Mogen David Wine Corporation appeals from the decision of the Trademark Trial and Appeal Board, 134 USPQ 576, refusing registration of the configuration of a decanter bottle, as a trademark for wines, on the Principal Register established by the Trademark Act of 1946.
Appellant is the owner by assignment of an existing design patent
Specimens filed in the Patent Office with the application comprise photographs of the bottle as actually used. While some differences may be noted among the bottles depicted in the drawings of the design patent, the application drawing, and the photographic specimens, no issue was raised below as to whether all three relate to substantially the same configuration.
The board found the factual situation to be as follows:
The examiner took the position that the "container per se did not in fact function as a trademark to indicate origin of the goods in the applicant," stating that:
The board in sustaining the examiner's refusal of registration rejected the reasoning applied by the examiner in denominating the issue as solely one of fact, attributing it to the examiner's misconstruction of or apparent confusion relative to the "law pertaining to the registration of the subject matter of an existing design patent on the Principal Register as distinguished from the registration of said matter on the Supplemental Register."
The board, citing In re The Pepsi-Cola Company, 120 USPQ 468 (TT&A Bd., 1959), and noting that the design patent here is due to expire in 1964, reasoned that inasmuch as registration on the Supplemental Register affords the owner no presumptive right to exclusive use, it could not extend the monopoly which the registrant enjoys under the grant of the design patent, while registration on the Principal Register avails to the owner thereof prima facie evidence of ownership of the mark and exclusive right to use it in commerce in connection with the recited goods with the consequent right to exclude others from the use and registration of the same or similar design for like or similar goods, for the duration of the registration, which is renewable every twenty years. The board concluded that issuance of the registration sought by appellant would be inimical to the rights of others conditioned under the patent grant to make fair use of the subject matter after expiration of the patent and would thereby, in effect, extend the monopoly of the patent contrary to the intent and purpose of the patent law.
It is clear that the board refrained from passing judgment on the factual issue as to whether the evidence submitted served to establish that appellant's mark functions as a trademark to identify and distinguish appellant's wines.
The ultimate issue posed here, therefore, is whether or not, as a matter of law, appellant is precluded from obtaining registration for its recited goods on the Principal Register for its bottle configuration trademark during the life of its design patent. This precise question is one of first impression in this court.
We believe that a proper resolution of the issue here requires recognition of the distinction in purpose underlying the protection accorded designs under the patent laws and that protection accorded trademarks under the common law of unfair competition, including the law of trademarks which is a part of it, and the statutory trademark law, on the basis of secondary meaning.
This distinction is recognized by a number of leading text writers in the field of patent and trademark law. In support of its contention in this respect appellant cites Nims, in Vol. 1, "Unfair Competition and Trade-Marks (4th Edition, 1947), at page 390, where it is stated:
A further citation of similar purport is Callmann in Vol. 1, "Unfair Competition and Trademarks" (2d Edition, 1950), at pages 252-253:
In further advancement of its thesis that "patent protection does not, in principle, exclude trademark protection or what is tantamount thereto, namely, protection under the law relating to unfair competition where secondary meaning has been established," appellant cites the following cases: Lucien Lelong, Inc. v. George W. Button Corporation, 50 F.Supp. 708 (D.C.S.D.N.Y., 1943); Oneida, Ltd. v. National Silver Co., 25 N.Y.S.2d 271 (N.Y.Sup.Ct., 1940); Prince Matchabelli Inc. v. Anhalt & Co., Inc., 40 F.Supp. 848 (D.C.S.D.N.Y., 1941), and Falcon Industries, Inc. et al. v. R. S. Herbert Co., Inc. et al., 128 F.Supp. 204 (D.C. E.D.N.Y., 1955).
In Lucien Lelong imitation by defendant of the design of a bottle covered by an unexpired design patent was enjoined under the law of unfair competition.
In Oneida, Ltd. plaintiff secured injunctive relief in a state court, on the ground of unfair competition, against defendant's copying a silverware pattern covered by a design patent.
