author: BALDWIN, Judge.

text:
    Gerald REY-BELLET and Hans Spiegelberg, Appellants, v. Edward L. ENGELHARDT, Appellee, v. Walter SCHINDLER, Appellee. Edward L. ENGELHARDT, Appellant, v. Gerald REY-BELLET and Hans Spiegelberg, Appellees, v. Walter SCHINDLER, Appellee.
    Patent Appeal Nos. 8998, 8999.
    United States Court of Customs and Patent Appeals.
    April 4, 1974.
    Rehearing Denied June 27, 1974.

      Carroll G. Harper, New York City (Fitzpatrick, Celia, Harper & Scinto, New York City) attorneys of record for appellant Engelhardt.
    William H. Vogt, III, New York City, attorney of record, for Rey-Bellet. Samuel L. Welt, Jon S. Saxe, Bernard S. Leon, William G. Isgro, Nutley, N. J., and Stevan J. Bosses, New York City, of counsel.
    John T. Miller, Washington, D. C., (Wenderoth, Lind & Ponack, Washington, D. C.,) attorney of record, Joseph G. Kolodny, Summit, N. J., for Schindler. Karl F. Jorda, Ardsley, N. Y., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   BALDWIN, Judge.

These appeals are from the decision of the Patent Office Board of Patent Interferences awarding priority of invention of the sole count in issue to Schindler, the senior party of this three party interference. We reverse the board’s decision and hold that priority should have been awarded to £he party Engel-hardt.

The Appeals

Schindler is involved in these appeals on application serial No. 282,874, filed May 24, 1963, as a continuation-in-part of application serial No. 179,482, filed March 13, 1962. Schindler claimed and was accorded the benefit under 35 U.S.C. § 119 of two Swiss applications. The earliest of these, Swiss No. 3054/61, had a filing date of March 14, 1961. This date became his date of invention for the purpose of the interference contest conducted below.

Appeal No. 8998 is the appeal of the party Rey-Bellet et al. (Rey-Bellet) involved on application serial No. 463,345, filed June 11, 1965, as a continuation-in-part of application serial No. 170,787, filed February 2, 1962. Rey-Bellet claimed and was accorded the benefit of two earlier Swiss applications, the earliest of which, Swiss No. 11,063/61, had a filing date of September 22, 1961. Rey-Bellet also claimed the benefit of an even earlier Swiss application, Swiss No. 1467/61, filed February 8, 1961. However, the board held that this application failed to satisfy the requirements of the first paragraph of 35 U.S.C. § 112 and could not, therefore, be the basis of a claim for priority purposes made under § 119. Accordingly, Rey-Bellet was restricted to the September 22, 1961, filing date of Swiss No. 11,063/61 for a date of invention.

Appeal No. 8999 is the appeal of the party Engelhardt involved in serial No. 297,710, filed July 25, 1963. Engelhardt was accorded the benefit of an earlier filed U.S. application, serial No. 120,835, filed May 24, 1961, but alleged an even earlier conception and actual reduction to practice. In the alternative, Engel-hardt alleged diligence between the conception and the 1961 filing date. However, the board held these allegations not to have been proven and restricted En-gelhardt to the May 24, 1961, filing for date of invention.

Having concluded that neither Rey-Bellet nor Engelhardt had proven dates of invention earlier than March 14, 1961, the board awarded priority to Schindler.

The Subject Matter

The sole count of this interference is directed to a chemical compound and reads as follows:

5-( 3-methylaminopropylidene) diben-zo-[a, d]-cyclohepta [1, 4] diene.

The parties to these appeals refer to this compound by a less cumbersome name, nortriptyline, which is usually abbreviated to NTL. Nortriptyline (hereinafter NTL) is an antidepressant compound at moderate dosage levels, but acts as a tranquilizer at higher dosage levels. It has the following chemical structure:

OPINION

From the posture of the parties to these appeals, Engelhardt would legally be entitled to priority over Schindler in either of two circumstances. He can prove either that he made an actual reduction to practice of the invention before March 14, 1961, the unchallenged date of invention accorded Schindler by the board, or that he conceived the invention before that date and was diligent from a point in time before that date to a subsequent actual or constructive reduction to practice. In fact, En-gelhardt argues that he has satisfied his burden of proof relative to either circumstance, although he principally relies on the allegation that he completed an actual reduction to practice prior to Schindler’s date of invention.

The Alleged Actual Reductions to Practice

It is undisputed that the compound corresponding to the count had been prepared in this country by Engelhardt no later than December of 1960, while employed at the Merck, Sharp and Dohme Research Laboratories (Merck). Accordingly, all that remained for an actual reduction to practice was the establishment of a practical utility. See, e. g., Anderson v. Natta, 480 F.2d 1392 (Cust. & Pat.App., 1973) and Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957). Since the count contains no limitation related to any utility, evidence which would establish a substantial utility for any purpose is sufficient to show its reduction to practice. Campbell v. Wettstein, 476 F.2d 642 (CCPA 1973).

Engelhardt urges that the satisfaction of these legal tests can be found in the results of each of three tests carried out at Merck on laboratory animals. All of these tests were made at Merck by personnel other than the inventor.

The earliest of these tests, the Mental Health General Screening Test, was accomplished in December of 1960. This test is carried out by administering a candidate drug to mice intraperitoneally at differing dosage levels. This test is not designed to detect any specific property of a drug. Instead a number of physical responses of the test animal to the drug are observed. These responses, and for that matter the absence of a response, can be indicative of the presence or absence of a desirable pharmacological property in the drug. The test also gives an indication of the toxicity of the drug.

The second of these tests is known at Merck as the Tetrabenazine Antagonism Test. Again, the test animals are mice. In-this test the candidate drug is first administered to the animal followed by a later administration of tetrabenazine. Tetrabenazine is a tranquilizer.

The purpose of the test is to screen candidate drugs for antidepressant activity. The detection of antidepressant activity in a drug using test animals is particularly difficult since the animal is not depressed. The role of tetrabena-zine is to chemically simulate depression in the mouse through its tranquilizing effect. To the extent that the candidate drug offsets the tranquilizing effect of tetrabenazine it is said to be an “antagonist” of this effect. Typically a successful test is indicated when the test animal remains active after the sequential administration of the “antagonist” and tetrabenazine. NTL was screened using this test on March 10 and March 29, 1961.

At the time this test was used on NTL at Merck, it was newly developed. However, a similar test using a different drug to simulate depression was under investigation at the National Institutes of Health.

The third test, a so called Sidman Avoidance Test, was made on March 14, 1961. The purpose of this test is to screen drugs for tranquilizing activity. The test animals are squirrel monkeys. The test is carried out by placing the monkey in a cage having a grid floor which is wired to produce a shock every eight seconds. The monkey is trained to avoid shock by pressing a lever which delays the shock for 48 seconds. The average monkey has a high rate of avoidance of shock. However, if the monkey is tranquilized he becomes indifferent to the consequences of being shocked and more likely to fail to press the lever. Therefore, the potential effect of a drug as a tranquilizer is measured by the performance of a test animal in avoiding shock before and after administration of the drug.

Despite positive indications from these tests that NTL possesses pharmacological activity, the board was of the opinion that the results of the tests did not establish a reduction to practice for the reason that they failed to prove that the compound had any particular utility. Specifically, the board felt that the tests did not demonstrate that NTL would exhibit antidepressant or tranquilizing activity in man. As additional support for its holding that the tests were not adequate to prove a reduction to practice, the board concluded that the record did not reveal any conviction of success at Merck regarding the outcome of these tests being sufficient to show that NTL would be an antidepressant or tranquilizer.

In his attempt to show error in the board’s decision, Engelhardt has directed our attention to a number of decisions of this court in which the results of tests done on laboratory animals were considered to be adequate to prove a reduction to practice. We view these cases as falling into two categories.

One category includes those cases in which the tests, though carried out on animals, were considered to prove that the drug would be useful in human therapy. This situation arises when there exists a satisfactory correlation between the effect on the animal and that ultimately observed in human beings. See, e. g., Engelhardt v. Judd, 360 F.2d 408, 54 CCPA 865 (1966).

The other category is made up of those cases in which the tests done on animals, even though they might have been designed to indicate a utility for human therapy, prove that the drug is useful for treating animals. See, e. g., Campbell v. Wettstein, supra; Blicke v. Treves, supra; In re Hitchings, 342 F.2d 80, 52 CCPA 1141 (1965); In re Krimmel, 292 F.2d 948, 48 CCPA 1116 (1961); and Archer v. Papa, 265 F.2d 954, 46 CCPA 835 (1957).

We have considered the character of Engelhardt’s evidence as it is embodied in the three tests described above. In our view it fails to establish a reduction to practice within either category of cases for reasons set forth more fully below.

Engelhardt considers the Mental Health General Screening Test as adequate to prove a reduction to practice in two ways. One allegation made is that this test proves NTL has anticholinergic activity because its administration caused the pupils of the eyes of the test animals to dilate. However, the record simply does not support this contention. One of his own witnesses testified that drugs other than those having anticholi-nergic activity can cause pupil dilation. Therefore, the test cannot be regarded as being specific for this property.

Another allegation made by Engel-hardt is based on the structural similarity between NTL and a drug known as amitriptyline, known to be an antidepressant when NTL was made. According to the testimony of one of Engel-hardt’s witnesses, the results on the screening test for these two drugs were similar. However, it seems clear from the record that this test is unsuited for detecting antidepressant, tranquilizing and anticholinergic activity, the only useful properties possessed by amitrip-tyline. Therefore, we cannot conclude that the similarity between the two in the screening test is adequate to prove that NTL has any of the aforementioned properties.

