Citations
- 49 F.2d 482
Full opinion text
BLAND, Associate Judge.
This is an appeal in a trade-mark cancellation proceeding from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences sustaining appellee’s application for the cancellation of the registration of appellant’s trade-mark “Ensemble” for use on “garter-brassieres.”
Appellant’s trade-mark, No. 197,197, was registered April 14, 1925, on an application filed December 26,1924.
In its petition for cancellation, appellee alleged that it was engaged in the manufacture and sale of ladies’ “undergarments and garments” which “might be designated as garter-brassieres”; that in the year 1924, it adopted and began the use of the word “Ensemble,” not as a trade-mark, but as a term descriptive of a certain type or style of combination undergarment for ladies, comprising what “might be termed as a brassiere, chemise, and step-in”; that it has continuously used said name on, and in advertising, its goods from the year 1924 to the present time; that the term “Ensemble” is descriptive; that immediately after appellant had registered the word “Ensemble” as its trademark, it challenged the right of appellee to use that term to describe its combination garment; that, on or about October 6, 1926, appellant filed a suit against appellee in the United States District Court, Southern District, New York, and alleged in its bill of complaint that appellee was guilty of trademark infringement by reason of its use of the word “Ensemble”; that, on December 7, 1926, appellee’s motion to dismiss the bill of complaint was denied by the court; that on February 18, 1927, the court granted appellee’s motion for the filing of a bill of particulars by appellant as to the charge of unfair competition; that counsel' for appellant, although frequently requested to do so, never filed a bill of particulars, but, on October 7, 1927, dismissed the bill of complaint without prejudice; and that appellee deemed itself injured by the registration of the word “Ensemble” to appellant.
. In its answer, appellant admitted that it had requested appellee to discontinue using the involved trade-mark in connection with merchandise like that covered by appellant’s registration; that appellant filed suit against appellee on or about October 6, 1926; that appellee filed a motion to dismiss the suit; that said motion was heard on December 7, 1926, and denied by the court; and that the bill of complaint was withdrawn without prejudice and without cost to either party, in accordance with a stipulation entered into by counsel for the parties and filed in the District Court on October 24, 1927. All other allegations contained in appellee’s application were denied by appellant. It was alleged in the answer that, at the request of appellant, appellee agreed to discontinue the use of the word “Ensemble” on goods similar to those covered by appellant’s registration; and that, when appellee subsequently made some further use of the word “Ensemble” in violation of its agreement, appellee apologized to appellant and claimed that §uch use was inadvertent and would not be repeated.
Appellant submitted no testimony.
The only testimony submitted by appellee is that of its counsel of record, George P. .Kimmel, who testified that he was attorney for appellee, and that the word “Ensemble” was commonly used :by merchants and others to describe combination garments pri- or to, and since, appellant first used “Ensemble” as a trade-malrk. Thereupon, the witness identified and introduced in evidence copies of a newspaper, the Evening Star, Washington, D. C., dated, respectively, September 14,16,17, 20, 22, 23, and 26, October 7, 10, 13, 14, 17, 18, and 26, and November 4, 6, 7, 13, and 18, 1924, .eight, copies of “Vogue” magazine published during various months of the year 1924, and a copy of the Corset and Underwear Review, dated January, 1925, in each of which, appeared an advertisement by others showing .the use of the word “Ensemble” to describe various ladies’ garments. The witness then testified as follows :
“Q. 9. What name has Petitioner used on any of its garments? A. SnugglebandEnsemble. * * *
“Q. 10. Have you a specimen of Petitioner’s garment? A. I have and hand you a specimen of the same the label which was on the same having been removed by me.”
Thereupon, the garment identified by the witness was offered in evidence as Appellee’s Exhibit No. 7.
The witness then testified in detail regarding the suit filed by appellant against appellee in the District Court, Southern District, New York, which, in a general way, substantiated the allegations in regard thereto contained in appellee’s petition for cancellation. Certain correspondence between counsel for the parties, relating to the suit in the District Court, together with certain affidavits filed in that ease with appellee’s motion to dismiss, were offered in evidence. The witness then testified as follows:
“Q. 12. Are there any other statements you wish to make in connection with this ease and if so, please make them. A. I find among my papers a folder published by Bromley-Shepard Company, Inc. which on the fifth page shows the manner of use for advertising of the word “Ensemble” by Petitioner. Also a clipping from the Corset and Underwear Review on which the date does not appear, but which shows the same thing as shown in the folder.”
The documents referred to in the answer of the witness were introduced in evidence as Appellee’s Exhibits Nos. 9 and 10. Neither of these exhibits shows the date of its publication or use.
Counsel for appellant objected to all of the testimony of the witness on the ground that it was hearsay, and that the witness had not shown any knowledge of the facts to which he directed his testimony. Objection was also made to each of the exhibits introduced in evidence.
Upon this record, the Examiner of Interferences sustained the petition for cancellation.
Upon appeal, the commissioner, after referring to the allegations contained in appellee’s petition for cancellation, said:
“This is clearly such a statement of facts from which, if true, it may reasonably be inferred that the petitioner will be damaged unless the mark is cancelled.
“The petitioner having established legal standing in the cancellation proceeding it may properly challenge the validity of the registrant’s registration.”
He held that, as applied to garter-brassieres, the word “Ensemble” was descriptive; that it had been used by others in connection with ladies’ garments before its adoption and use by appellant; and that appellant was not entitled to the exclusive use of the word as a trade-mark; and, accordingly, affirmed the decision of the Examiner of Interferences.
In his decision, the commissioner cited the ease of Andrews Radio Co. v. Timmons Radio Products Corp., 345 O. G. 798, 1926 C. D. 39, as authority for the proposition that one who seeks cancellation of a registration of a descriptive mark need not establish that he was using it at the time his application was filed; but that, on the contrary, it is sufficient that he “shall have used said mark in describing the article which he manufactures or owns.”
Section 13 of the Trade-Mark Act of 1905 (15 USCA § 93), under authority of which appellee' filed its petition for cancellation, reads, in part, as follows: “Whenever any person shall deem himself injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. The commissioner shall refer such application to the examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the examiner that the registrant was not entitled to the use of the ' mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner shall so decide, the commissioner shall cancel the registration. • a *» (Italics ours.)
In this court appellant makes two contentions :
First, that the commissioner erred in holding that the mark “Ensemble” is descriptive of the goods specified in the registration; that the registered mark is prima facie valid and that the record fails to show that it is invalid by reason of being descriptive.
Second, that the petitioner “has failed to establish by proper evidence that it was using at the time of. the filing of the petition for cancellation, the word Ensemble either descriptively or otherwise for garter brassieres, the goods covered by the registration sought to be cancelled or for merchandise of the same descriptive properties.” (Italics ours.)
We agree with-the decision of the commissioner that the word “Ensemble,” as applied to the merchandise of both parties, is descriptive and is, therefore, not subject to the exclusive ownership and use by any one, and that the same should not have been registered.
“Ensemble” is defined in Webster’s New International Dictionary (1925) as follows: “The whole; all the parts taken together. * «