The Trade-Mark Registration Act declares (§ 5) that no mark by
which the goods of the owner may be distinguished from other goods
of the same class shall be refused registration on account of the
nature of such mark, with certain exceptions, and with the proviso
that no mark shall be registered which consists merely in words or
devices which are descriptive of the goods with which they are
used, or of the character or quality of such goods.
Held
that a mark consisting of a fanciful design in combination with
certain words forming part of it was not debarred from registration
by reason of the fact that some of the words -- "Moistair Heating
System" -- were descriptive; that to require the deletion of such
descriptive words because of their descriptive quality as a
condition to registration of the mark was erroneous, and that the
act would be fully complied with if registration were permitted
with an appropriate declaration on the part of the applicant
disclaiming any right to the exclusive use of the descriptive words
except in the setting and relation in which they appeared in the
drawing, description, and samples filed with the application. P.
252 U. S.
543.
While there is no specific provision for disclaimers in the
statute, the practice of using them is approved. P.
252 U. S.
545.
Page 252 U. S. 539
The statute should be construed liberally, in fulfillment of it
purpose, to promote the domestic and foreign trade of the country.
P.
252 U. S.
545.
48 App.D.C. 110 reversed.
The case is stated in the opinion.
MR. JUSTICE CLARKE delivered the opinion of the Court.
The petitioner, a corporation, filed an application in the
Patent Office for the registration of a trademark, which is
described as follows:
"A design like a seal, comprising the head of an Indian chief
surmounting a scroll bearing his name, 'Doe-Wah-Jack' and
surrounded by a circle, outside of which appeared the words 'Round
Oak' and 'Moistair Heating System' in a circle, and the whole being
surrounded by a wreath of oak leaves."
It will be useful to reproduce the drawing filed with this
application:
image:a
It was averred that the petitioner had used the mark for more
than eighteen months before the application
Page 252 U. S. 540
was made by applying it to "hot-air and combined hot-air and
hot-water heaters and furnaces by having the same cast into the
metals of which the systems were constructed."
The Commissioner found that the mark did not conflict with any
other that was registered, and that the petitioner was entitled to
the exclusive use of it excepting the words "Moistair Heating
System." It was ordered that the mark might be registered if the
excepted words, objectionable because descriptive, were "erased" or
"removed" from it, but that the filing of a disclaimer would not
suffice to secure registration.
Not satisfied with this result, the petitioner appealed to the
Court of Appeals for the District of Columbia, and its judgment
affirming the decision of the Commissioner of Patents is before us
for review.
The ground of both decisions is that the words "Moistair Heating
System" are merely descriptive of a claimed merit of the
petitioner's system -- that, in the process of heating, moisture is
added to the air -- and that one person may not lawfully monopolize
the use of words in general use which might be used with equal
truthfulness to describe another system of heating. For this
reason, it was held that the case falls within the proviso of the
Registration Act of 1905, declaring that no mark consisting merely
in words or devices which are descriptive of the goods with which
they are used or of the character or quality of such goods shall be
registered under the terms of the act. Act of Feb. 20, 1905, c.
593, § 5, 33 Stat. 725, amended January 8, 1913, c. 7, 37 Stat.
649.
No question of patent right, or of unfair competition, or that
the design of the trademark is so simple as to be a mere device or
contrivance to evade the law and secure the registration of
nonregistrable words, is involved.
Nairn Linoleum Co. v.
Ringwalt Linoleum Works, 46 App.D.C. 64, 69.
Page 252 U. S. 541
This statement makes it apparent that the question presented for
decision is whether the applicant may lawfully register the words
"Moistair Heating System," when combined with the words "Round
Oak," as a part of its purely fanciful and arbitrary trademark
design, as shown in the drawing filed, and when claim to exclusive
use of the words apart from the mark shown in the drawing is
disclaimed on the record.
An account of the process of decision, in the Patent Office and
in the Court of Appeals by which the result in this case was
arrived at, as it appears in the brief of the Commissioner of
Patents, is suggestive and useful. From this we learn that, when a
mark has been presented for registration consisting merely (only)
of descriptive words or devices, registration has been uniformly
refused. When "composite" marks, such as contain both registrable
and nonregistrable matter, have been presented for registry with
features in them which conflicted with earlier marks registered by
other than the applicant, the complete rejection, "eradication," of
the conflicting portions has been uniformly required before
registry was allowed. But where there was no such conflict, and the
only objection was that descriptive words were used, the practice
of the Patent Office prior to the decision, in 1909, of
Johnson
v. Brandau, 32 App.D.C. 348, was to permit the registration of
marks containing such words where they were associated with
registrable words or were a part of an arbitrary or fanciful design
or device, it being considered not necessary to delete the
descriptive matter, even when it was an essential part of the
composite trademark as it had been used by the applicant, provided
it was clearly not susceptible of exclusive appropriation under the
general rules of law. After the decision of
Johnson v.
