text:
    ANDERSON, CLAYTON AND COMPANY, Appellant, v. Harry KRIER, d.b.a. the 7 Seas Restaurant, Appellee.
    Patent Appeal No. 8916.
    United States Court of Customs and Patent Appeals.
    June 7, 1973.
    G. Cabell Busick, Carol L. B. Matthews, Mason, Fenwick & Lawrence, Washington, D. C., attorneys of record, for appellant.
    Harry Krier, pro se.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Associate Judges, and ALMOND, Senior Judge.

      . Reg. No. 741,376 issued November 27, 1962.

   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Trademark Trial and Appeal Board, abstracted at 167 USPQ 410 (1970), dismissing the opposition filed by appellant to the registration of the trademark 7 SEAS for “Hush Puppies.” Appellee’s application alleges first use on January 1, 1954 and first use in commerce on January 13, 1959. We reverse that decision.

Appellant bases its opposition on two of its registered trademarks, SEVEN SEAS and ship design for spice seasonings, spices, seasoning salts, and culinary herbs, and SEVEN SEAS ■ for cooking sauces. Both of these marks were registered before appellee’s application was filed.

The basis of the board’s decision dismissing the opposition lay in its acceptance of appellee’s proofs alleging first use on January 1, 1954 and its restriction of appellant, for purposes of priority, to the filing date of its earlier registration, March 24, 1954. In the board’s view, this settled the matter since his earlier use gave appellee “rights in the mark ‘7 SEAS’ superior to those alleged by opposer in the substantially identical mark ‘SEVEN SEAS’.” The board justified its decision as follows:

Opposer has urged that, even though it may be held that opposer has failed to establish superior or prior rights in the mark “SEVEN SEAS”, the Board has the duty to refuse or suggest to the Examiner of Trademarks that registration be refused applicant under Section 2(d) of the Statute in view of opposer’s ex-, isting registrations.
Opposer’s argument, however, is not well founded because the basic question to be determined in an opposition proceeding is whether or not the op-poser would be damaged by the registration of an applicant’s mark. Thus, in an opposition proceeding involving the respective trademarks of the parties, the moving party or opposer must, in order to establish his claim of damage, establish superior rights in his trademark and facts which would lead to a holding of likelihood of confusion. It is manifest that, where as here, the moving party has failed to establish prior rights in the mark on which he predicates his claim of damage, he manifestly has no standing to be heard on the question of likelihood of confusion since it can be argued that, as the subsequent user, his adoption and use of a confusingly similar mark created the situation that could possibly give rise to a likelihood of confusion in trade. Thus, it has been a consistent practice of the Board, under circumstances such as those present herein, to refrain- from ruling on the question of likelihood of confusion.

In our view, the board’s decision was clearly erroneous. Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), requires that a trademark be refused registration if it

(d) consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive * * *.

We have interpreted the statute as meaning that the question of priority does not arise against a registered mark in an opposition proceeding. David Crystal, Inc. v. Shelburne Shirt Co., 59 CCPA 1248, 465 F.2d 926, 175 USPQ 112 (1972). See also Contour Chair-Lounge Co. v. Englander Co., 51 CCPA 833, 324 F.2d 186, 139 USPQ 285 (1963) and In re Calgon Corp., 58 CCPA 830, 435 F.2d 596, 168 USPQ 278 (1971). Therefore, both of appellant’s marks should have been considered on the question of whether confusion would be likely in the concurrent use of the marks involved.

Appellee has sought to distinguish the facts of this ease from those of David Crystal. He points out that the opposer in David Crystal had no knowledge of the prior use by the party seeking to register the similar mark, whereas ap-pellee in this case had once possessed a registration of the mark 7 SEAS for hush puppies. That registration was canceled because of a failure to file the appropriate evidence of continued use as required by section 8 of the Trademark Act of 1946, 15 U.S.C. § 1058. He suggests that this registration would have been at least constructive notice to appellant when it purchased its first SEVEN SEAS trademark from a bankrupt corporation that an earlier user possessed rights in 7 SEAS as evidenced by a then effective registration.

From these facts, appellee argues that since he is seeking to reregister a mark, the earlier registration of which had been lost by inadvertence, rather than trying to get an initial registration, it would be inappropriate to deny his application to register. We find no merit to this argument. Under section 2(d), priority determines the right to register in an opposition proceeding only in those cases where the opposer has no registered trademark. There are no other exceptions in the statute, and we see no justification for engrafting one upon it. Whatever benefits a registration conferred upon appellee were lost by him when he negligently allowed his registration to become canceled.

Because of the overriding importance it attached to the question of priority, the board failed to reach the issue of likelihood of confusion, mistake, or deception, although briefed by both parties. Since we do not have the benefit of the board’s consideration of this issue, we are not disposed to treat it ourselves.

Accordingly, the decision of the board dismissing the opposition is reversed and the case is remanded for consideration of the issue of likelihood of confusion, mistake, or deception.

Reversed and remanded.

      . Serial No. 272,073 filed May 22, 1967.

      . Reg. No. 634,131 issued September 4, 1956 to a predecessor.


source: Caselaw Access Project

author: RICH, Judge.

license: Public Domain

text:
    Application of Richard CORTH.
    Patent Appeal No. 8828.
    United States Court of Customs and Patent Appeals.
    June 7, 1973.
    W. D. Palmer, Pittsburgh, Pa., attorney of record, for appellant; Blair R. Studebaker, Pittsburgh, Pa., of counsel.

      S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the examiner’s rejection of article claims 1-6, all of the claims of application serial No. 535,835, filed March 21, 1966, entitled “Tantalum Carbide or Tantalum-Alloy Carbide Filament Mounting and Method.” We reverse.

The Invention

The claimed invention is a mounting structure for tantalum or tantalum-alloy carbide lamp filaments, described as follows in appellant’s brief before the board, with reference to Figs. 1 and 2 of appellant’s drawings below:

The filament comprises a coiled, elongated, incandescible filament (14) principally comprising tantalum carbide which has a coiled end extension (34). The coiled end extension (34) snugly overfits at least a part of a relatively thick, elongated tantalum carbide member (32). The inner surface of the overfitted turns of the coiled end extension (34) are welded to the relatively thick, elongated member (32). The relatively thick member (32) in turn is electrically connected to and mechanically supported by the main filament support and electrical connection means, such as the supporting frame (20). Because of its size, the member (32) can be readily clamped [between rigid tantalum supports 36] or otherwise supported without fracturing. The method for fabricating the filament and relatively thick member of tantalum carbide is * * * briefly, a tantalum metal, coiled end extension (34) is overfitted onto a relatively thick tantalum metal member (32). The two members are simultaneously carbided prior to incorporation into the lamp and during the carburization, the weld or bond is effected between the inner surface of the overfitted turns (34) and the relatively thick member (32).

Claim 1, the sole independent claim, reads:

1. A combination connection for mechanically supporting and electrically connecting a coiled elongated in-eandeseible filament principally comprising tantalum carbide to a main filament support and electrical connection means, said connection comprising:
(a) a relatively thick elongated member principally comprising tantalum carbide;
(b) a coiled end extension of said elongated filament coil snugly overfit-ting at least a part of said relatively thick elongated member, the inner surface of the overfitted turns of said end extension coil welded to said relatively thick elongated member; and
(c) said relatively thick elongated member electrically connected to and mechanically supported by said main filament support and electrical connection means.

For the purposes of this appeal, the dependent claims need not be discussed.

The References and the Rejection The references relied upon are:
Allen 2,434,478 Jan. 13, 1948
Cooper 3,022,437 Feb. 20, 1962
Rlvely et al. (Rlvely) 3,183,395 May 11, 1965
Bird 3,237,284 Mar. 1, 1966
Sloan 3,287,591 Nov. 22, 1966
(Filed Dec. 13, 1961)

Allen discloses a method of attaching a projection lamp filament to its support members as shown in its Figs. 2 and 3:

Coiled end extension 39 of filament 38 of unspecified composition is slidably fitted on the support member 44 of molybdenum. The end extension is then bonded to the support member by conductive paste 62.

Cooper discloses attaching a coiled tantalum-alloy filament to tantalum-alloy leads by an unspecified method which appellant agrees might be spot welding. The filament and leads are assembled in a bulb, such as a sealed-beam headlamp, that contains a volatile hydrocarbon and hydrogen atmosphere. Cooper states:

The filament may then be converted to the carbide form by passing sufficient current through the filament to yield a filament temperature of about 3100 °C. In this way, the tantalum and tungsten, for example, comprising the filament and lead ends associated with the filament will be substantially converted to carbides.

Bird is similar to Cooper except that it additionally includes a fine wire of smaller diameter (1 mil or less) helically wound around the larger diameter (5 to 7 mils) filament wire. The fine wire is cemented to the filament wire by an organic hydrocarbon thermoplastic which, on charring, produces carbon. A bond is formed between the wires when they are converted to carbides by self-heating as disclosed by Cooper.

Rively discloses a module assembly for projection lamp filaments of undisclosed material in which the filaments are spot welded to their leads.

