Singer Manufacturing Co. v. Birginal-Bigsby Corp. , 319 F.2d 273 ( 1963 )

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal,Board (132, USPQ ,471) dismissing, the opposition,q# appellants:(he;rein called -, “Singer”) to thp registration by appellee of the word-mark AMERICAN BEAUTY ■on the Principal Register “for sewing machines and parts thereof ¡and attach- , ments therefor,” • , i, •

'The-sole ground of’opposition as'sértéd ” in " this ' court is :-that ■ 'AMERICAN BEAUTY is not-registrable to 'appellee by--reason of section '2(e) (2)---of-the-Trademark Act of'1946 (15 UiS.0:1052 . (e) (2)), Thé relevant portions of the" statute read as follows:: a

“Sec. 2. 'Tradh-mhrks registrable oil'--'1' ■ - the principal “register “

“No trade-mark by which the goods of the applicant may be" dist'inguished fr'om the goods Of others shall be refuséd registration'on'the principal register'on account'-of1 its nature unless" it — •'■ • • • •'<1 -'

1 * ■ * ■■■ ';■» 4 1 '*■■''■■■■ v-

“(e) Consists of a' mark 'which'/5 * ' * *■ ' ' " 1 ' ’

“(2) when-applied'to' the'goods' of the applicant Ts primarily geo- ' graphically ’déscriptive' br'déeéptivéíy ■ rhisd'éScriptiVe -of'1 them,1

The, issue'under' this statute'as, formulated below, dealt with, hy, the 'board, and, apparently agreed upon, by the parties is, whether AMERICAN. BEAUTY,, when applied to(applicant’s goods,.is pri-. marily gép'grapfiiCálly'j.le'ceptivély misdé^; scriptivq ,óf fhosé gpódsV ’ This/pf cóuf,sé,'. involves two sepárate matters:, ( (1)' whether the '' márk ' ’ AMERICAN ' BEAUTY is geographically descriptive under the circumstances-of its us.e on, appellee’s. goods -.and. ,(2)- the' geographical Í) origin qf these gqods.,; Ifflie marcas, an indication,-.,-that, the..goods are .of • Apierirv can horigin a,nd the,.goods ure;pa £act,qf.foreign origin,.then the mark is,geographically misdeseriptivé.'. Íiíiskej3.e,rrp-, tivenesS of this¹- character wóúld,’it seems'; to us, necessarily be deceptive. ‘ ! l !’ *"

. The Origin of .Appellee’s Goods

■Testimony'- was -taken - which -established the-origin of: the- goods-on-which the- mark AMERICAN- BEAUTY had been -¡applied:-by: appellee. The. board opinion states the essential- facts, as to which there is no dispute, as follows:

“Applicant -obtains the' básic má'chiné, which is thé sewing machine ■ ’head, and: various' ether-' components such as the' accessory box and' instruction'book which accompany the machine,- from American . distributors -of ’Japanese-made ’ products. Thereafter,, applicant adds certain- - American-made parts--such as the.'' motor,- the motor controller; belt and ■ the cabinet and also applies the metal plate and/or decalcómañias which bear the - term ' ' ‘-AMERICAN BEAUTY’ to,the machine.. Thema-/ chines, when completely assembled,, are clearly marked ‘Made in-Japan’, on the heads, and ‘Made in U. S. A.’ on the motors thereof.”

In a footnote, the board -stated that the trademark admittedly had hot been used on attachments, contrary to the statement in the application.

On the basis of these facts, we are of the opinion that the sewing machines', as articles of" commerce, are of Japanese origin because the principal part of the completed article was made in Japan, namely the sewing machine head,' 'which' 'is the cohiplété "sevring ‘hiachine except for‘its driving motor and supporting Cabinet.Certaihly one desirous of buying a -sewing máchine made in the United' States would not accept such a machine.- .- ■ ’

The Mark as a Description of 'Geographic-Origin;--;-«, A

Tvm' members' of thé’ b'óaír d' joírié'd In saying, " - ’- ■’ _ -!a!' - '■'

", “'W'h'iíé,., "the" .term" '‘American'' "ÍB'eáuty’ (,ni^ay have oVertones'"'.of'" a geographic hatuie,' both ‘{he ’ áí'ctibh-r"' A A 'iv' it, .w-u'i ..¡, .rvu-U ary definition and common everyday meaning is that of a well-known rose. In view of all the foregoing, it is concluded that oppos'ers have failed to establish that the term ‘American Beauty’ is primarily geographically deceptively misdeseriptive Within thé meaning of 'Sectíon'2(e). (2) of'the Trademark Act.” " "

