In Re Riverbank Canning Co. , 95 F.2d 327 ( 1938 )

LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents, affirming that of the Examiner refusing to register the mark “Madonna” as a trade-mark for wines, on the ground that the use of the word, for such purpose, is scandalous within the meaning of section 5(a) of the Trade-Mark Act of February 20, 1905, as amended, 15 U.S.C.A. §85(a).

The present application was filed January 20, 1934, and was published July 17, 1934. Thereafter, and within the statutory period, an opposition was filed, based on the likelihood of confusion in trade.

On September 28, 1934, the Examiner of Trade-Marks requested the Commissioner to approve jurisdiction of the application for the purpose of refusing the registration applied for, on the ground that its registration for wines would be scandalous. This request was approved on September 28, 1934, and on October 8, 1934, registration was denied by the Examiner on the ground that to register the mark “Madonna” for wines “would be offensive to the provision of section 5(a) of the Act of February 20, 1905, which prohibits registration when a mark ‘consists of or comprises scandalous matter.’ ” A request for reconsideration of said decision was denied by the Examiner.

Upon appeal to the Commissioner, the decision of the Examiner was affirmed, whereupon the applicant appealed to this court for a review of such decision.

The only question involved herein is whether the word “Madonna,” as a trademark for wines, comes within the scope of the aforesaid section prohibiting the registration of any mark that “consists of or comprises immoral or scandalous matter.”

The word “scandalous” is in common use, and its meaning is well understood. Dictionary definitions are as follows:

“1. Causing or tending to cause scandal; * * * shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable. * * *” Funk & Wagnalls New Standard Dictionary.

“2. Giving offense to the conscience or moral feelings; exciting reprobation; calling out condemnation. * * *” Webster’s New International Dictionary, 1932.

This clause first appeared in the Trade-Mark Act of February 20, 1905. Its legislative history does not aid us in arriving at the intent of Congress in its enactment, and we must give to the word “scandalous” its ordinary and common meaning; applied to the case at bar, the question is whether the use of the mark “Madonna” upon wine which is not limited to a religious use may be held to be “shocking to the sense of * * * propriety,” or would such use give “offense to the conscience or moral feelings.”

The word “Madonna” is defined in Funk & Wagnalls New Standard Dictionary as follows: “1. My lady; signora: an old Italian form of address equivalent to madam. 2. (M-) hence, the Virgin Mary; also, a painted or sculptured representation of the Virgin. * * * ”

Webster’s New International Dictionary defines “Madonna” as follows:

“1. * * * My lady; — a term of address in Italian formerly used as the equivalent of madame, where signora is now substituted.

“2. a. An Italian designation of the Virgin Mary. b. A picture or a statue of the Virgin Mary."

While the primary meaning of the word “Madonna” in Italy may be, as above stated, “My lady” or “Madame,” there can be no doubt that in the United States, and among all English-speaking peoples, the word “Madonna” is generally understood to refer to the Virgin Mary or to a pictorial representation of the Virgin Mary.

It is well settled that the use of a word as a trade-mark has the same effect as the use of a picture, if the word means the same as the picture. In re Maclin-Zimmer-McGill Tobacco Co., Inc., 49 App.D.C. 181, 262 F. 635; Nestle & Anglo-Swiss Condensed Milk Co. v. Walter Baker & Co., Limited, 37 App.D.C. 148; J. P. Heilbronn Co. v. Hammermill Paper Co., 48 F.2d 963, 18 C.C.P.A., Patents, 1307.

We must, therefore, in considering the registrability of the mark “Madonna” as a trade-mark, consider also whether a pictorial representation of the Virgin Mary as a trade-mark for wines would be shocking to the sense of propriety or call out condemnation.

Of course, the word “Madonna” is not per se scandalous. We do not understand that appellant contends that a mark must be scandalous per se to come within the prohibition of the statute. Every one would concede that an application to register the name of the Supreme Being as a trade-mark would be properly rejected under the provision of the statute here under consideration. It is therefore obvious that, in determining whether a mark “consists of or comprises * * * scandalous matter,” consideration ordinarily must be given to the goods upon which the mark is used.

Appellant introduced into the record a number of registrations of the mark “Madonna,” applied to goods of various kinds, not containing alcohol, two of which registrations were granted to appellant.

Whether such registrations were properly issued is not before us, and their issuance constitutes no reason why the registration of appellant’s mark here involved should be allowed if it is in fact scandalous. See In re Ric-Wil Co., 87 F.2d 516, 24 C.C.P.A., Patents, 905.

Whether wine in-itself is harmless we are not called upon here to determine, and we express no opinion upon that subject. Probably a majority of the people of the United States believe that, moderately used, it is harmless, but it is likewise true that wine, generally speaking, is included within the term “intoxicating liquor”; that for a number of years, under national prohibition, the manufacture and sale of wine for use as a beverage was prohibited; that several states now prohibit such sale; and that, wherever its sale is permitted, the seller must be licensed and is subject to strict regulations governing the conduct of such business.

It is true that the Bible records that the Savior changed water into wine at the behest of his Virgin Mother at the wedding feast, and quotations can be made from the Bible commending the use of wine; but it is also true that the evils growing out of the excessive use of intoxicating beverages are probably much greater today than they were 1900 years ago.

In the case of Crane v. Campbell, etc., 245 U.Ss. 304, 38 S.Ct. 98, 99, 62 L.Ed. 304, the court said: “It must now be regarded as settled that, on account of their well-known noxious qualities and the extraordinary evils shown by experience commonly to be consequent upon their use, a state has power absolutely to prohibit manufacture, gift, purchase, sale, or transportation of intoxicating liquors within its borders without violating the guarantees of the Fourteenth Amendment.”

That wine, like any other intoxicating beverage, may be, and often is, used to excess, is a matter of common knowledge.

Appellant’s officers are evidently of the belief that the use of said mark would be an aid to its business. It may not be objected to by many wine drinkers, as the record tends’ to show by affidavits introduced by appellant; but it is a matter of common knowledge that the United States is not a wine-drinking country, such as are some of the countries of Europe, and probably only a very small minority of its people use wine even moderately. In determining whether the mark, used upon wine, is scandalous, we must consider the viewpoint, not of wine drinkers alone, but also of those who do not use wine as a beverage.

The Virgin Mary stands as the highest example of the purity of womanhood, and the entire Christian world pays homage to her as such. Her representation in great paintings and sculpture arouses the religious sentiments of all Christians.

We can readily understand that many who are accustomed to the use of wine as a beverage, remembering the use of it as a ■beverage in Biblical times, would not be shocked at the use of the word ‘‘Madonna” or a representation of the Virgin Mary as a trade-mark upon wine used for beverage purposes; but we also believe that there are many wine users who, knowing that the excessive use of wine is a great evil and not uncommon, would be shocked by such use of said mark upon wine, especially in view of the fact that such mark would probably be displayed, among other places, in barrooms.

In our opinion, to commercialize the name of, or a representation of, the Virgin Mary as a trade-mark is of very doubtful propriety, and we feel certain that its use upon wine for beverage purposes would be shocking to the sense of propriety of nearly all who do not use wine as a beverage, and also to many who do so use it; therefore, we think such use of the word “Madonna” would be scandalous and its registration prohibited under said trade-mark act.

The field is almost limitless from which to select words for use as trade-marks, and one who uses debatable marks does so at the peril that his mark may not be entitled to registration.

It follows from the foregoing that we must hold that the decision of the Commissioner was right, and it is affirmed.

Affirmed.