Railroad Supply Co. v. Hart Steel Co., 222 Fed. 261. Page 89 277 62 216 13 92 310 263 Ryder v. Coe, Commissioner of Patents, 64 USPQ 363.. S Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539. 318 112 252 198 Schneider, In re, 49 App. D. C. 204.. Schreiber v. Thornton, 17 F. 603.. 263 312 Smith v. Whitman Saddle Company, 148 U. S. 674. Schumacher v. Schwencke, 25 F. 466. Schwartz, et al., In re, 39 CCPA 880 Seiberling Rubber Co. v. I. T. S. Co., 134 F. 2d 871. Sellers, Ex parte, 1870 C. D. 58.. Senkus v. Johnston, 35 CCPA 1008. Sessions v. Schmidt, 20 CCPA 912_ Shell Development Co. v. Pure Oil Co., 111 F. Supp. 197 (1953). Shultz v. Dunham, 21 CCPA 706_. Smith v. Carter Carburetor Corp., 130 F. 2d 555. Smyth, In re, 38 CCPA 1130.. Sola, In re, 22 CCPA 1313. 210 Sontag Chain Stores Co. v. National Nut Co., 310 U. S. 281. 112 255 Spitzglass, et al., In re, 25 CCPA 1227... 294 Standard Brands v. 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W Page 250 250 312 7 245 301, 303 17 10 8 8 9 319 315 10 132 Western Contracting Corp. v. National Surety Corp., 163 F. 2d 456-. 7 Wheaton and Donaldson v. Peters and Grigg, 8 Pet. 591. 316 White Company (The) v. Vita-Var Corporation, 37 CCPA 1039 303 White-Smith Music Pub. Co. v. Apollo Co., 209 U. S. 1--- 318 Wiemer v. Coe, Commissioner of Patents, 45 USPQ 407 169 William A. Meier Glass Co. v. Anchor Hocking Glass Corp., 95 F. Supp. 264__ 317 Williams, Frank D., v. Max Handschiegl, 18 CCPA 1176- 96 306 Wirebounds Patent Co. v. Saranac Automatic Mach. Corp., 37 F. 2d 830__ 252 202 Woodsome et al., In re, 56 App. D. C. 138.. 217 Woolworth Co. v. Contemporary Arts, 344 U. S. 228 Zenith Bathing Pavilion v. Fair Oaks, S. S. Corp., 240 N. Y. 307. 79 76, 185 125 9 255 DECISIONS [United States 'Court of Appeals, District of Columbia Circuit] GOLD SEAL V. SINCLAIR WEEKS, SECRETARY OF COMMERCE, AND ROBERT C. WATSON, COMMISSIONER OF PATENTS, AND S. C. JOHNSON & SON, SUITS UNDER 35 U. S. C. 145-TO OBTAIN REGISTRATION OF TRADE-MARK-PART OF COMPLAINT RELATING TO SECTION 2 (f) of ACT OF 1946 NOT SUBJECT TO FINAL Held that in a complaint under R. S. 4915 (now 35 U. S. C. A. 145) seeking adjudication authorizing the Commissioner to register a trade-mark, allegations seeking to bring the mark within section 2 (f) of the act of 1946 and allegations that the mark is not barred by section 2 (e) of the act do not state separate claims for relief, since the legal wrong sought to be remedied under each is the same, viz., wrongful refusal to register the mark; the claim for relief under section 2 (f) allegations is not the proper subject of a final judgment under Rule 54 (b) FRCP and the motion to dismiss the appeal from that judgment APPEAL from the United States District Court for the District of Columbia. Motion to dismiss appeal granted. Edward B. Beale (Maurice M. Moore, of counsel) for Gold Seal. Francis C. Browne (William E. Schuyler, Jr. and Andrew B. Beveridge, of counsel) for S. C. Johnson & Son, Inc. E. L. Reynolds, Solicitor, for Secretary of Commerce and Commissioner of Before STEPHENS, Chief Judge, and WILBUR K. MILLER, and PRETTYMAN, 1 STEPHENS, Chief Judge: This is a motion by the appellee, S. C. Johnson & Son, Inc., hereafter referred to as Johnson & Son, to dismiss an appeal from a purported final judgment of the United States District Court for the District of Columbia entered purportedly, in accordance with 28 U. S. C. § 1291 (Supp. 1952) and Rule 54 (b) of the Federal Rules of Civil Procedure, as a final judgment upon one of a plurality of claims for relief. The judgment was entered in an action, filed by the appellant Gold Seal Company, hereafter referred to as Gold Seal, under Rev. Stat. § 4915, 35 U. S. C. § 63 (1946) (in its present form 66 Stat. 803 (1952), 35 U. S. C. A. § 145 (1952 Supp.)), and under 60 Stat. 435 (1946), 15 U. S. C. § 1071 (1946), seeking an adjudication authorizing the Commissioner of Patents to register a trade-mark. The motion to dismiss the appeal is upon the ground that the judgment does not finally adjudicate one of a plurality of claims for relief within the meaning of Rule 54 (b) and is not a final decision within the meaning of that phrase as used in Title 28, section 1291, i. e. is not a final disposition of the entire action. The appellant contends that the judgment satisfies the requirements of 28 U. S. C. § 1291 and Rule 54 (b). The dispute in essence reduces itself to the question whether or not the action presents a