Sloan discloses carburizing a tantalum filament coil in a furnace. Tantalum carbide support legs are cemented to the tantalum carbide coil in accurate orientation and molybdenum leads are cemented to the legs to complete the filament. Next, current is passed through the filament (enclosed in a hydrogen and hydrocarbon atmosphere) to “set the cement and sinter the tantalum carbide legs to the coil and leads.” The connection between the leads and legs is arc-welded with a carbon or tungsten electrode in an atmosphere of inert gas, such as argon, since electrode contact from spot-welding “could destroy the brittle filament.” However, it is to be noted that Sloan further states (reference numerals omitted for clarity):

The arc welding makes an effective permanent joint between the leg[s] and the support wire[s]. When the joint is simply heated by passage of current through it and [the] coil, the cement may not become sufficiently hot to siiiter the cement and set it properly, because the lead-in wires are thicker than the filament of [the] coil. For this reason arc welding is superior.
The cement used to affix the coil to the legs is nearer the hot coil and so will be more readily heated to the sin-tering point. However, even there, an improvement is effected by arc welding.

The examiner rejected the claims as unpatentable under 35 U.S.C. § 103 over Allen in view of Cooper and Rively. He considered it obvious to bond the extension 39 of Allen’s filament to support member 44 by spot welding, especially in view of Rively. He also considered it obvious to make the Allen filament and filament support of tantalum carbide in view of Cooper.

In affirming, the board first found appellant to have admitted in his specification that tantalum carbide and'tantalum-alloy carbide filaments were known in the art. It also regarded statements in the specification that “a very thin tantalum carbide filament is quite difficult to weld to a supporting member” and that welding of such filaments to supporting members is “deleterious to the life of the filament” to constitute a concession that welding of such carbu-rized filaments is possible. The board relied on the “admissions” and the Allen and Cooper patents. In its reasoning, as will appear from the statements quoted below, the board suggested two ways of making appellant’s structure:

In our opinion, to one ordinarily skilled in the art appellant’s admissions and the Allen and Cooper patents would suggest making Allen’s members 39, * * * [and] 44 * * * of tantalum or tantalum alloy as in appellant’s admissions or as in Cooper; welding them together as in appellant’s admissions instead of cementing them together as in Allen, the welding necessarily being between the interior of the coils and the exterior of the elongated member; and then carbiding the tantalum or tantalum alloy members as in appellant’s admissions or as in Cooper, thus to provide the substance of appellant’s claim 1.
•X- -X- -X- -X- -X- -X-
Furthermore, in our opinion, to one ordinarily skilled in the art appellant’s admissions and the Allen and Cooper patents would suggest making Allen's members 39 * * * [and] 44 -» * * 0f tantalum carbide or tantalum alloy carbide as in appellant’s admissions or as in Cooper; and welding them together as in appellant’s admissions instead of cementing them together as in Allen, the welding necessarily being between the interiors of the coil turns and the exteriors of the elongated members, thus to provide the substance of appellant’s claim 1.

Appellant filed a request for reconsideration accompanied by an affidavit asserting that the elements of Allen, if made of tantalum carbide, could not be welded as discussed by the board. In its response, the board declined to change its decision and additionally suggested yet another way to provide appellant’s structure, stating:

It is further our opinion that, in view of appellant’s admissions and the Cooper patent, to one ordinarily skilled in the art it would be suggested to make Allen’s member 44 of tantalum carbide and his filament 38, 39 of tantalum, welding these elements together, and then carbiding the filament 38.
* -X- -x- # * *
In our opinion, appellant has not proved that at the time of his invention the obvious claimed structure could not have been made by one ordinarily skilled in the art by some method which was known or was obvious in view of the cited and admitted prior art.

In his brief, the solicitor argues that the claims are obvious in view of Allen, Cooper, Bird, and Sloan.

OPINION

It is apparent that the board based its conclusion that appellant’s claimed structure was obvious largely upon reasoning that it could be made by methods which it found suggested by Cooper and Allen and the “admissions” it found in appellant’s specification. We do not think these references and “admissions” show the structure to have been obvious, and, in particular, we do not find that the methods disclosed in Cooper and Allen would have made that structure obvious.

It is true that appellant did concede that incandescent lamp filaments of tantalum and tantalum-alloy carbides are old. But that is about as far as any admissions made by him are of any significance. Certainly he did not concede that it would be obvious to weld such carbide filaments to supports of the same composition; he has instead steadfastly urged that spot welding a tantalum carbide filament to a support is not practical because the filament tends to shatter during the process. That appellant did not state such a weld was impossible, while maintaining it was difficult, plainly does not amount to the admission which the board apparently found.

The desirability of making the Allen filament 38, 39 of tantalum or tantalum-alloy carbide might very will have been apparent to a person skilled in the art. However, we do not find Cooper to suggest either that both the particular filament structure, including both its coiled end 39 and support member 44, be made of such material or that they could be welded together as required by the claims.

Appellant submitted an affidavit of Johansen, a highly trained scientist experienced in the development of incandescent lamps which utilized tantalum carbide filaments. The affiant states that it would be “technically impossible” to provide the claimed structure by first fabricating the filament and supports of tantalum or tantalum-alloy and then heating them by passing current there-through in series to carburize them, the first method suggested by the board, because the support members, being relatively large cross-section and relatively low resistance compared to the filament, would not be heated to a high enough temperature. Affiant further states that making the filament and supports of tantalum carbide and then welding them together, the board’s second suggested method, would be impossible “due to the extreme brittleness of tantalum carbide and the difficulties encountered in welding same.”

We find nothing in the prior art relied on by the board to indicate that a person of ordinary skill in the art would have any opinion contrary to the affiant’s on these points. While Cooper converts his tantalum filament to carbide form by self-heating in a suitable atmosphere and refers to the “lead ends associated with the filament” as also so converted, it is apparent that the latter conversion would not result in a lead “principally comprising tantalum carbide” as required by the claims. We therefore do not agree that a person skilled in the art would have found it obvious to modify Allen by either of the first two methods suggested by the board.

The board’s third method, suggested after the submission of the affidavit directed against the first two, was to make Allen’s support member 44 of tantalum carbide, assemble a tantalum filament thereon, and then convert the filament to carbide form and weld the members together. We cannot determine from the record whether this method would be operative or not. But, as we have already noted, Cooper does not suggest the particular support and coiled filament end be formed of two carburized materials with the inner surface of the turns of the filament coil welded to the exterior of the support member. The ability of the board to originate a method, not suggested by the prior art, to make the structure derived from appellant's own disclosure, does not demonstrate that the structure would have been obvious.

Only the Allen, Cooper, and Rively references were discussed in the examiner’s Answer and the board’s opinion. The solicitor, in his brief, undertakes to apply a new rationale to support the rejection based on the Bird and Sloan patents, applied neither in the examiner’s Answer nor in the board’s opinion. While appellant has expressed no objection to our considering these references and their application by the solicitor, it is too well settled to require citation of authority that we review only rejections made by the Patent Office in its examining and internal appellate functions and do not consider grounds of rejection presented for the first time in the brief of its solicitor. See In re Nygard, 341 F.2d 924, 52 CCPA 1032, 144 USPQ 586 (1965).

The decision of the board is, accordingly, reversed.

Reversed.


author: BALDWIN, Judge. MARKEY, Chief Judge

text:
    NATIONAL ASSOCIATION OF BLUE SHIELD PLANS, Appellant, v. The STANDARD MATTRESS COMPANY, Appellee.
    Patent Appeal No. 8960.
    United States Court of Customs and Patent Appeals.
    June 14, 1973.

      Melville Owen, Welton B. Whann, Owen, Wiekersham & Erickson, San Francisco, Cal., attorneys of record, for appellant.
    Ellsworth M. Jennison, Arlington, Va., attorney of record, for appellee. Sidney W. Russell, Arlington, Va., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board dismissing an opposition to the registration by appellee for “mattresses for household use and not for hospital use,” of the following mark:

Appellant is The National Association of Blue Cross Plans, the plans associated with which are engaged in underwriting the expense of medical care under the trade name and service mark “BLUE SHIELD,” and it is the owner of registrations covering the collective service mark BLUE SHIELD, a service mark comprising a representation of a blue shield, a collective service mark comprising a blue shield with a caduceus thereon, a collective service mark comprising a shield (no color claimed) with a caduceus,' all essentially for underwriting medical care on a prepayment basis, and of the mark THE BLUE SHIELD with a representation of a shield with a caduceus interposed between “Blue” and “Shield” for newspaper and news releases issued monthly.

Appellant’s priority is uncontested. It states that the issue is “whether mattresses are so related to ‘Health’ and ‘Doctors’ that applicant’s use of the mark it seeks to register is likely to cause confusion, mistake or deception.” It further charges that applicant’s mark “falsely suggests a sponsorship and/or endorsement by” appellant. The board did not find either a likelihood of confusion, mistake, or deception under 15 U. S.C. § 1052(d), or that appellee’s mark falsely suggests a connection with opposer within the meaning of 15 U.S.C. § 1052(a).