The results of the tetrabenazine antagonism test are also inadequate to prove a reduction to practice as an antidepressant. As indicated above, the test was newly developed in 1961. Therefore, the test cannot be regarded as having been an adequate predicator of antidepressant activity in human beings because at the time the test was run there was insufficient experience with it to show the necessary correlation between tetrabenazine antagonism in mice and antidepressant activity in man.

The tetrabenazine antagonism test also fails as an indicator that NTL would be useful in animal therapy. In the first place it has not been established that the property of tetrabenazine antagonism is per se useful. Secondly, the record established that mice are not depresséd, hence the need for chemical simulation of ■ depression using a tranquilizer. Therefore, NTL cannot be regarded as being useful for alleviating depression in animals.

We have also concluded that the Sid-man Avoidance Tests run with NTL fail to prove a substantial utility for the drug as a tranquilizer. From the record it appears that NTL demonstrated only weak tranquilizing activity in squirrel monkeys as indicated by their reduced ability to avoid shock. In our view, such a poor showing by NTL in this test cannot be regarded as proof that tranquilizing activity would be observed in man.

We also note that the record reveals that very large doses of NTL were required to cause the tranquilizing effect in monkeys. This makes the results suspect if for no other reason than it suggests correspondingly large doses would be required to affect a human subject if any effect at all could be observed. At such doses the possibility that harmful side effects would occur, which would negate any tranquilizing properties, becomes very much enhanced.

With regard to animal therapy, we need only observe that the record is devoid of any indication that the ability to tranquilize monkeys, particularly the very slight ability shown for NTL, is a property having substantial utility.

The Alleged Conception

In the board’s opinion, Engelhardt failed to prove that he had conceived the invention prior to May 24, 1961, the filing date of the U.S. patent application, the benefit of which was accorded En-gelhardt for priority purposes. The board felt this was justified notwithstanding the fact that Engelhardt had actually made the compound in this country no later than December of 1960. In its view, Engelhardt failed because he had not proven that he had conceived a particular utility for NTL or the means by which one skilled in the art could reduce to practice this utility without exercising more than routine skill.

In the board’s view then, even when the invention is a chemical compound which has been made and is defined by a count reciting no limitation related to its use, conception of that invention is not complete absent a conception of its utility. • Engelhardt does not challenge this interpretation of the law. Accordingly, we will treat it as the law of this case although in our minds its applicability remains very much an open question. However, any resolution of this issue should be deferred until squarely presented and briefed by the parties to an appeal.

On the basis of the evidence in the record, we are persuaded that Engel-hardt conceived that NTL could be useful as an antidepressant no later than January of 1961. Furthermore, we also believe that no more than routine skill in the art was necessary to reduce this utility to practice.

In its opinion, the board acknowledged Engelhardt’s testimony to the effect that he had conceived that NTL would be useful as an antidepressant but dismissed it as lacking corroboration. It also rejected several documentary exhibits as failing to establish conception of this utility. Engelhardt argues that if individually these documents and other evidentiary elements of his ease do not establish that he conceived a utility, then collectively they do. We agree.

The gist of the testimony given by Engelhardt is that he felt NTL would have antidepressant activity because of its structural similarity to amitriptyline. It is pointed out above that amitripty-line was known to possess antidepressant activity at the time of the alleged conception by Engelhardt. This testimony, if corroborated, would establish conception by him that NTL could be used as an antidepressant.

The earliest exhibit pertinent to the question of Engelhardt’s conception is Exhibit 9, entitled “Delivery Sheet” and dated December 14, 1960. It is a printed form which, in effect, is a request that tests be conducted on a given compound. Exhibit 9 sets forth the structure of NTL and. contains the following notations:

Dr. Stone for screening in the mental health program.
Dr. Hanson for behavioral testing in comparison with “Elavil”.

It is pertinent to note that “Elavil” is Merck’s trademark for amitriptyline.

The board felt that Exhibit 9 failed as a conception because it did not specifically mention antidepressant activity and for the further reason that:

In our opinion, this falls short of being evidence of conception for the reason that the above instructions to Dr. Stone and Dr. Hanson do not furnish the means to enable one skilled in the art to use the compound for a particular purpose so that nothing remains but routine skill for effectuation of said use.

Another exhibit relied upon by Engel-hardt, Exhibit 106, is a handwritten sheet entitled “Compounds for ‘Elavil’ Program — Clinical.” Sixteen compounds were included in the list. All but NTL have been blocked out. That list was read by Dr. James Sprague, Director of Medicinal Chemistry at Merck. In his own hand he added, among other things, the following notation dated January 14, 1961, to the structure of NTL:

Cf. MAO-I + Tofranil

In his brief, Engelhardt alleges that MAO-I stands for monoamine oxidose inhibitors also known to be antidepressants. However, that is not clearly established in the record and we will disregard it. Nevertheless, the record does reveal that “Tofranil” was a well known antidepressant at the time of Engel-hardt’s alleged conception.

We view these two exhibits as corroborating that Engelhardt had conceived that NTL would have antidepressant activity because of its similarity to ami-triptyline. The most significant property of amitriptyline was its antidepressant activity. Structurally it is very similar to NTL and the profiles of the two compounds in the Mental Health Screening Test were very similar. Furthermore, the record does not reveal any other substantial property other than antidepressant activity for which one would seek to compare NTL to amitrip-tyline.

The testimony of Dr. V. G. Vernier, a supervisor at Merck for the drug screening program, supports this conclusion. He testified that he and Dr. Engelhardt discussed the potential of NTL after he (Dr. Vernier) received Exhibit 9 in December of 1960. He recalled that Engel-hardt indicated to him that he expected NTL to have antidepressant activity because of its similarity to amitriptyline.

Schindler, citing Alpert v. Slatin, 305 F.2d 891, 49 CCPA 1343 (1962), a ease also relied upon by the board, argues that these exhibits and this testimony indicate at most a hope that NTL would possess antidepressant activity and as such falls short of being an inventive conception. In Alpert, this court adopted a portion of the board’s opinion as its own. A pertinent extract from that portion reads as follows:

Conception of an inventive process involves proof of mental possession of the steps of an operative process and, if necessary, of means to carry it out to such a degree that nothing remains but routine skill for effectuation thereof. If after the claimed conception date extensive research' was found' necessary before achieving minimum satisfactory performance obviously the mental embodiment of that date was a mere hope or expectation, a statement of a problem, but not an inventive conception. Alpert Exh. 4 was followed by extensive research characterized by perplexing intricate difficulties arising every step of the way and accordingly Alpert Exh. 4 is held not to constitute evidence of conception of the invention of the count. [Emphasis added.]

That which determines if the mental formulation of the invention rises to the level of conception is whether or not the inventor has also conceived the means of putting that formulation in the hands of the public where no more than routine skill would be required to do so. In this case we think the proof that Engelhardt had conceived of NTL as an antidepressant is sufficient to complete the conception of utility because it appears that nothing beyond the exercise of routine skill would have been required to demonstrate that it had this activity. It is true that extensive testing on animals was done at Merck and that actual clinical trials on humans were not conducted until after the filing date of Engelhardt’s parent application. However, the extent of testing or other research done after the mental formulation of an invention is not a reliable in- ■ dicator that the “perplexing intricate difficulties” referred to in Alpert have been encountered. A more reliable criterion is the nature of this research.

In this case the record establishes that the tests done at Merck on NTL using test animals were those routinely dones to a drug before it is administered to humans. No “perplexing intricate difficulties” had to be overcome. Probably such preliminary testing could have been eliminated in favor.of direct testing on humans which would have quickly established whether NTL was an antidepressant. However, the unpredictable response that a human subject might ex^ hibit dictates that considerable preliminary testing in animals be done in order that as much information as possible be known about a drug before it is tested in man. Although in this case the testing done was not sufficient to establish an actual reduction to practice, the policy of conducting such testing is to be applauded rather than penalized.

The Alleged Diligence to a Constructive Reduction to Practice

The adequacy of Engelhardt’s parent application as a constructive reduction to practice is not challenged. Therefore, there remains for consideration but one question in Engelhardt’s case, that being whether there was diligence from a time before the dates of invention alleged by or accorded to his opponents to the filing date of his parent application. On this point, the board declined to consider whether there was diligence up to March 29, 1961, the date of the last test relied upon by Engelhardt to establish an actual reduction to practice.

The board did hold that there was no evidence of activity between April 21, 1961, the date of an exhibit reporting the results of a Tetrabenazine Antagonism Test, and May 12, 1961, the date of the first draft of the parent application. We believe the record supports the conclusion that there was reasonable diligence during the contested period.

That the activity of those engaged in the preparation of a patent application accrues to the benefit of the inventor for the purpose of showing diligence requires no citation of authority. The responsibility for drafting Engelhardt’s application fell to an attorney, Mr. Underwood, in Merck’s patent department. He informally requested that Dr. Frank A. Cutler, technical advisor to the patent department, assist him in the preparation of this application. It was Dr. Cutler who prepared the preliminary - draft of May 12, 1961.

Dr. Cutler was given on, or shortly after, April 24, 1961, a number of documents containing descriptions of experiments which he was ultimately to incorporate in the draft of Engelhardt’s application. Dr. Cutler testified that he was putting the finishing touches on that draft on May 12, 1961, and would have been working on it before then. This is supported by the fact that several of the documents used by him in preparing the draft contain notations in his own hand.

