mark, cannot prevail unless abandonment has been shown. We turn now to that question.

Appellant predicates abandonment primarily on an assignment of the trademark from the original registrant, Percy J. Osborne, to Joseph H. Welp, dated October 10, recorded November 1, 1955. The primary argument is that this was "no more than a naked assignment," of the "bare mark," which assignment is "invalid" because, to quote appellant, "no business is transferred" with it. As we understand appellant's contention with respect to the relation of this contention to the issue of abandonment, it is that Osborne's acts in attempting to make an assignment, which assignment is invalid, constituted an abandonment of the mark by him and that whatever rights the assignee, Welp, may have as a result of use subsequent to the assignment are new rights, unrelated to the original mark and its registration. A subsidiary argument is that Osborne used "HY-CROSS" on one type of chicken and Welp uses it on a different type of chicken. The assignment, omitting the "Whereas" clauses, reads:

BE IT KNOWN that for and in consideration of the sum of One Hundred Dollars ($100.00) and other good and valuable consideration to him in hand paid, the receipt of which is hereby acknowledged, said Percy J. Osborne by these presents does sell, assign and transfer unto the said Joseph H. Welp the entire right, title and interest in and to the said trade-mark and the registration thereof, No. 524,413, together with that part of the good will of the business connected with the use of and symbolized by the mark.

Section 10 of the Lanham Act provides, in part:

A registered mark or a mark for which application to register has been filed shall be assignable with the goodwill of the business in which the mark is used, or with that part of the goodwill of the business connected with the use of and symbolized by the mark, and in any such assignment it shall not be necessary to include the goodwill of the business connected with the use of and symbolized by any other mark used in the business or by the name or style under which the business is conducted: ** [Emphasis ours.]

The board found as facts (and we do not find that appellant disputes these findings) that there is nothing in the record to show that Osborne, the assignor, was not using "HY-CROSS" at the time when he assigned that mark, or that he used the mark after the assignment, or that Welp's Hatchery (the business enterprise, a partnership, operated by the assignee) did not use the mark continuously after the assignment. It is on these facts that the board made its finding of no abandonment.

Appellant's argument that there was abandonment is stated thus in its brief:

The facts relied upon by Petitioner, in support of its position, are the clear admissions made by the Respondent, Welp, that he did not acquire:

(1) Any part of the business of Osborne,

(2) Any chickens or eggs from Osborne, or

(3) Any formula or principle for breeding chickens of the type sold by Osborne as "Hy-Cross" chickens.

Welp received only the name "Hy-Cross"-that was all he wanted-and nothing more whatever was acquired. Welp wasn't even interested in knowing the Osborne "Hy-Cross" breeding formula. These facts should prevail over the wording of the assignment.

[2] Appellant would apparently have us hold "abandoned" a trademark which has never been out of use because Osborne did not transfer to Welp any "business" or any chickens or eggs or any know-how or trade secrets, notwithstanding there was an assignment, in the precise words of section 10 of the Lanham Act, of "that part of the goodwill of the business connected with the use of and symbolized by the mark" which was assigned, as well as the assignment of the mark and the registration thereof. No case has been cited to support that precise proposition. Appellant quotes at length from the opinion of the District Court for the Southern District of New York in a trademark infringement suit, Avon Shoe Co. v. David Crystal Inc., 171 F. Supp. 293, 121 USPQ 397,2 in which case it admits there was abandonment of the trademark prior to an attempted assignment thereof. The quoted portion of the opinion, dictum for the most part, refers to a number of pre-Lanham Act cases on the necessity of assigning some "business" with a trademark in order to have a valid assignment. Nothing quoted tends to show that an invalid assignment is, ipso facto, an abandonment of a mark. One case subsequent to the Lanham Act, cited in the Avon case and further discussed by appellant, is the decision of this court in 1955 in Nettie Rosenstein, Inc. v. Princess Pat, Ltd., 42 CCPA 806, 220 F.2d 444, 105 USPQ 226. There was a purported assignment to the applicant of a trademark, discussed in that opinion on a subsidiary issue of laches, by one Rubin, not a party to the opposition. The alleged assignment was dated February 7, 1947, which was prior to the effective date of the Lanham Act. The application assigned was filed under the Act of 1905 and was abandoned by the assignee. But of most significance was the finding by the court that at the time of the alleged assignment Rubin had no going business and had not sold any perfume (the mark was for perfume) for five years prior to the purported assignment. In all of this the court said it could find no basis of a finding for laches and acquiescence on the part of opposer amounting to an estoppel of opposer's right to oppose. The case is a long way from the issue in this case. The part quoted and most

Aff'd, 279 F. 2d 607, 125 USPQ 607.

relied on by appellant was in turn a quotation from the opinion of the Examiner-in-Chief citing another decision of this court, in 1939, Kelley Liquor Co. v. National Brokerage Co., Inc., 26 CCPA 1110, 102 F. 2d 857, 41 USPQ 311. In that pre-Lanham Act case the Court pointed out (CCPA 1115) :

By reason of the particular facts in this case, however, we do not hold that the claimed transfer from Kelly Brothers Company to appellant constituted an abandonment of its trade-mark by Kelly Brothers Company. That question is not before us.