Appellant introduced evidence that it advertises the services rendered under its trademarks, with its 1967 budget for advertising amounting to $436,000. Its vice president stated that local plans spend approximately $7,500,000 to $10,000,000 a year on advertising but did not give any particular factual foundation for the statement. The evidence shows that the Blue Shield Plans have a total enrollment of 62,300,000 persons.

The issue turns, however, on appellant’s efforts to show, through testimony of its vice-president, that mattresses bear a relationship to its services because they constitute a health care product. The board summarized the testimony on that point as follows:

(1) The witness is aware that in advertisements by mattress companies, they speak of comfort but they also allude to the healthful nature of their mattress.
(2) The witness knows that Sealy Posturpedic Mattress Company exhibits at the annual meetings of the American Medical Association.

The board found no documentation of the first item. As to the second, it noted that the witness failed to provide a responsive answer to a question whether the mattress displayed at the AMA meeting were those sold strictly to hospitals or were for use by the general public in their homes as well. It found that the proofs were not persuasive that mattresses for household use are health care products.

Before us, appellee cites several decisions of the Commissioner of Patents, the Trademark Trial and Appeal Board and the courts showing that trademarks which it considers related to health or used a form of the word “health” have been applied to mattresses. As an example, one of the cases is Sleepmaster Products Co. v. American Auto-Felt Co., 241 F.2d 738, 44 CCPA 784 (1957) wherein the mark “HEALTHMASTER” was involved. Another ease, The Spring-Air Co. v. National Mattress Co., 145 USPQ 741 (TTAB 1965), involved “Health Center.” Appellant also cites the apparently unpublished decision in Mayo v. National Mattress Co., No. 1249 (S.D.Ill.1934), in which it was decided that the defendant’s use of “Dr. Mayo” on its mattresses violated the rights which the famed Mayo Brothers had in their name. Finally, at oral argument, appellant asked this court to take judicial notice that mattress sellers allude to the healthful nature of their mattresses in their advertising, sometimes stating that certain mattresses were designed with the aid of doctors.

Even accepting appellant’s contentions concerning the healthful nature of mattresses and the advertising practices utilized in that industry, we are not satisfied that mattresses are sufficiently related to health, medical care or doctors so that use of the marks before us would lead to a likelihood of confusion or false suggestion. As appellee points out, the Mayo case is not controlling here, for in that case there were actual misrepresentations made that there was a connection between the mattresses sold and the Mayo brothers or the Mayo Clinic. We also note that the differences between the shields used by appellant and appel-lee, appellee’s shield having initials rather than the caduceus associated with the medical profession, would tend to dispel any possibility of false suggestion at least to some degree. In sum, despite the fact that appellant’s marks are very strong in their field, we find no basis for concluding that use of appellee’s mark for mattresses for household use would be likely to result in confusion, mistake or deception or would falsely suggest a connection with appellant.

The decision is affirmed.

Affirmed.

MARKEY, Chief Judge

(dissenting).

The fame of Blue Shield plus the association of health with mattresses is likely to lead to confusion, of which assumed sponsorship is one form. The marks are likely to be spoken at least as much as seen, making the shield of little effect. The climate for actual misrepresentation, i. e., a likelihood of confusion, seems clear.

      . 368 U.S.P.Q. 380 (1970) ; see also In re Standard Mattress Co., 153 U.S.P.Q. 864 (T.T.A.B.1967).

      . Application Serial No. 198,518, filed July 2, 1964.

      . Registration Nos. 557,037 and 557,040, issued April 1, 1952.

      . Registration No. 562,430, issued July 29, 1952.

      . Registration No. 591, 778, issued June 22, 1954.

      . Registration No. 617,304, issued December 6, 1955.

      . Registration No. 821,988, issued January 10, 1967.


author: MARKEY, Chief Judge.

text:
    The UNITED STATES, Appellant, v. CAVALIER SHIPPING CO., INC., Appellee.
    Customs Appeal No. 5502.
    United States Court of Customs and Patent Appeals.
    June 7, 1973.

      Harlington Wood, Jr., Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Herbert P. Larsen, New York City, for the United States.
    George Bronz, Washington, D. C., attorney of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is from the decision and judgment of the United States Customs Court, First Div., 67 Cust.Ct. 440, C.D. 4317, 337 F.Supp. 447 (1971), sustaining eight consolidated protests against the classification of certain importations from Israel of methyl bromide containing 2% chloropicrin under item 405.15 of the TSUS as pesticides “obtained, derived, or manufactured * * * in part” from a benzenoid product provided for by subpart A or B of Part 1 of Schedule 4. The merchandise was held properly classifiable as other halogenated hydrocarbons under item 429.48, the claimed classification. We affirm.

The following stipulation sets forth the salient facts:

1. The imported merchandise is a liquid under pressure composed of methyl bromide (68.6%), petroleum hydrocarbons (30.0%) and chloropi-crin (1.4%) except in those instances where the merchandise is entered in small cans in which case they were composed of methyl bromide (98%) and chloropicrin (2%).
2. Its uses are those comprised within the term “pesticide,” as defined in TSUS schedule 4, part 1, sub-part C, headnote 2.
3. The petroleum hydrocarbons serve only as a diluent and/or propellant, are not an active pesticidal ingredient.
4. In these importations, the chlo-ropicrin is used in this formulation as a warning agent to alert people by its pervasive, unpleasant aroma, in the event of leakage of the methyl bromide, which is poisonous.
5. * * *
6. Methyl bromide is a halogenated hydrocarbon, but not one described in any of the TSUS items 429.20-429.47, inclusive.

Stipulation 5 relating to the origin of the chloropicrin was stricken at trial. But the presumption that the chloropi-crin involved was of benzenoid origin has not been disputed, appellee having offered no proof as to the actual derivation. Thus the chloropicrin falls within the scope of subpart A or B of Schedule 4, Part 1. The record also establishes that chloropicrin is capable in itself of serving as a pesticide but not in concentrations as low as 1 or 2%.

Appellant’s basic contention is that the presence of the chloropicrin cannot be ignored in the classification of the methyl bromide products. It is urged that the Customs Court committed reversible error in treating the merchandise as if it were a single compound. Proper recognition of the presence of the benzenoid component in the mixtures is said to require classification under the original classification, item 405.15 or, alternatively, under 409.00 as “mixtures * * * in part of” a benzenoid pesticide product provided for in sub-part C of Schedule 4, Part 1.

The Customs Court agreed that minute quantities of a substance could have a bearing on classification, but added that “this should only be the case when these substances are playing a ‘substantial’ part.” A two-sided test encompassing both a quantitative and a functional approach was set forth as the guide for determining whether the presence of a particular component makes the importation “in part” of that material. Adapting the test to this case, the court took the position that

* * * the provision for products in part of benzenoid origin will govern an article which contains any amount of a beneznoid [sic] ingredient which plays a part in the article’s principal function or an article containing a benzenoid ingredient which does not play a part in the article’s principal function but is nevertheless present in commercially meaningful quantities.

The court went on to point out that the principal function of the importation was as a pesticide while the chloropicrin in the small quantities employed herein served only as a warning agent. Accordingly it concluded:

The chloropicrin in the importation does not serve a pesticidal purpose nor is it present in quantities which would warrant considering it a meaningful importation of material of benzenoid origin. It follows that neither the functional test nor the quantitative test justifies the classification of the importation on the basis of the ehloro-picrin being of benzenoid origin.

The alternative classification was dismissed under analogous reasoning, the court stating:

An ingredient of benzenoid origin, which does not play a part in the principal function of the mixture and is not present in commercially meaningful quantities, does not make the mixture one which is within the intended scope of the above provision for mixtures.

Cases wherein an ingredient added solely for safety of transportation or as a preservative or binder was disregarded for tariff purposes were also cited as support for ignoring the chloropicrin component of the mixtures.

Appellant contends that the Customs Court should have recognized that a statutory definition exists for the language “in part of,” rendering the functional-quantitative test based on case law improper and unnecessary. We agree that General Headnote 9(f) (iv) defines “in part of” as containing “a significant quantity of the named material,” with the de minimus rule being applicable. The interpretation, however, of “significant” and the determination of the corresponding scope of the de minimus exception remain open.

Appellant urges that headnotes 2 and 3 to Schedule 4 23are sufficient to make clear the meaning of de minimus with regard to the specific area of chemical compounds and mixtures. It is true that only impurities are positively excluded in headnote 2(a). But we cannot agree that such impurities represent the full extent of the de minimus exception insofar as “mixtures” defined in Headnote 3 are concerned and that the general statutory plan permits no further qualifications as to “significant” quantities of a mixture component. Although a basic Congressional intent to assess mixtures at the highest rate applicable to any component material is evident from a review of Schedule 4, this does not nullify the requirement that a component be present in a “significant quantity” to render the mixture “in part of” that component. Such a limitation is in full accord with the statement in the Tariff Classification Study, Submitting Report, November 15, 1960, Vol. I at 14, that where the term “in part of” is used in the new schedules the “intention is that the component material be present in commercially significant amount.”