plurality of claims upon one of which, as a distinct claim, the judgment sought to be reviewed was entered. For the reasons set forth below, we conclude that the appeal must be dismissed. I An understanding of the question presented requires an acquaintanceship with certain of the provisions of the Trade-Mark Act of July 5, 1946, 60 Stat. 427, hereafter sometimes referred to as the act, and with the pleadings and proceedings in the District Court which led to the entry of the judgment in question. The pertinent provisions of the act are set forth in the margin.1 Primarily involved are the provisions of section 2 (e) (1), which, when read in connection with the introductory language of that section, forbids refusal of 1 Section 1. The owner of a trade-mark used in commerce may register his trade-mark under this act on the Principal Register hereby established: (a) By filing in the Patent Office (1) A written application, in such form as may be prescribed by the Commissioner, verified by the applicant, or by a member of the firm or an officer of the corporation or association applying, specifying applicant's domicile and citizenship, the date of applicant's first use of the mark, the date of applicant's first use of the mark in commerce, the goods in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods, and including a statement to the effect that the person making the verification believes himself, or the firm, corporation, or association in whose behalf he makes the verification, to be the owner of the mark sought to be registered, that the mark is in use in commerce, and that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark registration of a trade-mark by which the goods of the applicant may be distinguished from the goods of others unless it, when applied to the goods of the applicant, is merely descriptive or is deceptively misdescriptive of them, and the provisions of section 2 (f) providing that, except as expressly excluded in paragraphs (a), (b), (c), and (d) of the section, nothing therein shall prevent the registration of a mark used by the applicant which has become distinctive of his goods in commerce. The complaint of Gold Seal filed in the District Court alleges, so far as here pertinent, in substance and effect that: Gold Seal, a corporation of North Dakota, is the sole owner of a trade-mark, "Glass Wax," acquired [at a date not made certain in the complaint] from certain predecessors in interest. Such predecessors and Gold Seal prior to September 1945, and Gold Seal alone thereafter offered for sale and sold in commerce a certain glass cleaner and polish under the trade-mark described, the same having been adopted as an "arbitrary, fanciful, and distinctive" word combination or symbol to designate said glass cleaner and polish. Gold Seal and its predecessors widely advertised and promoted the sale of the glass cleaner and polish under said trade-mark and the same is associated with Gold Seal's goods and means, and is understood to mean, that the goods described come from in commerce either in the identical form thereof or in such near resemblance thereto as might be calculated to deceive: * (2) A drawing of the mark; and (3) Such number of specimens or facsimiles of the mark as actually used as may be required by the Commissioner. (b) By paying into the Patent Office the filing fee. (c) By complying with such rules or regulations, not inconsistent with law, as may be prescribed by the Commissioner. (d) * * * Sec. 2. No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute. (b) Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow. (d) Consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers: (e) Consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdescriptive of them, or (2) when applied to the goods of the applicant is primarily geographically descriptive or deceptively misdescriptive of them, except as indications of regional origin may be registrable under section 4 hereof, or (3) is primarily merely a surname. (f) Except as expressly excluded in paragraphs (a), (b), (c), and (d) of this section, nothing herein shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant's goods in commerce. The Commissioner may accept as prima facie evidence that the mark has become distinctive, as applied to the applicant's goods in commerce, proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years next preceding the date of the filing of the application for its registration. |