Dynamet Technology, Inc. v. Dynamet Inc.

MILLER, Judge.

Dynamet Technology, Inc. (“plaintiff”), appeals from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (“TTAB”),¹ awarding priority to Dynamet Incorporated (“defendant”) in a trademark interference proceeding (No. 6,866)² declared January 21, 1971, involving plaintiff’s application³ to register DYNAMET for sintered titanium metal and defendant’s application⁴ to register DYNAMET for specialty metal products, namely: titanium rod and wire and nickel alloys rod and wire. We affirm on the priority issue and remand on the registrability issue.

Background

Plaintiff, during 1967 and the early months of 1968 (the critical time period involved herein), was engaged in research and development concerning special shapes to be produced from special alloys, and in producing and selling prototype titanium products. Its customers included members of the aircraft industry. The history of plaintiff begins in December of 1967 or January of 1968,⁵ when Stanley Abkowitz (currently plaintiff’s president) and John Siergiej formed an informal partnership called “Dynamet” or “Dynamet Company.” On January 31, the name “Dynamet Corporation” was registered with the Commonwealth of Massachusetts, and in May “Dynamet Corporation” was incorporated in Massachusetts. Prior to incorporation, business cards were printed in February; on February 25, Abkowitz attended an annual meeting of the American Institute of Metallurgical Engineers (“AIME”), where he chaired a program and was identified as associated with “Dynamet Corporation”; the partnership received supplies of raw titanium on or about February 1 and regularly thereafter; an order directed to “Dynamet” was received on February 13 from the Wyman-Gordon Company for one hundred pounds of processed powdered titanium; on March 12 this order was delivered in a drum on which “DYNAMET” was stenciled along with the company address; and on March 29, a prospectus was prepared which was distributed to potential investors.

Defendant’s history begins in August of 1967, when Peter C. Rossin (currently president, chief executive officer, and treasurer of defendant) decided to form a company to manufacture and sell specialty metal products, particularly titanium rod and wire products, to, inter alia, the aircraft fastener industry. He prepared a prospectus, which was distributed by mail and personal contact in August or September of 1967 to potential investors. The name “Dynamet” was chosen in October 1967, and on November 13, 1967, defendant was incorporated in Pennsylvania as “Dynamet Incorporated.” During its early stages, defendant’s headquarters was located at Rossin’s home. In December of 1967, Rossin obtained stationery, business cards, checks, and other corporation paraphernalia — -all bearing the corporate name; opened a checking account under the corporate name; and arranged for a separate telephone for defendant which was

billed to and paid for by defendant. Equipment necessary for defendant’s manufacturing operations was ordered on December 18,1967,⁶ a product price list, dated January 1, 1968, was prepared on defendant’s stationery covering the titanium products which defendant intended to supply to its customers; the price list was mailed out or hand-delivered to potential purchasers; and on January 25, F. H. Lenway Co. of San Francisco became defendant’s West Coast sales representative. In the following April, premises for defendant’s plant were leased, employees were hired, equipment was installed, and raw materials were purchased. Thereafter, titanium and nickel mill products were made and shipped under the DYNAMET name or trademark. Meanwhile, Rossin had been promoting defendant by personally contacting essentially all of the aircraft fastener producers and informing them of defendant’s intent to be a supplier of products for their use.⁷ One of the earliest contacts was on September 29, 1967, with Robert L. Sproat, a vice president of Standard Pressed Steel Company-

The TTAB found that plaintiff had made open and public use of DYNAMET as part of its trade name since February of 1968, relying for its finding upon plaintiff’s solicitation of potential customers for its powdered titanium products and Abkowitz’s attendance at the AIME meeting. The TTAB also found that the March 12, 1968, shipment further evidenced “an open and commercial use” of DYNAMET. (197 USPQ at 709.)

With respect to defendant, the TTAB found that, since December of 1967, it had made “open and notorious use” of DYNAMET “in connection with the promotion of its corporate activities through contact with potential customers of its goods in the aircraft fastener field.” It particularly relied upon the testimony of potential customer Sproat and defendant’s offering of its products to potential customers in the price list dated January 1, 1968. (197 USPQ at 711.) It found that defendant’s first use of DYNAMET in commerce was on a shipment on June 12, 1968, from Pittsburgh to New Jersey of a single titanium rod in a reinforced envelope. The TTAB held that, as between the parties, defendant possessed superior rights in DYNAMET. Accordingly, it refused registration to plaintiff.

