and in adjudging that the applicant was not entitled to register.

The applicant’s mark is for use on wire rope, and consists of a silver strand which ' is incorporated in the rope during its manufacture, and applicant alleges use of the same since March 14, 1922. In its application, it states that “No claim is made herein to the registration ‘ of the representation of the wire rope.” ■

Upon this record there is some little confusion as to what kind of mark opposer relies upon. In its “Grounds of Opposition” it seems to rely upon a mark consisting of “a helical band of distinctive color applied thereto, such mark being usually applied by painting one of the strands of said rope.” It does not definitely set up its registered trade-mark which is described in one of the decisions, hereinafter referred to, in the following language: “Trade-mark consisting of a red or other distinctively colored streak applied to or woven- in a wire rope. The color of the streak may be varied at will, so long as it is distinctive from the color and body of the rope. The essential feature of the trade-mark is the streak of distinctive color produced in or applied to a wire rope. This mark is usually applied by painting one strand of the wire rope a distinctive color, usually red.”

The third ground of appellant’s opposition is to the effect that, by reason of its marking its wire rope as aforesaid, its product has become widely known as “Colored Strand” wire rope, and it is presumed that the appellant implied that its mark had acquired a secondary meaning. It is unnecessary for us to consider this phase of the case, since the record is barren of -any evidence tending to establish such fact, and the allegation was denied in the answer to the opposition.

In its answer, appellee makes the following statement: “Applicant denies that Op-poser is the owner of a trade-mark as described in Paragraph 2 of its notice of opposition broadly as a helical band of distinctive color, but admits that Opposer has applied to its wire rope continuously for many years a mark distinguished by painting red one of the strands of said rope.”

In the agreed statement of facts it is said: “It is agreed * * * that the said A. Leschen & Sons Rope Company has marked wire ropes or cables of its manufacture with a helical stripe of uniform width and distinctive color produced by painting one of the strands of the rope red and has done this continuously for a period long antedating the use by said The American Steel and Wire Company of New Jersey of the mark claimed in its present application'for registration; and has used this mark as its trade-mark.”

The Commissioner of Patents treated the opposer’s mark as one which “consists of the use of a red strand in a rope of like construction” to that of appellee. The Examiner of Interferences evidently did the same inasmuch as he remarks: “The goods of the parties are the same, namely wire rope, and the difference in the marks used •by the parties is merely one of color.”

The Examiner of Interferences said that the same question had been considered in A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Company, 36 App. D. C. 451, 454, and A. Leschen & Sons Rope Company v. American Steel & Wire Co. of New Jersey, 36 App. D. C. 456, and concluded that these cases decided the issue and that he was bound thereby, and sustained the opposition.

The Commissioner of Patents regarded the cases of A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Company, 201 ü. S. 166, 26 S. Ct. 425, 50 L. Ed. 710; Samson Cordage Works v. Puritan Cordage Mills (C. C. A.) 211 F. 603, L. R. A. 1915F, 1107, and A. Leschen & Sons Rope Company v. Puller et al. (C. C. A.) 218 P. 786, as controlling, and said: “Now, if the opposer’s mark, by being limited to a red stripe or strand, permits the use by others of wire ropes with strands 'of other colors, then it would seem to follow that the applicant has the right to use its silver strand as a trade-mark, notwithstanding the opposer’s red strand trade-mark; and, if the applicant possesses the right to use its silver strand, no good reason is apparent why said mark should not be registered.”

• In addition to the above-quoted statement by the Commissioner, his decision contains the following: “If it were assumed, however, that a yellow strand so nearly resembles a red strand, when they are used to identify wire cables as to their origin or ownership, as to be likely to cause confusion or mistake in the mind of the public, still it is believed that such resemblance does not exist as between the applicant’s silver strand and the opposer’s red strand.”

We do not agree with the correctness of the statement, “if the applicant possessed the right to use its silver strand, no good reason is apparent why said mark should not be registered,” nor can wo concur in the finding that there is such a difference between a yellow strand and a silver strand as to justify the conclusion reached by the Commissioner.

In A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 S. Ct. 425, 426, 50 L. Ed. 710, the court had before it the sole question as to whether or not appellant’s registered mark, which in that instance consisted of any “distinctively colored streak applied to or woven in a wire rope,” was a valid mark. It held that appellant’s registered trade-mark covered all colors and was too broad to be valid, and intimated that it might have been held valid if the trade-mark had been limited to painting one strand red, and said: “It is true that the drawing annexed to the registration, a copy of which is here given, as well as the exhibits furnished, show one of the strands colored red; and if the trademark were restricted to a strand thus colored, perhaps it might be sustained; but the description of a colored streak, which would be answered by a streak of any col- or painted spirally with the strand, longitudinally across the strands, or by a circular streak around the rope, was held by both courts, and we think properly, too indefinite to be the subject of a valid trademark. Certainly a trademark could not be claimed of a rope, the entire surface of which was colored; and if color be made the essential feature, it should be so defined, or connected with some symbol or design, that other manufacturers may know what they may safely do. Upon the plaintiff’s theory, a wire rope containing a streak of any description or of any color would be an infringement, and a manufacturer honestly desiring to distinguish his wire rope from that of the plaintiff’s by difference in color might, by adopting a white streak running along the length of the rope across the strands, find himself an infringer, when his real object may have been to obtain a mark which would distinguish his manufacture from that of the plaintiff’s. Even if it were conceded that a person might claim a wire rope colored red or white, or any other color, it would clearly be too broad to embrace all colors. So, although it might be possible to claim the imprint of a colored figure on a wire rope, the figure should be so described that other manufacturers would know how to avoid it. If the trademark be a colored streak, it should be, at least, described, and a statement of the mode in which the same is applied and affixed to the rope; and a trademark which may be infringed by a streak of any color, however applied, is manifestly too broad.” (Italics quoted.)

