Application of Esso Standard Oil Company , 305 F.2d 495 ( 1962 )

RICH, Judge.

Esso Standard Oil Company appeals from the affirmance by the Trademark Trial and Appeal Board of the denial of registration on the Principal Register of the design features of the label used on its “Esso” motor cleaner (124 USPQ 77), application Ser. No. 19,010, filed November 9, 1956, alleging first use in “commerce” in January 1950.

The Mark

The following is a reproduction of the application drawing, which is lined for color according to Patent Office rules:

What it depicts is a development, on a flat surface, of a label background which, in use, is on a cylindrical surface such as that of a 1-quart can of the type in which motor oil is commonly sold in gas stations. Motor cleaner is named in the application but the can used is of the same type as is used for motor oil.

Thus developed and illustrated, the label has four horizontal colored bands, two oval frames, and four little dots. The top band is bright red. The band below it is white. The next band is a narrow red stripe and the bottom band is dark blue. The two oval frames are dark blue, are positioned about 80% in the top red band and 20% in the white band, and are so spaced that they will appear, in use, on opposite sides of the can. Above each oval frame is a small white dot and below each frame, in the white band, is a small red dot.

In actual use there is printing on the label. “Esso” appears in each oval frame. Under each frame and above the red dot the name of the product, “MOTOR CLEANER,” appears in large letters. Instructions for use and the like appear on the sides in small print.

It is evident that what appellant seeks to register is the appearance of the sidewall of the container for the goods, the design of its total label, apart from the printing which appears thereon which includes its trademark “ESSO.” Otherwise stated, the mark sought to be registered may be accurately characterized as background display.

Proceedings Below

The examiner’s final rejection raised the question whether the subject matter sought to be registered “is a trademark identifying applicant’s goods and distinguishing them from those of others and stated his negative conclusions that: (1) the mark is “merely, the color scheme” used as a carrying device to display the wording and would be so regarded by purchasers, rather than as a trademark; (2) “color alone, unless displayed in a distinct or arbitrary design, does not function as a trademark and when it constitutes merely a background, even though displayed in three colors, it is not recognized as such”; and (3) the mark is not “a means whereby the applicant’s goods ‘may be’ distinguished from the goods of others.” He held the mark “performs no trademark function.”

Following this final rejection, appellant caused a limited survey to be made by some college students employed by an attorney to get answers to prepared questions from people they accosted for that purpose in certain communities in northeastern New Jersey. It submitted the evidence thus obtained to the examiner, asking reconsideration. He reaffirmed his position that the mark does not function as a trademark.

The board stated the issue to be “whether the matter presented is a trademark which identifies and distinguishes applicant’s goods.” First it concluded that “Without the poll, applicant clearly cannot prevail.” Having done this, it next considered whether the poll established that the “applicant’s label design has acquired a secondary meaning,” devoting most of' its opinion to the latter question and reaching the conclusion that the poll “is not persuasive that the purchasing public in general associates the label design sought to be registered with applicant as an identifying and distinguishing symbol.”

Opinion

In view of our disagreement with the board on the first conclusion it reached, we find it unnecessary to pass on the sufficiency of the evidence to establish “secondary meaning.” Appellant has presented his case on the basis, first, that the mark is registrable as an identifying and distinguishing symbol which purchasers would regard as an indication of source or origin; and, second, that if the court does not agree that such is the case from an examination of the mark, then the survey shows that purchasers in fact do so regard it and distinctiveness has been established as a fact, entitling appellant to registration as contemplated by section 2(f) (15 U.S.C. § 1052(f), 15 U.S.C.A. § 1052(f)).

While we have often said in trademark cases that prior decisions are not very helpful in deciding such matters as likelihood of confusion, descriptiveness, and the like, where we have to render subjective judgments on the basis of comparison of marks or marks and words in common use, we have a different kind of issue here which is whether a certain kind of label design on its face is or is not capable of functioning as a trademark within the contemplation of the Lanham Act. When we have passed on that very issue with respect to a label of the same type which is involved here, we think that such a decision is not only helpful but is controlling.

