Wilson v. Hecht

44 App. D.C. 33, 1915 U.S. App. LEXIS 2669

• Court: Court of Appeals for the D.C. Circuit
• Decided: June 1, 1915
• Docket: No. 971
• Status: Published

Opinion

Mr. Justice Van Orsdel

delivered the opinion of the Court:

Opposer seems to base her case upon the false hypothesis that under the copyright and design patent she has secured title to the name. It is well settled that the owner of the thing copyrighted acquires through the copyright no property in the name by which it is designated. “Neither the author nor proprietor of a literary work has any property in its name. It is a term of description, which serves to identify the work; but any other person can with impunity adopt it, and apply it to any other book, or to any trade commodity, provided he does not use it as a false token, to induce the public to believe that the thing to which it is applied is the identical, thing which it originally designated. If literary property could be protected upon the theory that the name by which it is christened is equivalent to a trademark, there would be no necessity for copyright laws.” Black v. Ehrich, 44 Fed. 793. Nor is the opposer in better position under her design patent. The figure is what was patented, and the name by which it is designated forms no part of the patent.

Conceding, as we must, the truth of the allegations contained in the notice of opposition, the opposer has totally failed to bring herself within the protection of the statute. It is unnecessary to consider in how far the name “Kewpie” and the thing copyrighted and patented are equivalents, or in how far the word “Kewpie” may be applied to goods of the same general description as those protected by opposer’s copyright and design patent without constituting infringement, since opposer is not in position to object to the trademark use of the word by applicant. She is engaged in the business of granting licenses, and it clearly appears that neither she nor her licensees have ever used the word “Kewpie” or the figure as a tradename or trademark for children’s clothing.

The mere allegation that she has licensed a third party to apply the name “Kewpie” and the figure thereof as a trademark or otherwise, “to clothing and specifically to children’s washable suits of pajamas and nightrobes,” establishes no ground of opposition against a person already using the name as a trademark for the same class of goods. In Battle Creek Sanitarium Co. v. Fuller, 30 App. D. C. 411, Chief Justice Shepard, speaking for the court, said: “The allegation is that the opponent ‘uses in its advertising matter the words “Health Food” or words of similar purport,’ and has so used them for about twenty-eight years. No trademark right grows out of the mere invention or discovery of the word or symbol, but out of its use as such. Trademark Cases, 100 U. S. 82, 94, 25 L. ed. 550, 551. To constitute a trademark use, the mark must be attached or applied to the goods. Columbia Mill Co. v. Alcorn, 150 U. S. 460, 464, 37 L. ed. 1144, 1146, 14 Sup. Ct. Rep. 151. Property in it can only be acquired by the actual application of it to goods of a certain class, so that it serves to indicate the origin of the goods, that is to say, identify, them with the particular manufacturer or trader, and to distinguish them from similar goods. United States v. Braun, 39 Fed. 775; 28 Am. & Eng. Enc. Law, p. 346. The mere advertisement of the words or symbol without application to the goods themselves is insufficient to constitute a trademark.”

It logically follows that an opposer must show a legal damage to authorize him to oppose successfully the registration of a trademark. While the provision of sec. 6 of the trademark act (33 Stat. at L. 726, chap. 592, Comp. Stat. 1913, sec. 9491), permitting “any person who believes he wouldhe damaged by the registration of a mark” to oppose the same by filing a notice of opposition, is very broad, it has been steadfastly held that the opposer must establish an injury of a legal -character. McIlhenny v. New Iberia Extract of Tobasco Pepper Co. 30 App. D. C. 337; Battle Creek Sanitarium Co. v. Fuller, supra; Underwood Typewriter Co. v. A. B. Dick Co. 36 App. D. C. 175; Tim & Co. v. Cluett, P. & Co. 42 App. D. C. 212. In the Battle Creek Case, the rule is concisely stated as follows: “It is not sufficient for the opponent to say that he believes he would be damaged. He must allege some fact showing an interest in the subject-matter from which damage might be inferred. If he has not used the mark as a trademark upon goods of a like description, he can suffer no damage from its registration by another.”

Opposer’s difficulty consists in failing to distinguish between a copyright or design patent and a trademark. The mere fact that through her literature she has given publicity to this imaginary being called “Kewpie,” and by her inventive genius has created a figure for which she has secured a design patent, accords her no trademark right.'in the name by which this imaginary being is designated. It would hardly be contended, for illustration, that the owner of a copyright on a picture called “Uncle Tom’s Cabin” would be heard to object to the use of that title by another as a trademark for whisky. Before opposer can be heard, therefore, it must appear that she had used the figure or word “Kewpie” as a trademark on goods of the same descriptive properties as the goods of applicant to which the mark is applied, and at a date prior to its use by applicant. In this she totally fails.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed.