author:
BALDWIN, Judge.
      RICH, Judge

text:
    Application of HONEYWELL, INC.
    Patent Appeal No. 8994.
    United States Court of Customs and Patent Appeals.
    May 23, 1974.
    Leroy Rice, atty. of record, for appellant; Molinare, Allegretti, Newitt & Witcoff, Chicago, 111., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents, R. V. Lupo, Associate Sol., Eugene F. Desmond, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   BALDWIN, Judge.

Honeywell Incorporated appeals from the decision of the Trademark Trial and Appeal Board, 169 USPQ 619, refusing registration of a configuration of a portion of a thermostat, as a trademark for thermostats, on the Principal Register,

The application, alleging use since 1952, seeks registration of the following:

A smooth outer cover ring, or “decorator ring,” and a center disc positioned concentrically therein are depicted. These features were a portion of the subject matter of an expired design patent which the appellant had owned.

The trademark examiner had refused registration on the ground that the configuration was incapable of functioning as a trademark within the meaning of the statute since the outer ring and center disc were merely functional in nature and dictated by the configuration of the thermostat itself. The examiner contended that the configuration “is so fundamentally functional and utilitarian that the matter applied for is incapable of acquiring a legal recognizable secondary meaning or of becoming an enforceable trademark.” The examiner had also mentioned that “[t]he fact that applicant has secured a design patent covering the shape does not enhance applicant’s attempt to secure trademark protection for the same subject matter.”

The board chose to rely only upon appellant’s prior design patent to sustain the examiner’s refusal of registration and stated:

Apart from any consideration as to whether applicant’s configuration is essentially functional in character because it is formulated or designed to cover a round thermostatic device and is so arranged that the essential operating and temperature controlling and indicating mechanisms are visible to the operator thereof, registration must be refused on the ground that the registration sought by applicant would extend the monopoly which the applicant has enjoyed for a period of fourteen years from the issuance of the design patent on January 17, 1956. Applicant’s design patent, which expired during the pendency of the subject application, protected applicant for the fourteen year period against another’s making, using or vending a control instrument including a thermostat utilizing the ornamental design disclosed therein, admittedly substantially identical to the subject matter of the instant trademark application. Under Section 7(b) of the statute, a registration on the Principle [sic] Register affords the owner thereof, inter alia, prima facie evidence of the registrant’s ownership of the mark and exclusive right to use the mark in commerce in connection with the goods recited therein, and hence by reason thereof, the right to exclude others from the use and registration of the same or a similar design for similar goods during the life of the registration which is subject to renewal every twenty years. Since applicant’s design patent expired in 1970, it is apparent that the issuance of a registration for the same subject matter, including the same mark and goods, would be inconsistent with the right of others under the terms of the patent grant to make fair use of the ornamental design for control instruments including thermostats after the expiration of the patent and that it would serve, in effect, to extend the protection accorded the patented design contrary .to the purpose and intent of the patent law.

Before the board, appellant had argued that the decision of In re Mogen David Wine Corporation, 328 F.2d 925, 51 CCPA 1260 (1964), was determinative of the “extension of monopoly” issue upon which the board later based its decision. In Mogen David this court held that trademark rights exist independently of the rights resulting from the grant of a design patent, and that these trademark rights do not extend the patent rights. However, the board distinguished Mogen David from the case before it by stating:

The Mogen David case relied on by applicant is clearly distinguishable from the instant case in that the applicant was seeking to register the subject matter of the design patent, namely, the design or configuration of a bottle or container for a product contained therein, namely, wine and not for a bottle or container, per se, whereas here applicant is seeking to register the design of the product for the product itself.

OPINION

Request for Dismissal

Before addressing ourselves to the merits of this appeal, we must first consider a jurisdictional issue raised by the solicitor. Since this is a jurisdictional matter it is proper to raise it at any time. The solicitor calls to our atteption that appellant has presented only one reason of appeal, which concerns the alleged error of the board in its interpretation of the Mogen David decision as applied to the facts of this case. Since the examiner had refused registration on the additional ground of functionality, which the board’s decision did not explicitly reverse, the solicitor, apparently relying upon the rule formulated in In re Wagenhorst, 64 F.2d 780, 20 CCPA 991 (1933) and expounded upon in In re Boyce, 144 F.2d 896, 32 CCPA 718 (1944), submits that the examiner’s position on that issue must be viewed as having been affirmed by the board. Accordingly, the solicitor urges that appellant’s failure to file a reason of appeal challenging the propriety of that ground of refusal does not fulfill the minimum requirements of the statute for perfecting appeals to this court. Therefore, the solicitor, citing two additional patent cases, In re Gruschwitz, 320 F.2d 401, 50 CCPA 1498 (1963) and In re Dichter, 110 F.2d 664, 27 CCPA 1060 (1940), requests dismissal of this appeal.

We hold this request to be without merit inasmuch as the instant ease is not a patent case; nor does it involve multiple rejections which were presented in the eases relied upon by the solicitor. There was a single refusal of registration of a single alleged mark by the examiner. The board affirmed that refusal. The single reason, though perhaps not artfully drawn and unduly specific in referring to the Mogen David decision, when carefully read unquestionably states that the board erred in its decision that appellant cannot have a trademark registration for subject matter on which it had a design patent because such subject matter cannot be a trademark. The facts of this case which are of record show that what appellant is seeking to register was a portion of the subject matter of its design patent. The reason of appeal clearly brings before us the question of the registrability of that subject matter. The appeal, after all, is from the decision of the board, not the supporting reasoning in its opinion. There was one decision of unregistrability here and one reason of appeal —even though unnecessarily detailed— which is enough to bring it before us.

In recent years this court has liberally construed the requirement for reasons of appeal and a continuance of that policy dictates that we decline the Patent Office invitation to dismiss on a technicality.

For these reasons we hold that appellant’s single reason of appeal was sufficient to perfect its appeal to this court.

Extension of Patent Rights

Since the board predicated its decision solely upon appellant’s prior design patent and expressed no opinion on the examiner’s functionality reasoning, and that issue has not been briefed here, we treat herein only the design patent issue and intimate no view on whether or not appellant’s trademark is functional.

The solicitor has presented for our consideration a chain of authorities— Singer Manufacturing Co. v. June Manufacturing Co., 163 U.S. 169, 16 S.Ct. 1002, 41 L.Ed. 118 (1896); Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 59 S.Ct. 109, 83 L.Ed. 73 (1938); and Scott Paper Co. v. Marcalus Manufacturing Co., 326 U.S. 249, 66 S.Ct. 101, 90 L.Ed. 47 (1945) — which is said to stand for the principle that under the patent law, upon the expiration of a patent, the public may freely exercise its right to make, use, and sell the subject matter that was once protected by the patent grant. Therefore, the solicitor argues that registration of appellant’s trademark would serve to extend the rights to exclude that had existed during the life of appellant’s patent, contrary to the purpose and intent of the patent law. While we agree that the above principle is substantially correct ; the application of that principle will not always lead to the result urged by the solicitor. We believe the solicitor has failed to draw a crucial distinction between functional subject matter disclosed in utility patents and subject matter disclosed in design patents, which may or may not be functional, in the context of their relationship with trademarks. We believe that the decisions of this court have correctly recognized this distinction and are in harmony with the holdings of the Singer, Kellogg and Scott Paper decisions relied upon by the solicitor.

When federal trademark rights have been sought for functional subject matter disclosed in a utility patent, the decisions of this court, notably Best Lock Corp. v. Schlage Co., 413 F.2d 1195, 56 CCPA 1472 (1969), In re Shenango Ceramics, Inc., 362 F.2d 287, 53 CCPA 1268 (1966), In re Shakespeare Company, 289 F.2d 506, 48 CCPA 969 (1961), and In re Deister Concentrator Company, Inc'., 289 F.2d 496, 48 CCPA 952 (1961), indicate that the acquisition of such rights will not be allowed in view of the “overriding public policy of preventing their monopolization, of preserving the public right to copy.” In re Deister Concentrator Company, Inc., supra. These decisions turned upon the question whether or not the subject matter, for which federal trademark protection was sought, was of a functional nature, i. e., in essence utilitarian or dictated for reasons of engineering efficiency. The utility patent present in each of those cases was used as evidence of the functionality of the involved subject matter. Since the subject matter was found to be functional, registration was denied. The results reached in these cases are clearly consistent with the principle of Singer, Kellogg and Scott Paper.

Where the solicitor and this court differ is in the application of the principle of Singer, Kellogg and Scott Paper when federal trademark rights are sought for non-functional subject matter which may be disclosed in a design patent. The solicitor urges that the same result — a refusal to register the subject matter as a trademark on the ground of an impermissible extension of rights — must occur under these circumstances. We cannot agree with this result. In Mogen David we explicitly held:

In our opinion, trademark rights, or rights under the law of unfair competition, which happen to continue beyond the expiration of a design patent, do not ‘extend’ the patent monopoly. They exist independently of it, under different law and for different reasons. The termination of either has no legal effect on the continuance of the other. When the patent monopoly ends, it ends. The trademark rights do not extend it.