Brandau, 32 App.D.C. 348, a practice grew up in the Patent
Office, not provided for in the statute, of allowing an applicant
to disclaim objectionable descriptive
Page 252 U. S. 542
words in cases where to require their actual removal would
result in so changing the mark that it would not readily be
recognized as that shown in the drawing or specimen filed with the
application. The customary form of such disclaimer was a statement
filed that no claim was made to the designated words, as, for
example, "Moistair Heating System," apart from the mark shown in
the drawing -- this was interpreted as meaning that only when taken
in connection with the remaining features of the mark did the
applicant make claim to their exclusive use. Ex parte Illinois Seed
Co., 219 O.G. 931.
Such disclaimer became a part of the applicant's statement in
the record, and necessarily formed a part of the certificate of
registration as it would appear in the copies of it furnished to
the applicant and the public pursuant to § 11 of the act.
Then came the decisions in
Fishbeck Soap Co. v. Kleeno
Manufacturing Co., 44 App.D.C. 6, and
Nairn Linoleum Co.
v. Ringwalt Linoleum Works, 46 App.D.C. 64, which, says the
Commissioner of Patents, were understood as disapproving the
practice of disclaimer, and since they were rendered, registration
of merely descriptive matter has not been allowed in any form, but
its actual deletion from the trademark drawing has been required,
with, however, an apparent exception in the case of Rinsburger, 8
T. M.Rep. 567, 128 MS. Dec. 141. The judgment we are considering,
requiring, as it does, the "elimination" of the descriptive words,
shows that the Commissioner correctly interpreted these two
decisions of the Court of Appeals.
It is apparent from this rehearsal that the Commissioner of
Patents has promptly and cordially accepted for his guidance the
decisions of the Court of Appeals, and although he avoids a
controversial attitude in his brief and gives a colorless history
of the practice of his office,
Page 252 U. S. 543
still it is manifest that, in this case and in others, the court
has very radically changed that practice with respect to permitting
registry of composite trademarks, and that its decisions have
turned upon the construction of the second proviso, referred to in
the fifth section of the Registration Act, which is made the basis
of the judgment we are reviewing.
The Registration Act of 1905 (33 Stat. 724), amended in 1906 (34
Stat. 168) and in 1909 (35 Stat. 627) and in 1913 (37 Stat. 649),
without changing the substantive law of trademarks, provided, in
the manner prescribed, for the registration of marks (subject to
special exceptions) which, without the statute, would be entitled
to legal and equitable protection, and the case before us calls
chiefly for the construction of the provisions of § 5 of that act,
which, so far as here involved, are as follows:
"That no
mark by which the goods of the owner of the
mark may be distinguished from other goods of the same class
shall be refused registration as a trademark on account of
the nature of such mark unless"
etc.,
"
Provided, that
no mark which consists . . .
merely in words or devices which are descriptive of the goods with
which they are used, or of the character or quality of such goods .
. .
shall be registered under the the terms of this
Act."
It was settled long prior to the Trade-Mark Registration Act
that the law would not secure to any person the exclusive use of a
trademark consisting merely of words descriptive of the qualities,
ingredients, or characteristics of an article of trade -- this for
the reason that the function of a trademark is to point
distinctively, either by its own meaning or by association, to the
origin or ownership of the wares to which it is applied, and words
merely descriptive of qualities, ingredients, or characteristics,
when used alone, do not do this. Other like goods, equal to them in
all respects, may be manufactured or
Page 252 U. S. 544
dealt in by others, who, with equal truth, may use, and must be
left free to use, the same language of description in placing their
goods before the public.
Canal Co. v.
Clark, 13 Wall. 311,
80 U. S.
322-324;
Manufacturing Co. v. Trainer,
101 U. S. 51,
101 U. S. 54;
Manhattan Medicine Co. v. Wood, 108 U.
S. 218,
108 U. S. 222;
Goodyear India Rubber Glove Mfg. Co. v. Goodyear Rubber
Co., 128 U. S. 598;
Lawrence Manufacturing Co. v. Tennessee Manufacturing Co.,
138 U. S. 537,
138 U. S. 547;
Brown Chemical Co. v. Meyer, 139 U.
