ing in the record that gives rise to any doubt that it would have been within the ability of such a person to follow through to produce an operative circuit incorporating that concept. As to the synchronizing-signal separator, Martinelli suggests use of a circuit "of any well-known type." This clearly suggests employing separator circuits that became known subsequent to his application as well as those already known. Certainly that suggestion applies to circuits in "Television," which is a textbook published only shortly after Martinelli's application was filed. For that reason, and in light of the reference in "Television" to its self-biased separator as "[a] more satisfactory limiter [separator]" than a fixed-bias separator previously described therein, we are satisfied that it would have been obvious to employ the "Television" self-biased separator in Martinelli. We think that the Martinelli circuit so modified in an obvious manner in accordance with the Lamb and "Television" references demonstrates that claims 3, 11, and 12 are unpatentable. None of these claims requires that the synchonizing-signal separator be connected to the same dynamically-varying bias voltage as the noise-suppressor® and appellant has not pointed out any limitation by which they distinguish from such modified circuit. Claims 1 and 2 present an additinal issue, however. Thus, they require that the synchronizing-signal separating means be dynamically responsive to "a potential" which is developed in the "second means" and is "representative of" and "varies dynamically with" the amplitude of the synchronizing pulses. That "second means" is coupled to the “means * * * for rendering * * * [the] separating means inoperative in response to the occurrence of *** noise signals" (the noise supressor). Martinelli as modified in accordance with Lamb and "Television" would not comply with those requirements. Rather, the separator would then be biased from its own input circuit and thus not be dynamically responsive to the "potential" provided by the second means, which means is coupled to the noise suppressor. Moreover, we find nothing in the record to demonstrate that it would be obvious to make such further changes in Martinelli as would be necessary to meet claim 1. In particular, we do not see that Applegarth, which we next discuss in some detail, would have suggested any modification of Martinelli's noise-cancelling circuit that would result in the noise suppressor and signal separator being supplied from the same dynamic-bias source. We accordingly will not sustain the rejec Claim 3 recites "a synchronizing-signal stripper responsive to at least some of [the] components of *** [the composite] video frequency signal and undesirably responsive to [the] noise pulses ," but does not specify how it is blased. tion of claims 1 and 2 on grounds involving Martinelli as the basic reference. The board also held the claims unpatentable over Applegarth, possibly as anticipated thereby (35 U.S.C. 102) but certainly as obvious in view of it and other references including Martinelli (35 U.S.C. 103). In so relying on Applegarth, the board was in effect reviving a rejection on that patent which the examiner originally made but withdrew in his Answer. We conclude that the rejection based on Applegarth must be reversed. The Applegarth television receiver derives an AGC voltage from the output of the intermediate frequency amplifier circuit and applies it to control the gain of that circuit. It also imposes a portion of a signal varying with the AGC voltage at suitable polarity to a synchronizing-signal separator tube. The output of the latter tube is connected to the utilization circuit for the synchronizing signals through a diode biased to clip the tops off noise signals passed by the separator that exceed the amplitude of the synchronizing signals. Since Applegarth merely clips the noise signals from the separator, it does not anticipate the claims, which require that the separator be disabled or rendered inoperative. The only secondary reference which requires discussion in connection with the rejection involving Applegarth as a basic reference is Martinelli. The board regarded the latter as demonstrating that it would be obvious to connect a diode or triode across the separator tube of Applegarth "to render it inoperative in the presence of noise." However, it is not apparent that one skilled in the art would have found it obvious to add a circuit to suppress noise to a receive already equipped to reduce the effect of noise by clipping the noise pulses. Even if Martinelli were held to suggest substitution of its noise-cancelling circuit in Applegarth, we do not see that it would have been obvious to employ that circuit in any manner which resulted in its being supplied with a dynamic bias from the Applegarth separator tube circuit. Accordingly, the rejection grounded on Applegarth as a basic reference is reversed. Summary The rejection of claims 1-3, 11, and 12 on the grounds that the reissue oath is defective is reversed as is the rejection of claims 11 and 12 on the basis of "new matter." The rejection on prior art is reversed as to claims 1 and 2 and affirmed as to claims 3, 11, and 12. The decision is affirmed as to claims 3, 11, and 12 and is reversed as to claims 1 and 2. 424 F.2d 1385; 165 USPQ 515 Cosmetically Yours, Inc. v. Clairol Incorporated (No. 8296) TRADEMARKS 1. COURT OF CUSTOMS AND PATENT APPEALS-BRIEFS Assignment of error stated in reasons of appeal is abondoned when it is not pursued in brief or oral argument. 