Hay v. Malone ( 1921 )

VAN ORSDEL, Associate Justice.

This is a trade-mark opposition proceeding, brought under section 6 of the Trade-Mark Act of February 20, 1905 (Comp. St. § 9491), and involves the right of appellant Hay to register the words “Hay-Po” as a trade-mark for hair dressing. The following is an illustration of the mark as actually used in trade:

The mark of the opposer, Malone, consists of substantially the same portraits “Before” and “After,” with the word “Poro” printed above, all inclosed within a circle. Opposer has established prior use of her mark.

[1] It is unnecessary to pass upon appellant’s right to register the word “Hay-Po” alone, since it does not appear that he has ever used it in trade independent of the other features of the mark as above shown. There must be actual trade-mark use to entitle the owner to registration. Hence appellant must stand or fall upon the actual use of the mark.

In a former proceeding, appellant attempted to register the mark above illustrated with the “Before” and “After” features, and was successfully opposed by appellee. On this point, the Commissioner, in his opinion, said:

“An applicant should not be allowed to register one feature of his mark when it discloses other prominent and material features. Such practice would enable an applicant using a compound mark, when rejected on a previous compound mark, to select the feature not shown in the prior mark and register it, and thus evade the rejection, although actually using a mark that infringed the prior mark. This would evidently lead to intolerable results.”

[2] We think appellee has clearly established that she would be injured by, the registration of appellant’s mark, and, where that fact is shown, the opposition should be sustained.

The, decision of the Commissioner of Patents is affirmed.

Affirmed.

M!r. Justice HITZ, of the Supreme Court of the District of Columbia, sat in the place of Mr. Justice ROBB in the hearing and’ determination of this appeal.