In Prince Matchabelli the patent involved covered a purse kit. Injunctive relief was granted pendente lite on the ground of unfair competition by reason of defendant's imitation of plaintiff's purse kit. The court stated:
In the English case of In re United States Playing Card Company's Application, 1 Ch. 197 (1908), the application was for registration of a trademark consisting of a pattern on the backs of playing cards. Registration was refused on the ground that the mark, if protectable at all, would have to be registered under the Designs section. Reversal was had on appeal. Appellant quotes the court as stating:
While it is to be observed that the issue before us was not treated by these authorities, yet they bear a substantial relationship and relevancy in that they support the thesis advanced by appellant that "the law recognizes that the protection accorded to a design under the patent laws and that accorded to what amounts to a trademark under the common law doctrine of secondary meaning are separate and distinct, and that the rights conferred by law in the one in no way exclude the rights conferred by law in the other."
The underlying purpose and the essence of patent rights are separate and distinct from those appertaining to trademarks. No right accruing from the one is dependent upon or conditioned by any right concomitant to the other. The longevity of the exclusivity of one is limited by law while the other may be extended in perpetuity.
We find persuasive the logic embraced in appellant's argument predicated on the following hypothesis: A is the originator of a distinctive and novel bottle configuration. By use and extensive exploitation for a period of six months as a container for wines, association between the configuration and wines is sufficient to establish secondary meaning in the configuration in relation to wines. Upon application properly supported registration on the Principal Register is issued
The rationale of the board's decision found lodgment in the distinction which it drew between the rights conferred by a Principal Register registration and the status of a registration on the Supplemental Register.
We recognize the distinction between registrations on the Principal and Supplemental Registers and their legal effects. However, we can find no supportable reasons in the purposes or philosophies of patent and trademark law to support the conclusion the board bases on that distinction. In our opinion, trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not "extend" the patent monopoly. They exist independently of it, under different law and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it. We know of no provision of patent law, statutory or otherwise, that guarantees to anyone an absolute right to copy the subject matter of any expired patent. Patent expiration is nothing more than the cessation of the patentee's right to exclude held under the patent law. Conversely, trademarks conceivably could end through non use during the life of a patent. We doubt it would be argued that the patent rights should also expire so as not to "extend" them.
An ancillary issue here is whether use by appellant of the trademark in issue during the life of the design patent constitutes trademark use.
Relying on Ex parte Caron Corporation, 100 USPQ 356 (1954), the board held that the "use of the subject matter of a design patent during the life of the patent cannot properly be considered as trademark use."
Section 1(a) (1) (15 U.S.C. § 1051) of the Trademark Act of 1946, as amended, establishes requirements for registering trademarks on the Principal Register.
Section 2 (15 U.S.C. § 1052) notes exceptions not here material and provides that "nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce."
Furthermore, the decision of the board would in effect nullify or suspend the provisions of Section 1, supra, relating to date of first use and first use in commerce, which makes no exception as to use during the life of a design patent.
The board, as did the solicitor, cited In re The Deister Concentrator Company, Inc., 289 F.2d 496, 48 CCPA 952. The facts and the issue presented in In re Deister readily distinguish that case from the facts and issues here under consideration. The applicant in Deister sought Principal Register registration for a specific rhomboidal outline shape for ore concentrating and coal cleaning tables on which it had obtained apparatus patents showing the deck having the shape described in the trademark application. This court sustained the board's denial of registration "because the shape is in essence utilitarian" (289 F.2d 501, 48 CCPA 968). The court said:
We have considered the ingenious argument of the solicitor and the authorities cited in support of his "functionality in ornamentation" approach. The solicitor argued that under this approach "any de facto secondary meaning attaching to appellant's alleged mark covered by its unexpired design patent should have no more legal significance than de facto secondary meaning which might have attached to the utilitarian alleged marks" in the Deister case and other cases cited by him. On the basis of the record before us and the issue presented, we cannot accept the rationale of this approach. We find no support for it in the cases cited.
