Swingline, Inc. v. I. B. Kleinert Rubber Company

Customs and Patent Appeals

Swingline, Inc. v. I. B. Kleinert Rubber Company

399 F.2d 283, 55 C.C.P.A. 1486, 158 U.S.P.Q. (BNA) 341, 1968 CCPA LEXIS 268

CourtCourt of Customs and Patent Appeals

DecidedJuly 18, 1968

DocketPatent Appeal 7865

StatusPublished

Cited by6 cases

This text of 399 F.2d 283 (Swingline, Inc. v. I. B. Kleinert Rubber Company) 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

Swingline, Inc. v. I. B. Kleinert Rubber Company, 399 F.2d 283, 55 C.C.P.A. 1486, 158 U.S.P.Q. (BNA) 341, 1968 CCPA LEXIS 268 (ccpa 1968).

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Opinions

SMITH, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board,¹ dismissing appellant’s opposition to ap-pellee’s application to register the trademark “SWINGLINE” for dress shields composed of rubber and cotton and designed for dresses having cap sleeves with a Y-shaped underarm.² Appellant’s opposition was based upon its prior use and registration of the same mark on office cabinets and display cabinets; stapling machines, tackers and pliers; staples; electric stapling machines; binder clips, index tabs, rubber finger tips, paper fasteners, file fasteners and folders for binding and holding papers together; staple removers; and other like goods.³ The board concluded that simultaneous use of the mark in issue on the respective goods of the parties is not likely to cause confusion. This appeal followed.

After appellant had filed its brief in this court, the parties entered into a stipulation wherein the appellee consented to withdraw its application for registration with prejudice and agreed that the opposition should be sustained in all respects. Appellee further agreed not to utilize the mark on any goods whatsoever, except for a one-year period following the agreement, to permit disposal of its material bearing the contested mark.

Subject to appellee’s compliance with the terms of the stipulation, appellant agreed to grant to appellee a full and complete release of any claims which it had or may have had against the appellee before the date of the stipulation for appellee’s use of “SWING-LINE.”

On the basis of this stipulation, appellant moved in this court to dispose of the present appeal by an order drafted in accordance with the terms of the stipulation. The Patent Office Solicitor, although the Commissioner was not a party to the action, opposed this disposition of the appeal and argued that the decision of the board could not be reversed by an agreement between the parties. This motion to dispose of the appeal was denied on the ground that certain of the contents of the proposed “Stipulation and Order” were outside the jurisdiction of the court.

It is true that this court will not act on the merits of an appeal on the stipulation of the parties. Here, however, the appellant advised the court on argument that all of the issues involved in the appeal had been rendered moot in view of the earlier agreement between the parties settling the entire controversy. A stipulation to this effect was already on file in this cause. We agree that the appeal is moot. This court, therefore, has no jurisdiction to pass upon the legal questions involved for lack of a justiciable issue. The appellant on argument left the disposition of the case entirely with the court. The question is a novel one for this court. We believe it clear, however, that the appropriate action in such cases is to vacate the judgment previously rendered and remand the case for such further action as is appropriate in the [285]*285light of the settlement. This would effectively prevent the judgment below from becoming a precedent.

It is therefore ordered that the judgment of the Trademark Trial and Appeal Board be vacated and this cause be, and the same is hereby remanded to the Patent Office to permit the appellee to withdraw his application for registration with prejudice, and for any other and further proceedings as may be necessary in the premises. *■ • ■ ■ ■

Vacated and remanded.

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SMITH, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board,¹ dismissing appellant’s opposition to ap-pellee’s application to register the trademark “SWINGLINE” for dress shields composed of rubber and cotton and designed for dresses having cap sleeves with a Y-shaped underarm.² Appellant’s opposition was based upon its prior use and registration of the same mark on office cabinets and display cabinets; stapling machines, tackers and pliers; staples; electric stapling machines; binder clips, index tabs, rubber finger tips, paper fasteners, file fasteners and folders for binding and holding papers together; staple removers; and other like goods.³ The board concluded that simultaneous use of the mark in issue on the respective goods of the parties is not likely to cause confusion. This appeal followed.

After appellant had filed its brief in this court, the parties entered into a stipulation wherein the appellee consented to withdraw its application for registration with prejudice and agreed that the opposition should be sustained in all respects. Appellee further agreed not to utilize the mark on any goods whatsoever, except for a one-year period following the agreement, to permit disposal of its material bearing the contested mark.

Subject to appellee’s compliance with the terms of the stipulation, appellant agreed to grant to appellee a full and complete release of any claims which it had or may have had against the appellee before the date of the stipulation for appellee’s use of “SWING-LINE.”

On the basis of this stipulation, appellant moved in this court to dispose of the present appeal by an order drafted in accordance with the terms of the stipulation. The Patent Office Solicitor, although the Commissioner was not a party to the action, opposed this disposition of the appeal and argued that the decision of the board could not be reversed by an agreement between the parties. This motion to dispose of the appeal was denied on the ground that certain of the contents of the proposed “Stipulation and Order” were outside the jurisdiction of the court.

It is true that this court will not act on the merits of an appeal on the stipulation of the parties. Here, however, the appellant advised the court on argument that all of the issues involved in the appeal had been rendered moot in view of the earlier agreement between the parties settling the entire controversy. A stipulation to this effect was already on file in this cause. We agree that the appeal is moot. This court, therefore, has no jurisdiction to pass upon the legal questions involved for lack of a justiciable issue. The appellant on argument left the disposition of the case entirely with the court. The question is a novel one for this court. We believe it clear, however, that the appropriate action in such cases is to vacate the judgment previously rendered and remand the case for such further action as is appropriate in the [285]*285light of the settlement. This would effectively prevent the judgment below from becoming a precedent.

It is therefore ordered that the judgment of the Trademark Trial and Appeal Board be vacated and this cause be, and the same is hereby remanded to the Patent Office to permit the appellee to withdraw his application for registration with prejudice, and for any other and further proceedings as may be necessary in the premises. *■ • ■ ■ ■

Vacated and remanded.

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399 F.2d 283, 55 C.C.P.A. 1486, 158 U.S.P.Q. (BNA) 341, 1968 CCPA LEXIS 268, Counsel Stack Legal Research, https://law.counselstack.com/opinion/swingline-inc-v-i-b-kleinert-rubber-company-ccpa-1968.

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