It will be noticed that a red strand trademark was not before the Supreme Court, and necessarily its conclusions on that subject, intimating that a certain, definite, colored strand might be the subject-matter of a valid trade-mark, and that any other col- or which distinguished the goods of another might be the basis of a valid trade-mark, is not regarded as binding or controlling of our action in this case. It was not regarded as controlling, in an almost identical case between the same parties at bar, by the Court of Appeals of the District of Columbia, our predecessor in our present patent and trademark jurisdiction, in A. Leschen & Sons Rope Company v. American Steel & Wire Co. of New Jersey, supra., and also in A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Co., supra.

In A. Leschen & Sons Rope Company v. Broderick & Bascom Rope Co., supra, the Court of Appeals had before it the red strand trade-mark of appellant and the yellow strand trade-mark of the Broderick & Bascom Rope Company. It held, in an opinion by Mr. Justice Robb, that the Supreme Court’s decision holding invalid a registered trade-mark “does not deprive such owners of any property right which they may have acquired by the actual use of a good trademark” [Italics ours], and said: “The opinion of the Supreme' Court went no further than to deprive the present application of the presumption of ownership which a good registration would have afforded it.”

Further along in the opinion, we find the following clear and forceful language: “We come now to the consideration of the question whether the two marks here involved are sufficiently alike as 'to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.’ 33 Stat. at L. 724, chap. 592, U. S. Comp. Stat. Supp. 1909, p. 1275 [15 ÜSCA §§ 81-109]. The only difference in the marks is that of col- or. They are both used upon wire rope, and are both applied in substantially the same manner. It is admitted that appellant has used its mark for more than twenty years, and if this were a case of unfair competition there would be little doubt as to appellant’s right to relief, for while color, generally speaking, is not a proper subject of a trademark, a rival dealer may not appropriate another’s mark by merely changing its color. It is manifest that if appellee is entitled to use precisely the same mark as that used by appellant, but colored yellow instead of red, every color of the rainbow may be appropriated by other wire rope manufacturers, and may be similarly applied. Such a result, in our opinion, would lead to no end of confusion, the value of appellant’s mark would be destroyed, and the purchasing public would be liable to imposition. The Patent Office has held that there is no conflict between the two marks, and the appellee insists that the evidence fails to show such a conflict; but both marks are before us, and, in the language of the circuit court of appeals for the eighth circuit, 'the evidence of the eyes is more persuasive and satisfactory than any other.’ Layton Pure Food Co. v. Church & D. Co., 104 C. C. A. 464, 182 F. 24.”

On the same date, the Court of Appeals of the District of Columbia handed down the Broderick Case, supra, it decided A. Leschen & Sons Rope Co. v. American Steel & Wire Co. of New Jersey, supra; the parties to which latter suit are the same as in the ease at bar. In this ease, the Leschen mark was the same red strand mark as in the case at bar. The American Steel & Wire Company sought to register a trade-mark which consisted of a strand of rope colored blue. The Commissioner of Patents had awarded registration to the appellee, and, following its decision in the Broderick Case, supra, the Court of Appeals reversed the decision of the Commissioner.

It is contended here by appellant that the decision of the Court of Appeals of the District of Columbia (this court being the legal successor of such court) in the case of A. Leschen & Sons Rope Co. v. American Steel & Wire Co. is res adjudieata of the issues before us. The parties are the same, but the trade-marks are different, and we would not be justified in applying the doetrine of res adjudieata; but we do feel that the reasoning and conclusions in the two decisions of the District of Columbia Court of Appeals are sound and in entire harmony with the decisions of this court in other cases, and should tie followed in the decision of this case.

We have said that, in determining the right of an applicant to register a trademark, it is not necessary for us to pass on the validity of the opposer’s mark (California Canneries Co. v. Lush’us Products Co., 49 F.(2d) 1044, 18 C. C. P. A. 1480, 1483), and that under the same circumstances the validity of the registration of the opposer’s mark was not before us. Revere Sugar Refinery v. Joseph C. Salvato, 48 F.(2d) 400, 18 C. C. P. A. 1121, 1123; Lufkin Rule Co. v. Master Rule Mfg. Co., 40 F.(2d) 991, 17 C. C. P. A. 1227, 1230. In a number of cases we have held, in substance, that, in urging the registrability of an applicant’s mark, it was not helpful to point out that others had used the same mark as that of opposer as a trade-mark. Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 17 C. C. P. A. 906; National Biscuit Co. v. Sheridan, 44 F.(2d) 987, 989, 18 C. C. P. A. 720; California Packing Corp. v. Tillman & Bendel, Inc., 40 F.(2d) 108, 17 C. C. P. A. 1048, 1057.

