293 F. 2d 685; 130 USPQ 412

ALFRED DUNHILL OF LONDON, INC. v. DUNHILL TAILORED CLOTHES, INC. (No. 6697)

TRADEMARKS

1. PRIOR ADJUDICATION-REGISTRATION-IN GENERAL

Right to use, and right to register, trademark are different causes of action; while issues actually litigated in another proceeding between same parties would be res judicata in subsequent proceeding between same parties, judgment determining right to use is not res judicata as to right to register inasmuch as right to register was not litigated.

2. REGISTRATION-IN GENERAL-TITLE-CONCURRENT USERS

Restrictions and conditions in concurrent registration are not, under common law principles of trademark law, restrictions and conditions on use of mark by registrant; so far as Lanham Act is concerned, registrant is free to do as he pleases in using mark; this follows from fact that he does not derive right to use from registration; at most, conditions in registration affect or limit only those rights derived from registration; right to use is not one of them, nor right to use in any particular way, or place, or on any particular goods. 3. REGISTRATION-IN GENERAL

Inasmuch as applicant's right to use mark was subjected to certain conditions by judgment in opposer's court action against applicant, registration may not be granted to applicant unless it conforms registration with the right to use which it possesses, as defined in judgment, by incorporating in registration the conditions to which right to use is subject.

4. TITLE CONCURRENT USERS

Two parties can own and register same trademark where there is a sufficient difference in goods; moreover, concurrent registration provisions of section 2(d) of Lanham Act contemplate it even in case of same or similar goods.

5. IN GENERAL-TITLE-CONCURRENT USERS

As property rights subject to ownership, trademarks are sui generis; since ownership grows out of and depends upon continuance of use and since parties have long used their marks, their rights having been determined by court's judgment, applicant within its legitimate field of use is as much an "owner" as is opposer.

6. APPLICATIONS TO REGISTER-AMENDMENT

As filed, application sought registration of “Dunhill”; thereafter, applicant amended drawing by adding "Tailors" after "Dunhill"; amendment merely conformed form of mark to rights established by court judgment in action between applicant and opposer; amendment was not admission that "Dunhill Tailors" is in legal effect the same as "Dunhill."

7. REGISTRATION-IN GENERAL

Right to register mark does not necessarily follow right to use.

8. APPEALS TO COURT-IN GENERAL

it.

Court should apply applicable statutory law although neither party invoked

9. TITLE-CONCURRENT USERS

Court agrees with holding of Ex parte Crown Beverage Corp., 102 USPQ 312, that clause of section 2(d) of Lanham Act, providing for concurrent registration when court has finally determined that more than one person is entitled to use same or similar marks in commerce, is not limited by provision of first clause of proviso respecting use of mark prior to any of the filing dates of applications involved.

10. CONCURRENT USE PROCEEDINGS IN GENERAL APPEALS TO COURT-ISSUES DETERMINED TRADEMARK CASES

In formally declared concurrent user proceedings, it is Board which decides respective rights of registration; it is not of any practical significance that present inter partes proceeding is called an "opposition" when facts are such as to require a decision on issue of concurrent registration; court makes such a decision since it has before it, as did Patent Office, both interested parties and the finally adjudicated facts on which they ask to have their rights determined, Commissioner has already decided to grant a registration, which in court's opinion would be "concurrent" whether so named or not, and that proposed registration has been published in Official Gazette, all as contemplated in section 2(d) of Lanham Act.

United States Court of Customs and Patent Appeals, August 16, 1961 1 APPEAL from Patent Office, Opposition No. 39,224

[Reversed.]

1

Watson Leavenworth Kelton & Taggart (Leslie D. Taggart, of counsel) for appellant.

Kaye, Scholer, Fierman, Hays & Handler (Sidney A. Diamond, of counsel) for appellee.