During the contested time period, it appears that Dr. Cutler, in addition to other duties, was also working on at least one other patent application related to that relied upon by Engelhardt for priority purposes. This application was directed to a process for preparing amitriptyline and closely related compounds including NTL. He testified that he worked on this application concurrently with Engelhardt’s application because both were similar in scope and required the same starting materials. The record establishes that Dr. Cutler was working on the process application at least as late as April 27, 1961. Work on related applications can be relied upon to show reasonable diligence. Rines v. Morgan, 250 F.2d 365, 45 CCPA 743 (1957).

In view of Cutler’s activity on the related process case and his testimony that he was working on the draft of Engel-hardt’s application prior to May 12, 1961, it is our view that there was reasonable diligence during the contest period, a time span of but 21 days.

As we noted above, the board declined to consider whether there was diligence during the period before March 29, 1961. For this time period, both Schindler and Rey-Bellet argue that the only activity which should accrue to Engel-hardt’s benefit for the purpose of showing diligence running to a constructive reduction to practice is activity directly related to preparing and filing the patent application involved here. Under their view, none of the tests should be considered relevant to whether there was diligence, since all that was required after conception to complete the constructive reduction to practice was preparation and filing of the application.

The view urged upon us by Schindler and Rey-Bellet was rejected by this court in Keizer v. Bradley, 270 F.2d 396, 47 CCPA 709 (1959). Bradley had been awarded priority based on prior conception and diligence to a constructive reduction to practice. On appeal, Keizer argued that engineering activity directed to an actual reduction to practice could not excuse a lack of “attorney diligence” in preparation of the parent application. On this point, at 270 F.2d 400, 47 CCPA 714, the court observed:

As long as Bradley was, as we have found, diligent in working actually to reduce his invention to practice, he was not under an obligation to file a patent application. The fact that he decided to do so does not change the situation.

The arguments of Schindler and Rey-Bellet have not persuaded us that our earlier decision should be reversed. Accordingly, we will consider all of Engel-hardt’s activities directed to an actual reduction to practice in order to determine if there was diligence. We think the record establishes that there was reasonable diligence from conception to the constructive reduction to practice.

Engelhardt was a chemist whose major responsibility was the synthesis of compounds which were regarded as being of potential interest to Merck. The responsibility for testing these compounds in order to determine whether they had pharmacological activity fell to other persons. The record establishes that Engelhardt requested in December of 1960 that behavioral testing be done for NTL. Such testing would include the Sidman Avoidance Test, but not the Tetrabenazine Antagonism Test which had not been developed at that time. The actual screening of NTL in the Sid-man Avoidance Test did not occur until March 14, 1961. However, the record does not suggest that this was an extraordinary delay.

It appears that Merck’s success with amitriptyline and other drugs which affect the central nervous system led to a program in which literally hundreds of compounds were being screened. As a part of this program, the Sidman Avoidance Test had begun to be used in late 1960 and was available when Engelhardt made his request.

Dr. H. M. Hanson, a pharmacologist at Merck, who was in charge of the Sid-man Avoidance Test program, testified on cross-examination that they had but limited facilities in 1961 because of a shortage of monkeys and a limited ability to house them. As a result of this, the test was not often performed.

In the meantime, Dr. Vernier had developed the Tetrabenazine Antagonism Test during February 1961. As soon as Dr. Engelhardt heard of this test, he requested that NTL be employed in it. As we noted supra, this was done on March 10, 1961, and this test gave results which were better than those exhibited by amitriptyline. This test was followed on March 14, 1961, by the Sidman Avoidance Test and on March 29, 1961 by a follow up Tetrabenazine Antagonism Test.

We think this activity establishes that Engelhardt was energetically striving to reduce his invention to practice and was reasonably diligent in this pursuit.

Inasmuch as we hold that Engelhardt conceived the invention no later than January of 1961 and was diligent to a constructive reduction to practice, we need not further consider the appeal of Rey-Bellet, as the earliest date of invention alleged by him is February 8, 1961.

For the foregoing reasons, the board should have awarded priority of invention to Engelhardt. Accordingly, the decision of the board awarding priority of invention to Schindler is reversed.

Reversed.

      . The interference involved in the board’s decision is a consolidation of fwo interferences and originally there were five parties. Two of these suffered adverse decisions in earlier Patent Office proceedings and are no longer parties to the interference.

      . Amitriptyline has the following formula:

      It differs from NTL by having two CH3-sub-stitutes on the nitrogen atom (N) rather than one. Amitriptyline has slight tranquilizing and anticholinergic activity.

      . The record indicates that Dr. Cutler prepared two drafts. The second of these was completed on May 15, 1961. Apparently neither could be regarded as a draft of a complete application. Instead they appear to have been descriptions of experimental work appearing in the disclosure of invention. The rest of the specification was prepared by Mr. Underwood.


source: Caselaw Access Project

author: LANE, Judge.

license: Public Domain

text:
    Application of Richard Q. YARDLEY.
    Patent Appeal No. 9098.
    United States Court of Customs and Patent Appeals.
    March 28, 1974.

      David W. Brinkman, William T. Bul-linger, Cushman, Darby ■& Cushman, Washington, D. C., attorneys of record, for appellant; Robert B. Murray, Jr., Washington, D. C., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief .Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejections of the claim in appellant’s application for an ornamental design for a watch. There are two rejections: (1) a rejection based on obviousness under 35 U.S.C. § 103, and (2) a rejection based on estop-pel in view of prior copyright registrations. We reverse.

The Claimed Design

Appellant’s design comprises a novelty watch face with a caricatured figure thereon. Extended arms and hands serve as the hour and minute hands of the watch. The drawing in the application is reproduced below.

The sole claim in the application is in the conventional form and it reads as follows:

The ornamental design for a watch as shown and described..

The Rejections

The first rejection is for obviousness under 35 U.S.C. § 103 in view of the single reference Breger, design patent D-82,245 issued October 14, 1930.

The prior art Breger design patent discloses a watch dial including hour numerals and a caricatured figure thereon. It states that the arms and hands of the figure are carried by the hour hand and the minute hand of the watch. The Bre-ger design is reproduced below.

The examiner’s rejection under 35 U. S.C. § 103 was affirmed by the board.

The second rejection is based on es-toppel in view of appellant’s prior copyright registrations. This rejection first appeared in the Examiner’s Answer. The following passage therefrom explains the examiner’s position:

Appellant has made of record as attachments to his Brief, copies of newspaper articles dealing with the subject matter of this application. Inspection of the photographs therein reveal [s] that a copyright has been claimed on the subject matter disclosed. Further investigation has revealed the fact that three copyright registrations have in fact been secured on this subject matter, namely BB 37381, GP 67931 and GP 67932. In view thereof, and in view of the decision In re Blood (1928 CD 60; [57 App.D.C. 351] 23 F.2d 772), the claim must be rejected on the principle that while the subject matter might be eligible for protection under either copyright or design patent, the obtaining of protection under one constitutes an election of protection, and there is an estoppel to seek the other. The Blood case followed the decision of De Jonge & Co. v. Breuker & Kessler Co. [3 Cir.] (182 F. 150) which held in an apparent first impression case that the owner could not have protection under both the copyright and design patent acts. Cases dealing with the similar conflict which followed Blood are Jones Bros. Co. v. J. W. Underkof-fler et al. [D.C., 16 F.Supp. 729] (31 USPQ 197) and Taylor Instrument Cos. v. Fawley-Brost Co. [7 Cir., 139 F.2d 98] (59 USPQ 384). The Supreme Court in Mazer v. Stein (347 U.S. 201 [74 S.Ct. 460, 98 L.Ed. 630]; 100 USPQ 325) referred to the cases dealing with this conflict in a footnote to their denial of a ruling on the question, since they felt the issue was not before them. Accordingly, the claim is rejected on the principle of election of protection and estoppel to seek another.

The newspaper photographs referred to in the Examiner’s Answer are reproduced below:

We note that the first newspaper photograph shows a drawing of a watch face including the words “SPIRO WATCH,” the hour numerals, and the following printed matter: “© 1970 The Novelty Watch Co.” and “Pat. pend.” (near the numeral 6). The second newspaper photograph is similar to the first in these details.

The board affirmed this rejection. In support of the affirmance, the board’s opinion cites and discusses the following twelve cases:

1. Louis De Jonge & Co. v. Breuker & Kessler Co., 182 F. 150 (C.C.S. E.D.Pa.1910), aff’d on other grounds, 191 F. 35 (3d Cir. 1911), aff’d 235 U.S. 33, 35 S.Ct. 6, 59 L.Ed. 113 (1914).
2. In re Blood, 57 App.D.C. 351, 23 F.2d 772 (1927).
3. Korzybski v. Underwood & Underwood, Inc., 36 F.2d 727 (2d Cir. 1929).
4. Jones Bros. Co. v. J. W. Underkof-fler, 16 F.Supp. 729 (M.D.Pa. 1936).
5. Taylor Instrument Companies v. Fawley-Brost Co., 139 F.2d 98 (7th Cir. 1943).
6. William A. Meier Co., Inc. v. Anchor Hocking Corp. 95 F.Supp. 264 (W.D.Pa.1951).
7. Stein v. Expert Lamp Co., 96 F.Supp. 97, (N.D .Ill.1951), aff’d, 188 F.2d 611 (7th Cir. 1951).
8. Ex parte Guild, 98 USPQ 464 (Pat.Off.Bd.App.1952), aff’d on other grounds, In re Guild, 204 F.2d 700, 40 CCPA 996 (1953).
9. Rosenthal v. Stein, 205 F.2d 633, (9th Cir. 1953).
10. Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954).
11. Vacheron Watches, Inc. v. Benrus Watch Co., Inc., 155 F.Supp. 932, (S.D.N.Y.1957), modified, 260 F.2d 637 (2d Cir. 1958).
12. In re Deister Concentrator Co., Inc., 289 F.2d 496, 48 CCPA 952 (1961).