The third member of, the board dissented, writing 'a. ’lengthy',,opinion'.'in which he said, oh the above .point, , ’

“Unquestionably, the term ‘AMERICAN-’ ’ standing ' ‘alone '-is ■ purely - ‘ geographical:1 ‘AMERICAN 'BEAUTY’; 'moreovery has a'meaning'apart from that-Of a-particular 'rose: -‘AMERICAN’- is defined,- inter alia; in WebSter-’s New'" International1 'Dictionary, '.Second"-' Edition;■ (1947),1 aS- ‘of: -or'';perta'ining- to' the United 'States of Airiéri-11 cay. ’ ‘‘BEAUTY’ is- defined-in 'th®1same‘dictionary’as ‘a-beautiful'p'er-son -Or- thing’ and- fa par ticular gracer • feature,1 ornament;’ór¡ extel-lénée- and it 'is- 'listed'-in 'the ^Aineriika.'-'ia»-saurus'Ofi Slang’,-pubiished by ThOrii-R ¡as Y. Crowell" Company (T947'j;-as"a;1 synonym' for-''-sorriethiffg-i'excellent:'1 ‘AMERICAN-BEAUTY!, therefore,’-! also .signifies !an object1-Of'1 superior-''quality associated with or-originat-A ing in the’ United'States of AmericaAAccordingly,'it'seems clear■”’* its basic significance: -unquestiori-ably, is "geographic-in> that'it would immediately suggest to-the average-''purchaser that a product' sold thereunder originates in or is made in the United States. As applied' to applicant’s sewing machines which are made and assembled- in Japan, ‘AMERICAN BEAUTY’ is' clearly geographically misdeseriptive.”'

We are of the opinion that the dissenting: member of the' board has taken the correct view of the matter. “AMERICAN BEAUTY” is not a "term having only a single “pririiary” meaning. No doubt one looking it up 'in the dictionary, as ¿ specific definable term considered without regard to the context of its use, will find, as did the majority below, that it is the name of a specific rose. Viewed in á nursery catalog it would have that meaning. Even in that context, however, it has geographical significance, meaning a beautiful American rose. But the primary significance of the term,may change with usé1 'and 'what 'it is depénds "upo'n whére'it 'is used arid’ hOw ó'fié encounters it. Flbrenz 'Ziegfeld,' thé 'grpat ‘showmán of whát has córiié fol "be ím'owri,' for ”rib clear riéááon;1 as tbé'“rq¿rihg’ ‘twenties,” the’ “great, “Glorifieir 'of "ttíé Ariiéricáh Girl,”' brióüght,intó'béirig'what were- populátly; teririéX’ ,’,at, l-th’¿' time' his ' “lorigstémhied Améríéah ‘BéáútieS” which were riot roses; at all but show girls.' And there was'a strong geographical eonnO-tation in that ekpressioii. -No'doub't this wks a play ion- words based - on- the’-pre'éxisting name of. a popular-rose, but use-of the-term>'in''a;reviéw-!'of the'Ziegfeld Follies, -wfiuld ¡refer1-to "FolIies¡'Girls',' nót'-roses, and-that ¡would there-be-its “primary” meaning. Not all of such,méánirigis .-are-to be found in dictionaries.

The ’’récord ' ShoivS " that’ ‘the words-. “AMERICAN"BEXUTY” have been ap- , plied -in large, prbririnent -type- on. the' arm *of "sewing'¡machine'heads!,', the-'riiachirie's. being/íadvei-tised by ■literature! andsnews■paper:) advertisements..using! 'expression's, ■such - as.:-' '“The American. Beauty-^thbrvorldV.-most precious — Automatic -ZigZag : -Sewing Machine”■ “Comparé the-American Beauty With -The -Most ¡-Expensive. Sewing-Machinesthé American -Beauty “Needs -No -Attachments:”' .This advertising emanates from a 'Milwaukee, Wisconsin- concern which .op- - er-ates in that city the “American Beauty ■ Sewirig Center,” ■ In our judgment, -the--words “AMERICAN BEAUTY” convey-the impression of. a beautiful sewing machine made in America, this geographical-connotation‘.being- “primary”' ¡.under the--circumstances of their use. ■: . -

Under "the’ appellee’s' eircum'starices ’ of use, we believe the primary-geographical connotation to bé misdescriptivé when’ applied to sewing,’ ma"chines of Japanese origin, ás we have-held appellee’s machines to be.' We so-hold notwithstanding the fact that sufficiently diligent examination of fine print in some advertisements and on a label attached to the machines will advise one that the “AMERICAN BEAUTY” machine heads are in fact made in Japan. The misdescriptiveness of the predominant, if not blatant, mark is not altered by another and much less conspicuous notice on the machine correctly describing geographical origin. As above noted, we also feel that the misdescriptiveness under the circumstances of this case would necessarily be deceptive. It gives a false indication of geographical origin to that segment of the purchasing public which may be interested in the country of origin and in' purchasing American-made goods and it is likely to deceive them.