That holding recognized the clear distinction between the underlying bases of the federal trademark and design patent laws. Federal design patent laws were created to encourage the invention of ornamental designs. Federal trademark laws, which are independent in origin from the design patent laws, seek to prevent the public from encountering confusion, mistake, and deception in the purchase of goods and services and to protect the integrity of the trademark owner’s product identity. With that distinction in mind, this court decided that the public interest — protection from confusion, mistake, and deception in the purchase of goods and services — must prevail over any alleged extension of design patent rights, when a trademark is non-functional and does in fact serve as a means to distinguish the goods of the trademark owner from those of others.

We do not believe, as is urged by the solicitor, that the Singer, Kellogg and Scott Paper decisions require a different result than that reached by us in Mogen David. In those cases the Supreme Court was concerned not with non-functional features of expired design patents, but rather functional features of utility patents and whether or not the public domain acquired the subject matter of those utility patents upon their expiration. However, the solicitor submits that the principle of Kellogg is also applicable to design patents insofar as the Kellogg Company, in addition to its utility patents, at one time had a design patent on the pillow-shape of its shredded wheat biscuit.

But in view of the Court’s analysis of the pillow-shape of the design patent, the mere existence of the design patent does not compel the result urged by the solicitor. With respect to preserving the public right to copy the pillow-shape, the Court relied heavily upon the fact that the patented machines could only produce shredded wheat biscuits in the pillow-shape.

The Court further stated that:

* * * the pillow-shape must be [permitted to be] used [by others than Kellogg] for another reason. The evidence is persuasive that this form is functional — that the cost of the biscuit would be increased and its high quality lessened if some other form were substituted for the pillow-shape. [Emphasis supplied.]

That analysis was not predicated upon the mere fact that the pillow-shape was claimed in a design patent, but rather that the pillow-shape was a functional feature which was the necessary result of following the teachings of the utility patent. Therefore, the functional pillow-shape went into the public domain upon the expiration of the patents. The analysis is precisely the same as that found in the decisions of this court, e. g., In re Shakespeare Company, supra, wherein federal trademark rights were also denied for functional features.

Furthermore, in Kellogg the asserted trademark rights in the name “Shredded Wheat” were, in essence, denied protection, not because of the expired patents, but rather because the name had become a generic name for the product, which could thus no longer indicate the origin of the goods and serve as a trademark for the goods. The Court stated:

[t]he plaintiff has no exclusive right to the use of the term “Shredded Wheat” as a trade name. For that is the generic term of the article, which describes it with a fair degree of accuracy ; and is the term by which the biscuit in pillow-shaped form is generally known by the public. Since the term is generic, the original maker of the product acquired no exclusive right to use it.

Likewise, in Singer, the Court found the involved trademark to be a generic description of the sewing machines sold under the trademark.

For the foregoing reasons, we believe that the Kellogg, Singer and Scott Paper decisions cannot be properly construed to be applicable to the situation of Mogen David, wherein trademark rights were sought for non-functional features which were the subject matter of a design patent. Nor do we believe that the language of the opinions in Sears, Roebuck & Company v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed. 2d 661 (1964), and Compeo Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964), which were concerned with the conflict between a state’s law of unfair competition and the federal patent law, is pertinent to the present issue of registrability for federal trademark protection.

Because the board’s decision rested upon the erroneous view that a conflict existed between design patent rights and the right to register a trademark, no useful purpose would be served by a discussion of the solicitor’s other contentions, including those directed toward the board’s distinguishing Mogen David from the instant case, since those contentions in essence stem from that same erroneous view.

CONCLUSION

In view of the foregoing, we hold that the board erred, as a matter of law, in its reasons for refusing registration of appellant’s configuration as a trademark for thermostats. Because the board did not express any views on the functionality reasoning relied upon by the examiner, we believe it should be provided an opportunity to do so.

The case is remanded to the Trademark Trial and Appeal Board for further proceedings not inconsistent with this opinion.

Remanded.

RICH, Judge

(concurring).

While I agree with the remand of this case to the board for its views on the examiner’s functionality rejection, without any decision by us on the merits at this time, I am constrained to concur only in that result because of some of what the majority opinion says.

I do, however, fully agree with the majority opinion’s views on the jurisdictional, or reason of appeal, issue.

I also fully agree with its disapproval of the board’s reasoning and I adhere to all that we said in our 1964 Mogen David opinion.

The majority opinion states that the remand is to give the board an “opportunity” to express its views on “the functionality reasoning relied upon by the examiner.”

What is meant by “the functionality reasoning” of the examiner is not too clear. In his Answer, the examiner reasoned in various ways. He held that what is sought to be registered is “incapable of performing the function of trademark”; that it “comprises merely the basic, circular shape of the thermostat”; that “the details claimed as a mark are merely circular bands, dictated by the shape of the instrument”; that they are “without such distinguishing characteristics as to function as a trademark”; that “is merely the configuration of the goods”; that it “is basically functional in nature”; that it is “not capable of indicating origin or serving as a trademark”; that “only de facto secondary meaning, if any, has been acquired”; that it “is so fundamentally functional and utilitarian that the matter applied for is incapable of acquiring a legally recognizable second meaning or of becoming an enforceable trademark”; and that “the shape is in essence utilitarian.”

The examiner relied on the preamble to Sec. 2 of the Trademark Act (15 U.S.C. § 1052) and on Sec. 45 (15 U.S.C. § 1127), presumably the definition therein of “Trademark.” He also relied on In re Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952 (1961), as involving “just such a situation” as this case presents.

I deem all of the foregoing to be encompassed by the term, “the functionality reasoning.”

Because the board — although it has already had the “opportunity to do so”— chose not to discuss or rely on any of the foregoing reasoning of the examiner in affirming his rejection, the appeal to us was virtually based only on the board’s own design patent expiration ground and the parties therefore did not brief the “functionality” question. All appellant’s brief says on the subject is that there is no “functionality” issue here and then makes the bald assertion:

It is Honeywell’s position that the trademark elements are so clearly non-functional as to be self-evident to the court.

If the case had come here with a “functionality” issue in it and that issue had been briefed, I would feel that, since it is a question of law, we should decide it now and not remand. But, in the present posture of the case, I think the board should be required to state the extent, if any, of its agreement with the examiner’s views so that appellant can then fully brief this issue on the basis of a board decision and the Solicitor can respond thereto. I regard the non-functionality urged by appellant as anything but “self-evident.”

I further regard the so-called “functionality reasoning” of the examiner as involving distinct questions: (1) Is the subject matter sought to be registered a “trademark” within the meaning of the statute? (2) In what way is that subject matter functional or utilitarian, factually or legally? (3) Following Diester-type reasoning, iif there is de facto “secondary” meaning, because no competitors are making “little round” thermostats, should it be given de jure recognition which would prevent them from doing so?

With respect to appellant’s contention that what is sought to be registered is merely “a portion of the configuration of a thermostat cover,” (my emphasis) I call attention to appellant’s own application description reading:

The trademark * * ■ * consists * * * of the * * * combination of an outer cover ring of a thermostat and a center disc positioned concentrically within said ring, said ring and disc comprising a portion of the configuration of a thermostat. (My emphasis.)

The application drawing shows the disc to be transparent and the specimen shows it as a rotatable control dial serving as a window through which a thermostat scale and a temperature setting scale are visible. These are not merely parts of a cover. On this point, I note the board’s statement, made in the course of its attempt to distinguish Mo-gen David, that appellant “is seeking to register the design of the product for the product itself.” The product is a thermostat. The design constitutes the appearance of practically the entire visible portion of an object commonly known as a thermostat.

I think it appropriate to point out for consideration the fact that functionality, ornamental appearance, and good industrial design are matters which are closely intermingled. The very best of modern product design has long been called “functional design.” See, for example, the definitions of “functional” and “functionalism” in The Random House Dictionary of the English Language (1967) and in Webster’s Third New International Dictionary.

I discussed at great length the principles which I see as applicable to this case thirteen years ago in Deister. As to the board’s action in the present ease, I advert to the statement in Deister that “we are not seriously concerned with whether he who claims trademark rights of unlimited duration now has or did have patent protection, or what that protection was.” I also discussed how we must go about determining when subject matter such as that here involved will be regarded as a trademark, when it will not, and why it will not. But these are points on which, as related to the facts of this case, which differ from Deister facts, we should be briefed before we decide on registrability.

      . Serial No. 306,776, filed September 6, 1968.

      . Des.Pat.No. 176,657, patented January 17, 1956, for a term of 14 years. However, at the time of filing their application for registration of a trademark, the design patent had not expired.

      . The reason of appeal filed reads :
      “The board erred in its decision by narrowly construing the decision in In re Mogen David Wine Corporation, [328 F.2d 925, 51 CCPA 1260] 140 USPQ 575 (CCPA 1964), to wit, that the subject matter of a design patent may be a trademark for goods other than the design patent subject matter, but may not be a trademark for the design patent subject matter.”