The board’s opinion makes it clear that the affirmance was based on In re Blood, supra, and Ex parte Guild, supra. In addition, the board’s opinion contains the following statement regarding the soundness of the rejection:

Aside from the clearly controlling effect of the cited cases, we are in agreement with the spirit of the stated rejection. The laws promulgated under Section 8 of Article I of the Constitution- provide protection for the intellectual products of authors and inventors. The framers of the Constitution presumably recognized the difference between the endeavors of authors and inventors, because they used the word “respective” in reference to their “writings and discoveries.” * * *

OPINION

The Rejection Based on 35 U.S.C. § 103

The board stated that representation of a human figure, real or caricatured, is subject to many obvious variations in facial, body, and dress characteristics. We agree with the board that facial, body, and dress characteristics may be made prominent and dominant in any particular choice,, but we do not agree that it was obvious under 35 U.S.C. § 103 to derive appellant’s specific design from that shown in the Breger design patent. While there may be a similarity in concept, it does not follow that there is a similarity in design or that appellant’s design is necessarily obvious. The board’s finding that it is quite evident that the scope of appellant’s design may well approach the figure shown in Bre-ger 'is unsupported and without merit. We do agree with the board that design patents issued to others should not be considered as a reason for the granting of a design patent on the appellant’s application. The basic consideration in determining the patentability of designs over prior art is similarity of appearance. See In re Phillips, 315 F.2d 943, 50 CCPA 1223 (1963). We find no similarity of appearance between appellant’s design and the Breger design other than that both relate to watch faces. We reverse the rejection based on 35 U.S.C. § 103.

The Rejection Based on Estoppel in View of Prior Copyright Registrations

The second ground of rejection, advanced in the Examiner’s Answer and affirmed by the board, is that three copyright registrations have been secured on the subject matter of appellant’s design, and that both copyright and design patent protection cannot be obtained for the same subject matter. The precise nature of the three copyright registrations is not shown in the record before us, but appellant does not deny that both copyright protection and design patent protection have been sought on the subject matter involved.

The only evidence of record indicating what was copyrighted by appellant’s as-signee is found in the newspaper photographs, above. Unfortunately, the quality of the reproduced newspaper photographs is poor, but a copyright notice (© 1970 The Novelty Watch Co.) appears on the drawing of the watch face. Furthermore, the watch face, as shown by the newspaper photographs, includes the hour numerals and some words. The latter features do not appear in the drawing of the instant design patent application.

Although copyright registrations of appellant’s assignee are not of record, the Examiner’s Answer, above, lists the registration numbers as: Bp 37381, Gp 67931 and Gp 67932. We take judicial notice of the following facts: that the prefix Bb indicates that the registration is for a contribution to a periodical manufactured in the United States of America (see Regulations of the Copyright Office, 37 CFR § 202.5; cf. 17 U.S.C. § 5(b)), and that the prefix Gp indicates tha't the registration is for a published work of art (see Regulations of the Copyright Office, 37 CFR § 202.10; cf. 17 U.S.C. § 5(g)). Based on the two Gp registrations and the newspaper photographs of record, we conclude that appellant’s assigneee has registered a copyright for the drawing on the watch face (shown in the newspaper photographs) as a work of art under the authority of 17 U.S.C. § 5(g).

Turning now to the legal merits of. the instant rejection based on estoppel in view of the prior copyright registrations, the rejection must be reversed.

We analyze the issue by asking two questions:

(1) Is there an area of overlap wherein a certain type of subject matter is both “statutory subject matter” under the copyright statute (meaning a type of subject matter which, by definition, may be - copyrighted if the other statutory conditions and requirements are met) and “statutory subject matter” under the design patent statute (meaning a type of subject matter which, by definition, may be patented as a design if the other statutory conditions and requirements are met) ?

(2) If the answer to question (1) is in the affirmative, and if a particular creation is of that type of subject matter which is within the area of overlap, may the “author-inventor” secure both a copyright and a design patent?

We answer both questions in the affirmative for the following reasons.

Under the power granted to the Congress in Art. I, § 8, cl. 8 of the Constitution, the Congress has enacted the copyright statute as Title 17, United States Code, and the patent statute as Title 35, United States Code. In the two statutes, the Congress has created an area of overlap with regard to at least one type of subject matter.

Thus, the Congress has provided that subject matter of the type involved in the instant appeal is “statutory subject matter” under the copyright statute and “statutory subject matter” under the design patent statute. The statutory language clearly shows the intent of Congress.

The copyright statute, 17 U.S.C. § 5, states:

§ 5. Classification of works for registration
The application for registration shall specify to which of the following classes the work in which copyright is claimed belongs:
* * X- X- X- X-
(g) Works of art; models or designs for works of art.
* x- * x- x- X

The design patent statute, 35 U.S.C. § 171, states:

§ 171. Patents for designs
Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title, [emphasis added]

The Supreme Court has recognized that an area of overlapping “statutory subject matter” exists between copyrights and design patents. In Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954), the Court stated:

x x x We ¿[0 hold that the pat-entability of the statuettes, fitted as lamps or unfitted, does not bar copyright as works of art. Neither the Copyright Statute nor any other says that because a thing is patentable it may not be copyrighted. We should not so hold, [footnote omitted]

Subsequently, this court cited Mazer v. Stein in In re Deister Concentrator Co., Inc., 289 F.2d 496, 500 n. 3, 48 CCPA 952, 961 n. 3 (1961), and recognized an area of overlap in these words :

At the present time and ’ especially since Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630, there is a certain amount of overlap in the protection available through design patents and that available by copyright, insofar as a design may qualify as a “work of art” under 17 U.S.C. § 5.

The existence of an area of overlap was accepted by the examiner and the board. Nevertheless, both held that an author-inventor must elect between securing a copyright or securing a design patent. We disagree.

We believe that the “election of protection” doctrine is in direct conflict with the clear intent of Congress manifested in the two statutory provisions quoted above. The Congress has provided that subject matter of the type involved in this appeal is “statutory subject matter” under the copyright statute and is “statutory subject matter” under the design patent statute, but the Congress has not provided that an author-inventor must elect between securing a copyright or securing a design patent. Therefore, we conclude that it would be contrary to the intent of Congress to hold that an author-inventor must elect between the two available modes of securing exclusive rights.

In Mazer v. Stein, supra, the Supreme Court noted the election of protection doctrine but did not express any view on it:

As we have held the statuettes here involved copyrightable, we need not decide the question of their patenta-bility. Though other courts have passed upon the issue as to whether allowance by the election of the author or patentee of one bars a grant of the other, we do not. [emphasis added] [footnote omitted]

Since a design patent had not been secured in the case, the election of protection issue was not before the Supreme Court.

In re Blood, supra, and Ex parte Guild, supra, directly support the board’s decision upholding the instant rejection based on the election of protection doctrine. Tracing back in time, Ex parte Guild cites and relies on In re Blood, and In re Blood in turn cites and relies on Louis De Jonge & Co. v. Breuker & Kessler Co., supra. In Louis De Jonge, the only issue was one of copyright validity and no design patent had been secured. Hence, the statements in Louis De Jonge regarding a mandatory election of protection were dicta. These prior cases appear to recognize the existence of an area of overlap, but they say that both copyright and design patent protection cannot be obtained for the same subject matter. We do not see any positive legal authority supporting this view. To paraphrase the Supreme Court in Mazer v. Stein: Neither the copyright statute nor the patent statute says that because a thing is copyrighted it may not be patented as a design. We should not so hold.

The brief for the Commissioner of Patents presents the following argument:

There is another reason why the copyright registration secured by appellant’s assignee should bar the grant of a design patent, viz., consequent failure of adequate consideration for the grant of a design patent. In Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 [84 S.Ct. 784, 11 L.Ed.2d 661], 140 USPQ 524 [1964], the Supreme Court stated with respect to a design patent that “when the patent expires the monopoly created by it expires, too, and the right to make the article — including the right to make it in precisely the shape it carried when patented — passes to the public.” Here, by contrast, that right would be denied to the public, because appellant’s copyright would persist-, [footnote omitted]

We agree that the copyright secured by appellant’s assignee will outlive any design patent appellant may secure. The copyright “shall endure for twenty-eight years from the date of first publication,” and it is renewable “for the further term of twenty-eight years,” 17 U.S.C. § 24; whereas a design patent has a maximum term of fourteen years, 35 U.S.C. § 173. But the mere fact that the copyright will persist beyond the term of any design patent which may be granted does not provide a sound basis for rejecting appellant’s design patent application.

In the Sears case, the Supreme Court was not thinking of the present fact situation where similar subject matter is protected by a federal copyright. This point is shown by the way the Supreme Court stated the question involved in Sears:

The question in this case is whether a State’s unfair competition law can, consistently with the federal patent laws, impose liability for or prohibit the copying of an article which is protected by neither a federal patent nor a copyright. 376 U.S. at 225, 84 S.Ct. at 786 [emphasis added.]

The Commissioner’s argument based on the “failure of consideration” concept borrowed from the law of private contracts is inappropriate here. A patent is not a contract. A patent is “a grant * * * of the right to exclude others from making, using, or selling the invention throughout the United States,” 35 U.S.C. § 154 (emphasis added). A patent has “ * * * the attributes of personal property,” 35 U.S.C. § 261 (emphasis added).