On the basis of the foregoing findings, it is evident that section 2(e) (2) applies to the facts established in this case and prohibits registration of the mark. The case has one other aspect requiring our consideration.

Singer’s Right to Oppose Registration

The applicant-appellee contends that Singer has not proved that it would be ■damaged by the registration. The factual situation underlying the question thus raised is unique. In broad outline it is as follows. Prior to World War II most of the household sewing machines sold in the United States were also made here. During the war American manufacturers were forced to discontinue production of sewing machines for home use and when the war was over were unable to meet the accumulated demand. In the early 1950’s imports began arriving to meet this demand and by reason of lower prices virtually eliminated the domestic sewing machine manufacturing industry, except for opposer. By 1959, in a total market of one and three quarter millions of sewing machines, over one million .Japanese machines were sold in this country. Many American companies formerly manufacturing sewing machines domestically are now importing them, primarily from Japan, and Singer is almost the only domestic manufacturer, certainly the only one of consequence. Attempting to capitalize on whatever preference there may be among the purchasing public for machines of domestic manufacture, it has directed its advertising toward capturing the customers having such a preference by emphasizing that its sewing machines are made in America by American craftsmen. During a period of two or three years it spent an estimated million dollars on advertising featuring the fact of American manufacture.

It is clear that Singer competes with appellee for the domestic sewing machine market. Quite apart from a number of irrelevant matters considered below on this phase of the case, we think that as such a competitor, emphasizing truthfully the fact of the American manufacture of its product, Singer clearly has standing to oppose the registration to appellee of “AMERICAN BEAUTY” as a trademark for sewing machines of Japanese manufacture on the statutory ground that the mark as used by appellee is primarily geographically deceptively misdescriptive. That statutory prohibition being sustained — as we are sustaining it — Singer clearly has a sufficient interest to be permitted to oppose and is not an intermeddler. In DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 48 CCPA 909, at CCPA p. 918, we pointed out that “damage” will be presumed or inferred when the mark sought to be registered is descriptive of the goods of the opposer and the opposer is one who has an interest in using the descriptive term in its business, collecting a number of cases supporting the point: We also pointed to a number of cases which indicate that the reason for presuming damage is potential interference with opposer’s rights predicated on the statutory rights flowing from registration. In the present case, granting the registration sought by appellee would create, under section 7(b) of the statute, appellee’s prima facie right to use the mark “AMERICAN BEAUTY” on sewing machines shown to be of foreign manufacture. We believe that appellee is not entitled to such right and we can imagine :no one in a more appropriate position to raise the question than Singer. The continuing use of “AMERICAN BEAUTY” by appellee in the manner disclosed by the record is very likely to damage Singer 'by bringing about the sale of Japanese-made machines to those who, if not deceived as to their origin, would, instead, .purchase a Singer machine. It follows that a registration which would secure ■and bolster up the continuing right to use the geographically misdescriptive mark ■on Japanese machines, or machines of other foreign manufacture, would dam.age Singer.

For some reason the majority below •seems to have been of the view that it was incumbent on Singer to prove the existence of a general preference on the part of American sewing machine purchasers for machines of domestic manufacture, which proof was found to be lacking, and the fact that a million Japanese machines had been purchased by "the American public was apparently considered to be of some significance on the issue we are here discussing. We see no -such significance.

In nothing we have said do we mean to •disparage Japanese sewing machines. But it cannot be denied, and it scarcely ■requires proof to show, that many purchasers of many articles desire to buy "those of American manufacture, perhaps •only for reasons personal to themselves. ‘The majority below, on the basis of the record, said, “it may well be true that .some segment of the American public ■prefers sewing machines of American '.manufacture to Japanese machines.” We think that nothing more is required. That segment is entitled to buy according to its prejudices and preferences without the danger of being deceived or •confused by geographically misdeseriptive marks. We suppose that recognition -of that right is the reason for section 2 ■(e) (2); and being in the statute it ■should be enforced at the instigation of .anyone having a real interest in its enforcement without undue concern over just what the nature of the damage might, in future, be from granting the registration. Such “damage” is always speculative and not often subject to precise proof.

The decision of the board is reversed and the opposition is sustained.

Reversed.

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