      . 15 U.S.C. § 1071

      . In In re Deister Concentrator Co., 289 F.2d 496, 501, 48 CCPA 952, 962 (1961), we stated that:
      “ * * * it being basic to the patent system that the public may copy when the term of a patent comes to an end, with certain exceptions. However, the right to copy is not derived in any way from the patent law; it is a right which inheres in the public under the general law except to the extent the patent law may remove it. The same is true of copyrights. When a temporary incursion on the public right ends, the public right remains. No new right is born.”


source: Caselaw Access Project

author: MARKEY, Chief Judge.

license: Public Domain

text:
    The COCA-COLA COMPANY, Appellant, v. The SEVEN-UP COMPANY, Appellee.
    Patent Appeal No. 74-513.
    United States Court of Customs and Patent Appeals.
    June 20, 1974.

      Julius R. Lunsford, Jr., James W. Young, III, Atlanta, Ga., attys. of record, for appellant.
    Kane, Dalsimer, Kane, New York City, attys. of record, for appellee. Philip T. Dalsimer, Siegrun D. Kane, New York City, J. Stewart Bakula, Robert J. Eck, St. Louis, Mo., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, 178 USPQ 309 (1973), adhered to on reconsideration, dismissing the opposition of appellant to the registration by appellee of THE UNCOLA for soft drinks. Appellant relied, inter alia, on registrations of its well-known mark COCA-COLA. We affirm.

The opinion of the board sets out the massive volume of use and advertising of COCA-COLA and THE UNCOLA. No question of priority of use is involved, appellant having begun use of its mark more than three-quarters of a century prior to appellee’s first use of the mark sought to be registered.

OPINION

The sole controlling issue is whether THE UNCOLA is merely descriptive of soft drinks. We think not.

The record establishes that the notation, THE UNCOLA, did not exist, in dictionaries or anywhere else, until it was coined by appellee. Appellee’s expert lexicographer, Professor Hubbel, testified without challenge that the mark was created in a manner contrary to normal English language construction. The combination of “un” with a noun, such as “book,” “desk” or “cola” would violate an English-speaking people’s sense of idiom. Professor. Hubbel testified that the natural term descriptive of a soft drink not of the cola variety would be “non-cola.” Appellant’s own witnesses and exhibits from the trade press confirm that “non-cola” is the only term ever used in the industry to describe or refer to a soft drink not of the cola variety. Unlike purchasers in the marketplace, appellant dissects the mark, arguing that “un” means “non.” We have said, so often as not to require citation of authority, that marks must be viewed as the public sees them, i. e., in their entireties. In the present case, the record is devoid of evidence that the buying public would employ the scalpel technique envisioned by appellant.

Though appellant produces many soft drinks not of the cola variety, and had searched its historical records back to the 1880’s, the record contains not a single use, by appellant or by anyone else, of “uncola” prior to the coining and use of THE UNCOLA by appellee. The language employed in describing the mark involved in Vita-Var Corp. v. Alumatone Corp., 83 F.Supp. 214, 215 (S.D.Cal., 1949) — “a combination which has enough deviation from the common use of words and parts of words to make its registration as a trade mark valid” — is equally applicable in the present case to THE UNCOLA.

Appellant devotes considerable argument to the proposition that more than one term may be descriptive of the same product. We fully agree. The board’s decision does not rest, however, as appellant appears to assume, on the fact that “non-cola” is a common descriptive term for the product but on the fact that it is, on the record here, the only common descriptive term for that product. Appellant’s difficulty lies in a total failure of the record to indicate that THE UNCOLA is or ever was merely descriptive of, or a common descriptive term for, the product.

Intertwined with appellant’s characterizations of appellee’s mark as “descriptive,” appear allegations that THE UNCOLA is “generic” and a “common” descriptive term. We find not a scintilla of evidence in the record to support such allegations. On the contrary, the record clearly establishes that UN-COLA is so non-generic and non-common as to have been used by no one, for any purpose, other than as an indication of a product of appellee’s manufacture.

The board’s opinion, as appellant emphasizes, includes a statement that THE UNCOLA “possesses a descriptive connotation.” Appellant’s brief improperly refers to that statement as “ * * * the Board’s ruling that ‘THE UNCOLA’ was descriptive.” Of course the board made no such “ruling.” We interpret the board’s phrase, “descriptive connotation,” to mean that the mark conveys an impression that appellee’s product is not a cola. That may be true, but not fatal. The simple presence of that type of descriptive “connotation,” like the presence of suggestiveness, will not preclude registration where the mark is not merely descriptive of the goods.

Appellant attacks the board’s statement that THE UNCOLA had acquired a secondary meaning, indicating a product of appellee’s manufacture. The first ground of attack, without citation of authority, is based on appellee’s not having filed its application under Section 2(f) of the Act. The attack must fail. Because the examiner had never raised a question of descriptiveness and appellee never considered its mark to be descriptive, there was no reason to have filed under Section 2(f) or to have amended the application to bring it under that section. Moreover, appellant appears to have forgotten that the issue was raised by appellant’s own allegation that the mark did not function as a “badge of identification” of appellee’s goods. Appellee met that allegation by competent evidence, even if appellee’s survey-type evidence be disregarded. The board properly considered all of the probative evidence in rendering its decision.

Appellant’s second attack on the board’s finding of secondary meaning is based on appellant’s survey indication that the public uses THE UNCOLA infrequently in ordering appellee’s product. The board correctly pointed out, however, that use by purchasers is not essential in establishing secondary meaning, particularly where a well-known mark, such as 7-UP, is available. We would add that many marks, including slogans and designs, are perfectly valid trademarks though their nature virtually precludes their use in ordering the goods with which they are associated.

The last attack on THE UNCOLA as identifying origin (secondary meaning) is that, regardless of the market situation, the mark could not become the exclusive property of appellee because it is generic. Having presumed the mark to be generic, appellant argues that any secondary meaning is merely de facto and hence incapable of supporting registration. Because we hold the mark herein to be non-generic, appellant’s presumption that the mark is generic, and the argument predicated thereon, must fall.

We see no need to determine the presence of secondary meaning herein. The word “secondary” in the phrase “secondary meaning” does not mean lesser in importance. Because a secondary meaning in this context is an acquired meaning, it is necessarily created later in time. It is created in a new environment, namely the marketplace, where its “secondary” meaning is of “primary” importance. The judicially developed concept of “secondary meaning,” expressed in Section 2(f) as “has become distinctive,” relates to a term which had earlier served only to describe or to locate geographically or as a surname. At that time such a term would not be registrable, in view of the prohibitions of Section 2(e). At some later time, the term may become distinctive of a seller’s goods in commerce and, as such, become registrable under the provisions of Section 2(f). It is said that such a term has acquired a “secondary meaning,” i. e., a “marketplace meaning,” which is an indication of origin of the goods with which the term is associated in the marketplace. In the present case, THE UNCOLA has never served only to describe. From its origin, the mark was used only in connection with appellee’s product to distinguish it (as to source) from the products of others. No question of “secondary meaning” arises in such a situation.

In summary, the record clearly establishes that THE UNCOLA was coined by appellee, has never been used by anyone else for any purpose and is not merely descriptive of soft drinks. The decision of the board must therefore be affirmed.

Affirmed.

      . Serial No. 350.618 filed February 5, 1970, alleging first use on December 20, 1967.

      . Registration Nos. 22,406 (January 31, 1893, renewed December 5, 1922; November 10, 1942; and January 31, 1963), 47,189 (October 31, 1905, renewed June 16, 1925; July 31, 1945; and October 31, 1965, republished under Section 12(c), Act of 1946, March 8, 1955), 238,145 (January 31, 1928, renewed January 20, 1948, republished under Section 12(c), Act of 1946, December 14, 1948), and 238,146 (January 31, 1928, renewed January 20, 1948, republished under Section 12(c), Act of 1946, December 14, 1948).

      . Appellant raises numerous additional contentions which are either unfounded or irrelevant :
      (a) Likelihood of confusion. We find THE UNCOLA and COCA-COLA clearly distinguishable. The evidence, including appellee’s pre-trial depositions if admissible, is insufficient to establish that COCA-COLA is known by consumers as “THE COLA.” If it were, that fact would not aid appellant. Confusion would not be likely between THE UNCOLA and THE COLA, which convey different ideas. In Procter and Gamble Co. v. Conway, 419 F.2d 1332, 57 CCPA 865 (1970), relied on by appellant, MR. STAIN, as used, conveyed the same idea and stimulated the same mental reaction as MR. CLEAN.
      (b) Appellee’s massive advertising disparages cola-drinks and uses a particular script, red and white colors, a red disk, a fountain glass and “The Pause That Refreshes,” constituting unfair competition and aggravating confusion. Appellee’s right to registration is all that is before us. The White Co. v. Vita-Var Corp., 182 F.2d 217, 37 CCPA 1039 (1950). Appellee’s advertising program is not on trial. There is no statutory basis for allegations of product disparagement or unfair competition as bases for refusal of registration. Confusion being unlikely, there is nothing to be “aggravated.” Disparagement and unfair competition being matters for another forum and irrelevant herein, we make no findings thereon.
      (c) The board erred in striking appellant’s notice of reliance on certain testimony, in refusing to take judicial notice of late-submitted third-party advertising, and in considering appellee’s survey evidence. We find no error on the part of the board in any of these rulings. In our view of the case, moreover, the result would not be affected if the board had ruled differently on any or all of these questions.