The real issue, therefore, lies in whether the chloropicrin component of the present importations was in fact present in “commercially significant amount.” Appellant strongly contends that this intentionally admixed ingredient, which serves a useful purpose, cannot properly be disregarded.

We find no error in the dual test employed by the Customs Court to determine whether the methyl bromide mixtures were to be considered “in part of” chloropicrin for tariff purposes. The quantitative approach was set forth in E. Fougera & Co. v. United States, 49 Treas.Dec. 986, C.D. 41632 (1926), wherein “in part” was equated with “a substantial part in a commercial sense.” The factual distinction drawn by the Customs Court in Northam Warren Corp. v. United States, 65 Cust.Ct. 584, C.D. 4142 (1970), that the minute quantity of coal tar derivative in Fougera did not participate in the primary functional role, has been approved by this court. Id. v. Id., No. 5455, 475 F.2d 647, 60 CCPA —, C.A.D. 1092 (1973). From this arises the exception for quantitatively insignificant amounts which nonetheless are present in sufficient quantity to perform a part in the primary function of the article. It is true both tests were developed in the interpretation of early tariff schedules. In view of the continuation of the language “in part” in the TSUS and the previously mentioned intention as to its import, however, this dual approach remains viable.

The only remaining question is whether the Customs Court erred in disregarding the chloropicrin on the importation here involved, on the basis of this quantitative-functional test. No argument has been made that the 1.4-2% of this ingredient is quantitatively significant. Instead it is stressed that the ingredient has been intentionally added for a specific purpose.

It is agreed, however, that the primary function of the merchandise is to act as a pesticide. The function of the chloropicrin in these importations, on the other hand, is to act as a warning agent. Appellant's own witness acknowledged that a 2% concentration of chloropicrin would only function as a warning agent and that “probably about 15 per cent” would be necessary to improve the pesticidal efficiency of the mixture. Thus we must agree with the holding of the Customs Court that methyl bromide compositions wherein the chloropicrin ingredient is not pesticidally active are not properly classified under 405.15 as a pesticide “obtained, derived or manufactured * * * in part” from a benzenoid ingredient or under 409.00 as a mixture “in part of” a benzenoid pesticide product. The chlo-ropicrin falls within the scope of the de minimus exception for tariff purposes. Classification of the merchandise under item 429.48 on the basis of its methyl bromide content is more in line with the Congressional intent with respect to “in part” provisions of the TSUS.

Appellant additionally argues that the governing headnotes of Schedule 4 create a specific exclusion of all benzenoid chemicals from item 429.48 in the same manner as in the case of Varsity Watch Co. v. United States, 34 CCPA 155, C.A.D. 359 (1947), aff’g Id. v. Id., 17 Cust.Ct. 24, C.D. 1015 (1946). In Varsity Watch this court determined that it was the Congressional intention that all metallic watch cases be embraced within paragraph 367(f) of the Tariff Act of 1930 and that any purposeful inclusion of gold, regardless of the quantity, necessitated classification under a higher duty rate as being “in part of” gold rather than as “not containing gold.” In the present situation the benzenoid provisions with their high protective rates also preclude classification elsewhere, if the product is described therein. But we cannot reconcile the expressed intention with respect to the meaning of “in part” in the TSUS with the restricted concept that any purposeful addition of a benzenoid product, be it to preserve life or to enhance salability, must render the article “in part” of that product. The distinction previously drawn on the basis of the primary functional role of the merchandise better satisfies that which we consider to be the true intent of the language of the TSUS.

The decision and judgment of the Customs Court is affirmed.

      . The relevant portions read :
      2. (a) * * * The presence of impurities which occur naturally or as an incident to production does not in itself affect the classification of a product as a compound.
      3. (a) The term “mixtures”, as used in this schedule, means substances consisting of two or more ingredients (i. e., elements or compounds), whether occurring as such in nature, or whether artificially produced (i. e., brought about by mechanical, physical, or chemical means), which do not bear a fixed ratio to one another and which, however thoroughly commingled, retain their individual chemical properties and are not chemically united. The fact that the ingredients of a product are incapable of separation or have been commingled in definite proportions does not in itself affect the classification of such product as a mixture.


author: ALMOND, Senior Judge.

text:
    Application of Peter P. NOZNICK et al.
    Patent Appeal No. 8908.
    United States Court of Customs and Patent Appeals.
    June 7, 1973.
    Alvin Guttag, Washington, D. C., attorney of record, for appellants, William T. Bullinger, Washington, D. C., Cush-man, Darby & Cushman, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Fred W. Sherling, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection under 35 U.S.C. § 103 of claims 11-25 of appellants’ application for patent entitled “Sour Cream Powder.” We reverse that decision.

The application involved is a continuation-in-part of serial No. 197,837 filed May 28, 1962. That earlier application was the subject matter involved in this court’s decision in In re Noznick, 391 F.2d 946, 55 CCPA 1009 (1968). Here, as in that case, the invention with which we are concerned is a process for making a spray-dried powder from sour cream and the resulting product. The process requires the steps of adding to the sour cream a coating agent for encapsulating the fat particles in the cream, homogenizing the mixture and then spray drying. The resulting powder has the property of being readily dispersed in water for reconstitution of the sour cream. Claims were also presented for the process of redispersing the powder.

The broadest claims of each type, claims 11, 18 and 21, are reproduced below:

11. A spray dried free-flowing sour cream powder readily redispersi-ble in water to produce a stable suspension comprising 95 to 70% sour cream solids and 5 to 30% of a coating agent selected from the group consisting of gum acacia, gum traga-canth, corn, wheat and potato starches, acid modified starches, phosphated starches, enzyme modified starches of the previous group, dextrins, pectins, earboxymethyl cellulose, nonfat milk solids, gelatin and casein.
18. A process of preparing the product of claim 11 consisting essentially of adding to sour cream 5 to 30% of the coating agent, homogenizing the mixture and then spray drying the mixture.
21. A process comprising redis-persing the product of claim 11 in water to produce a stable suspension..

The remaining claims under rejection add limitations which are not material to our resolution of this ease.

Appellants also disclosed in this application that a water reconstitutable sour cream product can be obtained by spray drying a mixture of sour cream and a protein peptizing agent such as sodium, potassium or ammonium phosphate. Optionally, an emulsifier and/or the coating agents enumerated in claim 11 can be included with the peptizing agent. Claims to these combinations were allowed by the examiner.

The examiner and the board relied upon four references in reaching their conclusion that the invention was obvious within the meaning of 35 U.S.C. § 103. These references are:

Bornegg Fear et al. (Fear) 1,800,501 2,671,729 April 14,1931 March 9,1954
Page et al. (Page) 2,719,793 October 4,1955
Cameron et at. (Cameron) 2,913,342 November 17,1959 (filed July 27, 1956)

In addition, appellants relied below upon the following reference:

Grelck 2,009,135 July 23, 1935

Bornegg teaches the addition of a water soluble gum such as gum arabic (acacia) to liquids “of plant, animal and synthetic origin” which are then spray dried. The only example given of such a liquid is lemon juice. Using this process, liquids which otherwise form slimy adherent masses when sprayed dried can be obtained as “beautiful dry powders.” An additional advantage is that the powder obtained in this way is nonhygros-copic and thus does not absorb moisture from the air. This improves its shelf life.

Fear discloses a process of treating skim milk to obtain a powdered buttermilk. The skim milk is treated with a basic agent such as calcium or magnesium oxide to reduce its acidity to a standard point. The standardized milk is heated and then flashed under reduced pressure to make a condensed milk that is innoculated with a bacillus to make a cultured buttermilk. The buttermilk is then heated and homogenized, if desired, and spray dried. Fear does not state that his product is redispersible in water. It is said to be useful in making ice cream and sherbets and can also be used in mixes for pancakes, doughnuts and the like.

The Page reference, the principal one relied upon by the examiner, describes the addition of tragacanth gum, an agent used by appellants, to sour cream to inhibit syneresis, i. e., the separation of curd from whey. Page does not dry his product.

Cameron teaches that spray-dried emulsions of fat encapsulated with solids such as gum acacia and gum tragacanth can be reconstituted by adding water if, in the words of the reference, “there is included in said composition a partial ester of a glycol and a higher fatty acid.” Examples of suitable fats are shortenings such as lard and those derived by hydrogenating vegetable oils such as cottonseed and peanut oils. Cameron does not mention sour cream.

Grelck, the reference relied upon by appellants, discloses the spray drying of cultured milk products, including a sour cream-like product, from which the albumen has been coagulated. A dry sour cream product obtained in this way is said to be incapable of being reconstituted by the addition of water.

In the earlier Noznick case, we affirmed a decision of the board sustaining a rejection of claims similar to those presented here. Claims 13 and 55 of the application involved there are as follows:

13. A spray dried free flowing sour cream powder containing approximately 82% sour cream solids and 18% gum acacia.
55. The process of making a sour cream powder comprising adding to sour cream 5 to 30% of a coating assisting agent selected from the group consisting of gum acacia, gum traga-eanth, corn, wheat and potato starches, acid modified starches, phosphated starches, enzyme modified starches of the previous group, dextrins, pectins, carboxymethyl cellulose, nonfat milk solids, gelatin and casein, homogenizing the mixture and then spray drying the mixture.

