Opinion
No. 2022.
Submitted January 13, 1928.
Decided March 5, 1928. Petition for Rehearing Denied March 24, 1928.
Appeal from the Commissioner of Patents.
Interference proceeding, involving trade-marks for cosmetics, between Dorothy Gray and the Armand Company. Decision of the Examiner of Trade-Mark Interferences in favor of the Armand Company was affirmed by the Commissioner, and Dorothy Gray appeals. Reversed.
W.P. Preble, of New York City, for appellant.
Paul Finckel and J.T. Newton, both of Washington, D.C., and W.P. Bair, of Des Moines, Iowa, for appellee.
Before MARTIN, Chief Justice, VAN ORSDEL, Associate Justice, and SMITH, Judge of the United States Court of Customs Appeals.
The trade-marks in interference are substantially the same, consisting of the picture of a girl in similar style dress, slightly differing in color. The goods on which the marks are claimed to have been used by the respective parties are cosmetics, including face powders, talcum powders, creams, lipsticks, preparations for the hair, etc. The Armand Company established prior use of the design in interference.
The Examiner of Trade-mark Interferences decided in favor of the Armand Company, his decision was affirmed by the Commissioner, and the case is here on appeal.
There is no dispute as to the facts. It is contended by counsel for appellant that no legal trade-mark use has been made by the Armand Company of its mark, for the reason that the mark was never affixed, attached, or applied to any goods which were sold and passed into the customer's possession. The mark was labeled "The Armand Girl." The picture was affixed to a box containing powder or cold cream and attached to a block of wood, which stood on the counter where the goods were displayed for sale. This combination, picture, box, and block, was not sold or in any way conveyed to a customer, but was retained in the store merely to attract the attention of customers to the goods. The box, attached to the block of wood and standing on the counter, contained a free sample of face powder or cold cream, so that customers desiring to might sample it. If, however, the customer should purchase a box of the goods, the package purchased would not contain the "Armand Girl" mark. It is urged, therefore, that the use made by appellee company was merely for advertising purposes, to attract the attention of the public to the goods on sale.
It also appears that a pamphlet was issued by the Armand Company, which contained on the lower right-hand corner of the back cover a small picture of the "Armand Girl." The front cover contained a silhouette head of a lady of the time of Louis XVI of France, which is a trade-mark of the Armand Company used on face powder packages, and many other articles. This pamphlet it was also claimed was issued for advertising purposes.
The sole question, therefore, is whether or not this constitutes a legal trade-mark use. It is settled law that the office of a trade-mark is to distinctly point out the origin or ownership of the article to which the mark is attached. It follows, therefore, that, to establish a right to the registration of a trade-mark, two things are necessary: That it must have been actually applied to vendible goods, and that the goods have been sold in interstate commerce. As this court said in Battle Creek Sanitarium Co. v. Fuller, 30 App. D.C. 411: "To constitute a trade-mark use, the mark must be attached or applied to the goods. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 464, 14 S. Ct. 151, 37 L. Ed. 1144, 1146. Property in it can only be acquired by the actual application of it to goods of a certain class, so that it serves to indicate the origin of the goods — that is to say, identify them with the particular manufacturer or trader — and to distinguish them from similar goods. United States v. Braun (D.C.) 39 F. 775; 28 Am. Eng. Enc. Law, p. 346. The mere advertisement of the words or symbol, without application to the goods themselves, is insufficient to constitute a trade-mark."
The use made by the Armand Company amounts to nothing more than an attractive and effective method of advertising. The failure to affix the mark to the goods actually sold and carried away by the customer deprives it of the fundamental element entering into trade-mark use. The Commissioner, in his opinion, while conceding "the proposition that there must be a physical association of the mark with the goods," and that this proposition is supported by the authorities generally, attempts to distinguish the rule by reference to the provisions of the Trade-Mark Act of February 20, 1905, section 29, of which (15 USCA § 108) provides in part as follows: "A trade-mark shall be deemed to be `affixed' to an article when it is placed in any manner in or upon either the article itself or the receptacle or package or upon the envelope or other thing in, by, or with which the goods are packed or inclosed or otherwise prepared for sale or distribution."
But the statute, it will be observed, requires that the mark shall appear on the receptacle or package in which the goods are inclosed, "prepared for sale or distribution." The use made by the Armand Company falls far short of meeting this requirement. The display of the picture on the counter where the goods were for sale, or, in another instance, where the exhibition consists of a "double Armand Girl supporting a box of powder, or a box of cold cream," or in the pamphlet referred to, or where, as disclosed in the record, the Armand goods were placed on exhibition at fairs, and a girl, dressed as the "Armand Girl," was on exhibition with the goods. We are of opinion that none of these, or all of these combined, constitute a trade-mark use. They were simply novel and effective methods of advertising. Nor is the suggestion of the Commissioner that the Armand goods were known to the public by the name of the "Armand Girl," and that they were frequently identified as such, of importance. This identification, attached to the goods, does not originate from a trade-mark use, but from the methods of advertising used by the Armand Company. The identification, therefore, does not strengthen the case, so far as indicating or establishing a legal trade-mark use.
The decision of the Commissioner is reversed.