Before the TTAB, plaintiff raised the issue of the sufficiency of the June 12, 1968, shipment to entitle defendant to a trademark registration. To this, the TTAB responded (197 USPQ at 712):

There is no doubt but that plaintiff’s comments relative to the June 12, 1968 shipment [see note 4, supra] involve to some extent speculation, surmise, and hearsay; but nevertheless beneath all of this smoke, a serious question remains as to the bona fide character of the shipment that requires clarification before a registration can issue to defendant on the application involved in this proceeding

The TTAB concluded that determination of the bona fide character of the June 12, 1968, shipment was a task initially for the examiner and that the application should be remanded to the examiner for further action.

OPINION

There are two questions involved in this appeal: (1) As between plaintiff and defendant, which party has superior rights, /. a, priority of use, in DYNAMET? (2) Is the party having superior rights entitled to a trademark registration for DYNAMET? ⁸

In a trademark interference proceeding, the time period of a party’s trade-name use of a word may be tacked onto its first date of trademark use on goods in interstate commerce for the purpose of establishing priority of trademark use. Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 1400, 59 CCPA 1016, 1019-20, 173 USPQ 673, 675 (1972); Alfred Electronics v. Alford Manufacturing Co., 333 F.2d 912, 51 CCPA 1533, 142 USPQ 168 (1964); see 15 U.S.C. § 1052(d).

It is well established that no property rights in a trademark for goods arise except in connection with its use thereon by an existing business entity.⁹ Similarly, it would seem that there can be no property rights in a trade name except in connection with its use with a business entity that has engaged in sufficient activities to have acquired goodwill, because a trade name is representative of the goodwill of a business entity.¹⁰ See American Steel Foundries v. Robertson, supra 269 U.S. at 380, 46 S.Ct. 160; In re Walker Process Equipment Inc., 233 F.2d 329, 330-31, 43 CCPA 913, 915, 110 USPQ 41, 42 (1956); Lawyers Title Insurance Co. v. Lawyers Title Insurance Corp., 71 App.D.C. 120, 109 F.2d 35 (1939), cert. denied, 309 U.S. 684, 60 S.Ct. 806, 84 L.Ed. 1028 (1940); 15 U.S.C. § 1127. See also 1 J. McCarthy, Trademarks and Unfair Competition §§ 4:4, 16:4 (1973); E. Vandenburgh, Trademark Law and Procedure § 1.21(e) (2d ed. 1968). Accordingly, to establish its right to tack the time period of its trade-name use of a word onto its first date of trademark use of the word on goods for the purpose of establishing priority of trademark use, a party must furnish evidence that, during the time period sought to be “tacked,” it was a business entity and had engaged in sufficient activities to have acquired goodwill.

A review of the evidence persuades us that by January of 1968 defendant was a business entity possessed of goodwill, that it was making trade-name use of DYNAMET, and that this use continued until June 12, 1968, the claimed date of first trademark use of DYNAMET, and thereafter. By January of 1968, all of the necessary corporate organization formalities had been performed, i. e., a prospectus had been prepared and distributed to potential investors, commitments for financial support from some twenty-three investors had been obtained, and the defendant had been incorporated under a name that included DYNAMET; a corporate office had been established; ¹¹ Rossin had visited potential purchasers of defendant’s products;¹² and other activities, each involving use of the corporate name, had been carried out — obtaining telephone service, checking account, checks, stationery, and business cards, ordering equipment necessary for manufacturing operations,¹³ and offering products to be manufactured in the price list dated January 1, 1968. Some of these activities, considered together, might not be sufficient to enable a business entity to acquire the goodwill required for trade-name use. See Steer Inn Systems, Inc. v. Laughner’s Drive-In, Inc., 405 F.2d 1401, 56 CCPA 911, 160 USPQ 626 (1969) (a business office door sign, letterhead, and architectural drawings not sufficient to establish prior use of trade name); Lawyers Title Insurance Co. v. Lawyers Title Insurance Corp., supra, (mere incorporation not sufficient for trade-name use); 1 J. McCarthy, supra at § 16:4. However, we are satisfied that defendant’s “package of activities” described above was sufficient.¹⁴

Since the earliest trade-name use alleged on appeal by plaintiff was February of 1968,¹⁵ we hold that defendant possesses the superior rights in DYNAMET. It follows that the TTAB’s refusal to grant a registration to plaintiff was correct.

Plaintiff repeats its argument before the TTAB that even if it does not possess superior rights in DYNAMET, defendant is not entitled to a trademark registration, because defendant’s allegation of use is based upon the single shipment of June 12, 1968, and that this did not amount to use of the mark on goods in interstate commerce within the meaning of the Lanham Act.