Those claims had been rejected under 35 U.S.C. § 103 in view of a combination of Bornegg, Grelck, Page and Cameron. The Fear reference was not of record in that case. In affirming the board, the court said:

It seems to us, as it did to the examiner and the board, that one skilled in the art would find it obvious to spray dry a cultured cream product such as Grelck teaches, and to add a coating agent prior to spraying to achieve the advantages taught by Bor-negg. The addition of such a coating agent to sour cream specifically is suggested by Page, although for a different purpose. The teachings of Cameron reinforce our conclusion. As to the specific percentages recited in certain claims, we find nothing in the specification to indicate any criticality of such proportions.

At that time, appellants had argued that obtaining a water reconstitutable product was an unexpected result sufficient to overcome the rejection of obviousness and that this result had been ignored by the board in reaching its decision. With regard to this assertion, this court stated:

There are certain statements by appellants’ attorneys during prosecution which may be read as indicating that a coating agent in the absence of a peptizing agent will produce a recon-stitutable product. But there are also statements indicating that the peptiz-ing agent alone is responsible for this property. There is no basis in the specification to conclude that the coating agent alone can yield a reconsti-tutable product, and no affidavits on the point were in the file as it went to the board. The board, faced with that record, was entirely correct in refusing to accord any weight to appellants’ arguments of unexpected results.

As a result of the decision adverse to them in that appeal, appellants were moved to file the application involved here. They now make it clear that a sour cream product capable of being reconstituted in water can be obtained by spray drying a mixture of the coating agent and sour cream alone. They have also submitted an affidavit that purports to show that the product derived from this process has enjoyed commercial success as further evidence that their invention would not have been obvious to one of ordinary skill in the art at the time it was made. However, the examiner and the board remained unconvinced. The board summarized its position as follows:

It [Fear] discloses a spray-dried cultured skim milk product, having an acidity of 4%, which is apparently re-constitutable with water in view of its use in making a smooth ice cream product which is not too resistant to proper melting * * *. It appears to be the examiner’s view that in the light of this disclosure, or that of Bornegg, and that of Cameron et al. it would be obvious to spray-dry the sour cream of Page et al. He finds no persuasive evidence that there is anything unexpected in the property of the spray-dried sour cream being readily reconstituted with water, and further observes that it is not clear just what is intended by this limitation, e. g., whether the composition can be simply stirred gently into water or whether it requires readily available means of mixing which we would assume to include mechanical beaters or kitchen blenders. We find ourselves in agreement with the examiner’s views; we would regard almost any dried product to be readily recon-stitutable at least in the usual blenders found in modern kitchens.

We disagree with the board’s assessment of the case in view of the added evidence of unobviousness embodied in the unexpected result now clearly set forth in appellants’ specification. That specification also makes it clear that spray drying sour cream without a suitable agent leads to a product that cannot be reconstituted by the addition of water. That this fact was known to the prior art is evidenced by the Grelek reference wherein a dried sour cream-like product was obtained which could not be redispersed in water.

The board and solicitor criticize this interpretation of Grelek. In their view, the sour cream-like product of Grelek is rendered nondispersible in water because of a heat treatment to coagulate the albumen present in the cultured milk as a dispersion. However, appellants point out that spray drying itself is carried out at temperatures well in excess of those used by Grelek. This is shown by the Cameron and Fear references.

We cannot give any weight to the board’s assertion that almost any dried product can be reconstituted with water using a modern blender. There is absolutely no foundation in the record upon which such a position can be based. Furthermore, even if what the board says is true, a product more easily reconstituted in water could be a welcome advance in the art.

In view of the fact that it was known to the prior art that a spray-dried sour cream could not be reconstituted by water, the issue of obviousness can be evaluated by asking whether there is any suggestion in the prior art of record to do what appellants have done, i. e., add a coating agent in the concentrations claimed to sour cream that is to be spray dried. We think that there is no such suggestion.

Our evaluation must start with Page, who after all does disclose that an agent such as gum tragacanth can be added to sour cream to prevent syneresis. However, that reference does not disclose any operative amount and no example of such use is given. Syneresis is the phenomenon observed for milk products wherein the curd separates from the whey. Since whey is the watery portion of milk products, it would appear that syneresis would not be a problem for spray-dried sour cream as the water is of course removed by the drying process. Therefore, if Page suggests anything, it would appear that his stabilizer would be unneeded for sour cream to be spray dried. Furthermore, there is nothing in the record to relate the amount of stabilizer to prevent syneresis with that required to accomplish reconstitution in water.

Bornegg teaches that a coating agent can be used where it is desired to obtain a dry and free-flowing powder from liquid materials that otherwise lead to adherent masses when spray dried. It seems clear from the record now before us that a dry powder can be obtained from sour cream without the use of added agents, albeit that powder cannot be reconstituted in water. Furthermore, there is no teaching in Bornegg that the coating agent used by him improves the reconstitution. In view of these facts, we cannot conclude that one skilled in the art would find in Bornegg any suggestion for using a coating agent with sour cream as sour cream in the dry state possesses those attributes that Bornegg was seeking without any added agent.

Cameron, as indicated above, is directed to making compositions from fats which are to be used as shortenings. Reconstitution of these compositions by adding water is attained only when the composition includes a partial ester of a glycol and a fatty acid. It seems clear that this teaches away from appellants’ invention. If it suggests anything at all to one of ordinary skill in the art, it is that this partial ester is essential if reconstitution by water is desired.

In view of these references, we are of the opinion that appellants' discovery of a reeonstitutable sour cream product is an advance in the art which would not have been obvious to one of ordinary skill in the art when that invention was made. When all of the pertinent art of record is considered, as indeed it must be, we find no suggestion of the desirability of adding a coating agent as set forth in claim 11 to a sour cream product that is to be spray dried.

We do not think that appellants’ case against a conclusion that the invention was obvious is strengthened by the evidence of commercial success proffered in an affidavit by Noznick, one of the co-inventors. In it he avers that a sour cream product made using a gum acacia coating agent enjoyed sales of over 1-200.000 pounds between January 1968 and July 1969, and that a similar product using nonfat skim milk solids as the coating agent enjoyed sales of over 1,-1.700.000 pounds between March 1963 and July 1969. These crude figures do not indicate whether the sales came at the expense of existing products. They are not related in any way to the total market of dried sour cream or sour cream itself. For all the record shows, the sales may be the result of advertising or other extraneous factors not related to the fact that the product can be reconstituted with water. In re Tiffin, 443 F.2d 394, 58 CCPA 1277 (1971). In other words, no nexus between the commercial success and the merits of the invention has been established. In re Cav-eney, 386 F.2d 917, 55 CCPA 721 (1967). However, for the reasons we have given above, it is our opinion that the decision of the board should be reversed.

Reversed.

      . Serial No. 728,317 filed May 10, 1968.

      . The record reveals that the application is also a continuation-in-part of serial No. 825,675 filed July 8, 1959 and now abandoned, serial No. 16,652 filed March 22, 1960 and serial No. 149,537 filed November 2, 1961 and now abandoned.

      . The sales figures given are not for the complete period as no sales are given for tlie period November 1965 to December 1967.


text:
    Application of ANDES CANDIES INC.
    Pat. Appeal No. 9065.
    United States Court of Customs and Patent Appeals.
    June 14, 1973.

      E. Manning Giles, Chicago, 111., atty. of record, for appellant. Pope, Ballard, Shepard & Fowle, Chicago, 111., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, abstracted at 171 USPQ 574 (1971) refusing registration of CREME DE MENTHE for “laminated chocolate mint candy squares.” Applicant, relying on use since 1950 and other evidence, sought registration under Section 2(f) of the Trademark Act of 1946. The tribunals below considered the mark a flavor designation and viewed the evidence as failing to establish a de jure secondary meaning under Sec. 2(f). We affirm.

Appellant’s candies are thin wafers with a top layer of chocolate, a bottom layer of chocolate, and an intermediate layer of green-colored, peppermint-flavored soft candy. The ingredients are “chocolate, milk solids, sugar, fats, artificial coloring, peanut oil, true peppermint flavor.” The candies do not contain any creme de menthe liqueur.

Appellant’s mark is shown in large, distinct type in a separate line on the boxes in which its laminated chocolate mint candies are packaged. Its trade name or house mark, ANDES, also appears prominently on its boxes. Appellant also packages its CREME DE MENTHE candies for other candy companies. The trade names of those companies appear prominently on their boxes along with the same type of display of CREME DE MENTHE. Appellant made reproductions of specimen box tops of such other candy companies of record in the file of the application.