We do not find, therefore, any authority in support of the contention that Osborne's assignment, even if it did not effect a valid transfer, necessarily resulted in an abandonment of the mark within the intent of section 14(c).

However, we do not believe that the assignment was invalid. Unlike the cases relied on, Osborne, so far as the record shows, was using the mark at the time he executed the assignment of it. He had a valid registration which he also assigned. With these two legal properties he also assigned, in the very words of the statute, "that part of the goodwill of the business connected with the use of and symbolized by the mark ***." He was selling chicks which his advertising of record shows were designated as "No. 111 HY-CROSS (Trade Mark) AMERICAN WHITES." As part of his assignment, by assigning the goodwill, he gave up the right to sell "HY-CROSS" chicks. This had been a part of his "business." By the assignment Welp, the assignee, acquired that right. The record shows that he began selling "Hy-Cross Hatching Eggs" and chicks designated as "HY-CROSS 501,” “HY-CROSS 610," and "HY-CROSS 656." Thus, what had once been Osborne's business in "HY-CROSS" chicks became Welp's business. We do not see what legal difference it would have made if a crate of eggs had been included in the assignment, or a flock of chickens destined to be eaten.

[3] As for the argument that the transfer should have been held illegal because Osborne sold one kind of chick and Welp sold another under the mark, whereby the public would be deceived, we think the record does not support this. The type of chick appears to have been otherwise indicated than by the trademark, as by the numbers above quoted as well as by name. Osborne, moreover, was not under any obligation to the public not to change the breed of chicks he sold under the mark from time to time.

For the foregoing reasons we believe that appellant has failed to show error in the decision of the Trademark Trial and Appeal Board and it is affirmed.

MARTIN, J., did not sit or participate because of illness.

304 F. 2d 899; 134 USPQ 174

IN RE HAROLD R. LUCE (No. 6759)

PATENTS

1. PATENTABILITY-EVIDENCE OF COMMERCIAL SUCCESS-DOUBTFUL Cases Normally it is unnecessary to consider allegations of commercial success where there is no doubt that device is not patentable.

United States Court of Customs and Patent Appeals, July 11, 1962 APPEAL from Patent Office, Serial No. 587,618

[Affirmed.]

Wesley B. Taylor, Oberlin, Maky & Donnelly (Almon S. Nelson, of counsel) for the appellant.

Clarence W. Moore (Raymond E. Martin, of counsel) for the Commissioner of Patents.

[Oral argument January 9, 1962, by Mr. Taylor and Mr. Martin]

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK'

2

WORLEY, Chief Judge, delivered the opinion of the court: Appellant seeks a patent on an "Automobile Floor Mat." His application was rejected by the Primary Examiner as being obvious in view of the teachings of the prior art. The Board of Appeals affirmed. Appellant asks us to reverse.

The single drawing in appellant's application illustrates the device.

5

2

3

2

That drawing depicts what appellant says is "one of the various structural forms" covered by the single claim before us:

7. A non-preshaped, flat molded, one-piece accessory automobile floor mat adapted to acquire the configuration of an automobile floor comprising two plane portions, and inclined toeboard portion contiguous with each such plane portion,

1 United States Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294 (d), Title 28, United States Code.

* Serial No. 587,618, filed May 28, 1956.

and a central longitudinal hump located between such plane and toeboard portions, said mat comprising two substantially plane sections for covering the plane portions of the floor, an intervening section integral with and joining adjacent areas of said plane sections, said intervening section normally constituting a planar continuation of said plane sections but adapted for stretching snugly to enclose the hump of said floor and thereby become deformed to an arcuate shape while retaining said plane sections in a fixed position relatively to each other, each of the substantially plane sections having a further substantially plane section hinged thereto for angular relation therewith, said further plane sections thereby being spaced apart a distance approximately equal to the width of said hump and extended forwardly of the intervening section without connection therewith to enable said intervening section to assume the configuration of said hump without interference and to permit individual positioning of said further plane sections over a toeboard without interference with each other or any extension of said hump into said toeboard.

The only reference relied on below is:

Kravitz, 2,505,554, April 25, 1950.

One embodiment of the floor mat Kravitz is shown in the following drawing from that patent:

The drawings show comparative constructions disclosed in the application and reference patent. They are both of flat single-piece construction, both made of a flexible material and both designed to provide a wrinkle-free floor mat for automobiles.