We note that a trademark interference proceeding is not limited to the issue of priority of use, but extends to the issue of whether the prior user is entitled to register the mark. Giant Food, Inc. v. Malone & Hyde, Inc., 522 F.2d 1386, 1393-94, 187 USPQ 374, 380 (Oust. & Pat.App.1975). Here the TTAB decided that defendant’s application should be remanded to the examiner to determine the issue of registrability of DYNAMET to defendant. As quoted earlier in this opinion, the TTAB said that “a serious question remains as to the bona fide character of the [June 12, 1968] shipment.” Expressing no opinion on this point, we believe the case should be remanded to the TTAB.

In view of the foregoing, the decision of the TTAB awarding priority of use of DYNAMET to defendant is affirmed, and the case is remanded for further proceedings on the question of registrability of DYNAMET to defendant.

AFFIRMED AND REMANDED.

1 . 197 USPQ 702 (1977).

2 . Section 16 of the Lanham Act, 15 U.S.C. § 1066, provides:

§ 1066. Interference; declaration by Commissioner

Whenever application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when applied to the goods or when used in connection with the services of the applicant to cause confusion or mistake or to deceive, the Commissioner may declare that an interference exists. No interference shall be declared between an application and the registration of a mark the right to the use of which has become incontestable.

Trademark interferences originating after March 1, 1972, the effective date of Rule 2.91(a) of the Trademark Rules of Practice, 37 CFR 2.91(a), are somewhat rare. The new rule provides:

§ 2.91 Interferences.

(a) An interference will not be declared between two applications or between an application and a registration except upon petition to the Commissioner. Interferences will be declared by the Commissioner only upon a showing of extraordinary circumstances which would result in a party being unduly prejudiced without an interference. In ordinary circumstances, the availability of an opposition or cancellation proceeding to the party will be deemed to remove any 'indue prejudice.

3 . Serial No. 303,664, filed July 26, 1968, and asserting first use on the goods in commerce at least as early as February 1968.

4 . Serial No. 301,002, filed June 21, 1968, and asserting first use on the goods in commerce on June 12, 1968. Defendant originally claimed June 7, 1968, as its first date of use, but, after trial, moved to change this date to conform to the evidence of use established at trial. The motion was granted in the absence of objections by plaintiff.

5 . Unless otherwise indicated, dates refer to 1968.

6 . A letter to shareholders on February 12, 1968, indicates that, as of that time, nearly $89,000 worth of equipment had been ordered.

7 . The record indicates that the products to be produced by defendant would be directed to a “very narrow segment of the industry” consisting of only a few potential customers.

8 . Likelihood of confusion if both parties contemporaneously used DYNAMET for their respective goods is not in dispute.

9 . American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317 (1926); United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141 (1918); Hanover Milling Co. v. Metcalf, 240 U.S. 403, 413-14, 36 S.Ct. 357, 60 L.Ed. 713 (1916). In Rectanus, supra 248 U.S. at 97, 39 S.Ct. at 50, the Supreme Court stated:

The law of trade-marks is but a part of the broader law of unfair competition; the right to a particular mark grows out of its use, not its mere adoption; its function is simply to designate the goods as the product of a particular trader and to protect his good will against the sale of another’s product as his; and it is not the subject of property except in connection with an existing business. [Emphasis added.]

10 . This is not to say that certain eleemosynary organizations cou’d not also acquire rights in trade names. See 1 R. Callmann, The Law of Unfair Competition Trademarks and Monopolies § 1.1, at 5 (3d ed. 1969).

11 . The fact that the corporate headquarters as of early January of 1968 was located in Rossin’s home is not material, particularly since the operations of the corporation were separately maintained.

12 . Defendant’s diligence in seeking purchasers of its products is further demonstrated by its January 25 appointment of F. H. Lenway Co. as its West Coast sales representative.

13 . The ordering of equipment demonstrated not only the recognition of defendant by its suppliers, but also a commitment on defendant’s part on which potential purchasers could rely for performance under the January 1 price list.

14 . Appellant argues that proper trade-name use of a word requires that the owner have goods available for sale or, at least, be capable of manufacturing the goods. However, this argument rests on a failure to perceive the distinction between a trademark use and a trade-name use.

15 . It is noted that the TTAB held that plaintiffs trade-name use of DYNAMET in connection with its activities during this month was sufficient to allow the time period commencing with February of 1968 to be tacked onto its subsequent first date of trademark use. In view of our decision, it is not necessary to consider the correctness of that holding.