Appellant introduced a large number of letters requesting its product; the affidavit of its president wherein it is stated that annual sales of CREME DE MENTHE candies exceed $2,500,000, that appellant spent more than $25,000 per year in advertising and promotion of the candies, that its candies are sold through more than 1,400 distributors in 49 states of the United States and in the provinces of Quebec and Ontario, and that it also sells directly through mail order; an affidavit of the vice-president of The Chocolate House, Inc., a manufacturer and distributor of candies, who averred that he has been active in the candy industry since 1932, that in his judgment “Creme de Menthe” would not be the usual, ordinary or likely name for appellant’s candy and that “Creme de Menthe” is not a usual or recognized flavor designation in the candy industry.

The examiner placed in the file a container for candy bearing the designation “Creme de Menthe” and distributed by Golden Apples Candy Co., of Southport, Conn.; pages from catalogues distributed by manufacturers of food flavors, two of which list “Creme de Menthe” as a flavor; a Swiss Colony catalogue page showing a candy product in the form of chocolate bottles filled with various liqueur flavorings, none of which was creme de menthe; appellant’s listing in Candy Industry of its products as “creme de menthe wafers” and another firm’s listing of “creme de licorice” flavored candy.

OPINION

The issue is not whether the mark is merely descriptive of the product, which it is not, but whether it so describes its flavor. A mark is “merely descriptive” under Sec. 2(e)(1) if it merely describes a characteristic (flavor) of the goods (candy). Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 49 C.C.P.A. 931 (1962); In re Sun Oil Co., 426 F.2d 401, 57 C.C.P.A. 1147 (1970); In re Helena Rubinstein, Inc., 410 F.2d 438, 56 C.C.P.A. 1110 (1969). Clearly “peppermint” or “chocolate” would be incapable of designating origin of candy and would not therefore be registrable. The reason lies, of course, in the obvious reaction of purchasers upon presentation of the words.

As we said in In re Automatic Radio Mfg. Co., 404 F.2d 1391, 1396, 56 C.C.P.A. 817, 823 (1969):

It seems elementary that one must find out how people in the trade and the purchasers use the terms with respect to the involved goods in order to determine whether or not they are descriptive.

We think the only possible reaction of purchasers, upon being presented with CREME DE MENTHE chocolate wafers, is the expectation that the wafers will have a mint taste something like that of creme de menthe liqueur. Surely, the purchasers would not expect to find a cherry or rum or butterscotch flavor in the candies. Whether or not the public is aware of the dictionary definition of “creme de menthe” made of record by the examiner, the words clearly connote a mint flavored liqueur. Of course the purchaser knows the product is a candy not a liqueur, but, as appellant admits, the average purchaser would “expect the candy to have a flavor similar” to that of creme de menthe liqueur.

Appellant argues that its mark only suggests a flavor similar to that of the liqueur. If that were so, registration would be proper. We think however that the mark demands that, and only that, flavor. Appellant’s citations of cases requiring that the mark be the “common descriptive name” of the goods to merit the proscription of Sec. 2(e)(1) are inapt where, as here, the mark is the common descriptive name of a liqueur whose flavor the public expects when it sees the mark. That other candy makers may not have employed “creme de menthe” so widely as to make it a common flavor designation for candy is not material where appellant itself has so employed the mark. Whether or not the mark is misdescriptive in leading the public to expect the actual liqueur in the candy is not before us. It is sufficient to preclude registration that the mark merely describes the flavor characteristic.

Marks which are merely descriptive under Sec. 2(e)(1) may be registered in response to adequate evidence of secondary meaning under Sec. 2(f). In the present case the record reflects competing evidence. That of appellant points to its activities from which the creation of a secondary meaning might be assumed, i. e. sales and advertising expense, and evidence purportedly more direct of an existing secondary meaning, i. e. the letters from customers. That of the examiner points to the words “creme de menthe” as a flavor designation (for foods by two companies and for candy by a third company), to an apparently descriptive use of the mark of appellant, and to the use of other liqueur names in connection with candy.

The examiner considered his showing of flavor designation so strong as to preclude any possibility whatever that “creme de menthe” could function as a trademark, regardless, in the examiner’s words, of appellant’s “cloud of special witnesses.” We needn’t go that far. We agree with the board that appellant’s evidence is insufficient to establish recognition of the mark as such by purchasers. The only evidence of record disclosing presentation of the mark to the public are the specimens. They show only that the mark is used in different and larger type above the name of the product. Absent evidence to the contrary, the uses of appellant’s mark in the 99 unsolicited customers’ letters are fully interpretable as flavor designations rather than recognitions of the term as a trademark. Because of long use, large sales and advertising, it may be assumed that some persons might recognize a mark as designating origin, but that alone is not enough. In re Deister Concentrator Company, Inc., 289 F.2d 496, 48 C.C.P.A. 952 (1961).

The solicitor relies strongly on Deister, supra, wherein we said that the courts will not, as a matter of policy, support exclusive rights in that which the public has a right to use. Against that view, appellant cites a number of our decisions which hold that registration of a term or phrase does not preclude use thereof by the public in a descriptive or non-trademark sense. If there be conflict in those lines of decision, its resolution is inappropriate here. In the present case, candy manufacturers have a right to employ “creme de menthe” precisely as appellant does, i. e. to designate a flavor similar to the liqueur, and to do so visually above or before the name of the product (“Creme De Menthe Wafers”) as well as orally. We cannot see, and have not been shown, how the use which appellant agrees the public may make is or could effectively be different from that reflected in the specimens filed with the application and those of other retailers in the record. An exclusive right only to use the mark visually in letters larger than those of the product name is not the right intended by the Act to be registered and would not impede the identical oral expressions mentioned above.

In view of the above, comment is unnecessary on arguments respecting the absence of “T. M.” or other trademark indication on appellant’s original specimens or the effect of use of the mark by other companies.

Affirmed.

      . Application serial No. 207,363, filed May 6, 1968.

      . “a relatively sweet green or white liqueur flavored with various mints, principally peppermint.” Webster’s Third New International Dictionary (1971).

      . Pacific Industries, Inc. v. Minnesota Mining & Mfg. Co. Inc., 425 F.2d 1265, 57 C.C.P.A. 1282 (1970), In Re Automatic Radio Mfg. Co., 404 F.2d 1391, 56 C.C.P.A. 817 (1969).


author: PER CURIAM:

text:
    Lois REED, and all others similarly situated, Plaintiff-Appellant, v. KROGER CO., Defendant-Appellee.
    No. 7-6.
    Temporary Emergency Court of Appeals.
    May 30, 1973.
    M. Daniel Friedland, Indianapolis, Ind. (Yockey & Yockey, Indianapolis, Ind., on the brief), for appellant.
    Alexander E. Bennett, Lanny J. Davis, Washington, D. C. (Arnold & Porter, Washington, D. C., on the brief), for ap-pellee.
    Before TAMM, Chief Judge, and ANDERSON and HASTINGS, Judges.
   PER CURIAM:

Appellant brought suit in the United States district court at Indianapolis in November of 1971 purporting to represent all persons similarly situated in an action for damages against Kroger Company. She alleged that appellee, operator of a chain of supermarkets in Indiana, had illegally increased food prices during the “freeze period” commonly referred to as “Phase One.” Appellee quickly moved to dismiss. After the relevant pleadings were filed, the district judge, on October 17, 1972, granted ap-pellee’s motion for reasons enumerated in his Memorandum of Decision. More than 100 days later, on January 29, 1973, appellant filed a notice of appeal with this court. He now seeks to justify that untimely filing.

I

Appellant filed a motion urging that his notice of appeal be accepted nunc pro tunc since the time to file the appeal concededly expired by November 18, 1972. The chain of events constituting his excuse for filing tardily began on or about November 15, 1972, when he prepared a notice of appeal to the Temporary Emergency Court of Appeals and personally delivered it for filing to the District Court for the Southern District of Indiana. This was clearly incorrect. Section 211(b)(2) of the Economic Stabilization Act, as amended, which is aptly entitled “Judicial Review,” provides in relevant part:

[TJhe Temporary Emergency Court of Appeals shall have exclusive jurisdiction of all appeals from the district courts of the United States in cases and controversies arising under this title or under regulations or orders issued thereunder. Such appeals shall be taken by the filing of a notice of appeal with the Temporary Emergency Court of Appeals within thirty days of the entry of judgment by the district court. (Emphasis added.)

This statute had been in effect for nearly a year prior to the incorrect filing. It further provides, in § 211(h):

The provisions of this section apply to any actions or suits pending in any court, Federal or State, on the date of enactment of this section in which no final order or judgment has been rendered. Any affected party seeking relief shall be required to follow the procedures of this title. (Emphasis added.)

Pursuant to the power vested in it under § 211(b)(1) the court shortly thereafter prescribed rules governing its procedure. Rule 16 accurately and succinctly reflected the Congressional mandate concerning time and place for filing a notice of appeal:

(a) A notice of appeal in any civil or criminal case arising under the Economic Stabilization Act of 1970 as amended by the Economic Stabilization Act Amendments of 1971 . . . shall be filed with the clerk of this court within 30 days of the entry of judgment by the district court. This time limitation shall be binding upon both government appeals and private appeals. . . . (Emphasis added.)