Finally, we come to the board’s additional ground for affirmance of the rejection — that “[t]he framers of the Constitution presumably recognized the difference between the endeavors of authors and inventors, because they used the word ‘respective’ in reference to their ‘writings and discoveries.’ ”

We agree with the board’s view that the framers of the Constitution recognized a distinction between “authors” and “inventors” and “writings” and “discoveries.” But, we do not think that the constitutional provision requires an election. The Congress, through its legislation under the authority of the Constitution, has interpreted the Constitution as authorizing an area of overlap where a certain type of creation may be thé subject matter of a copyright and the subject matter of a design patent. We see nothing in that legislation which is contradictory and repugnant to the intent of the framers of the Constitution. Congress has not required an author-inventor to elect between the two modes which it has provided for securing exclusive rights on the type of subject matter here involved. If anything, the concurrent availability of both modes of securing exclusive rights aids in achieving the stated purpose of the constitutional provision.

In summary, the rejection based on obviousness under 35 U.S.C. § 103 and the rejection based on estoppel in view of the prior copyright registrations are reversed.

Reversed.

      . Design patent application serial No. 21,-125 filed January 28, 1970. The record indicates that The Novelty Watch Company, Inc. is the assignee of the entire interest in the application.


author: PER CURIAM:

text:
    Rudolfo RUIZ, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee.
    No. 73-3749
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    May 16, 1974.

      Rudolfo Ruiz, pro se.
    Jeremiah Handy, Asst. U. S. Atty., San Antonio, Tex., for respondent-appel-lee.
    Before WISDOM, GOLDBERG and GEE, 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.

   PER CURIAM:

Petitioner Ruiz appeals from the denial of a motion to vacate his sentence and set aside his plea of guilty to one count of distributing narcotics in violation of 26 U.S.C. § 4704(a). He contends that relief pursuant to 28 U.S.C. § 2255 is required because: (1) he was not informed that he would be sentenced as a second offender against the federal narcotics laws prior to entering his plea of guilty, and (2) the trial court did not ascertain the factual basis for the plea as required by Rule 11 of the Federal Rules of Criminal Procedure. We find no merit in these arguments and affirm.

Petitioner rests his contention that he was entitled to know that he would be sentenced as a second offender before entering his plea on the terms of 21 U.S.C. § 851(a)(1) and Rule 11, Fed.R.Crim.Proc. Ruiz correctly notes that § 851(a)(1), the statute now governing enhanced sentences in narcotics cases, permits the harsher punishments for multiple offenders only when the Government has filed an information on any previous convictions in advance of trial or entry of a guilty plea. He has neglected to observe, however, that this statute did not become effective until some three years after his trial. In May, 1968, the time of petitioner’s plea and sentencing, enhanced terms were fixed under the provisions of 26 U.S.C. § 7237. That section specifically directed that the court and the defendant be provided with the Government’s information on prior drug offenses “after conviction (but before pronouncement of sentence)”. The Government followed that procedure in this case; and the transcript of the sentencing hearing reveals no deviation from the requirements of § 7237.

In order to be accepted under Rule 11 a guilty plea must have been given “with understanding of the . consequences of the plea.” Petitioner contends that since one of those consequences is the sentence to be imposed by the court, he ought to have been informed before entering his plea whether the Government had sufficient evidence of a prior conviction to trigger enhanced punishment. Though ingenious, this argument lacks merit.

Before entering his plea Ruiz received a full and accurate explanation of the sentences that could be imposed for a violation of 26 U.S.C. § 4704(a), including the higher level of punishment required in the event of a prior federal narcotics violation. The record of the May arraignment discloses that petitioner not only stated that he understood the possible punishments awaiting him, but alsq admitted to a federal narcotics violation in 1960. While he still lacked definite knowledge that the Government had proof of the prior conviction, that doubt as to final disposition is not significant in assessing the validity of the plea.

Rule 11 does require disclosure of information on the punishment authorized by statute. It is only necessary, however, that the defendant know the range of possible sentences, not the exact penalty that the court will assess in the event of a guilty plea. See United States v. Blair, 5 Cir. 1972, 470 F.2d 331; United States ex rel. Hill v. United States, 5 Cir. 1971, 452 F.2d 664; United States v. Woodall, 5 Cir. 1970, 438 F. 2d 1317; Tucker v. United States, 5 Cir. 1969, 409 F.2d 1291. Nor is a defendant who is subject to punishment under more than one sentencing statute entitled to know prior to his pleading which statute the court will utilize. Rule 11 mandates only that the defendant be told of the possibility of sentencing under one of several provisions and the minimum and maximum penalties required by each. See Mordecai v. United States, 1969, 137 U.S.App.D.C. 198, 421 F.2d 1133, cert, denied 397 U.S. 977, 90 S.Ct. 1098, 25 L.Ed.2d 272; Robinson v. United States, 10 Cir. 1973, 474 F.2d 1085. In line with these decisions, petitioner was given ample information on the statutory possibilities. Rule 11 demands no more.

Petitioner’s second contention— that the district court did not take steps to satisfy itself that there was a factual basis for the plea as required by Rule 11 — cannot withstand a reading of the transcript of the arraignment. The record conclusively shows that prior to entering judgment the trial court requested a synopsis of the evidence against petitioner from the prosecutor and that petitioner admitted under oath that the facts alleged were true. This procedure satisfies both the letter and the spirit of Rule 11. Cf. Hall v. United States, 5 Cir. 1974, 489 F.2d 427.

Affirmed.

      . 26 U.S.C. § 7237(c)(2).

      . Petitioner alleges at one point in Ms brief that the trial court did not afford him the opportunity, required under the old and new statutes, to affirm or deny the Government’s allegation of a prior conviction. The transcript of the sentencing proceeding, however, entirely refutes this contention. After the Government had presented to the court an information charging petitioner with a prior narcotics conviction in the Western District of Texas on May 20, 1960, his counsel responded that the allegation was indeed true. Ruiz was then asked by the court if he had any comments to make and petitioner stated that be did not. The record discloses, therefore, both counsel’s admission and petitioner’s acquiescence.


author: THORNBERRY, Circuit Judge:

text:
    AMERICAN HERITAGE LIFE INSURANCE COMPANY, Plaintiff-Appellant-Cross Appellee, v. HERITAGE LIFE INSURANCE COMPANY, Defendant-Appellee-Cross Appellant.
    No. 73-1106.
    United States Court of Appeals, Fifth Circuit.
    May 13, 1974.

      Murray Robinson, David Alan Rose, Maynard A. Powell, Houston, Tex., Nelson M. Harris, Jr., Jacksonville, Fla., for plaintiff-appellant.
    Jack C. Goldstein, John F. Lynch, Houston, Tex., for defendant-appellee.
    Before THORNBERRY, GODBOLD and CLARK, Circuit Judges.
   THORNBERRY, Circuit Judge:

Fundamentally, this appeal turns on the labels which the law of service marks and unfair competition ascribes to a single word. Unfortunately, the law is sometimes confusing, and consequently, the parties to this suit have been in legal combat for years in an attempt to convince the courts that the word means what each wants it to mean. Both parties have appealed from the decision of the district court because neither is entirely satisfied with the result reached there. The district court found that the word “Heritage,” as used in the corporate names of these two parties, is generic or descriptive, rather than distinctive, of life insurance, that Heritage Life Insurance Company (HLIC) used the word in commerce before American Heritage Life Insurance Company (AHLIC) used the word before the public, that there is no secondary meaning in the word “Heritage” which the public associates with AHLIC or its insurance services, that HLIC is not barred by res judicata or collateral estoppel from defending in this action or counterclaiming for cancellation of AHLIC’s registered service mark, that HLIC is guilty of neither service mark infringement nor unfair competition, and that HLIC is not entitled to a cancellation of AHL-IC’s service mark registration.

Undaunted, AHLIC renews its contentions below that HLIC is infringing upon its registered service mark in violation of 15 U.S.C. §§ 1114, 1116, that HLIC is infringing upon its common law trade name, and that prior proceedings before the Patent Office and the court bar both HLIC’s defense and its counterclaim. While AHLIC seeks no damages, it does seek injunctive relief to prevent HLIC from doing business without using a prefix with the word “Heritage.” Not wholly content with its victory below, HLIC challenges only that part of the district court’s order denying cancellation of AHLIC’s service mark registration.

I

The history of these two insurance companies is a litigious one. AHLIC was incorporated in accordance with the laws of the State of Florida on September 11, 1956, and has its principal offices in Jacksonville, Florida. HLIC was incorporated on July 26, 1957, in Arizona and has its executive offices in Los Angeles, California. The parties first became aware of each other’s existence in March of 1959 when AHLIC’s president visited HLIC’s vice president. HLIC initially operated only as a rein-surer, but is presently involved in the direct sale of life insurance in twenty-two states. AHLIC has, since its inception, been dealing in the direct sale of life insurance, and is presently admitted to do business in forty-nine states.

In 1960, HLIC sued the Heritage Life Insurance Company of California for trade name infringement. The suit was settled when the latter agreed to change its name to Peoples Heritage Life Insurance Company. At the same time, HLIC filed an application to register “Heritage” as a service mark, alleging first use in interstate commerce in January of 1958. In 1961, HLIC’s application was published by the Patent Office and AHLIC announced its opposition, claiming superior rights in the service mark “American Heritage.”

On May 1, 1964, while the HLIC application was still pending, AHLIC applied for registration of the service mark “Heritage” for the service of planning and underwriting life and health insurance, alleging first use in interstate commerce in July 1957. The Patent Office Trademark Trial and Appeal Board sustained AHLIC’s opposition to HLIC’s application on July 30, 1964. 143 U.S.P.Q. 244. Subsequently, on December 22, 1964, AHLIC’s application was published, and there was no opposition.