      . Compare UNBURN, against which an opposition was dismissed, even though archaic uses thereof appeared in dictionaries in 1933 (but not subsequently) and opposer had used it sporadically in advertising before abandoning it. Norwich Pharmacal Co. v. Chas. Pfizer & Co., Inc., 165 USPQ 644 (TTAB 1970).

      . In addition to the evidence of appellee’s pervasive advertising program, appellant’s own witnesses Corbani and Boyd testified that THE UNCOLA is associated only with appellee and some of the people interviewed in appellant’s own survey associated THE UNCOLA only with appellee.

      . A rare use by the public of THE UNCOLA argues against consideration of the mark as “generic” or as “the common descriptive term” for the product.

      . If de jure secondary meaning were required, we agree with the board that abundant evidence exists in the record to establish it.


author: MILLER, Judge.

text:
    FLOATER VEHICLE, INC., Appellant, v. TRYCO MANFACTURING COMPANY, INC., Appellee.
    Patent Appeal No. 9173.
    United States Court of Customs and Patent Appeals.
    June 20, 1974.
    Eugene J. Mahoney, Columbus, Ohio (Mahoney, Miller & Stebens, Columbus, Ohio) atty. of record, for appellant.
    Stanley C. Dalton, Chicago, 111. (Hofgren, Wegner, Allen, Stellman, Chicago, 111.) atty. of record, for appellee.
    Before MARKEY, Chief Judge, RICH, LANE, and MILLER, Judges, and ALMOND, Senior Judge.
   MILLER, Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, 175 USPQ 761 (1972), granting appellee’s petition to cancel the registration (No. 863,887) of appellant’s assignor, Russell E. Jones, of the mark “FLOATER” for “agricultural tractor chassis and cab for transporting and distributing fertilizers and agricultural materials.” The registration is dated January-21, 1969, and is based on an application filed December 7, 1967, alleging first use on April 20, 1967, and first use in interstate commerce on July 22, 1967.

In its petition, appellee (an Illinois corporation doing business at Decatur, Illinois) alleged that by the terms of a written agreement dated August 30, 1967, with Jones, it was the owner of the mark at the time Jones filed his application for registration, so that registration issued to the wrong party.

The record shows that appellee is in the business of manufacturing all-purpose, all-weather vehicles including an agricultural tractor chassis and t cab for transporting and distributing fertilizers and agricultural materials, and apparently uses the mark “FLOATER” in connection.with the latter; that Jones developed a flotation agricultural vehicle in 1966 and 1967, and in April, 1967, sold one such vehicle bearing the mark “FLOATER” to Flo-Lizer, Inc., of Kingston, Ohio; that on July 22, 1967, appellee purchased a flotation vehicle for use as a demonstrator from Jones and transported such vehicle, bearing the mark “FLOATER,” from Kingston, Ohio, to Maxwell, Indiana; that two other “FLOATER” machines bearing the mark “FLOATER” were sold to a Canadian company by Jones, one on or about August 15 and the other on or about September 12 of 1967; and that Jones, as a full-time employee, manufactured for appellee, at the latter’s leased premises in Chillicothe, Ohio, approximately ninety-five of the “FLOATER” vehicles, which appellee advertised and sold under its own name.

The board said it was clear that, at the time Jones filed his application, he was merely a full-time employee of appellee for the purpose of assembling “FLOATER” vehicles; also that he had contracted away any trademark rights he may have had in “FLOATER” for the duration of his employment. Accordingly, it held that Jones could not claim any rights of ownership in the mark and that registration was issued on the basis of false statements of ownership made before the Patent Office.

Pertinent extracts from the contract between Jones and appellee are set forth below (emphasis supplied):

3. (a) In consideration for the other terms of this Agreement, Employee grants to Tryco, during the term of this Agreement and any renewals hereof, the exclusive right to manufacture, develop and sell all inventions and discoveries made by Employee prior to and during the term of this Agreement, including but not limited to any high-flotation, self-propelled vehicle conceived, designed or developed by Employee or his agents and any modifications thereof. It is understood that Employee has patent applications pending. All rights thereunder are the property of Employee except as hereinabove otherwise provided.
(b) During, the period of this Agreement and any renewals hereof, Employer shall have the exclusive right to apply for patents, trademarks or similar rights for any and all inventions or discoveries made by Employee which have any connection with, or are along the lines of management, duties and work performed by Employee on existing products, new products, methods of manufacture and testing for Employer. Without additional compensation, Employee will perform all acts and execute such papers as are necessary and incident to obtaining and maintaining patents, etc., for all such inventions and discoveries, both in the United States and foreign countries and will transfer to and vest in Employer all rights, title and interest in said inventions and discoveries. The expense of seeking and obtaining such patents, etc., shall be Employer’s.
(c) Employee shall have the exclusive right to apply for patents in foreign countries similar to those patents for which he now has applications pending in the United States. Acquisition of such patents, however, shall not limit Employer's exclusive right to manufacture as provided in paragraph 3(a).
4. Employee has developed a high-flotation, self-propelled vehicle, hereinafter called “Floater”, in which, pursuant to paragraph 3 of this Agreement, he assigns certain rights to Employer, and in consideration of the assignment of said rights to this particular vehicle, Employer further agrees as follows:
♦X- -X- * * * -X-
(d) Employer will devote its established capabilities and reputation to the development and sale of “Floater” units in conjunction with the pursuit of Employer’s present line of fertilizer equipment.
■$£ •X -X- -if *X’ •X’
5. Employer may subcontract to parties of its choice work to be performed pursuant to this Agreement.
6. This Agreement shall be interpreted and enforced according to the law of the State of Illinois.

In determining the intention of the parties with respect to the trademark rights in “FLOATER,” we note that paragraph 3.(a) grants Tryco the “exclusive right to manufacture, develope and sell all inventions and discoveries made by Employee prior to and during the term of this Agreement.” (Emphasis supplied). However, the “exclusive right” granted Tryco under paragraph 3.(b) to apply for patents and trademarks for inventions or discoveries made by employee does not run to those made prior to the term of the agreement; rather to inventions and discoveries made by employee “which have any connection with . . . duties and work performed by Employee on existing products, new products, methods of manufacture and testing for Employer.” (Emphasis supplied.) It is presumed that the words “prior to” were inserted in paragraph 3.(a) for a purpose, and we believe that if the parties had intended the “exclusive right” in paragraph 3.(b) to extend to inventions and discoveries made prior to the term of the agreement, they would have used the words “prior to,” as they did in paragraph 3.(a). Martindell v. Lake Shore Nat. Bank, 15 Ill.2d 272, 154 N.E.2d 683 (1958). Obviously “existing products” relates to products of Tryco, which, on August 30, 1967, included “Employer’s present line of fertilizer equipment” and did not include the “FLOATER” vehicle. Jones’ testimony that he told appellant’s president, Robert West, that he was going to get the “FLOATER” name registered in his (Jones) name, and that West “didn’t seem a bit concerned about it” is uncontradicted and confirms our interpretation of the intention of the parties. Coney v. Rockford Life Ins. Co., 67 Ill.App.2d 395, 214 N.E.2d 1 (1966). Finally, it is to be noted that the agreement was drafted by appellee and that, if there is doubt about its meaning (which we do not have), it is to be construed most strongly against its author. Cedar Park Cemetary Ass’n., Inc. v. Village of Calumet Park, 398 Ill. 324, 75 N.E.2d 874 (1947).

Accordingly, we hold that the board was in error in finding that appellant contracted away any trademark rights he had in “FLOATER” and in holding that he could not properly claim any rights of ownership in the mark.

Although Jones testified that appellee was using the mark, he also testified that “It was an agreement between Mr. West and myself that floater would go on the machines that I built for them.” Thus, it appears that appellee’s use was that of a licensee under an oral agreement which expired when Jones ceased building the machines for appellee at the end of the two-year written contract. The petition for cancellation was not filed until September 24, 1969, following expiration of the oral license agreement, when appellee had no right to use the mark and, therefore, no standing to allege damage under 15 U.S.C. § 1064. See Prince Dog and Cat Food Co. v. Central Nebraska Packing Co., 305 F.2d 904, 49 CCPA 1328 (1962). Accordingly, we hold that the board erred in stating that petitioner as a present user of the mark is obviously damaged by the existence of the registration on the trademark register, and that it should have dismissed the petition for cancellation.

The decision of the board must be reversed.

Reversed.

LANE, Judge, concurs in the result.