[Oral argument May 16, 1961, by Mr. Taggart and Mr. Diamond]

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

RICH, Judge delivered the opinion of the court:

Alfred Dunhill of London, Inc., opposer, here appeals from the decision of the Trademark Trial and Appeal Board, 124 USPQ 343, dismissing its opposition to registration of DUNHILL TAILORS on the Principal Register as a trademark for men's suits and overcoats. This opposition is unusual in that behind it lies an infringement suit brought by opposer against applicant, in which applicant counterclaimed for affirmative relief of various kinds. This suit, in the United States District Court for the Southern District of New York, is Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 119 USPQ 325. It was decided September 22, 1958, by the entry

1 Released December 28, 1961.

⚫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.

of a final judgment from which no appeal was taken. It is hereinafter referred to as the "suit."

On the basis of the decision in that suit, the applicant filed a motion to dismiss the notice of opposition on the ground that it failed to state a claim on which relief could be granted or, in the alternative, for summary judgment in favor of applicant. Opposer thereafter filed a cross-motion for summary judgment sustaining the opposition and requested an oral hearing.

The board denied oral hearing, denied opposer's motion for summary judgment, granted "Applicant's motion" and dismissed the opposition. Opposer speculates that it was applicant's motion for summary judgment, rather than to dismiss the opposition, that was granted but since the board did, in haec verba, dismiss the opposition, the distinction is of no importance. The parties agree that there is no genuine issue as to any material fact.

This case involves the single question of law whether, under the Lanham Act (Trademark Act of 1946, 15 U.S.C. § 1051 et seq.), applicant is entitled to registration on the basis of the rights of the parties hereto as settled in the suit.

Applicant, Dunhill Tailored Clothes, Inc., filed its application to register, Ser. No. 25,527, on March 5, 1957, claiming use since September 3, 1923. The application as filed asserted reliance on section 2(f) and alleged "substantially exclusive and continuous use in interstate commerce for the five years next preceding the date of filing of this application." The mark sought to be registered in the application as filed was DUNHILL and the specimen was a woven clothing label bearing DUNHILL, beneath the "hill" portion of which in relatively smaller letters was the word "Tailors" and under it "New York."

On April 18, 1957, opposer brought the suit referred to above against the applicant and on August 16, 1957, the examiner deferred action on the application pending outcome of the suit, in which final judgment was rendered September 22, 1958. November 18, 1958, the examiner refused registration because in the suit the applicant had been enjoined. Applicant responded on January 23, 1959, amending the drawing "by adding the word "TAILORS' after the name DUNHILL," pointing out that the injunction provided that it might use the mark DUNHILL TAILORS on certain named products for men including "clothing," and submitting new specimens of that mark. The application was passed for publication June 29, published July 21

It appears to be the usual practice to stay registration proceedings pending the outcome of court actions between the same parties involving related issues. A. E. Staley Mfg. Oo.. v. Staley Milling Co., 99 USPQ 175 (Com'r.), Townley Clothes, Inc. v. Goldring, Inc., 100 USPQ 57 (Com'r.), Squirrel Brand Co. v. Bernard Nut Co., Inc., 101 USPQ 340 (Com'r.), "Developments in the Law-Trade-Marks and Unfair Competition," 68 Harv. L. Rev. 814, 843.

(744 O.G. TM 109), and this opposition was filed August 18, 1959. Then followed the motions and the decision of the board dismissing the opposition on February 17, 1960.

No facts have been developed in the opposition except as they appear from the pleadings, applicant's motion in effect admitting the allegations of the notice of opposition. But in addition thereto we have before us the published opinion of the District Court for the Southern District of New York (following an unpublished oral opinion on June 11, 1958) which consists of Findings of Fact and Conclusions of Law (119 USPQ 325). Both parties argue this case on on the basis of acceptance of those findings and conclusions and the final judgment in the suit, which judgment is the fact of paramount importance on the issue before us.

Reference is made to the reported findings of fact in the suit for a more complete statement, the important facts relevant here being summarized below.