HLIC appealed the denial of its request for registration to the United States District Court for the Southern District of Florida, and AHLIC counterclaimed for infringement. But HLIC’s suit was dismissed with prejudice and without findings, for failure to state a claim upon which relief could be granted. The Florida district court also entered a voluntary dismissal without prejudice of AHLIC’s counterclaim. Soon thereafter, on June 1, 1965, the Patent Office granted AHLIC’s application for service mark registration. AHLIC filed this suit on June 20, 1966, and on August 30, 1972, after a full trial, the Texas district court denied the relief requested by AHLIC and denied HLIC’s petition for cancellation of AHLIC’s service mark registration.

II

We are thus faced with (1) a dismissal with prejudice by the Florida district court of HLIC’s petition for registration, (2) a dismissal without prejudice by the Florida district court of AHLIC’s counterclaim for infringement, (3) a Trademark Trial and Appeal Board decision sustaining AHLIC’s opposition to HLIC’s petition for registration, (4) an ex parte Patent Office proceeding permitting registration of AHL-IC’s mark, and (5) the Texas district court action below involving AHLIC’s infringement claim and HLIC’s counterclaim for cancellation. At the outset we must deal with AHLIC’s contention that HLIC is barred by the res judicata and collateral estoppel effects of the prior proceedings before the Patent Office and the Florida district court from defending or counterclaiming in this action.

Under the doctrine of res judicata, a judgment on the merits in one suit bars a subsequent suit involving the same parties or their privies based on the same cause of action. Under the doctrine of collateral estoppel, on the other hand, such a judgment precludes relitigation of issues actually litigated and determined in the prior suit, regardless of whether the second suit is based on the same cause of action as the first. Lawlor v. National Screen Service Corp., 1955, 349 U.S. 322, 326, 75 S.Ct. 865, 867, 99 L.Ed. 1122, 1126. In the words of Mr, Justice Field, in “a second action between the same parties . . . upon a different claim or demand, the judgment in the prior action operates as an estoppel only as to those matters in issue or points controverted, upon the determination of which the finding or verdict was rendered.” Cromwell v. County of Sac, 1877, 94 U.S. 351, 353, 24 L.Ed. 195, 198. It forecloses inquiry only as to those issues which were necessarily determined. Exhibitors Poster Exchange, Inc. v. National Screen Service Corp., 5th Cir. 1970, 421 F.2d 1313, 1319.

In Lawlor, the Supreme Court held that a judgment dismissing a suit with prejudice constitutes an adjudication of the merits as fully and completely as if the order had been entered after trial and bars a later suit between the same parties on the same cause of action. But the Court noted that where the judgment is not accompanied by findings, the judgment does not bind the parties on any issue which might arise in connection with another cause of action. Lawlor v. National Screen Service Corp., supra, 75 S.Ct. at 868. Thus, such a judgment has only the most limited res judicata and collateral estoppel effect.

The Florida district court dismissed with prejudice and without any findings HLIC’s registration suit, and subjected AHLIC’s counterclaim for infringement to a voluntary dismissal without prejudice. Clearly, the voluntary dismissal of the counterclaim without prejudice has no res judicata or collateral estoppel effect on the present suit since it did not constitute an adjudication or a judgment on the merits. Public Service Commission v. Brashear Freight Lines, 1941, 312 U.S. 621, 626, 61 S.Ct. 784, 787, 85 L.Ed. 1083, 1086. The effect of the dismissal with prejudice of HLIC’s registration action depends upon whether the present suit is based upon the same cause of action. A claim for service mark and trade name infringement and a claim for registration present different questions of law and fact, and the relief sought in one action is fundamentally different from the relief sought in the other. Speed Products Co. v. Tinnerman Products, 2nd Cir. 1955, 222 F.2d 61, 67. While the same parties are fighting over the same word in the two suits, in substance, the causes of action are not the same. In this circumstance, the dismissal warrants no res judicata treatment. See Exhibitors Poster Exchange, Inc. v. National Screen Service Corp., supra, 421 F.2d at 1316. And consequently, it raises no collateral estoppel specter either, because the dismissal without findings does not bind the parties on any issues which have arisen in this different cause of action. Lawlor v. National Screen Service Corp., supra. Similarly, the prior dismissal has no res judicata or collateral estoppel effect on HLIC’s counterclaim for cancellation.

This does not end the matter, however, for we must still determine the effect of the decisions of the Patent. Office on the present litigation. The Supreme Court has held that

. . . when an administrative agency is acting in a judicial capacity and resolves disputes of fact properly before it which the parties have had an adequate opportunity to litigate, the courts have not hesitated to apply res judicata to enforce repose.

United States v. Utah Construction and Mining Co., 1966, 384 U.S. 394, 422, 86 S.Ct. 1545, 1560, 16 L.Ed.2d 642, 660. That case, however, involved an appeal from a decision by the Advisory Board of Contract Appeals to whose findings the Wunderlich Act of 1954 gives “final and conclusive” effect. 41 U.S.C. § 321. And the Court had previously determined that with respect to this statutory provision, Congress did not intend a de novo determination of the facts by the courts. United States v. Carlo Bianchi & Co., 1963, 373 U.S. 709, 83 S.Ct. 1409, 10 L.Ed.2d 652:

By contrast, an appeal to a federal district court from a decision by the Trademark Trial and Appeal Board, pursuant to 15 U.S.C. § 1071(b), is in the nature of a trial de novo. Holiday Inns, Inc. v. Holiday Out in America, S. D.Fla.1972, 351 F.Supp. 537, 540, aff’d, 5th Cir. 1973, 481 F.2d 445; see also 15 U.S.C. § 1119. In our judgment, this indicates a congressional intent not to invoke the immunizing doctrines of res judicata or collateral estoppel in connection with Patent Office proceedings. See R. Callman, The Law of Unfair Competition § 82.4, at 867 (3d ed. 1969). We do not mean to suggest that application of the doctrines of res judicata and collateral estoppel to administrative decisions does not serve a useful purpose in preventing the relitigation of issues properly determined administratively. Sunshine Anthracite Coal Co. v. Adkins, 1940, 310 U.S. 381, 60 S.Ct. 907, 84 L.Ed. 1263. We do suggest, however, that the doctrines, with respect to administrative proceedings, are not applied with the same rigidity as their judicial counterparts. United States v. Smith, 8th Cir. 1973, 482 F.2d 1120, 1123. And we think this is especially wise in the context of the case before us, where Congress has given the federal court the power to look beneath and beyond the record before the Patent Office.

This does not mean that Patent Office determinations are not entitled to great weight. On the contrary, in the context of a direct appeal from a Patent Office decision on an application for registration, this court has held that findings as to confusing similarity of marks must be accepted as controlling unless the contrary is established by “evidence ‘which, in character and amount carries thorough conviction,’ ” notwithstanding that the case is heard de novo in the district court. Aloe Creme Laboratories, Inc. v. Texas Pharmacal Co., 5th Cir. 1964, 335 F.2d 72; see also Morgan v. Daniels, 1894, 153 U. S. 120, 14 S.Ct. 772, 38 L.Ed. 657. Even though this is an infringement and cancellation action rather than a direct appeal from a Patent Office registration proceeding, in our judgment the “thorough conviction” standard extends to all findings made by the Patent Office in quasi-judicial, adversarial proceedings between the same parties and emanating from the Office’s expertise. In the opposition proceeding, the Trademark Trial and Appeal Board stated that “Heritage” was an “arbitrary” term which was being used in connection with identical services offered by both companies and that AHLIC was the prior user of the service mark. Those findings were sufficient, in the Board’s judgment, to sustain AHLIC’s opposition. The opposition proceeding conducted by the Board was quasi-judicial in character, and its findings on arbitrariness and priority of usage are* grounded in the Patent Office’s area of expertise. Consequently, while the findings do not merit application of the doctrine of collateral estoppel, they will be accepted by the federal court unless the contrary is established by evidence which carries thorough conviction.

The ex parte AHLIC registration proceeding is viewed through yet another prism. For under the Lanham Act, registration by itself does not enlarge a registrant’s substantive rights in a mark. It does, however, confer procedural advantages which affect the burden of proof. Turner v. HMH Publishing Co., 5th Cir. 1967, 380 F.2d 224, 228, cert, denied, 389 U.S. 1006, 88 S.Ct. 566, 19 L.Ed.2d 601. Under the Act, registration is prima facie evidence of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in commerce in connection with the services specified in the registration certificate. 15 U.S.C. §§ 1057(b), 1115(a). Thus registration is sufficient to establish prima facie (1) the required prior use (2) of a registrable mark (3) which is likely to be confused with another’s use of the same or a similar mark.

We review the district court’s findings and analyze the parties’ contentions with these standards as our guides.

Ill

In an action for infringement of a registered service mark, the threshold question is whether the word or symbol is registrable or protectable. World Carpets, Inc. v. Dick Littrell’s New World Carpets, 5th Cir. 1971, 438 F.2d 482, 485. The Lanham Act defines a service mark to be “a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” 15 U.S.C. § 1127. Generally, to be registrable or protectable, a service mark must meet the statutory standards required of trademarks. See 15 U.S.C. §§ 1053, 1052. Under those standards, generic or highly descriptive words are normally not proper subjects for registration or protection as marks because they rarely attain the quality of distinctiveness required by the Act or the common law and because, as a matter of public policy, others should be equally entitled to use such nondistinctive words. Nevertheless, such a service mark will be protected where it has acquired a secondary meaning which arises from the applicant’s use of the word as a service mark and which thus makes the word distinctive of the applicant or of its services. Application of Andes Candies, 1973, 478 F.2d 1264, 1267, C.C.P.A.; Continental Motors Corp. v. Continental Aviation Corp., 5th Cir. 1967, 375 F.2d 857, 861; Day-Brite Lighting, Inc. v. Sta-Brite Fluorescent Mfg. Co., 5th Cir. 1962, 308 F.2d 377, 382; 15 U.S.C. §§ 1052(e)(1), 1052(f).