      . Among other things, the agreement provides that Jones (a resident of Kingston, Ohio) had become an employee of appellee as of August 21, 1967, for a period of two years, subject to renewal. On July 9, 1969, Jones wrote appellee that he did not elect to renew the agreement.

      . The board’s statement clearly implies that Jones was possessed of a trademark prior to the employment agreement; and first use in commerce in 1967 prior to execution of the contract is supported not only by the August 15th sale to the Canadian company, but by the sale to appellant, an Illinois corporation, on July 22, 1967. That the Illinois corporation accepted delivery in Ohio did not render the sale any less “in commerce.” Currin v. Wallace, 306 U.S. 1, 59 S.Ct. 379, 83 L.Ed. 441 (1939).

      . Tryco did not begin production of “FLOATER” vehicles at the Chillieothe plant until the latter part of November, 1967. Jones built the major portion of one of the vehicles for Tryco at his own plant, prior to operations at Chillicothe, but this was not completed until after that date.


text:
    COLUMBIA INDUSTRIES, INC., Appellant, v. TIFFANY & CO., Appellee.
    Patent Appeal No. 9241.
    United States Court of Customs and Patent Appeals.
    June 20, 1974.
    John C. Stahl, San Antonio, Tex., atty. of record, for appellant.
    Milo G. Coerper, Washington, D. C., atty. of record, for appellee. Coudert Brothers, New York City, of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and MILLER, Judges, and ALMOND, Senior Judge.
   MILLER, Judge.

This appeal is from a decision of the Trademark Trial and Appeal Board (abstracted at 177 USPQ 768 (1973)) sustaining an opposition by appellee to appellant’s mark:

for bowling balls. We affirm.

Appellee’s opposition is based on likelihood of confusion with TIFFANY for playing cards and chips, and cribbage boards.

In a previous appeal to this court in this opposition, a decision by the board dismissing the opposition for failure of appellee-opposer to take testimony or present evidence was reversed and the case remanded for further proceedings. Tiffany and Company v. Columbia Industries, Inc., 455 F.2d 582, 59 CCPA 851 (1972). The court held that appellee-opposer’s registration was properly in evidence as a basis for opposition. On remand, the board sustained the opposition on the ground of a likelihood of confusion between the marks.

OPINION

The issue is whether the board erred in sustaining the opposition, which is based upon opposer’s registration of TIFFANY on the principal register and its allegation that application of the mark TIFFANY to the respective goods of the parties is likely to cause confusion in the minds of customers and to impair the general good will built up since 1868 for its mark.

Relying on its registration, appellee was under no compulsion to take any testimony, because such registration is presumed to be valid and is entitled to section 7(b) (15 U.S.C. § 1057(b)) presumptions. Coral Chemical Co. v. H. D. T. Company Factors, Inc., 332 F.2d 841, 51 CCPA 1413 (1964).

We agree with the board that the differences between the marks are of small importance to the impression created by the marks in their entireties; that no evidence is of record to show that the mark TIFFANY has been commonly used by third parties; that the goods of the parties comprise recreational equipment and purchasers thereof may be the same; that it is reasonable to assume that such purchasers familiar with the well-known mark TIFFANY and with TIFFANY playing cards and chips, or cribbage boards would believe that TIFFANY bowling balls originated from the same source; and that appellant’s mark, when applied to its goods, so resembles appellee’s mark as to be likely to cause confusion or mistake, or to deceive for purposes of 15 U.S.C. § 1052(d).

Accordingly, the decision of the board is affirmed.

Affirmed.

      . Application serial No. 268,582, filed April 7, 1967, alleging first use in commerce on February 27, 1967.

      . Registration No. 137,722, issued November 30, 1920.

      . Tiffany and Co. v. National Gypsum Co., 459 F.2d 527, 59 CCPA 1063 (1972); Tiffany and Co. v. Tiffany Tile Corp., 345 F.2d 214, 52 CCPA 1396 (1965); Tiffany and Co. v. Boston Club, Inc., 231 F.Supp. 836 (D. Mass.1964); Tiffany and Co. v. Tiffany Productions, Inc., 147 Misc. 679, 264 N.Y.S. 459 (Sup.Ct.1932), aff’d, 237 App.Div. 801, 260 N.Y.S. 821 (1932), aff’d, 262 N.Y. 482, 267 N.Y.S. Appendix, 188 N.E. 30 (1933); and Tiffany and Co. v. L’Argene Products Co., Inc., 67 Misc.2d 384, 324 N.Y.S.2d 326 (Sup.Ct.1971), aff’d, 37 App.Div.2d 699, 323 N.Y.S.2d 642 (1971), aff’d, 29 N.Y.2d 671, 324 N.Y.S.2d 961, 274 N.E.2d 488 (1971).


author: ANDERSON, Judge:

text:
    AMALGAMATED MEAT CUTTERS AND BUTCHER WORKMEN OF NORTH AMERICA, AFL-CIO et al., Plaintiffs-Appellants, v. The COST OF LIVING COUNCIL as successor to the Pay Board et al., Defendants-Appellees.
    No. DC-19.
    Temporary Emergency Court of Appeals.
    May 15, 1974.

      Laurence Gold, Washington, D. C. (Mark P. Muller, Philadelphia, Pa., on the brief), for plaintiffs-appellants.
    John N. Hanson, Dept, of Justice, Washington, D. C. (Irving Jaffe, Acting Asst. Atty. Gen., William E. Nelson, and Stanley D. Rose, Dept, of Justice, Washington, D. C., on the brief), for defendants-appellees.
    Before HASTIE, ANDERSON and HASTINGS, Judges.
   ANDERSON, Judge:

On March 1, 1971, a collective bargaining agreement was entered into by the Amalgamated Meat Cutters and Butcher Workmen of North America, AFL-CIO, and its Joint Council of Philadelphia and vicinity Local Unions Nos. 56,-197, 198 and 199 (the Unions), and Acme Markets Inc., the Great Atlantic and Pacific Tea Co. Inc., and Food Fair Stores, Inc. (the Employers). Among other provisions, the agreement contained a deferred wage increase of approximately 11%, effective March 4 and 5, 1972, for certain meat-cutting employees. It also granted to the Employers the right to buy and sell “block ready meats,” that is, certain cuts prepared outside the Employers’ premises and theretofore prohibited by the Unions because the “prefabricated” cuts required less man-hours of union labor at the Employers’ stores. On March 27, 1972, the Pay Board (the Board), predecessor to the Cost of Living Council (CLC), pursuant to its authority under § 203(c)(1) of the Economic Stabilization Act (the Act), challenged the legality of the deferred wage increase.

In the ensuing proceedings before the Board, the Unions asserted that the wage increase was primarily justified by the increase in productivity brought about by the change in the work rules relating to the Employers’ use of the “block ready meats.”

Upon learning of the challenge to the agreement, the Unions sought from the Employers certain data relative to employment and to the output of meat department employees, but they received no answer. On May 24, 1972, the Board held a hearing at which the Unions and the Employers were present and were heard. The Unions claimed they were entitled to the full 11% wage increase because the gain in productivity from the use of “block ready meat” justified it. The Unions requested the Board to compel the Employers to disclose the relevant employment and production data. The Employers, however, claimed that much of this data was confidential within the terms of § 205 of the Act. The Board offered to hear a formal application for disclosure under the Freedom of Information Act but this offer was declined by the Unions.

Both the Unions and the Employers submitted evidentiary materials to the Board. The Board received information about the dates and amounts of recent wage increases from official forms filled out and returned to it by the three employers. The Board also learned from the Employers on April 26, 1972 that the wage increases for the groups involved here totaled in excess of 60% for the six year period from February, 1966 to March, 1972 and stated that the units in question presently enjoyed wage rates “among the highest ... in the supermarket industry.” On May 23, 1972, the Employers also submitted the portions of the relevant collective bargaining agreements dealing with the new work rule and job guarantee provisions. On May 26, the Employers filed the confidential submission referred to above.

Significant evidentiary material was presented to the Board by the Unions on May 23 and May 26, 1972, in which they admitted that “[ajverage hourly earnings in Philadelphia meat departments are not low,” but, on the contrary, compared “well” with those nationally, although they maintained that the wages were low contrasted with those in other jobs calling for similar skill. The material also indicated that the “prefabricated meat” issue had been “central to all Union-Management negotiations in the retail meat industry for the past 15 years,” and “hard fought” all the way. This implied, too, that the operation of the new rule would result in substantial productivity benefits for management. The Unions, in the form of a letter dated May 26, 1972, submitted to the Board additional material containing confirming data which showed wage increases exceeding 60% over the six year period ending in 1972, and figures showing that in the period 1968 through 1972, the February to March increase in the Philadelphia Consumer Price Index component for meat, poultry and fish exceeded the national increase in four of the five years. As to productivity, the evidentiary material disclosed a generally “high estimate” of meat cost savings from the use of “prefabricated meats,” but the Unions conceded such savings were not being fully realized by the Philadelphia employers. On the basis of these estimates, the Unions claimed that “the substantial wage increases” involved here “would . . . appear to be not inconsistent with actual unit cost reductions.”