We have not overlooked the case of In re McIlhenny Co., 278 F.2d 953, 47 CCPA 985. Here, as distinguished from the McIlhenny case, the decanter bottle design may be inherently distinctive. In the McIlhenny case the majority stated (278 F.2d at 956, 47 CCPA at 988-989):
Here, the design of the decanter bottle, when associated in the purchasing public's mind with appellant's wines, may have acquired the attributes of a registrable trademark. This essential factor was lacking in the McIlhenny case.
For the foregoing reasons, we are of the opinion that the decision of the board refusing registration of appellant's bottle configuration as a trademark for wines is in error.
We are further of the opinion that the board committed error in its holding that "use of the subject matter of a design patent during the life of the patent cannot properly be considered as trademark use."
The decision of the Trademark Trial and Appeal Board is reversed and the case remanded to the board for decision on the factual issue as to whether the evidence submitted is sufficient to establish that appellant's bottle design functions as a trademark to indicate origin.
Reversed and remanded.
WORLEY, Chief Judge, concurs in the result.
RICH, Judge, concurring.
Because this is a case of first impression with us and as the author of the opinion for the court in the Deister case
The Deister opinion points out that the policy question is whether a potentially perpetual monopoly in the thing sought to be registered should be granted. On the facts in that case we held that the law did not permit it. In this field the law is deduced entirely from court decisions. The stated reason, under that law, was that the outline shape of the deck of the shaking table was that it was in essence utilitarian — a shape utilized for reasons of engineering efficiency. The law, however, does not make these decisions easy and actually it is made as we go along on a case to case basis.
The Deister opinion also took note of a distinction between "functional" shapes incapable of being monopolized under the law and those "functional" shapes which might be monopolized "because they are of such an arbitrary nature that the law does not recognize a right in the public to copy them, even if some incidental function is associated with them." (Emphasis added.)
My view of the bottle shape in the instant case is that it falls into the latter category. The solicitor argues that it has a "decanter" shape and is therefore possessed of a desirable appearance making it suitable for table use when one wants a bottle with a pleasing appearance. But decanters can be of a great variety of shapes. He cites the Restatement of Torts to show that when goods are bought for their aesthetic appearance, their shape contributes to that aspect
The solicitor asserts that if others were prohibited from using the appearance of appellant's bottle, they would be substantially hindered in competition on the product, namely the specific bottle containing wine.
Whether competition would in fact be hindered is really the crux of the matter. I disagree with the solicitor because I am convinced that others would not be in the least hindered in competition. Others can meet any real or imagined demand for wine in decanter-type bottles — assuming there is any such thing — without being in the least hampered in competition by inability to copy the Mogen David bottle design. They might even excel in competition by producing a more attractive design under the stimulus of a prohibition against copying under the principles of unfair competition law.
The solicitor further quotes the Restatement of Torts:
He argues that the very existence of the design patent is sufficient evidence of ornamental function, which, I suppose, would be something of value lost when omitted.
This brings us to what is, in my opinion, an essential distinction between engineering function and ornamentation function which should be recognized in passing on these cases which involve the policy question whether the public shall have freedom to copy or not. In Deister, for example, use of the diagonal shape was essential to the enjoyment of the engineering advantages which brought it into being. (At least that was our assumption on the record.) In the instant case, even if we assume some value behind the specific design in an aesthetic sense, it is not in the least essential to use it in order to have a fully functioning bottle or an attractive bottle or even a bottle of the general type of the Mogen David bottle, whether or not considered to be a "decanter." (Our impression of decanters is that they vary as much in shape and design as wine and liquor bottles in general.)
The Restatement appears to use the terms "functional" and "non-functional" as labels to denote the legal consequence: if the former, the public may copy; and if the latter, it may not. This is the way the "law" has been but it is not of much help in deciding cases. But going behind the labels to the bases for determining which to apply, we see, I believe, that depriving the public of the right to copy Mogen David's bottle in selling wines and related products (1) does not hinder competition and (2) does not take from the goods (bottled wine) something of substantial value. And that is because, within the rationale of the Deister case, the design of a wine bottle like the one here is of such an arbitrary nature that depriving the public of the right to copy it is insignificant, as a policy matter, in comparison with the vendor's right to protection from possible confusion in trade.