Application of International Nickel Company, Inc

282 F.2d 952, 48 C.C.P.A. 701

• Court: Court of Customs and Patent Appeals
• Decided: November 3, 1960
• Docket: Patent Appeal 6392
• Status: Published

Opinions

WORLEY, Chief Judge.

The parties agree that one purpose of the Trade-Mark Act of 1946, popularly known as the Lanham Act, was to rid the Patent Office of trademarks that were not being used. To effect that result Congress incorporated Section 8 which, in pertinence, reads:

Section 8(b). “Cancellation of republished prior registrations unless affidavit of use filed

“Any registration published under the provisions of subsection (c) of section 12 of this Act shall be canceled by the Commissioner at the end of 6 years after the date of such publication unless within 1 year next preceding the expiration of such 6 years the registrant shall file in the Patent Office an affidavit showing that said mark is still in use or showing that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark” (15 U.S.C. § 1058(b), 15 TJ.S.C.A. § 1058(a)). (Italics supplied.)

Patent Office Rule 2.162(b), Rules of Practice in Trade-Mark Cases, 15 U.S. C.A. Appendix, which is not challenged, requires that “A specimen or facsimile showing the mark as currently used should be submitted with and referred to in the affidavit.”

The record shows that appellant has separately registered two trademarks. One is “Ni-Tensyl” for use on “Nickel-Containing Iron Castings.” The other is “Ni-Tensyliron,” also for use on “Nickel-Containing Iron Castings.” Although the registration directly involved in this appeal is the mark “Ni-Tensyl,” the specimen label submitted with the affidavit is “Ni-Tensyliron.” Both the examiner and Commissioner, through the Assistant Commissioner, held that use of the latter did not constitute trademark use of the former within the meaning of Section 8. The correctness of that holding is the sole issue here. That, in turn, depends on what Congress intended Section 8 to accomplish, and particularly what it intended the words “said mark is still in use” to mean. It is the Congress, of course, which makes the policy and writes the law. It is our responsibility to construe the law harmoniously with the Congressional purpose. Here, there is ample evidence of legislative history supplied by counsel that Congress intended to eliminate the trademark “deadwood” in the Patent Office, but there is no indication it intended the words “said mark is still in use” to have any unusual or extraordinary meaning.

Basic to the various arguments advanced by appellant is, in appellant’s words, “that the word ‘iron’, in essence, neither adds to nor detracts from the mark ‘Ni-Tensyl’, particularly in view of the unequivocal fact that the goods bearing the trademark are iron castings” ; arguing therefrom that “Ni-Tensyl” and “Ni-Tensyliron” are one and the same within the meaning of Section 8.

We are unable to reconcile that theory with our understanding of the language in Section 8. “Said mark” here is “NiTensyl,” nothing more. Yet appellant contends that it continues to be “said mark” despite addition of new matter which so changes its sound, appearance, spelling, and meaning as to result in a different word. That argument does not impress us as being literally, logically, or, as we read Section 8, legally, sound. That appellant, at least at one time, also thought the two marks were different is best evidenced by its troubling to separately register each mark. And to hold, as appellant would have us do, that “NiTensyl” perpetuates its identity as “said mark” and “still in use” by merely incorporating it into “Ni-Tensyliron” is, we fear, a sure way to stretch Section 8 into such a trademark Mother Hubbard as to defeat the clear purpose of that section. We assume appellant’s argument would be the same if the marks were, for example, “Ni-Tensyl” and “NiTensylironcontainingnickel,” respectively.

Appellant urges this court to give Section 8 a “strict” interpretation and attempts to support that position by stating:

“Section 8 was not enacted to place a confiscatory weapon in the hands of the Patent Office whereby it would be in a position to snuff out the rights of a trademark proprietor. Thus, this section should be construed strictly not only because it involves a penalty, but also because a holding that Appellant’s trademark is not in use would throw a cloud over and cast doubts around Appellant’s common-law rights in and to its mark. Section 8 has been interpreted by the Patent Office in derogation of Appellant’s common-law rights and such construction, it is respectfully submitted, is contrary to established and controlling legal principles and authorities.”

There are several answers to that argument. First, in the absence of convincing evidence of a contrary Congressional intent, it is our duty to give words their usual and ordinary meaning. It is not for us to substitute our views of what we might think Congress should have said for what Congress actually said. Here, appellant fails to establish any valid reason for giving the involved section a “strict,” as opposed to what we assume would be the opposite, or “liberal,” construction. It must be remembered that the purpose of Section 8 is to eliminate the trademark deadwood cluttering the Patent Office files.

Second, we agree with appellant that Section 8 was not enacted to place a confiscatory weapon in the hands of the Patent Office. It is merely a valid exercise of Congressional authority in pursuit of a legitimate aim.

Third, we are aware of no authority, and appellant cites none, by which Section 8 would affect appellant’s right to use as distinguished from its statutory right to register.

Section 8 merely lays down the ground rules for those trademark owners interested in keeping their registrations alive. It also, and we think quite considerately, makes provision for showing a satisfactory excuse for non-use. Here, if the mark for which renewal is sought had still been in use, it should have been no problem for appellant to have satisfied the statute; or, if not still in use, to have accepted the invitation to show cause for non-use. Since neither was done the mark must be considered as a part of the trademark deadwood Congress intended to eliminate. We see no other conclusion consistent with the evident Congressional purpose.

The Patent Office actions regarding other matters which have arisen under Section 8, to which appellant directs our attention, are interesting but hardly controlling here. Neither is Continental Distilling Corp., 254 F.2d 139, 45 CCPA 863, which involved a different set of facts, sufficiently in point to control here. Each case must be decided on the basis of its own facts. The decision is affirmed.

Affirmed.