ON APPEAL.

Mr. Edward D. Jones and Mr. Eugene E. Stevens for Sears, Roebuck and Co. Mr. Warren G. Ogden for Old Colony Shoe Company.

SPENCER, First Assistant Commissioner:

This is an appeal from an order of the Examiner of trade-mark interferences dismissing the petition of Sears, Roebuck and Co. for the cancellation of registration No. 254,472 of the words "GOLD BOND" for leather boots and shoes. The registrant, Old Colony Shoe Company, moved to dismiss the petition upon several grounds set forth in its motion, all of which are embraced within the broad ground upon which the Examiner based his action, namely, that the petition does not state facts sufficient to constitute a cause of action. The alleged grounds for cancellation, as they appear in the petition are as follows:

Petitioner is a corporation of the State of New York. For many years it has been engaged in the sale and distribution in interstate commerce of a general line of merchandise, including shoes, through the mail and other media. Petitioner operates retail stores, approximately four hundred in number, at various points in the United States. The annual volume of petitioner's business is many millions of dollars. Petitioner's sales of shoes are large.

Petitioner alleges that long prior to the date of first use set up in respondent's registration, subject of this proceeding, petitioner advertised for sale in its big general catalogs which circulate nationally "GOLD BOND" shoes and that long prior to respondent's date of first use as set forth in the registration it is desired to cancel, petitioner received orders for "GOLD BOND" oxfords. Petitioner applies the words "GOLD BOND" as a trade-mark to shoes by stamping them in the soles thereof and also by printing them on boxes containing said shoes. Petitioner's "GOLD BOND" shoes have been extensively sold in interstate commerce and are now so sold. As a result of the excellence of the product sold by petitioner under the name “GOLD BOND", petitioner has built up an extremely valuable good will. The words indicate to a very substantial portion of the public shoes of high quality sponsored by petitioner. The volume of money spent by petitioner so to advertise its "GOLD BOND" trade-mark for shoes is large.

Petitioner alleges that use by respondent of petitioner's identical mark on identical goods, namely, shoes, as disclosed by the registration in question, is certain to result in confusion in the public mind and in great injury and damage to petitioner, and that respondent thereby will be enabled to trade on the commercial reputation of petitioner, which has been built at great expense. Petitioner further alleges that persons buying the "GOLD BOND" products of respondent will be likely to be deceived into the belief that they are buying products sponsered by petitioner. Petitioner's "GOLD BOND" shoes have been advertised in all of petitioner's big general catalogs since at least as early as the fall issue of 1926, which said issue was placed in the hands of the public early in July, 1926. In addition petitioner's said "GOLD BOND" shoes have been

advertised in flyers and other advertising media with the result that the name is being constantly kept before the public as identifying shoes sold by this petitioner.

"Petitioner further alleges that subsequently to its first use of the words "GOLD BOND" and after the registration of said words in the United States Patent Office by respondent, respondent, through its attorneys, endeavored to interfere with and prevent petitioner's use of the words "GOLD BOND" in connection with the sale and advertisement of shoes.

Petitioner alleges that as a result of its long use of the "GOLD BOND" name, respondent was not entitled to the use of the mark at the date of its application for registration thereof and that therefore in accordance with the statute, said registration should be cancelled.

[1] It will thus be seen that petitioner is relying exclusively upon its use in advertising of the words "GOLD BOND," as that is the only use it alleges prior to the date of appellee's registration; and the question for determination is, therefore, simply whether or not it is incumbent upon a petitioner for cancellation to allege and prove a technical trade-mark use of the registered mark, i. e., its actual affixation to the goods. This is a point upon which there seems to have been considerable confusion both in the Patent Office and in the courts, and it is somewhat difficult to reconcile the various decisions in which it has been discussed. After a careful review of the authorities, however, I have come to the conclusion that a petitioner for cancellation must allege and prove technical trade-mark use in all cases except those involving marks the registration of which is prohibited by statute, as for example marks which are descriptive of the goods to which they are applied. While it is true that section 13 of the Trade-Mark Act provides that any person deeming himself injured by the registration of a trade-mark may apply to the Commissioner of Patents to cancel such registration, it also prescribes quite definitely what must be proved by the petitioner before cancellation shall be ordered. In that regard the section reads as follows:

If it appear after a hearing before the Examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the Examiner shall so decide, the Commissioner shall cancel the regis tration.

It is quite obvious that the only clause of this provision which could have any possible application to the facts stated in the petition here is the one authorizing cancellation where "the registrant was not entitled to the use of the mark at the date of his application for registration thereof." As between the parties to a cancellation proceeding the right to use and the right to register would appear to be co-extensive; so that the question whether a registrant was entitled to use his mark at the date of his application for registration may be determined by reference to section 5 of the act, which prescribes, in

somewhat negative language, what marks a user is entitled to register. The section is too long to quote in full, but the only proviso thereof with which we are here concerned is in the following language:

That trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered.

Referring to that portion of the statute above quoted the Examiner in his decision said:

To enable the petitioner to qualify under the language "owned and used by another" of this clause and thereby negative the right of registration of the respondent, it must affirmatively appear from the petition that the notation "GOLD BOND" was affixed to the goods or boxes containing the same prior to November 10, 1928, the date of filing of the application which matured into the registration sought to be cancelled.

As already shown the petition contains no such allegation, and I am therefore constrained to hold with the Examiner that it does not state a cause of action.