On June 13, 1972 the Board issued an order prospectively disapproving the wage increase to the extent that it exceeded 7%. With regard to the employment and production data sought by the Unions from the Employers but claimed by them to be confidential under § 205 of the Act, the Board withheld it from the record on the ground that it was irrelevant, in the sense of being immaterial to the issues in the case. The district court was of the opinion that it should have been disclosed to the Unions. Although this matter was argued by the appellants-Unions on appeal, the data was apparently never made a part of the record and is not before us.

The Board in its opinion went on to give the bases of its decision as follows:

“5. That, on the basis of the other evidence submitted by the parties including facts relating to the relatively high current level of wages in the employee units involved, the frequency and amount of wage and salary increases in the employee units involved during the previous four years, and the job guarantee provisions contained in the contract, the increase in wages and salaries for the second control year in each of the employee units involved is in excess of the general wage and salary standard of 5.5% and in excess of the maximum permissible annual aggregate increase (7%) permitted for exception pursuant to Sections 201.11(a) and (b) and should be disapproved as unreasonably inconsistent with the criteria established by the Pay Board.
6. That, upon the other evidence submitted by the parties including the' fact that employees in the employee units involved have been receiving the full amount of the negotiated increases for approximately three months, the circumstances are such that the following adjustment in wages and salaries in each of the employee units involved would not be unreasonably / inconsistent with the criteria established by the Board: A 7% increase in wages and salaries, computed in accordance with Pay Board policy and regulations.”

The decision then noted that the situation of the employees was such that they should be permitted to retain the excess wages, i.e. the amounts over the approved 7% increase, which they had been receiving for the past three months, without the necessity of making restitution for this excess amount; and that they would thereafter receive wages, fixed to conform to the permissible increase of 7%, at the next pay period following the date of the decision.

In September, 1972 the Unions filed with the Board a motion to reopen and reconsider the decision; and, on October 13, 1972, the Board denied the motion on the ground that the Unions had presented “no new evidence for Board consideration.” The Board, in a portion of its opinion, explained its treatment of the productivity factor as follows:

“3. That the productivity increases alleged by the Meat Cutters Union were previously considered by the Board and, assuming such allegations would be adequately demonstrated by the evidence, were determined to be insufficient to warrant approval of an increase in wages and salaries in excess of 7%.”

In other words the Board, in effect, said that if it assumed that all of the facts alleged and claimed by the Unions were true and that there was a sufficient increase in productivity, absent any other considerations, to warrant an 11% escalation in wages, still the Board, in the light of the other factors required by § 203, which it must take into consideration, could not and would not approve of a wage increase for the meat cutters, in excess of 7%.

The Unions on January 10, 1973 commenced this action in the United States District Court for the District of Columbia seeking a declaratory judgment and an injunction against the Board. The parties stipulated the facts and filed cross-motions for summary judgment. After hearing arguments from the parties the district court, on November 5, 1973, entered judgment in favor of the Cost of Living Council (CLC), which had succeeded the Pay Board on March 6, 1973.

The Unions have appealed to this court, claiming the trial court erred in (1) holding that, while the Board should have ordered the Employers to disclose to the Unions the productivity data which the Employers withheld as confidential, the error was harmless and (2) in failing to give to the factor of productivity, within the meaning of § 203 (b)(3), sufficiently full consideration to justify an increase in pay of 11%. We affirm the judgment of the district court.

The question of the disclosure to the Unions of productivity information in the hands of the Employers which they refused to put into evidence because in their view it was confidential matter within the meaning of § 205, comes to this court as a somewhat academic issue. The Board apparently looked at the material but held it to be “irrelevant.” The district court held in effect that it was' relevant in the ordinary sense of the word, and concluded that it should have been disclosed to the Unions. The record, however, reveals no consideration of the terms of § 205, whether plaintiff’s counsel was a proper recipient of the confidential information and if so what safeguards, if any, should be imposed. The exact nature of the material is unclear; the trial judge never examined it in camera, nor did either of the parties ever move to have the material marked and sealed as a part of the record of the case for review by this court. The district court stated only that “it was error not to make known to the employees the data” on productivity but went on to declare that it was no more than harmless error. While in this state of the record we would normally remand the ease for further development of this issue and, while we cannot accept as correct the court’s conclusion of law that the Board committed error in refusing disclosure without knowing more of the circumstances, we do agree that if there was error, it did not affect the decision.

The reason for this is that on this summary judgment action the Board and the CLC have, for the purposes of the case, assumed throughout that the Unions’ allegation and claim that there was sufficient increase in productivity, as one of the five factors to be considered under § 203(b), and, assuming the remaining four factors remained fairly constant, to warrant a roughly proportionate increase in wages, in this case 11%, were correct.

The Board’s adoption of the Unions’ own claim of 11% increase in production as supporting a like percentage level of increased wages was plainly intended by the Board to be regarded as an outside figure, giving to the Unions the benefit of all doubt as to the size of any increase in production.

In other words because the Board accepted the productivity claims of the Unions and did not use the confidential submission of the Employers in reaching its. result, it is unnecessary to decide whether the failure to divulge the information was erroneous; but even if it were, it was harmless.

Moreover, the productivity increase claim is based solely on the modification of the work rules to permit the Employers to buy and sell “fabricated” meats; and there is no serious dispute that the three Employers did not fully take advantage of this change and one of them, Acme, did not use it at all.

Proceeding on this 11% assumption, the Board took up the other factors, beside productivity, which it was bound to consider in administering § 203 of the Act and concluded that the sought-for wage increase would be in excess of the standard for permissible annual wage increases under' the Stabilization Program; that the employees had received several large wage increases in the past four years; that they had been given job guarantees; that at the time the whole country was suffering from food price inflation and that the Employers, along with other food retailers, had been placed under stringent price controls, that labor and management were called upon to make comparable sacrifices in halting inflation and that these employees were not suffering from any inequity or hardship or other similar factors which would justify an increase in their wages in excess of 7 %.

The Board also stated that the Employers’ claimed confidential material on productivity was in the circumstances of the case, immaterial and was, therefore, not considered by the Board in making its decision.

The Unions argue, however, that the Board never actually considered the important factor of productivity at all and that it was because of the Board’s refusal to consider it, that the productivity material in the hands of the Employers was branded as “irrelevant”. The Unions also charge that the decision of June 13, 1972 and the later decision of October 13, 1972, on the motion for reconsideration, were inconsistent and that the second opinion was issued in bad faith in an effort to bolster up the deficiencies in the first opinion which did not expressly deal with productivity. We are satisfied, however, that there was no bad faith on the part of the Board or the CLC, that the decisions should be read together and that it is certain the Board gave full and serious consideration to the factor of productivity. It dealt with it in the light most favorable to the Unions. In their own evidentiary material, the Unions had given a “high estimate” of meat cost savings from the change in the work rule on which its productivity claim is based, and strongly implied that these percentage savings would be on the same order of magnitude as the percentage wage increase sought.

The Unions also contend that the Board could not have given them any credit for a productivity increase because they were only given a 7% raise, a level “considered per se ‘reasonably consistent’ with the Pay Board’s 5.5% overall guideline, . . . [without any] justifi[cation] at all.” Actually the Board awarded greater than a 7% increase here. The period of the increase under the collective bargaining agreement began on March 4 and 5, 1972, and ended on March 3, 1973. The Board’s decision of June 13, 1972 was expressly limited to begin with the next following pay period; the equitable position of the employees was held not to require restitution of the excess above 7% already received. Thus the employees enjoyed the full 11% for at least three of the twelve months of the increase. Even without taking into account the additional benefit of present value of the earlier received increase, the Board in effect allowed an increase of 11% for one-quarter of the year, and 7% for the remaining three-quarters, or an average of 8% for the year. Even if only 7 % had been given, this percentage, although sometimes granted, was not adopted universally or automatically.

There was still discretion in the Board to give less for deferred wage increases. See Pay Board Release 38, January 13, 1972. The Board’s position that the appropriate yardstick was the 5.5% annual wage standard imposed on most of the economy, accords with the command of § 203(c)(1) that the deferred wage increase be allowed unless it is determined to be “unreasonably inconsistent with the standards for wage and salary increases published under subsection (b)”, i.e., the 5.5% figure, which itself incorporates a 3% annual productivity increase along with a 2%% rate of tolerable inflation. In short, the Board was permitted under the Act to find an additional 1 %% of increase allowable here, and its judgment, following a consideration of the surrounding economic circumstances, was reached through a proper exercise of its administrative expertise.

While the Unions give limited recognition to the Board’s duty to consider all of the factors set out in § 203 in determining whether a wage increase is reasonably consistent with national wage standards, they appear to regard the matter of increased productivity as of almost controlling importance and look upon the other factors mentioned in § 203 as of considerably lesser weight. It is the function of the Board (now CLC) to weigh and balance all of the pertinent economic factors, and we are satisfied it did so in this ease. It found that several factors, particularly the high wages already being paid the employees and the rapidly rising inflationary pressures affecting food prices and the controls placed on this section of the economy, obliged the Board to hold that the 11% increase in wages was unreasonably inconsistent with the national wage standards.

