Johnson v. Brandau

Mr. Chief Justice Shepard delivered the opinion of the Court: The word “asbestos” is clearly descriptive of the goods manufactured by each party. Being descriptive, its registration as a trademark is prohibited by the statute. It is therefore open to use by the public at will, subject, of course, to such limitations as may be imposed by the courts in cases involving unfair ■competition. The opposer in this case is not attempting to secure registration of the word for himself. Claiming to have used it as a tradename prior to its adoption by the applicant, and to have built up a considerable trade in his goods, he opposes its registration as an exclusive trademark, under sec. 6 of the statute, as a “person who believes he would be damaged by the registration.” If registration be allowed, it becomes prima facie evidence of the applicant’s ownership of it as a valid trademark, under sec. 16 of the act, in any action which he may institute against the op-poser or others who may use the word as a general tradename for similar articles of goods. Having used the word as such a tradename, although not entitled to ownership of it as a trademark, we think it is permissible for the opposer to make opposition to the registration by the applicant. Kentucky Distilleries & Warehouse Co. v. Old Lexington Club Distilling Co. 31 App. D. C. 223, 228. We come now to the question whether the registration applied for amounts to the registration of the word “asbestos” as the trademark, or as an essential feature of the trademark. The Examiner of Interferences and the Commissioner [353] held that it does not. As we have seen from the parts of their decision hereinbefore recited, the Examiner thought that there was other matter in the mark, as applied for, “far more striking” than the word “asbestos,” and, though happening to use the word in conjunction with other matter, that fact does not render the mark unregisterable as an entirety. The Commissioner regards it “merely as a descriptive and subordinate feature” of the applicant’s trademark. The “far more striking matter” of the trademark, referred to by the Examiner, necessarily indicates the figure of the ass, for the other word printed in connection with “asbestos,” namely, “fireproof,” is equally, if not more certainly, descriptive. The applicant describes with particularity what he has used and what he wishes to have registered as his trademark. He not only described his trademark, but also filed a drawing in which the figure and words appear. He does not limit his claim to any particular feature of the drawing, or claim one as the essential feature of the mark, as he might have done. See Re Standard Underground Cable Co. 27 App. D. C. 320, 324. In that case the applicant asked registration for the word “eclipse,” and was denied because he did not claim it and show it in his drawing as accompanied by a certain accessory figure and words shown on a label which he had used, but limited his claim to the said word as the essential feature of his trademark. In reversing that decision, Mr. Justice Duel!, who delivered the opinion of the court, said: “We do not think that Congress intended to confer upon the Commissioner of Patents authority to say to an applicant how much or how little of the embellishments appearing in connection with what may be called the essential feature of a trademark form an actual part of the trademark. Rather do we think that this right of selection and designation rests with the applicant.” It is to be noted, also, that the applicant, in the third ground of his demurrer, himself denied the right of the Commissioner “to determine which feature is the essential one of applicant’s mark.” The applicant deliberately selected and carefully designated the trademark having the descriptive word printed in large letters across, and partly obscuring, the figure of the ass. He there [354] by made it an actual and prominent feature of his trademark, claiming the same as an entirety. He made all essential, and, as we have seen, denied the Commissioner’s right to determine that any one was the essential feature, and another accessory and subordinate. Under these conditions it was not for the Commissioner to say that the word “asbestos” was an unessential feature and to be regarded as mere surplusage. The registration, if granted, would show no such exception or qualification on its face, and the prima facie right accorded to registration would apply to the mark as an entirety as shown in the application and drawing. We have recently affirmed a decision of the Commissioner denying registration to a trademark showing the figure of an eagle, with the words “Oriental Cream” printed above it, and described as “Oriental Cream associated with an eagle holding a scroll in its beak.” “Oriental” was held to be a geographical term prohibited by the statute. Be Hophins, 29 App. D. C. 118. The figure of the eagle was as conspicuous in that case as is the figure of the ass in this; and the words descriptive of the nature of the goods were printed above it, so that it was in no wise obscured. There was no suggestion that, because the figure was registerable, the words could be treated as merely accessory. When an applicant describes and illustrates his trademark, and applies for its registration as so described, the Commissioner must likewise consider it in its entirety. We are of the opinion that, in this case, he should have denied registration as claimed, giving the applicant, at the same time, an opportunity to amend by disclaiming and omitting the word objected to. For the reasons given, we must reverse the decision sustaining the demurrer to the opposition. It is so ordered, and that this decision be certified to the Commissioner of Patents. Reversed.