In our judgment we have a controlling precedent in In re Swift & Co., 223 F.2d 950, 42 C.C.P.A. 1048 (1955). The mark there, as illustrated in our opinion, was the design portion or background display of a composite mark on a cylindrical can of household cleanser. The mark sought to be registered consisted of the background of a covering label having horizontal bands of color, consisting of, from top to bottom, a narrow red band, a wide white band, a not quite so wide bottom red band. The two red bands were covered with small white dots to produce a polka dot pattern.¹ This court held the mark to be distinctive as a combination of elements making up an arbitrary and distinctive design capable of functioning as a trademark within the so-called definition of trademarks in the Lanham Act, section 45 (15 U.S.C. § 1127, 15 U.S.C.A. § 1127), and according to the concept of a trademark as stated in Columbia Mill Company v. Alcorn, 150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144. We are unable to see how any distinction can be made, in principle, between the Swift case and the instant case. We consider the red, white and blue “ESSO” label with its distinctive proportions and arrangement of elements to be inherently distinctive. We therefore disagree with the board’s initial judgment that without the poll applicant clearly cannot prevail. We hold that on its face appellant’s mark is a trademark and is registrable subject matter.

The only cases other than its own decicisions relied on by the board are In re E. J. Brach & Sons, 256 F.2d 325, 45 C.C.P.A. 998, and Marcalus Manufacturing Co., Inc. v. Watson, 103 U.S.App.D.C. 299, 258 F.2d 151. In the Brach case, which involved a mark in the form of a four-sided line frame with a sort of flourish at the upper left corner, within which frame the word mark “Brach’s” was displayed in use, we discussed the Swift case, which has not been mentioned by the Patent Office in the instant case, and said:

“ * * * it must be made clear that it is not every case in which the background display of a mark is sought to be registered apart from the word mark with which it is associated that secondary meaning must be shown. It is only in those eases where what is sought to be registered is ‘mere background material’ that this holds true. This distinction is important, for this court has approved the registration of background material apart from the word marks with which it is associated, without any proof of secondary meaning of the former. In re Swift & Co. * * * the essential question is whether or not the background material is or is not inherently distinctive. * * * If the background portion is inherently distinctive, no proof of secondary meaning need be introduced; if not, such proof is essential.”

In the Brach case it was the opinion of the court that the mark sought to be registered “is not itself distinctive.” In the Marcalus case the mark held unregistrable appears to have been merely a maroon oval used as a background for word marks on packages of paper products, the oval being described by the Court of Appeals as “a common basic shape.” This court held a simple oval outline to be not inherently distinctive in In re Hillerich & Bradsby Co., 204 F.2d 287, 40 C.C.P.A. 990.²

There has been much discussion in this case of our recent decision in In re Schenectady Varnish Co., Inc., 280 F.2d 169, 47 C.C.P.A. 1156, wherein we reversed the board after it had rendered its decision herein. We held a background design consisting of a cloud and superposed lightning bolt panel to be registrable. In that case, however, our approach was the reverse of what it is in the present case. We said that since there was sufficient evidence to convince us that the design had become distinctive of appellant’s goods in commerce, it was unnecessary for us to pass on whether the design was intrinsically distinctive. It is not a precedent, therefore, on the latter question. And since we are not here considering the contention of appellant that he proved “secondary meaning”, that is to say acquired, as distinguished from inherent, distinctiveness, the case is irrelevant. In re Swift & Co., supra.

The decision of the board is reversed.

Reversed.

WORLEY, Chief Judge, concurs in result only.

1 . In actual use the bands were red but the application drawing did not indicate any color. The design was held distinctive regardless of particular color.

2 . We also held ineffective the attempt to prove that the oval had come to have trademark significance to the “bat conscious public” as indicating the origin of baseball bats. In construing that decision, however, it should not be overlooked that the evidence showed that appellant made bats for other companies and “permitted” them to use ovals surrounding their word marks so that the mere use of an oval in that manner could not in fact indicate origin.