This case is governed by our decision in Plumbers Local Union No. 519 of the United Association of Journeymen and Apprentices of the Plumbing and Pipe Fitting Industry of the United States and Canada, AFL-CIO v. Construction Industry Stabilization Committee, 479 F.2d 1052 (Em.App.1973). The Unions say that Plumbers is distinguishable because it concerned action by the Construction Industry Stabilization Committee (CISC) rather than by the Pay Board or CLC. But this is a distinction without a difference because the provisions of the Act apply similarly to both bodies, and the CISC was authorized to administer the Board’s policies in the construction industry. Pay Board Release #45 January 28, 1972. The Unions also point out that Plumbers arose under § 203(c)(3), whereas the present case concerns § 203(c)(1) that, while the burden of proof rested on the plumbers local in the former, in the present case the burden rests on the Government. This statement is correct, but it is of no significance in this summary judgment action in which, for the purposes of the case, the Unions’ claim as to productivity was assumed to be the fact; and the Government had ample evidence to support the Board’s conclusion that the whole wage increase claimed was not “consistent with the purposes of [the Act] and orderly economic growth.” There was no issue of burden of proof.

What was said concerning the CISC in Plumbers applies in this case to the Pay Board and the Cost of Living Council:

“This type of judgment, involving the balancing of interrelated economic factors, is peculiarly within the scope of the expertise with which . [CLC] is presumptively endowed. This court has repeatedly held that great deference should be given to the expertise of the economic stabilization agencies. See United States v. Lieb, 462 F.2d 1161 (Em.App.1972); University of Southern California v. Cost of Living Council, 472 F.2d 1065 (Em.App.1972).” 479 F.2d at 1056.

The judgment of the district court is affirmed.

      . Subsection (1) of § 203(c) reads as follows:
      “The authority conferred on the President by this section shall not be exercised to limit the level of any wage or salary (including any insurance or other fringe benefit offered in connection with an employment contract) scheduled to take effect after November 13, 1971, to a level below that which has been agreed to in a contract which (A) related to such wage or salary, and (B) was executed prior to August 15, 1971, unless the President determines that the increase provided in such contract is unreasonably inconsistent with the standards for wage and salary increases published under subsection (b).
      Section 203(b) provides:
      “In carrying out the authority vested in him by subsection (a), the President shall issue standards to serve as a guide for determining levels of wages, salaries, prices, rents, interest rates, corporate dividends, and similar transfers which are consistent with the purposes of this title and orderly economic growth. Such standards shall—
      (1) be generally fair and equitable ;
      (2) provide for the making of such general exceptions and variations as are necessary to foster orderly economic growth and to prevent gross inequities, hardships, serious market disruptions, domestic shortages of raw materials, localized shortages of labor, and windfall profits;
      (3) take into account changes in productivity and the cost of living, as well as such other factors consistent with the purposes of this title as are appropriate;
      (4) provide for the requiring of appropriate reductions in prices and rents whenever warranted after consideration of lower costs, labor shortages, and other pertinent factors; and
      (5) call for generally comparable sacrifices by business and labor as well as other segments of the economy.”

      . In replying to the district judge’s observation, during the arguments, that the productivity increase expected could not have exceeded 11%, the Unions’ counsel said, “Well, I would say simply the Union would have struck a bad bargain if the productivity increases alone would have hurt their members more than the wage increase that was secured.”


author: AINSWORTH, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellant, v. Keith Stanford IRICK et al., Defendants-Appellees.
    No. 74-1265
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Aug. 5, 1974.
    Rehearings and Rehearings En Banc Denied Oct. 17, 1974.

      F. Witcher McCullough, III, Asst. U. S. Atty., Houston, Tex., William L. Patton, Justice Dept., Washington, D. C., James R. Gough, Asst. U. S. Atty., Houston, Tex., for plaintiff-appellant.
    Philip S. Greene, Houston, Tex., for Irick.
    Harry L. Tindall, Houston, Tex., for David P. Kay.
    Buddy W. Gregory, Houston, Tex., for Richard N. Myers.
    Edward L. Lasof, Houston, Tex., for Joseph E. Peel.
    Before BROWN, Chief Judge, and THORNBERRY and AINSWORTH, Circuit Judges.

       Rule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Company of New York et al., 5 Cir., 1970, 431 F.2d 409, Part I.

   AINSWORTH, Circuit Judge:

The question presented for decision is whether an indictment charging assault of an officer of the Drug Enforcement Administration is fatally defective because the pertinent statutes, though they encompass assaults on “any officer or employee of the Bureau of Narcotics and Dangerous Drugs,” do not specifically refer to the Drug Enforcement Administration, the successor in the Department of Justice to the Bureau of Narcotics and Dangerous Drugs.

Defendants Keith Stanford Irick, David Paul Kay, Richard Neil Myers, and Joseph Edwin Peel were named in an indictment which charged that on or about August 27, 1973, they “wilfully and by use of a deadly and dangerous weapon, that is, a bayonet, did forcibly assault, resist, oppose, impede, intimidate, and interfere with ... a Special Agent of the Drug Enforcement Administration, United States Department of Justice while [he] was engaged in the performance of his official duties.” The indictment charged violation of 18 U.S.C. §§ 111 and 2.

Section 111 of Title 18, United States Code, prohibits, inter alia, the forcible assault, intimidation, or interference with “any person designated in [18 U.S.C. § 1114] while engaged in or on account of the performance of his official duties . . . ,” Section 1114 designates several categories of federal officers and employees. Among the categories designated is the Bureau of Narcotics and Dangerous Drugs, the predecessor in the Department of Justice of the Drug Enforcement Administration.

The Bureau of Narcotics and Dangerous Drugs was established by Reorganization Plan No. 2 of 1973. 1973 U.S.Code Cong. & Admin.News 3554. The plan became effective without congressional action on July 1, 1973, as provided by 5 U.S.C. § 906(a); and on July 10, 1973, pursuant to Executive Order 11727, dated July 6, 1973, the Attorney General transferred the functions of the Bureau of Narcotics and Dangerous Drugs to the Drug Enforcement Administration by amending the Code of Federal Regulations, 38 Fed.Reg. 18380. Thus, as the district court found, “the Drug Enforcement Administration, its officers and employees, are the successors to the Bureau of Narcotics and Dangerous Drugs, its officers and employees in function and authority.” Section 1114, however, was not amended to reflect this changeover from the Bureau of Narcotics and Dangerous Drugs to the Drug Enforcement Administration.

In the court below, each of the defendants moved to dismiss the indictment for failure to charge an offense on the ground that agents of the Drug Enforcement Administration are not within the categories designated under 18 U.S.C. § 1114 and, thus, assaults on such agents are not encompassed by 18 U.S.C. § 111. Notwithstanding its finding that the Drug Enforcement Administration is the successor to the Bureau of Narcotics and Dangerous Drugs, the district court held that section 111 does not apply to assaults on Drug Enforcement Administration agents because Congress failed to amend section 1114 to substitute the Drug Enforcement Administration for the Bureau of Narcotics and Dangerous Drugs. Concluding that section 1114 “applies only to those departments, agencies, and bureaus specifically named therein,” the court granted defendants’ motions and ordered the indictment dismissed. The Government appeals pursuant to 18 U.S.C. § 3731.

The district court’s memorandum and order concluding that the indictment should be dismissed omits reference to 5 U.S.C. § 907(a), enacted September 6, 1966. Section 907(a), which provides for continuity of status and function in connection with executive reorganizations, controls the issues presented. It reads in full:

§ 907. Effect on other laws, pending legal proceedings, and unexpended appropriations.
(a) A statute enacted, and a regulation or other action made, prescribed, issued, granted, or performed in respect of or by an agency or function affected by a reorganization under this chapter, before the effective date of the reorganization, has, except to the extent rescinded, modified, superseded, or made inapplicable by or under authority of law or by the abolition of a function, the same effect as if the reorganization had not been made. However, if the statute, regulation, or other action has vested the functions in the agency from which it is removed under the reorganization plan, the function insofar as it is to be exercised after the plan becomes effective, shall be deemed as vested in the agency under which the function is placed by the plan. (Emphasis added.)'

The section’s legislative history reflects the clear meaning of the statutory language, that is, the desire of Congress not to leave a hiatus in existing law when a reorganization has taken place. A House Report on the 1949 Reorganization Act, the predecessor of the 1966 reorganization statute, explains that section 907 /‘contains saving provisions with respect to the status, after a reorganization, of statutory provisions, regulations, and other actions, and suits and other proceedings, having a relation to any agency or function affected by such reorganization.” H.R.Rep. No. 23, 81st Cong., 1st Sess., 1949 U.S.Code Cong. Serv. 1391. In addition, a House Report commenting on a similar saving clause in the original Reorganization Act of 1939 noted that the saving clause “provides for the survival of laws in connection with reorganizations.” H.R.Rep. No. 120, 76th Cong., 1st Sess. 6 (1939).