S. 540;
Elgin National Watch Co. v. Illinois Watch
case Co., 179 U. S. 665;
Standard Paint Co. v. Trinidad Asphalt Mfg. Co.,
220 U. S. 446.
Thus, the proviso quoted, being simply an expression in
statutory form of the prior general rule of law that words merely
descriptive are not a proper subject for exclusive trademark
appropriation, if the application in this case had been to register
only the words "Moistair Heating System," plainly it would have
fallen within the terms of the prohibition, for they are merely
descriptive of a claimed property or quality of the petitioner's
heating system -- that, by it moisture is imparted to the air in
the process of heating. But the application was not to register
these descriptive words "merely," alone and apart from the mark
shown in the drawing, but in a described manner of association with
other words, "Round Oak," which are not descriptive of any quality
of applicant's heating system, and as a definitely positioned part
of an entirely fanciful and arbitrary design or seal, to which the
Commissioner found the applicant had the exclusive right.
Since the proviso prohibits the registration not of merely
descriptive words, but of a "trademark which consists . . . merely"
(only) of such words -- the distinction is substantial and plain --
we think it sufficiently clear that such a composite mark as we
have here does not fall within its terms. In this connection, it
must be noted that the requirement of the statute that
Page 252 U. S. 545
no trademark shall be refused registration except in designated
cases is just as imperative as the prohibition of the proviso
against registration in cases specified.
While there is no specific provision for disclaimers in the
trademark statute, the practice of using them is commended to our
judgment by the statement of the Commissioner of Patents that, so
far as known, no harm came to the public from the practice of
distinguishing, without deleting, nonregistrable matter in the
drawing of the mark as registered, when a statement, forming a part
of the record, was required that the applicant was not making claim
to an exclusive appropriation of such matter except in the precise
relation and association in which it appeared in the drawing and
description.
It seems obvious that no one could be deceived as to the scope
of such a mark, and that the registrant would be precluded by his
disclaimer from setting up in the future any exclusive right to the
disclaimed part of it. It seems obvious also that to require the
deletion of descriptive words must result often in so changing the
trademark sought to be registered from the form in which it had
been used in actual trade that it would not be recognized as the
same mark as that shown in the drawing which the statute requires
to be filed with the application, or in the specimens produced as
actually used, and therefore registration would lose much, if not
all, of its value. The required omission might so change the mark
that in an infringement suit it could be successfully urged that
the registered mark had not been used -- and user is the foundation
of registry. Section 2. Of this last, the case before us furnishes
an excellent example. To strike out "Moistair Heating System" from
the applicant's trademark would so change its appearance that its
value must be largely lost as designating to prior purchasers or
users the origin of the heating system to which it was applied.
The commercial impression of a trademark is derived
Page 252 U. S. 546
from it as a whole, not from its elements separated and
considered in detail. For this reason, it should be considered in
its entirety (
Johnson v. Brandau, supra), and to strike
out any considerable part of it, certainly any conspicuous part of
it, would be to greatly affect its value. Of course, refusal to
register a mark does not prevent a former user from continuing its
use; but it deprives him of the benefits of the statute, and this
should not be done if it can be avoided by fair, even liberal,
construction of the act, designed as it is to promote the domestic
and foreign trade of our country.
Thus, the case comes to this: that the Commissioner found that
the trademark presented for registration did not conflict with any
theretofore registered, and there is no suggestion of unfair
practice in the past or contemplated in the future; that it had
been used for eighteen months in the form proposed for registry;
that the words ordered to be stricken out from the drawing are
descriptive, but the mark does not consist "merely" in such words,
but is a composite of them with others, and with an arbitrary
design which, without these words, both the Commissioner and the
court found to be registrable; that the language of the statute
that no mark not within its prohibitions or provisos shall be
denied registration is just as imperative as the prohibitory words
of the proviso; and, very certainly, that a disclaimer on the part
of applicant that no claim is made to the use of the words
"Moistair Heating System" apart from the mark as shown in the
drawing and as described, would preserve to all others the right to
use these words in the future to truthfully describe a like
property or result of another system, provided only that they be
not used in a trademark which so nearly resembles that of the
petitioner "as to be likely to cause confusion in the mind of the
public or to deceive purchasers" when applied "to merchandise of
the same descriptive properties." § 5.
Page 252 U. S. 547
Such being the ultimate facts of this controversy, we cannot
doubt that the Court of Appeals fell into error in ruling that the
words "Moistair Heating System" must be "eliminated" from the
trademark of the applicant as it had been theretofore used, and
that the requirement of the act of Congress for the registration of
trademarks would be fully complied with if registration of it were
permitted with an appropriate declaration on the part of the
applicant that no claim is made to the right to the exclusive use
of the descriptive words, except in the setting and relation in
which they appear in the drawing, description, and samples of the
trademark filed with the application.
It results that the judgment of the Court of Appeals must be
Reversed.
MR. JUSTICE McREYNOLDS dissents.