2. CANCELLATION-IN GENERAL OPPOSITION-MARK AND USE OF OPPOSER-REGISTRATION NOT ATTACKABLE As long as registration relied upon by opposer in opposition proceeding remains uncancelled, it is treated as valid and entitled to statutory presumptions; in absence of counterclaim for cancellation under section 14 of Lanham Act, it it not open to applicant to prove abandonment of opposer's registered mark. 3. COSTS-DIMINUTION OF RECORD Since appellee followed prudent course in requesting inclusion, by supplemental praecipe, of additional items, which appeared reasonably necessary to proper determination of issues raised by reasons of appeal, printing costs are not assessed against appellee. United States Court of Customs and Patent Appeals, May 7, 1970 APPEAL from Trademark Trial and Appeal Board, Opposition No. 44,363 [Affirmed] Myron Amer, attorney of record, for appellant. H. C. Dieserud (Fish, Richardson & Neave) for appellee; David J. Kera, of counsel. [Oral argument March 5, 1970 by Mr. Amer and Mr. Kera] Before RICH, ALMOND, BALDWIN, LANE, Associate Judges, and ROSENSTEIN, Judge, sitting by designation. ROSENSTEIN, Judge, delivered the opinion of the court: This appeal is from the decision of the Trademark Trial and Appeal Board1 sustaining an opposition by Clairol Incorporated to the application 2 by Cosmetically Yours, Inc. to register the words "Look Alive” as a trademak for "lipstick". We affirm. Clairol's opposition is predicated on its ownership of the registered marks "Come Alive", "Come Alive Gray", "Come Alive Blonde"," 1 Reported at 154 USPQ 323. Our opinion assumes familiarity with the findings of the board there set forth. 2 Application serial No. 185,198, filed January 23, 1964, and asserting first use on the goods in commerce on December 2, 1963. 3 Reg. No. 695,418, issued Mar. 29, 1960. 'Reg. No. 641,138, issued Feb. 5, 1957 to a predecessor-in-title. Reg. No. 701,964, issued July 26, 1960. "Come Alive Brown" and "Come Alive Red" for hair tinting and coloring preparations. Clairol contends that it would be damaged if "Look Alive" were registered for lipsticks because that mark so resembles it registered marks for hair coloring preparations that purchasers would be likely to be confused as to the origin and sponsorship of Cosmetically Yours' goods. The board agreed, noting that, beginning in 1965, Clairol expanded its activities into marketing a general line of cosmetic preparations, including lipsticks, and presently has a substantial business in this new line. Taking judicial notice that the products of the parties are all cosmetic preparations, the board observed that the record shows that a number of leading cosmetic companies market both hair preparations and facial cosmetics. The board stated: Despite the fact that opposer is the owner of its various registrations, it is applicant's primary contention herein that there would be no likelihood of confusion because opposer's only mark is "COME ALIVE GRAY" and that this mark is obviously different in various respects from "LOOK ALIVE”. This contention of applicant must fail, however, both for the reason that opposer is the owner of a subsisting registration for the mark "COME ALIVE" and the fact that opposer's record supports continued use of this term as a mark. *** it is our opinion that the goods of the parties are closely related and that applicant's mark "LOOK ALIVE" so resembles "COME ALIVE" in connotation that, as applied to applicants goods, there would be a likelihood of confusion or mistake. [1] Although appellant, in its reasons of appeal, arguably assigned error in the board's finding of likelihood of confusion between its mark "Look Alive" and Clairol's subsisting registered mark "Come Alive", it did not pursue that point in its brief or on oral argument. Accordingly, we pretermit that issue as abandoned. L. & C. Hardtmuth, Inc. v. Fabrique Suisse De Crayons Caran D'Ache S.A., 48 CCPA 873, 287 F.2d 599, 129 USPQ 103 (1961). Appellant has chosen, instead, to narrow the issues of appeal to the correctness of the board's reliance on opposer's "Come Alive” trademark registration. Appellant contends that Clairol is entitled to only a rebuttable presumption of use of "Come Alive" based on ownership of that registration, which was rebutted by "conclusively" showing non-use of that mark since December 1958. The board erred, appellant urges, in rejecting the foregoing contention and should have held that the contest was between "Come Alive Gray" for hair rinse and "Look Alive" for lipstick; and that there is no likelihood of confusion between those two marks. Reg. No. 702,686, issued Aug. 9, 1960. [2] Section 2(d) of the Trademark Act (15 U.S.C. 1052(d)) prohibits registration of a mark "which so resembles a mark registered in the Patent Office *** as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive: *** (Emphasis supplied.) As long as the registration relied upon by an opposer in an opposition proceeding remains uncanceled, it is treated as valid and entitled to the statutory presumptions. Tri-Valley Growers v. Maple Island, Inc., 53 CCPA 1217, 360 F.2d 248, 149 USPQ 675 (1966); Island Road Bottling Company v. DrinkMor Beverage Co., 31 CCPA 816, 140 F.2d 331, 60 USPQ 369 (1944), and cases cited therein. Therefore, in the absence of a counterclaim for cancellation under section 14 of the Act (15 U.S.C. 1064), it is not open to an applicant to prove abandonment of the opposer's registered mark; and appellant's argument (upon which it now stakes its appeal) that opposer no longer uses the registered mark "Come Alive" must be disregraded. Food Specialty Co., Inc. v. Standard Products Co., Inc., 56 CCPA 1005, 406 F.2d 1397, 161 USPQ 46 (1969); Gillette Co. v. "42" Products Ltd., 55 CCPA 1347, 396 F.2d 1001, 158 USPQ 101 (1968). [3] One matter remains. In an appendix to its brief, appellant requests that we assess a portion of the costs of printing the transcript of the record against appellee because certain material added to the record by appellee's Supplemental Praecipe was unnecessary in resolving the issues raised by the appeal. However, under the circumstances here, we think appellee followed the prudent course in requesting inclusion of those items as they had appeared reasonably necessary to a proper determination of all the issues raised by appellant's reasons for appeal. Treating the request in appellant's brief as a motion, the motion is denied, and costs are assessed against appellant. The decision is affirmed. 425 F.2d 1276; 165 USPQ 572 In re Friedrich Geiger and Karl Wilfert (No. 8196) PATENTS 1. DOUBLE PATENTING-IN GENERAL Only basis in statute for denying grant of more than one design patent on "same invention" is 35 USC 171. The record shows that, in its answer to the Notice of Opposition, appellant did attempt to initiate a cancellation proceeding to cancel Clairol's mark "Come Alive" on the ground its use "has been abandoned." On motion by Clairol, the board dismissed that counterclaim for cancellation with prejudice for reasons unnecessary to detail here. Appellant did not appeal from that dismissal. |