Noting that the word “heritage” means “something that descends to an heir; something transmitted by or acquired from a predecessor; a legacy,” the district court concluded that all life insurance companies are, in a very real sense, “in the business of providing ‘heritages,’ usually for the benefit of the family of the insured.” Consequently, the district court held that the word “heritage” is generic or descriptive of life insurance, rather than arbitrary or suggestive. Some courts distinguish between generic and descriptive terms, but in any case, the distinction between them is necessarily one of degree. A generic term conveys information about the nature or class of an article or service, whereas a descriptive term identifies the characteristics and qualities of the article or service, its color, odor, functions, dimensions, or ingredients. Generic terms broadly suggest that the basic nature of articles or services. See 3 R. Callman, The Law of Unfair Competition, supra, § 70.4, at 111; W. E. Bassett Co. v. Revlon, Inc., 2nd Cir. 1970, 435 F.2d 656, 661; Application of Andes Candies, Inc., supra, 478 F.2d at 1266. The industry itself evidently recognizes the truth of the district court’s finding because the word “heritage” is used in the corporate names of insurance companies all over the country. Although we have looked at the word’s etymology, we need not engage in hyper-technical philological analysis to agree with the district court that “heritage” is a singularly appropriate word for conveying information with respect to the nature of life insurance. Mindful of the burden of proof under the “thorough conviction” standard, we cannot say that the district court’s finding was clearly erroneous. Tennessee Valley Authority v. Monsanto Chemical Co., 5th Cir. 1967, 383 F.2d 973.

At the same time, we are equally mindful of the Socratic admonition that words are more plastic than wax. To paraphrase Judge Learned Hand, words are chameleons, which reflect the color of their environment. • We must therefore consider whether AHLIC has used “Heritage” in such a way that the word has now taken on a secondary meaning which the public associates with AHLIC. The district court found that “heritage” was “a word whose primary meaning was so intimately associated with and descriptive of the services intended to be distinguished in commerce” that “strong evidence of secondary meaning” would be required before AHLIC could.be permitted to appropriate it. We agree that the evidentiary burden necessary to establish secondary meaning is substantial where the proposed mark’s original or primary meaning suggests the basic nature of the service to be rendered. See Aloe Creme Laboratories, Inc. v. Milsan, Inc., 5th Cir. 1970, 423 F.2d 845, 850, cert, denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L. Ed.2d 90; W. E. Bassett Co. v. Revlon, Inc., supra, 435 F.2d at 661.

The test of secondary meaning is the effectiveness of the effort to create it, and the chief inquiry is directed toward the consumer’s attitude about the mark in question: does it denote to him or her “a single thing coming from a single source?” Carter-Wallace, Inc. v. Procter & Gamble Co., 9th Cir. 1970, 434 F.2d 794, 802; Aloe Creme Laboratories, Inc. v. Milsan, Inc., supra, 423 F.2d at 849. Has the word, in the mind of the public, come to stand as a name or identification for this firm? Continental Motors Corp. v. Continental Aviation Corp., 5th Cir. 1967, 375 F.2d 857, 861. Since the word is generic with respect to life insurance, “the plaintiff must show more than a subordinate meaning which applies to it. It must show that the primary significance of the term in the minds of the consuming public is not the product but the producer.” Kellog Co. v. National Biscuit Co., 1938, 305 U.S. 111, 118, 59 S.Ct. 109, 113, 83 L.Ed. 73, 78.

AHLIC began selling life insurance in January of 1957 in several southeastern states. The district court found that “although AHLIC regularly advertised its insurance services, from that time until the present, [AHLIC] has never referred to itself by use of the word ‘Heritage’ not preceded by ‘American’ in any magazine advertisement, newspaper advertisement, or radio or television advertisement.” The district court further found, and it is not disputed, that the word “Heritage” is not featured in a different script, style, or color from the word “American” in any of its advertising material.

The record also shows that none of AHLIC’s insurance policies uses the word “Heritage” alone or without “American” as an antecedent. Indeed, there was no evidence presented of a single instance where AHLIC promoted before the public the shortened name “Heritage” or “Heritage Life.” Even in its annual reports, prospectuses offering stock, stock transfer data, and other corporate material, AHLIC has not referred to itself as “Heritage” or “Heritage Life,” but as “American Heritage,” “American Heritage Life,” or by its full corporate name.

To sustain its claim of a right to “Heritage,” AHLIC presented a number of newspaper and magazine articles which refer to AHLIC by the word “Heritage” not preceded by the word “American.” But the district court concluded that the number of articles referring to AHLIC as “Heritage” was insignificant when compared with AHLIC’s many years of corporate existence. Finally, AHLIC has argued that five primarily intracorporate uses of the word ostensibly as a service mark warrant a finding of secondary meaning. Following the district court’s lead, we are not persuaded. None of the uses offered by AHLIC was before the insurance buying public. Secondary meaning can hardly arise without public awareness and acceptance of the mark. 3 R. Callman, The Law of Unfair Competition, supra, § 77.4(a), at 365, § 80.5, at 558; Bar-dahl Oil Co. v. Atomic Oil Co. of Okl., 10th Cir. 1965, 351 F.2d 148, 150. The uses of “Heritage” by AHLIC were before agents, employees, and selected shareholders of the company, but only rarely and incidentally before any member of the public. That does not amount to service mark usage, and clearly cannot create secondary meaning. In the words of Mr. Justice Frankfurter, AHLIC has not demonstrated that the effect of its activities has been “to impregnate the atmosphere of the market with the drawing power of a congenial symbol.” Mishawaka Rubber and Woolen Mfg. Co. v. S.S. Kresge Co., 1942, 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L. Ed. 1381, 1384.

In contrast to AHLIC’s evidentiary showing, HLIC introduced testimony from the officers of eleven insurance companies which have the word “Heritage” in their corporate names and which do business all over the country, including AHLIC’s home state of Florida. HLIC also offered proof of thirteen insurance agencies having “Heritage” in their names, including a Florida agency and two Texas agencies. This lack of exclusivity in the use of the word in the insurance industry is a factor militating against a finding of secondary meaning in AHLIC’s use of the word. Carter-Wallace, Inc. v. Procter & Gamble Co., supra, 434 F.2d at 802.

Particularly relevant to the issue of secondary meaning is an opinion poll conducted by AHLIC in its home town of Jacksonville to determine whether the public recognized that “American Heritage” was synonymous with AHLIC. See Holiday Inns, Inc. v. Holiday Out in America, 5th Cir. 1973, 481 F.2d 445, 447. In the words of a top AHLIC officer, the company “was not elated at the results,” despite the fact that the poll was taken with respect to “American Heritage,” a name which AHLIC promotes much more strongly.

From this evidence, the district court concluded that the word “Heritage” has not become associated in the minds of the insurance buying public exclusively with either AHLIC or with any of its services. A claim of secondary meaning presents a question of fact, and the district court’s finding on the issue, therefore, will not be disturbed unless clearly erroneous. Volkswagenwerk Aktiengesellschaft v. Rickard, 5th Cir. 1974, 492 F.2d 474; F.R.Civ.P. 52(a). From the evidence submitted, the district court could hardly have found otherwise. Consequently, AHLIC cannot be said to own any exclusive rights to the word “Heritage” which warrant a finding of service mark infringement.

With this picture before us, we are equally convinced that the district court erred in refusing to order the cancellation of AHLIC’s service mark registration. Section 37 of the Lanham Act provides that “in any action involving a registered mark,” the court may determine the right to registration and order the cancellation of registrations. 15 U.S.C. § 1119. Having determined that the word “Heritage” is generic or merely descriptive, and that it has not been endowed by AHLIC with secondary meaning sufficient to make the word distinctive, we believe that the Act’s purposes would be served by ordering the cancellation of the registration. 15 U.S.C. §§ 1119,1052(e) (1), 1052(f).

IV

AHLIC has raised an alternative charge against HLIC based on the law of unfair competition generally and trade name infringement specifically. The law of unfair competition is the umbrella for all statutory and nonstatutory causes of action arising out of business conduct which is contrary to honest practice in industrial or commercial matters. 3 R. Callman, The Law of Unfair Competition, supra, § 4.1, at 120. In its complaint, AHLIC alleged both a statutory and a common law cause of action for unfair competition.

The complaint charged that HLIC’s use of its corporate name in connection with the advertising and sale of insurance constitutes “a false designation of origin” and “A false representation” that its sérviees rendered in connection with its advertising and selling originate with AHLIC, in violation of section 43(a) of the Lanham Act. 15 U.S.C. § 1125(a). While we have rejected the view that the Lanham Act brought all claims of unfair competition by those engaged in interstate commerce within the federal question jurisdiction of the federal district courts, Royal Lace Paper Works, Inc. v. Pest-Guard Products, Inc., 5th Cir. 1957, 240 F.2d 814, we have recognized that section 43(a) creates a federal cause of action for false representation of goods or services in commerce. Alum-A-Fold Shutter Corporation v. Folding Shutter Corp., 5th Cir. 1971, 441 F.2d 556, 557; Norman M. Morris Corp. v. Weinstein, 5th Cir. 1972, 466 F.2d 137, 141.

But AHLIC offered no evidence to show that HLIC made false representations with respect to its advertising and sales of insurance or to show that HLIC was engaged in any advertising or selling activities that were likely to undermine AHLIC’s reputation or business. Furthermore, the district court found no evidence which suggested that HLIC had engaged in any wrongful conduct with respect to AHLIC. In the face of that meager showing, we can only conclude that AHLIC has failed to prove a violation of the statute.