In an attempt to justify his error, counsel for appellant filed an affidavit, the substance of which follows. Arriving on November 15, 1972, at the District Court for the Southern District of Indiana with notice of appeal in hand, he “conversed with the clerk and was told that he [the clerk] saw no reason why normal appellate rules would not apply and that a bond was necessary,” which counsel posted. “[T]he Clerk indicated that he had a set of rules from the United States Temporary Court of Appeals [sic] and that he would comply with those rules and process the appeal into court and send up the document [sic] entries for review.” The affidavit continues: “I asked that individual [the clerk] at the time of filing whether I was following the proper procedure in the Rule 27, general rules of this Court. I made certain that the individual understood that an appeal is [sic] being taken to this Court, not to the 7th Circuit Court of Appeal.” Sixty days later the district court clerk discovered the error, notified counsel for appellant, and the present motion resulted.

II

Our first consideration must be whether any excuse may justify untimely filing in these circumstances. T.E.C. A. Rule 1 provides:

These Rules govern the procedure in the Temporary Emergency Court of Appeals of the United States. Except as to matters specifically covered by these rules, the Federal Rules of Appellate Procedure shall govern the procedure in all cases or proceedings in this court. The Rules shall be construed to secure the just, speedy and inexpensive determination of every action.

Since there is nothing in either the Economic Stabilization Act or the T.E.C.A. Rules which addresses an extension of time by this court for the filing of a notice of appeal, we must consult the Federal Rules of Appellate Procedure. The answer is readily available in Fed.R.App.P. 26(b), which provides, inter alia:

Enlargement of Time. The court for good cause shown may upon motion enlarge the time prescribed by these rules or by its order for doing any act, or may permit an act to be done after the expiration of such time; but the court may not enlarge the time for filing a notice of appeal, a petition for allowance, or a petition for permission to appeal.

We are thus empowered to grant an extension only within the confines of the extremely limited concept of “unique circumstances” established by the Supreme Court. See Harris Truck Lines, Inc. v. Cherry Meat Packers, Inc., 371 U.S. 215, 83 S.Ct. 283, 9 L.Ed.2d 261 (1962).

Ill

Initially we note that we are concerned not with an insignificant procedural rule, but rather with one “[t]he courts have uniformly held [to be] mandatory and jurisdictional.” United States v. Robinson, 361 U.S. 220, 229, 80 S.Ct. 282, 288, 4 L.Ed.2d 259 (1960); Files v. Rockford, 440 F.2d 811, 814 (7th Cir. 1971); Winchell v. Lortscher, 377 F.2d 247, 251 (8th Cir. 1967); and Howard v. Local 74, 208 F.2d 930, 932 (7th Cir. 1953). We also note that the enabling legislation, the legislative history and the Rules are replete with references to the primary role of expediency in appeals to the Temporary Emergency Court. ****11Finally, we must measure the action of counsel for appellant in recognition of “the ease with which an appeal may be perfected.” Files v. Rockford, supra, 440 F.2d at 814.

The only ground for extending the prescribed time for filing a notice of appeal which this court will consider is “a showing of unique circumstances.” Harris Truck Lines, Inc. v. Cherry Meat Packers, Inc., supra, 371 U.S. at 217, 83 S.Ct. 283. In Harris, during the initial thirty day limit for appeal the district judge granted petitioner’s motion for an extension based upon a showing of “excusable neglect.” The court of appeals reversed this holding and consequently found that the appeal was untimely filed and dismissed for lack of appellate jurisdiction. The Supreme Court first noted that “[i]n view of the obvious great hardship to a party who relies upon the trial judge’s finding of ‘excusable neglect’ prior to the expiration of the 30-day period and then suffers reversal of the finding, it should be given great deference by the reviewing court.” 371 U.S. at 217, 83 S.Ct. at 285. Reversing and remanding for appellate hearing on the merits, the Court held that “[wjhatever the proper result as an initial matter . . . the record contains a showing of unique circumstances sufficient that the Court of Appeals ought not to have disturbed the motion judge’s ruling.” Id.

Several years later, in Fallen v. United States, 378 U.S. 139, 84 S.Ct. 1689, 12 L.Ed.2d 760 (1964), the Court reached a similar result. Although the notice of appeal was filed four days late, appellant had been incarcerated and ill, had not been assigned appellate counsel, and had in fact delivered the notice to the proper prison authorities for mailing to the court in time for filing. The Court concluded “that petitioner had done all that could reasonably be expected.” 378 U.S. at 144, 84 S.Ct. at 1692. Both cases involved very “unique” and severe circumstances and it is therefore not unusual that courts more frequently arrive at the opposite conclusion. For example, the illness of an attorney, Berman v. United States, 378 U.S. 530, 84 S.Ct. 1895, 12 L.Ed.2d 1012 (1964), “a misunderstanding among appellant’s lawyers,” Pittsburgh Towing Co. v. Mississippi Valley Barge Line Co., 385 U.S. 32, 33, 87 S.Ct. 195, 17 L.Ed.2d 31 (1966), and the difficulty of coordinating attorneys from several states, Files v. Rockford, supra, have all been held insufficient to justify such special treatment.

In the present ease the district court entered its judgment on October 18, 1972. Appellant’s notice of appeal, accompanied by counsel’s affidavit and motion, were received in the clerk’s office of this court on January 29, 1973. More than 100 days had elapsed between the final judgment and the belated filing. In an effort to justify the complete absence of professional care, counsel blandly claims reliance upon the oral advice of a district court clerk. We strongly believe that professional standards require counsel to be familiar with, or to make at least a reasonable effort to learn, the rules of the courts in which they practice. The rules of this court are published, inter alia, in Title 28 of the United States Code Annotated (Supp.1973), in West Publishing Company’s Federal Rules of Civil and Appellate Procedure (1972 ed.), in 6 C.F.R. App. A (1972), in CCH Economic Controls j[ 4551 (Nov. 14, 1972 — Jan. 10, 1973 Transfer Binder), etcetera, and the court has circulated copies of its rules to the clerks of all federal courts. We are unable to conclude that counsel’s failure to acquaint himself with the basic requirement for the filing of his client’s notice of appeal can properly be described as constituting “unique circumstances” or “all that could reasonably be expected.” Indeed, unfamiliarity with local practice does not even constitute “excusable neglect,” let alone satisfy the higher standard recognized by the Supreme Court. See Files v. Rockford, supra, 440 F.2d at 814, quoting 9 J. Moore, Federal Practice ¶ 203.25 [3] (2d ed. 1971). The case is dismissed.

So ordered.

      . The amendment adding § 211, -which created the Temporary Emergency Court of Appeals, occurred in the Economic Stabilization Act Amendments of 1971, Pub.L.No.92-210, 85 Stat. 743 (1971).

      . Section 211(b)(1) provides in pertinent part:
      The court shall exercise its powers and prescribe rules governing its procedure in such manner as to expedite the determination of cases over which it has jurisdiction under this title.

      . The rules applicable in this proceeding are the amended rules, effective April 24, 1972. See General Rules of the Temporary Emergency Court of Appeals of the United States [hereinafter Rules].

      . Although the correct method' of filing would appear to be abundantly clear in quoted provisions, to dispel any lingering doubt we refer further to the following rules:
      Rule 10. Court Executive, Clerk, Deputy Clerks and Supporting Personnel
      Tile court may appoint a court executive and a clerk, who shall be subject to removal by the court. Their official stations shall be at the United States Courthouse, Washington, D. C. 20001 ....
      Rule 21. Piling and Proof of Service (a) Papers required or permitted to be filed in this court shall be filed with the clerk of this court in his office in Washington, D. C.

        See also CCH Economic Controls H 8975.-30:
      In announcing the appointments [of members of the Temporary Emergency Court of Appeals], Chief Justice Burger stated that the TECA will have its headquarters in the United States Courthouse in Washington, D. C., where the Office of the Clerk will be located.

      . Because of doubt concerning the legal sufficiency of appellant’s counsel’s excuse, and to enable the court to have a more complete record before it, the January 29, 1973, motion requesting the filing, nuno pro tuno, of the notice of appeal in this court was granted. In the same vein appellee’s motion of February 8, 1973, to dismiss for want of jurisdiction was denied on Marcli 19, 1973. The defect involved being jurisdictional, see part III infra, we are not precluded from reexamining our earlier rulings and, indeed, are compelled to dismiss the action if jurisdiction is lacking. See 1 J. Moore, Federal Practice 1f 0.60 [4] (2d ed. 1972).

      . See, respectively, Economic Stabilization Act Amendments of 1971, stipra note 1, at § 211(b) (1) (“The court shall exorcise its powers and prescribe rules governing its procedure in such manner as to expedite the determination of cases over which it has jurisdiction . . . .”) ; S.Rep.No.92-507, 92d Cong., 1st Sess. 11, U.S.Code Cong. & Admin.News, p. 2293 (1971) (“The Court is given power to establish its own rules which are to be established with the primary objective of expediting the disposition of eases which come before it.”) ; and T.B'.C.A. Rule 1 (“The Rules shall be construed to secure the just, speedy and inexpensive determination of every action.”).