Opposer, Alfred Dunhill of London, Inc., is a Delaware corporation with offices in New York City. It was incorporated under its present name June 1, 1921 and began business as exclusive distributor in the United States of "Dunhill" products procured from Alfred Dunhill of London, England, who was succeeded in business by Alfred Dunhill Ltd., a corporation of Great Britain. Since May 15, 1922 opposer has operated a ground floor retail store in New York, in which "Dunhill" products are sold, its present store being on Fifth Avenue at 50th Street. The goods sold under the "Dunhill" trademark or trade name in 1922 and since included tobacco products, smoker's articles, miscellaneous men's jewelry, flat leather goods, canes, umbrellas, golf balls, razors, clocks, desk sets, playing cards, bridge sets, mahjong sets, silver tea sets, tea caddies, bar fixtures and accessories, luggage, brief cases, travel cases, toilet cases, and other gift items.

Opposer either owns or is a licensee under many trademark registrations of or including the name DUNHILL granted to it or to Alfred Dunhill Ltd., seventeen being listed in the notice, for tobacco products, lighters, razors, clocks and watches, pipes, cigar and cigarette holders, cosmetics, soaps and shaving creams, tobacco pouches, billfolds, purses, handbags, document cases, and wallets. One registration, No. 634,071, Sept. 4, 1956, claiming first use in 1929, is for "ALFRED dunhill" as a trademark for men's ties. It is the only registration of opposer or its licensor in the clothing field."

This registration, along with the other 16, is listed in the final judgment in the suit but before signing it Judge Dimock, the trial judge, struck it out of the list of which the judgment said: "The following United States trademark registrations are good, valid and outstanding:". He thus refused to hold it to be a valid registration but neither did he hold it invalid. For our purposes we presume it to be valid. The registrations are all identified in the board's opinion, 124 USPQ 343, and in the suit, 119 USPQ 325.

"Dunhill" had a special significance, meaning opposer and its products, before applicant made any use of the mark and prior to the incorporation of applicant and has such significance at the present time.

Applicant was incorporated under its present name, under the laws of New York, on August 13, 1923, by one William Block and no one by the name of Dunhill has ever had any connection with applicant or the Block family. From 1923 to 1955 applicant occupied upper floor places of business at 230 Fifth Avenue, 39 West 32nd Street, and 1 West 52nd Street in New York. Since then and at present it occupies a ground floor store at 65 East 57th Street.*

From 1923 to November, 1955 applicant was primarily in the clothing business but incidentally sold many items of haberdashery, men's jewelry and the like, closely similar in kind to the sort of goods opposer was selling. In November, 1955 it moved to the 57th Street store and there used, as it had earlier, the name "Dunhill" in referring to its various products and also used it in the term "Dunhill Tailors", wherein the word "Tailors" was subordinated. Finding of Fact 29 in the suit reads:

29. Defendant used the word "Dunhill" in its business at 65 East 57th Street with the purpose, intent and result that a substantial number of members of the purchasing public were confused, mistaken or deceived into the belief that defendant and its products were plaintiff and its products or that defendant was a part of or connected with plaintiff.

The district court concluded that applicant had infringed opposer's trademark and trade name rights, competed unfairly, and should be enjoined.

But there is another side to the story. The injunction which opposer obtained is, realistically, as much a decree protecting certain rights of applicant, which the court found to exist, as it is a victory for opposer. The equity court found rights in both parties to the suit and undertook to protect them both.

Findings of Fact 30 through 38 in the suit relate to events which occurred during the years 1930-56, a 26-year period, giving rise to an estoppel against opposer based on acquiescence. We shall not repeat them as they are succinctly summarized in Conclusion of Law 13, which was the basis of the judgment which both enjoins applicant and protects applicant in certain continuing rights to use "Dunhill,"

page

We observe, dehors the record, that applicant, as "DUNHILL TAILORS," has a ad, showing this address, on page 60 of The New Yorker for June 3, 1961, and that opposer, as "ALFRED DUNHILL OF LONDON Fifth Avenue at 50th St., New York," and elsewhere, has two 1% page ads on pages 78 and 102 of the same issue. The former is for slacks and sports Jackets and the latter for "Unique Gift[s]" consisting of desk clocks and Italian-made reproduction antique globes. This has not influenced our opinion. We set it forth merely as a matter of interest.