Under its common law unfair competition claim, AHLIC contends that it is known by nicknames such as “Heritage” and “Heritage Life,” nicknames which the insurance buying public associates with the company. AHLIC also contends that the .word “Heritage” is the dominant part of its name so that by doing business under the corporate name Heritage Life Insurance Company without a distinguishing prefix, HLIC has infringed upon AHLIC’s trade name and created a likelihood of consumer confusion.

As a preliminary matter, a word should be said about the law applicable to common law unfair competition claims. The federal court’s jurisdiction over the common law claim was asserted upon the basis of diversity of citizenship, 28 U.S.C. § 1332, and upon the ground that the claim was joined with a substantial and related claim under the trademark laws, 28 U.S.C. § 1338(b). In those circumstances, the common law claim would appear to require the application of state law. See Maternally Yours, Inc. v. Your Maternity Shop, Inc., 2nd Cir. 1956, 234 F.2d 538, 540-541, n. 1.

But neither the district court nor the parties have raised any question about whether federal or state law should be applied, and neither has asserted that the law of one state as against that of another is controlling or would make any difference. As a practical matter the question may be more theoretical than real since the governing law of unfair competition in trade names developed in the federal courts. Blisscraft of Hollywood v. United Plastics Co., 2nd Cir. 1961, 294 F.2d 694, 697. As a matter of doctrine, the issue should be faced. Fortunately, we need not do so since the district court fully considered the evidence offered on every theory of unfair competition which has been suggested by AHLIC.

We have already noted that the evidence does not support AHLIC’s contention that the word “Heritage” is identified with AHLIC by the insurance buying public. Without a demonstration of distinctiveness, AHLIC cannot sustain its claim of trade name infringement, unless there is evidence either of actual passing off on the part of HLIC or of an intent to do so. American Gold Star Mothers v. National Gold Star Mothers, 1951, 89 U.S.App.D.C. 269, 191 F.2d 488, 490. But as the district court found, the record is devoid of any such evidence. The lack of distinctiveness is also fatal to a claim of dilution, for it is clear that a nondistinctive mark cannot be diluted. Holiday Inns, Inc. v. Holiday Out in America, supra, 481 F.2d at 450. The district court concluded that there was insufficient evidence of a lack of commercial fairness in HLIC’s actions to support a finding of unfair competition. Whether or not there has been unfair competition is a mixed question of law and fact, which can only be decided after a review of all the evidence. B. H. Bunn Co. v. AAA Replacement Parts Co., 5th Cir. 1971, 451 F.2d 1254, 1259, 1262. Our review convinces us that the district court’s conclusion is correct. Creamette Co. v. Conlin, 5th Cir. 1951, 191 F.2d 108.

Y

Because of the very nature of our enterprise, what we have said today may have little eternal significance. Although the word “Heritage” is generic of life insurance, and today neither party can claim the required distinctiveness, tomorrow the word may grow in individuality. Such is the character of human language and, we might add, sophisticated marketing technique. See Continental Motors Corp. v. Continental Aviation Corp., supra, 375 F.2d at 862. Nevertheless, for the life insurance company seeking to appropriate this word, the burden of proving distinctiveness is a heavy one, and until that evidence emerges, this battle should be at an end.

Affirmed in part; reversed in part.

      . Jurisdiction is predicated upon 15 U.S.C. § 1121 and 28 U.S.C. § 1338(a), for actions arising under the trademark laws of the United States; 28 U.S.C. § 1338(b), creating pendent jurisdiction for the claim of unfair competition; 15 U.S.C. § 1119, authorizing the court in a registered mark action to order the cancellation of registrations; and 28 U.S.C. § 1332, diversity.

      . See also Giannini Controls Corp. v. Litton Precision Products, P.O.T.T.A.B.1966, 150 U.S.P.Q. 387, 389; Libbey-Owens-Ford Glass Co. v. Shatterproof Glass Corp., E.D.Mich. 1970, 165 U.S.P.Q. 335, 336.

      . “Under the federal rule, an appeal that constitutes a proceeding de novo vacates the appealed judgment and suspends its operation as res judicata and collateral estoppel.” IB Moore’s Federal Practice, 1[ 0.416 [3], at 2254 (1974). See Westinghouse Elec. & Mfg. Co. v. Wadsworth Elec. Mfg. Co., 6th Cir. 1931, 51 F.2d 447, 448.

      . We should note, however, that the Board’s “finding” of arbitrariness was conclusory and without explanation. The Board’s opinion contains only one passing reference to arbitrariness: “In the opinion of the Board, both parties are using the arbitrary term “HERITAGE” on identical services . . .” American Heritage Life Insurance Company v. Heritage Life Insurance Company, U.S.P. O.T.T.A.B.1964, 143 U.S.P.Q. 45, 46. Therefore, we do not know the evidence upon which the Patent Office relied or the reasoning behind the finding.

      . The dictionary definition of the word is an appropriate and relevant indication “of the ordinary significance and meaning of words” to the public. Claremont Polychemical Corp. v. Atlantic Powdered Metals, Inc., 1072, 470 F.2d 636, 637, C.C.P.A. And of course, the only relevant reference point is meaning in the eyes of the purchasing public. The etymology of the word is supportive of the district court’s conclusion. The word “heritage” is derived from the Latin “hereditare,” which suggests the verb “to inherit.” See Webster’s Third New International Dictionary (unabridged ed. 1961) at 1059.

      . See Plato, Republic IX, at 588d, in Hamilton and Cairns, eds., The Collected Dialogues (Princeton 1969).

      . C.I.R. v. National Carbide Corp., 2nd Cir. 1948, 167 F.2d 304, 306. See also the words of Justice Holmes in Towne v. Eisner, 1917, 245 U.S. 418, 425, 38 S.Ct. 158, 159, 62 L.Ed. 372, 376:, “A word is not a crystal, transparent and unchanged, it is the skin of a living thought and may vary greatly in color and content according to the circumstances and the time in which it is used.” And see, to like effect, Trimble v. City of Seattle, 1914, 231 U.S. 683, 688, 34 S.Ct. 218, 219, 58 L.Ed. 435, 438 (per Holmes, J.) : “Words express whatever meaning convention has attached to them.”

      . The terms, primary and secondary, may be somewhat misleading since a secondary meaning entitled to protection must have become tlie primary meaning to tlie consumer. Aloe Creme Laboratories, Inc. v. Milsan, Inc., supra, 423 F.2d at 848 n. 9.

      . On the issue of secondary meaning, the burden of proof is on AHLIC. None of the Patent Office proceedings offers AHLIC any procedural advantage on this issue. The opposition proceeding never reached the issue of secondary meaning because of its finding of arbitrariness, a finding which has been rejected. Similarly, the AHLIC registration presumably emanates from the same finding of arbitrariness and does not rest on any notion of secondary meaning.

      . Because of our agreement with the district court on the generic or descriptive nature of the word and the lack of secondary meaning, we need not review the district court’s findings on priority of usage or likelihood of confusion.

      . That section provides in part that “any person who shall . . . use in connection with any goods or services . . . any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce . . . shall be liable to a civil action by . . . any person who believes that he is or is likely to be damaged by the use of any such false description or repre sentation.” 15 U.S.C. § 1125(a).

      . But the matter is not altogether free from doubt. See Maternally Yours, Inc. v. Your Maternity Shop, Inc., supra, 234 F.2d at 545-546 (per Chief Judge Clark’s concurring opinion) ; 1A Moore’s Federal Practice H 0.326 at 3770-73 (1965).

      . Assuming that state law would apply, deciding which state’s law to apply is not an easy task. First, we must characterize the claim. In deciding how the matter should be characterized for conflict of laws purposes, it is clear that the law of the forum should control. Falls v. Martin, 5th Cir. 1955, 224 F.2d 387. In Texas, unfair competition is a tort. See Oliver Gintel, Inc. v. Koslow’s, Inc., N.D.Tex.1973, 355 F.Supp. 236, 239, and cases cited therein. Second, we must determine the conflicts rule of the jurisdiction thus selected. The Texas rule is that the unfair competition claim is governed by the tort law of the state in which the cause of action arises. See General Adjustment Bureau, Inc. v. Fuess, S.D.Tex.1961, 192 F. Supp. 542, 537, and cases cited therein; see generally Klaxon Co. v. Stentor Electric Mfg. Co., 1941, 313 U.S. 487, 61 S.Ct. 1020, 85 L.Ed. 1477. But this is ostensibly a multistate tort, and hence arises in not one but many states. For the problem thereby created, see Note, The Choice of Law in Multistate Unfair Competition: A Legal-Industrial Enigma, 60 Harv.L.Rev. 1315 (1947); 1A Moore’s Federal Practice 1fU 0.326, 0.327; Weintraub, Commentary on the Conflict of Laws (1971) at 259-61.

      . For the battle over “Heritage” as a trademark for furniture, see Drexel Enterprises, Inc. v. Hermitage Cabinet Shop, Inc., N.D.Ga.1967, 266 F.Supp. 532; Drexel Enterprises, Inc. v. Richardson, 10th Cir. 1962, 312 F.2d 525; Drexel Enterprises, Inc. v. Heritage House of Dallas, Inc., N.D.Tex. 1963, 136 U.S.P.Q. 415; Drexel Enterprises, Inc. v. Colby, S.D.Colo.1963, 138 U.S.P.Q. 1; Drexel Enterprises, Inc. v. American Heritage, Inc., D.C.Conn.1964, 142 U.S.P.Q. 194