      . Accordingly, we vacate our order of January 29, 1973, permitting the filing of a notice of appeal mmo pro tuno, vacate our order of March 19, 1973, denying ap-pellee’s motion to dismiss, and grant ap-pellee’s February 8, 1973, motion to dismiss for lack of jurisdiction.


author: MARIS, Circuit Judge.

text:
    RED HOOK MARINA CORP. v. ANTILLES YACHTING CORP., Appellant.
    No. 72-1338.
    United States Court of Appeals, Third Circuit.
    Argued Jan. 29, 1973.
    Decided May 15, 1973.
    Richard E. Grunert, Grunert, Stout & Hymes, Charlotte Amalie, St. Thomas, V. I., for appellant.
    Roger L. Campbell, Loud & Campbell, Charlotte Amalie, St. Thomas, V. I., for appellee.
    Before MARIS, VAN DUSEN and ROSENN, Circuit Judges.
   OPINION OF THE COURT

MARIS, Circuit Judge.

This is an appeal by the defendant from a judgment of the District Court of the Virgin Islands granting the plaintiff’s motion for summary judgment in its suit to recover the unpaid balance due on a note and to foreclose a purchase money mortgage which secured the note. The judgment appealed from also dismissed the defendant’s counterclaim for damages for alleged breach of the plaintiff’s warranties of title. The defendant’s sole defense to the suit was based on the allegations of its counterclaim, which the district court quite properly treated as in effect interposing the defense of set off. Briefly stated this defense was that one of the parcels of land which were conveyed by the plaintiff to the defendant, for a portion of the purchase price of which the note was given and which were included in the purchase money mortgage sought to be foreclosed, includes land in the Caribbean Sea over which the United States and the Government of the Virgin Islands claim title and control, which claim is a cloud on defendant’s title and a breach of the warranties of title contained in its deed, as a result of which the defendant has suffered damage in excess of the balance due on the note in suit. The district court, in an opinion by Chief Judge Christian, 1971,-V.I.-, concluded that the counterclaim does not raise a substantial issue of fact and is without support in law. The court accordingly dismissed the counterclaim and entered summary judgment in favor of the plaintiff on the complaint. The present appeal by the defendant followed. We affirm for the reasons hereinafter stated.

Cutting through the maze of procedural objections which the defendant has raised on appeal, and which we find so insubstantial as to require no discussion, and going directly to the heart of the controversy between the parties, as the district court properly did, we find that there is only one genuine issue in the case. It is whether Parcel No. 101 of Estate Frydenhoj, No. 3 Red Hook Quarter, St. Thomas, one of the two adjoining parcels of land which were conveyed by the plaintiff to the defendant by a warranty deed dated April 8, 1969 and which were included in the purchase money mortgage which was given by the defendant to the plaintiff to secure the note in suit, did or did not include a portion of the Caribbean Sea lying to the southwest of the fast land included in the parcel. To determine this issue we must look to the defendant’s deed to determine what that instrument, construed according to the accepted canons of construction, purported to convey. If the plaintiff’s deed must be construed as purporting to convey to the defendant as part of the parcel of land in question an area lying in the sea then the defendant’s contention that the plaintiff’s warranties of title have been breached because of the alleged claims of the United States and the Government of the Virgin Islands to the seabed might well raise issues of fact for trial. But if, on the other hand, the deed, properly construed, actually conveyed only the land above high-water mark, then this issue, which as we have said, is the one raised by the defendant’s counterclaim or set off, drops out of the case and summary judgment was properly entered for the plaintiff as a matter of law.

We turn then to the description of the parcel of land in question which is attached to the deed and made part of it. It is as follows:

“Beginning at a bound post located at the southwest corner of Parcel No. 102, the line runs:
“South 49 degrees 37 minutes East along Parcel No. 102, a distance of 113.7 feet, more or less, to a bound post; thence turning
“South 34 degrees 20 minutes West along Parcel No. 50A, a distance of 50.9 feet, more or less, to a bound post; thence continuing
“In the same direction a distance of 20 feet, more or less, to a point; thence turning
“In a general easterly direction along Parcel No. 101, a distance of 345 feet, more or less, to a point; thence turning
“South 21 degrees 44 minutes West along portion of Estate Frydenhoj, a distance of 157 feet, more'or less, to a bound post; thence continuing
“South 21 degrees 44 minutes West along portion of Estate Frydenhoj, a distance of 294 feet, to the sea; thence turning
“Along the sea in a general northwesterly direction, a distance of 470 feet, more or less, to a point, thence turning
“North 15 degrees 47 minutes East along Parcel No. 83, a distance of 294 feet, more or less, to the point of beginning.
“The area is 2.7 acres.”

The sixth, seventh and eighth courses in the foregoing description are those which the defendant alleges run into, through and out of the sea, thereby including in the parcel of land conveyed a part of the seabed. It will be noted that the sixth course is stated to run South 21 degrees 44 minutes West a distance of 294 feet to the sea. While it may well be that this course if extended 294 feet from the bound post where it begins would run into the sea it will be noted that it is described as extending “to the sea,” not into it. Thus the margin of the sea is called for as a terminating monument. Likewise the seventh course is described as extending in a general northwesterly direction a distance of 470 feet more or less along the sea, not through it. Thus on this course the margin of the sea is again called for as a bounding monument. It is settled in the Virgin Islands, as elsewhere, that under these circumstances the call for a natural or permanent monument or object, in this case the sea, will prevail over any conflicting call for a specified distance. Kruger & Birch, Inc. v. Du Boyce, 3 Cir. 1957, 241 F.2d 849, 3 V.I. 599. And this is also true if the area called for by the description, in this case 2.7 acres, is greater or less than the actual area defined by the metes and bounds. Thorp v. Smith, 3 Cir. 1965, 344 F.2d 452, 5 V.I. 209. It follows, therefore, that the defendant’s deed must be construed as having conveyed to it a parcel of land, designated Parcel No. 101, which extended to the margin of the sea but not into it.

It may be presumed, in the absence of evidence to the contrary, that the United States or the Government of the Virgin Islands as its grantee owns the bed of the sea surrounding the island of St. Thomas. Burns v. Forbes, 3 Cir. 1969, 412 F.2d 995, 7 V.I. 256. Certainly the title of the owner of riparian land abutting the sea extends only to its margin. But the question remains as to whether that margin is defined by the ordinary high-water or low-water mark. If it is the low-water mark which defines the limit of ownership of a riparian owner, as was provided by 28 V.I.C. § 47(5) prior to its amendment in 1971, there might well be an issue in the case as to whether the alleged claim of the United States or the Government of the Virgin Islands to the bed of the sea up to high-water mark did not raise a cloud on the defendant’s title to the foreshore between the high-water and low-water marks which might involve a breach of the plaintiff’s warranties of title.

In Burns v. Forbes, 3 Cir. 1969, 412 F.2d 995, 997, 7 V.I. 256, 260-261, footnote 5, this question was left undecided by us as unnecessary to the decision. It is now presented to us for determination. Chief Judge Christian discussed the question at length in his opinion in the present case and on the basis of the authorities, both American and Danish, which he cited, concluded that in the Virgin Islands the title of a riparian owner of land abutting tidal water extends only to the ordinary high-water mark, and that the ownership of the foreshore between high-water and low-water mark is in the United States, or in the Government of the Virgin Islands to the extent that the latter has been granted title thereto by the United States. We are in complete accord with the conclusion of the district court in this regard. It follows that 28 V.I.C. § 47(5), as it existed prior to its amendment in 1971, was invalid to the extent that it sought to establish title in the riparian owner to the foreshore between high-water and low-water marks abutting his fast land. Certainly the legislature of a territory such as the Virgin Islands is without power thus to divest the United States of its established title to the foreshore.

We need only add that we are not here passing upon the validity or effect of 28 V.I.C. § 47(5) as amended by the Act of June 3, 1971, No. 3063, sec. 3, which would appear still further to limit the rights of a riparian owner. The Act of 1971 has superseded, by its amendment, the provisions of the former § 47(5) of title 28 V.I.C. which, as we have seen, contrary to the settled law and without regard to the rights of the United States, purported to extend to low-water mark the title of a grantee of land bounded by tidewater.

It thus appears that the deed which the defendant received from the plaintiff actually conveyed to it only that portion of the area encompassed within the courses and distances describing Parcel No. 101 which lies above the ordinary high-water mark along the margin of the abutting sea and did not convey any portion of the foreshore or seabed lying below high-water mark. There can, therefore, be no lawful claim of title by the defendant to the foreshore or seabed abutting its land which could overlap that of the United States or the Government of the Virgin Islands so that the claim of the latter might be said to be a conflicting one which casts a cloud upon the title to a portion of the defendant’s land. We conclude that the district court rightly held that the defendant’s defense of set off and counterclaim which were based on its alleged ownership of foreshore and seabed raised no substantial issue of fact and were without legal support.

The judgment of the district court will be affirmed.