Cummins Engine Company, Inc. v. Continental Motors Corporation

359 F.2d 892, 53 C.C.P.A. 1167
CourtCourt of Customs and Patent Appeals
DecidedMay 12, 1966
DocketPatent Appeal 6961
StatusPublished
Cited by16 cases

This text of 359 F.2d 892 (Cummins Engine Company, Inc. v. Continental Motors Corporation) is published on Counsel Stack Legal Research, covering Court of Customs and Patent Appeals primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Cummins Engine Company, Inc. v. Continental Motors Corporation, 359 F.2d 892, 53 C.C.P.A. 1167 (ccpa 1966).

Opinions

MARTIN, Judge.

This is an appeal from decisions of the Trademark Trial and Appeal Board1 granting a petition to cancel Reg. No. 629,304 for “TURBODIESEL,” issued June 19,1956 on the Supplemental Register for internal combustion engines and parts thereof.2 Cummins Engine Co. (Cummins) owns the mark.

The parties are competitors in the manufacture and sale of internal combustion engines of the compression ignition type, namely, diesel engines, and particularly diesel engines having an exhaust driven turbine supercharger. Continental- petitioned for cancellation of Cummins’ registration on the grounds, inter alia, that the word “turbodiesel,” composed from individually generic words “turbine” (in its combining form “turbo”) and “diesel,” is “incapable of properly denoting origin of manufacture, and is therefore without trademark significance.” Continental (petitioner-ap-pellee) also alleges that “turbodiesel” has been used as “generically descriptive” of such type of engines prior to December 20, 1954, the date of first use alleged by respondent-appellant Cummins in the trademark registration.

While the main issue here is whether “turbodiesel” is incapable of distinguishing appellant’s goods and thereby barred from registration under section 23 of the 1946 Lanham Trade-Mark Act, 15 U.S.C. § 1091, we are presented with a preliminary issue of which of appellee’s 351 documentary exhibits properly can be considered by us in resolution of the main issue.

Appellant Cummins’ initial application of February 17, 1955 sought registration on the Principal Register. Registration was refused by the examiner on the ground that the mark was merely descriptive. Following final refusal and just prior to expiration of the time in which to appeal, appellant sought to amend the application to convert to registration on the Supplemental Register, [894]*894pursuant to then Rule 13.5. The paper seeking to amend, signed only by the attorney, was filed December 22, 1955, but being apparently delayed within the Patent Office, was given a date of May 17, 1956. A conversion amendment signed by applicant (appellant) was also submitted on January 5, 1956. The prosecution proceeded in due course with issuance of the registration followed by the cancellation proceeding and a board decision (fully reported at 132 USPQ 557), that was timely appealed to this court. The board, upon consideration of evidence up to May 17, 1956, held, inter alia, that “as the common descriptive name for a particular kind or class of engines, ‘TURBODIESEL’ falls within the category of words, symbols and devices which are not subject to exclusive appropriation as trademarks” and it, therefore, granted the petition for cancellation.

Subsequently there was much prosecution history concerning which conversion date appellant is to be accorded.3 Appellant has dropped all attempts to be accorded the date of February 17, 1955, to which it would have been entitled had the original application conformed to then Rule 13.5 as sufficient for registration on the register to which converted. The argument is over whether the December 22, 1955 or January 5, 1956 date is the conversion date, and consequently whether we are to consider an additional two exhibits having dates falling between December 22 and January 5. Appellant urges December 22, 1955 as the proper date, stating:

* * * Despite a ruling to the contrary by the Commissioner of Patents (Supp. Tr. 25), Appellant believes that the effective filing date of its registration should be December 22, 1955, which would remove these two exhibits [advertisements by Waukesha Motor Co. employing the term “TURBODIE-SEL”] from consideration under Seetion 24 of the Trademark Act of 1946 [15 U.S.C. § 1092],

We find it unnecessary to decide that issue since we assume arguendo the correct date to be December 22, 1955, yet find in the remaining 32 prior exhibits in the record abundant evidence indicating the mark in issue is incapable of distinguishing appellant’s goods, pursuant to section 24.

We rely primarily upon the 1935 Funk & Wagnalls New Standard Dictionary definitions of “turbine,” its combining form “turbo,” and of “diesel,” and a March 1953 “Flight” magazine article, all of which are reproduced in the board’s decision as reported, 132 USPQ at 557. In our view, the definitions alone indicate that “turbodiesel” is a word which by its nature will convey a specific and correct meaning which is such that it cannot become a trademark as a result even of origination and first use. See Scholler Bros. v. Hans C. Bick, Inc., 110 USPQ 431 (Com’r Pats. 1956). The term “turbodiesel,” as we see it, is a natural composite form for a class of engines into which appellant’s engines fall. We recognize that the engines to which the term has been applied by appellant are not turbines plus diesels, but diesel engines having exhaust driven turbine superchargers. However, it is not required that the name precisely describe and define the goods in order to be incapable of registration under section 23. We think “turbodiesel,” to be naturally and adequately nominative of engines having exhaust driven turbine superchargers.

In March 1953, the “Flight” magazine referred specifically to the names “turbo-C.I.” and “turbo-diesel” and raised the question as to which name would be applied to a “Nomad compounded engine,” as follows:

No class name has yet been given to the Nomad compounded engine — in time such names as turbo-C.I. (which [895]*895is used in our leading article) or turbo-diesel, may find approval.

The Nomad engine pictured and discussed in “Flight” magazine is a diesel engine with a gas turbine. Its performance is compared with a turbojet, a turboprop and a piston engine, and comparative statistics are given. We view that use of the term “turbodiesel” as exemplary of the view we have expressed above, that such term would be recognized as a natural composite term for designating such engines.

We consider the following cases, among others, to support our view herein: In re Bailey Meter Co., 102 F.2d 843, 26 CCPA 1136; Ex Parte Bailey Meter Co., 93 USPQ 179 (Com’r Pats. 1952); Ex parte Bailey Meter Co., 93 USPQ 385 (Com’r Pats. 1952); Bailey Meter Co. v. Watson, 122 F.Supp. 627 (D.C.D.C.1954); Ex parte Le Blond, 98 USPQ 416 (Com’r Pats. 1953); Ex parte The Texas Co., 12 USPQ 58 (Com’r Pats. 1932), and Scholler Bros., supra. We do not find the term here to be such a deviation from a natural usage or an unusual unitary combination as to permit registration, in contrast to the terms in In re Ada Milling Co., 205 F.2d 315, 40 CCPA 1076, and Alumatone Corp. v. Vita-Var Corp., 183 F.2d 612, 37 CCPA 1151.

Appellant also questions the right of appellee to petition for cancellation of this mark because appellee was not using the term as a trademark nor did it comtemplate doing so, and alleging that under these circumstances appellee had not been damaged. We think the statute provides appellee’s standing in this cancellation proceeding. Section 24 states, in pertinent part:

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
359 F.2d 892, 53 C.C.P.A. 1167, Counsel Stack Legal Research, https://law.counselstack.com/opinion/cummins-engine-company-inc-v-continental-motors-corporation-ccpa-1966.