As we view it, in the light of the foregoing authorities, it is not necessary in deciding the issue at bar to pass upon the validity or the registrability of appellant’s mark or the rights of others to use the same or similar marks, and we confine ourselves to the sole question of the applicant’s right to register.

The right to oppose the registration of a trade-mark is by statute (15 USCA § 86) given to “Any person who believes he would bo damaged by the registration of a mark.” We have been required, on at least one occasion, to decide who may oppose the registration of a mark, and held in Bookman v. Oakland Chemical Co., 46 F.(2d) 1006, 17 C. C. P. A. 1213, that the “right to oppose registration of trade-mark is not limited to those possessing exclusive ownership of similar mark. * * * ”

The right to use a trade-mark does not necessarily carry with it the right to register the same. In National Biscuit Co. v. Sheridan, supra, this court said: “True enough, we have said, in substance, that a trade-mark which cannot be defended in the common law is not entitled to registration, but this is not saying that all trade-marks which can be defended in the common law, in view of the wording of the statute, are entitled to registration.”

Because of the acts of the parties, one might acquire the right to use a mark and could not tie prevented from using it, even though confusion in the trade resulted from such use. The second proviso of section 5 (b) of the Trade-Mark Act of February 26, 1965, as amended (15 USCA § 85, subd. b, proviso 2), was designed to prevent confusion and not to promote or add to it. In re S. C. Herbst Importing Co., 36 App. D. C. 297, 298; Goodrich Co. v. Hockmeyer, 46 F.(2d) 99, 17 C. C. P. A. 1668; Celotex Co. v. Bronston Bros. & Co., 49 F.(2d) 1648, 18 C. C. P. A. 1490.

Since Congress has been given no power to legislate on the substantive law of trade-marks (American Steel Foundries v. Robertson, 269 U. S. 372, 46 S. Ct. 160, 70 L. Ed. 317), it would seem to follow that it did not have the right to enact legislation which, in every instance, would prevent confusion in the trade in the use of trademarks. But it cannot be doubted that it had the constitutional right to provide a federally controlled place of registration and to deny registration therein, where confusion would likely result to the trade from the trade-mark use of such registered marks. National Biscuit Co. v. Sheridan, supra. See, also, California Packing Corp. v. Tillman & Bendel, supra, California Canneries Co. v. Lush’us Products Co., supra, and Sun-Maid Raisin Growers of Calif, v. American Grocer Co.-, 17 C. C. P. A. 1634, 46 F.(2d) 116.

The Commissioner concluded that a silver strand trade-mark would distinguish the goods of one. from the goods of another using a red strand trade-mark, where the only difference in the marks was color, and that the first part of section 5 of the Trade-Mark Act (15 USCA § 85), supra, providing that “no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration” etc., required a registration un der such circumstances. The quoted provision from the first part of section 5 must be read in connection with the second proviso (15 USCA § 85, subd. b, proviso 2). I. E. Palmer Co. v. Nashua Mfg. Co., 17 C. C. P. A. 583, 34 F.(2d) 1002; California Packing Corp. v. Tillman & Bendel, Inc., supra; Goodrich Co. v. Hockmeyer, supra; Sun-Maid Raisin Growers of California v. American Grocer Co., supra. By construing the two provisions together, registration is required only when the mark sought to be registered so distinguishes the goods of the owner from the goods of the other that confusion is unlikely.

We do not think there is much less likelihood of confusion between a silver strand arid a red strand than was held to exist between a red strand and a blue or yellow strand. Since color alone in the mark is the only distinguishing feature, we think that the probability of confusion is great.

The weight of authority is to the effect that a mark is not registrable if color alone is its distinguishing characteristic. In re General Petroleum Corp. of California, 18 C. C. P. A. 1444, 49 F.(2d) 966, and authorities cited; In re Sun Oil Co., 49 F.(2d) 965, 18 C. C. P. A. 1421; In re Walker-Gordon Laboratory Co., 53 F.(2d) 548, 19 C. C. P. A.-(Patent Appeal No. 2813, decided December 7, 1931). It seems clear that before one trade-mark can be registered over the opposition of the owner of another for use on goods of the same descriptive properties, the applicant’s mark must show dissimilarity other than color.

It may be pointed out that the trademarks of both appellant and appellee are not such as are only distinguishable by color; that is to say, that the color is arranged in a particular way. As far as the question of confusion is concerned, this fact is immaterial, since both parties seek to apply their color in the same manner, and both marks present the same appearance except as to color.

The decision of the Commissioner of Patents is reversed.

Reversed.