Basically, when a reorganization takes place, section 907(a) continues in effect laws existing prior to the reorganization. Any statute relating to an agency and enacted before the effective date of the reorganization of that agency has the same effect as if there had been no reorganization. Thus, special agents of the Drug Enforcement Administration fall within the ambit of section 111, by virtue of the provisions of section 1114, in the same manner as did the special agents of the Bureau of Narcotics and Dangerous Drugs.

On appeal, defendants pose four basic arguments as militating against the application of section 907(a) to their situation. First, they assert that Congress has at times amended 18 U.S.C. § 1114 to reflect changes caused by reorganizations. They refer specifically to the amendment by Congress, as part of the Comprehensive Drug Abuse Prevention and Control Act of 1970, of section 1114 to substitute the Bureau of Narcotics and Dangerous Drugs in the Department of Justice for its predecessor, the Bureau of Narcotics in the Treasury Department. 1970 U.S.Code Cong. & Admin.News 1492, § 701(i) (1), Pub.L. 91-513, 84 Stat. 1236. We do not view this as evidence of congressional intent that an amendment of 18 U.S.C. § 1114 was a precondition to the coverage of agents of the Bureau of Narcotics and Dangerous Drugs, to disregard of 5 U.S.C. § 907(a). No such implication can be garnered from the legislative history of the Act. The provision amending section 1114 was merely one provision of a general statutory program designed to deal with drug abuse; and the amendment came almost two years after the creation of the Bureau of Narcotics and Dangerous Drugs, see Reorganization Plan No. 1 of 1968, 1968 U.S.Code Cong. & Admin.News 4734. The hearings on the creation of the Bureau of Narcotics and Dangerous Drugs, moreover, indicate that amendment of section 1114 was not deemed necessary to the continued coverage of that Bureau’s officers. See Hearings Before a House Subeomm. on Government Operations, 90th Cong., 2d Sess., at 64 (1968). Indeed, it would ignore the impact of 5 U.S.C. § 907(a) to hold that because Congress has on previous occasions made a conforming amendment to section 1114 it must do so to protect federal agents in reorganization situations.

Defendants also assert, in a vague way, that there is a constitutional impediment to the inclusion of Drug Enforcement officers and agents within the coverage of section 1114. We perceive no such problem. We note, moreover, that it is not an element of a section 111 offense that the person who commits one of the proscribed acts does so with the knowledge that his victim is a federal officer, see e. g., United States v. Davis, 5 Cir., 1970, 423 F.2d 974, 975 n. 1, cert. denied, 400 U.S. 836, 91 S.Ct. 74, 27 L.Ed.2d 69; United States v. Marcello, 5 Cir., 1970, 423 F.2d 993, 1010, cert. denied, 398 U.S. 959, 90 S.Ct. 2172, 26 L.Ed.2d 543; Burke v. United States, 5 Cir., 1968, 400 F.2d 866, 868, cert. denied, 395 U.S. 919, 89 S.Ct. 1771, 23 L.Ed.2d 237 (1969); United States v. Langone, 1 Cir., 1971, 445 F.2d 636, cert. denied, 404 U.S. 915, 92 S.Ct. 226, 30 L.Ed.2d 189; United States v. Goodwin, 3 Cir., 1971, 440 F.2d 1152, 1155; United States v. James, 9 Cir., 1972, 464 F.2d 1228, 1230, cert. denied, 409 U.S. 1086, 93 S.Ct. 697, 34 L.Ed.2d 123; and it is certainly not an element of a section 111 offense that the defendant know the specific name of the agency by which his victim is employed. “[W]hat little legislative history does exist indicates only that Congress intended to create a federal forum for the enumerated offenses instead of having to rely upon state and local courts for the protection of federal officers.” United States v. Goodwin, supra, 440 F.2d at 1155; see Ladner v. United States, 358 U.S. 169, 174 n. 3, 79 S.Ct. 209, 212 n. 3, 3 L.Ed.2d 199 (1958) (Letter of January 3, 1934, from Homer Cummings, Attorney General, to Senator Ashurst, Chairman of the Senate Committee on the Judiciary). See also United States v. Langone, supra, 445 F.2d at 637. Given the existence of 5 U.S.C. § 907(a) at the time of the occurrence of the assault in this case, as well as the fact that for conviction under section 111 a defendant need not have knowledge of the official status of his victim, no constitutional impediment can be claimed in the reorganization statute’s application to these defendants.

Defendants also place reliance on the doctrine that penal statutes must be construed strictly and contend that a strict reading of section 1114 requires that it apply only to those agencies specifically named therein. The strict construction concept does not, however, require that other pertinent statutes, in this case section 907(a), be disregarded. Furthermore, the doctrine is grounded in the principle that persons accused of a crime must be afforded fair warning of the prohibited conduct. See, e. g. United States v. Harriss, 347 U.S. 612, 617, 74 S.Ct. 808, 812, 98 L.Ed. 989 (1954); W. La Fave & A. Scott, Jr., Criminal Law 72 (1972). It cannot be validly argued that defendants were not given adequate notice of the prohibited conduct, that is, the assault of a federal officer. Section 907(a) in no way changes the nature of this conduct.

Finally, defendants argue that section 907(a) was intended to apply to civil statutes — not criminal statutes— and to the functions of governmental agencies in reorganizations. We can discern no such restriction of intent, either from the plain meaning of the statute or from its legislative history.

We have considered all of defendants’ assertions and find them to be without merit. We conclude that section 1114 includes the Drug Enforcement Administration in the same manner that it encompassed the Bureau of Narcotics and Dangerous Drugs. The indictment, therefore, as it charges an offense under section 111, is not defective.

Reversed.

      . 18 U.S.C. § 2 provides:
      § 2. Principals
      (a) Whoever commits an offense against the United States or aids, abets, counsels, commands, induces or procures its commission, is punishable as a principal.
      (b) Whoever willfully causes an act to be done which if directly performed by him or another would be an offense against the United States, is punishable as a principal.

      . 18 U.S.C. § 111 reads in full:
      § 111. Assaulting, resisting, or impeding certain officers or employees
      Whoever forcibly assaults, resists, op-posses, impedes, intimidates, or interferes with any person designated in section 1114 of this title while engaged in or on account of the performance of his official duties, shall be fined not more than $5,000 or imprisoned not more than three years, or both.
      Whoever, in the commission of any such acts uses a deadly or dangerous weapon, shall be fined not more than $10,000 or imprisoned not more than ten years, or both.

      . The pertinent text of 18 U.S.C. § 1114 provides:
      § 1114. Protection of officers and employees of the United States
      Whoever kills . . . any officer or employee ... of the Bureau of Narcotics and Dangerous Drugs . . . while engaged in the performance of his official duties . . . shall be punished as provided under sections 1111 and 1112 of this title.

      . A regulation promulgated on July 1, 1973 by the Acting Administrator of the Drug-Enforcement Administration used language similar to that of 5 U.S.C. § 907(a) :
      All regulations or other action made, prescribed, issued, granted or performed in respect of or by the agencies or functions affected by section 1 of Reorganization Plan No. 2 of 1973 shall, until rescinded, modified, superseded, or made inapplicable, have the same effect as if the reorganization had not been made.
      The directive further provides :
      Sec. 3. Enforcement officers (a) All criminal investigators are authorized to exercise all of the powers of enforcement personnel granted by 21 U.S.C. 876, 878, 879 ... .
      38 Fed.Reg. 18381.
      The special agent who the indictment charges defendants with assaulting is a criminal investigator within the purview of the regulations.

      . 18 U.S.C. § 3731 provides in relevant part:
      In a criminal case an appeal by the United States shall lie to a court of appeals from a decision, judgment, or order of a district court dismissing an indictment or information as to any one or more counts, except that no appeal shall lie where the double jeopardy clause of the United States Constitution prohibits further prosecution.

      . The only other decision treating the question presented in this case is United States v. Hasimar, 69 Cr. 58 (S.D.N.Y. May 25, 1970) (unreported), which involved the establishment of the Bureau of Narcotics and Dangerous Drugs. The court in Hasimar disposed of the case in the same manner as the court below; and, like the court below, failed to mention 5 U.S.C. § 907(a).

      . The legislative history is silent on the purpose of the amendment. See 1970 U.S.Code Cong. & Admin.News 4566ff.

      . In response to questions from Congressman Edwards, Phillip S. Hughes, Deputy Director, Bureau of the Budget, and John H. Einlator, Director, Bureau of Drug Abuse Control, Pood and Drug Administration, Department of Health, Education, and Welfare, testified that reorganization would not affect the coverage of employees of the Bureau of Narcotics and Dangerous Drugs under 18 U.S.C. § 1114.

      . Defendants do not challenge this principle of law.