Appellant in its brief frankly concedes that it would be unable to show a technical trade-mark use of the words "GOLD BOND" at any time prior to respondent's registration, but argues that it should be permitted to take testimony for the purpose of establishing an extensive trade name use of the words in its advertising "long prior to the date of first use set up in respondent's registration." It is likewise argued, and in that respect I am in entire agreement with counsel, that if proof of any fact alleged in the petition would entitle appellant to relief its petition should not have been dismissed. This proposition, however, contains nothing more than the long established rule of procedure that a demurrer or motion to dismiss admits the truth of all material facts which are properly pleaded. Wagner v. Vitamint Co., 55 App. D. C. 131.

Of the cases cited in appellant's brief, claimed to support its contention that a trade name use, or in other words an advertising use, of the mark involved entitles it to the cancellation prayed for, those upon which counsel most strongly relies are Rit Products Corp. v. Park & Tilford, 5 U. S. Pat. Q. 268; Touraine Co. v. F. B. Washburn & Co., 286 Fed. 1020; Derby Oil Co. v. White Star Refining Co., 20 C. C. P. A. (Patents) 816, 62 Fed. (2d) 984; 429 O. G. 75; and The Irish Industrial Development Association v. Barrett, 1913 C. D. 23, 186 O. G. 797.

Rit Products Corp. v. Park & Tilford, which counsel insists is controlling in the instant case, was an opposition proceeding, in which First Assistant Commissioner Kinnan, after pointing out that the

chief ground of opposition was that the mark sought to be registered was descriptive and therefore not registrable, said:

The opposer does not allege trade-mark use of its advertising or circulars, but this is not necessary to sustain the opposition here.

He then held that the mark was not descriptive and dismissed the opposition, but the Court of Customs and Patent Appeals disagreed with his conclusion as to descriptiveness, and his decision was accordingly reversed. (55 Fed. (2d) 436.) Counsel argues that because the reversal was based upon another ground, and the court did not express an opinion as to the correctness of the language above quoted, the rule thus announced by the first assistant commissioner, right or wrong, remains the law of the Patent Office. I do not find it necessary to pass upon this point, because under the circumstances of the case from which the rule is quoted I do not consider Dr. Kinnan's language subject to the construction which counsel seeks to place upon it. It is quite true that where the opposer was claiming the mark to be descriptive it was unnecessary to allege trade-mark use, and a reading of the whole decision will clearly indicate that that was all the First Assistant Commissioner intended to say.

Likewise the paragraph quoted in appellant's brief from Touraine Co. v. F. W. Washburn Co., which was also an opposition proceeding, when separated from the context, would appear to sustain counsel's position. The quoted language is as follows:

Of course a trade-mark use of a mark is not necessary in a proceeding of this kind. If the opposer can show in any way that he would probably be damaged by its registration to the applicant he may do so. The trade-mark statute is our chart. There is nothing in it which says that a person must own a trademark, registered or not, before he can oppose the registration of the mark to another person. All that the statute requires of him, according to our interpretation, is to prove facts which, if true, would tend to show that he would probably be damaged by the registration.

A reading of the opinion in that case will show, however, that the foregoing statement was in no sense necessary to the court's decision, and was in fact nothing more nor less than rather carelessly expressed dictum. The court proceeded to hold that the opposition should have been dismissed, and reversed the Commissioner, basing its decision, in part at least, upon the ground that the opposer had failed to establish a trade-mark use. A further excerpt from the opinion makes this at once apparent. The court, after some discussion of the evidence, said:

Considering all these facts, we are satisfied that the opposer never used, or thought of using, the word as a trade-mark until Miner appeared upon the field, and that was many years after the applicant had adopted and applied it to its entire output. It was used by the opposer to indicate the character of the chocolate, not the origin of it.

In Derby Oil Co. v. White Star Refining Co. the Court of Customs and Patent Appeals affirmed the decision of the Commissioner of Patents cancelling appellant's registration on the ground of probable confusion in view of respondent's prior use of a substantially identical mark. In that case again will be found dicta broadly supporting petitioner's contention here. What the court actually decided, however, was that the mark had been properly cancelled because of respondent's prior ownership and use of the mark, in a technical trade-mark sense, as will appear from the following language found in the opinion:

This, in our opinion, shows a sufficient trade-mark use. It is not essential that every gallon of gasoline or quart of cylinder oil sold shall be in a container bearing the trade-mark of the company. The record contains ample evidence of the interstate use of this mark by appellee. In addition, it quite plainly shows that motor fuels were retailed at filling stations from pumps bearing this mark of a white star. It would be going far afield to say that this was

not a trade-mark use.

The Irish Industrial Development Association v. Barrett was an opposition proceeding decided by Commissioner Moore in 1913, where again loose language occurs to the general effect that an opposer is not required to establish a technical trade-mark use in order to prevent registration of the same mark to another. The real basis of the Commissioner's decision, however, is found in the last paragraph thereof, which reads as follows:

The mark sought to be registered by Barrett had, therefore, prior to his date of use, acquired such a significance in the United States that if the mark was used by Barrett on goods made in Ireland it was descriptive of the goods to which it was applied. If, on the other hand, Barrett never applied and never intended to apply the mark to Irish-made goods, his use of the mark was deceptive. In neither case is the mark registrable to Barrett.

A discussion of all the cases cited in respondent's brief would unduly lengthen this decision. I shall therefore refer to only four, which in my opinion clearly point out the distinction to be observed between cases of the character here involved and those where the mark attacked is unregistrable under the statute. Two of these cases are from the Court of Appeals of the District of Columbia, and two from the Court of Customs and Patent Appeals.

Battle Creek Sanitarium Co. v. Fuller, 30 App. D. C. 411, 134 O. G. 1299, was an opposition proceeding involving the registration of the descriptive mark "health food" under the ten-year clause of the Trade-Mark Act of 1905, wherein the opposer alleged use of the mark in advertising goods of the same descriptive properties as those of the registrant. The Commissioner sustained a demurrer to the notice of opposition because of its failure to allege a tech