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Docket Number

No. 1764.

Attorney(S)

W.L. Symons, of Washington, D.C., and H.A. Toulmin and H.A. Toulmin, Jr., both of Dayton, Ohio, for appellant. C.E. Riordan, of Washington, D.C., for appellee.

Judges

Charles Henry Robb

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Smart Summary

Duro Pump Mfg. Co. v. California Cedar Products Co., No. 1764 (D.C. Ct. App. Feb. 1, 1926)

Factual and Procedural Background

This appeal arises from a proceeding before the Commissioner of Patents concerning the registration by the California Cedar Products Company of the word "Duro" as a trade-mark. The Duro Pump Manufacturing Company (the Duro Company) opposed registration. The Patent Office tribunals had granted registration, finding that the parties' goods possessed different descriptive properties and that the applicant had stylized the word "Duro" in such a way that it did not constitute merely the distinguishing word in the opposer's corporate name. The opposer appealed from the decision granting registration.

On the facts presented to the court: the predecessor of the Duro Company (Burnett-Larsh Manufacturing Company) adopted "Duro" as a trade-mark in early January 1916 and extensively advertised it in connection with its business of manufacturing and selling pneumatic pressure systems for pumping, storing, and supplying water to residences (including pumps, fluid pressure motors, explosive engines, and electrical apparatus). That mark had come to represent and identify the product and company. The Duro Company was incorporated in 1921 and assumed the business, goodwill, and trade-mark; at incorporation the business volume was about $2,000,000 per year. The California Cedar Products Company adopted the mark in 1922 for "wall board in class 12, construction materials," manufactured and sold in the same territory; the president of that company testified that he had "coined" the word "Duro."

Legal Issues Presented

Whether the applicant (California Cedar Products Company) may register the word "Duro" as a trade-mark despite prior adoption and use of the mark "Duro" by the opposer (Duro Company) and the word's identification with the opposer's corporate identity.
Whether differences in the descriptive properties of the parties' goods (pumping equipment vs. wall board/construction materials) control the question of registrability where the proposed mark is identical to or comprises the distinguishing word of a corporate name previously appropriated by another.

Arguments of the Parties

Appellant (Duro Pump Manufacturing Company) — Position and Evidence

The mark "Duro" was originally adopted by the predecessor company in early January 1916, was extensively advertised, and came to represent and identify the product and the corporation.
When the Duro Company incorporated in 1921 it acquired the business, goodwill, and the trade-mark "Duro," and therefore was the originator and proprietor of the mark.
Because the word "Duro" had become identified with that corporation, permitting the applicant to register and use the mark would cause confusion and injure the identity and business of the Duro Company.

Appellee (California Cedar Products Company) — Position and Evidence

The company adopted "Duro" in 1922 for wall board and related construction materials and asserted independent creation (the president testified he "coined" the word).
The Patent Office tribunals found that the goods of the parties had different descriptive properties and that the applicant had written "Duro" in a peculiar stylization such that it was not merely the distinguishing word in the opposer's corporate name, supporting registrability.
In briefing before this court, appellee's counsel referred to certain alleged registrations in the Patent Office not contained in the record below (an attempt to supplement the record), though those alleged registrations were not in evidence before the tribunal whose decision is on appeal.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
American Steel Foundries v. Robertson, Commissioner of Patents, and Simplex Electric Heating Co., 46 S. Ct. 160, 70 L. Ed. ___ (U.S. Supreme Court, Jan. 4, 1926)	Explains that assuming a corporate name appropriates that name to the corporation; where a proposed mark equals the corporate name the rule of the statute is absolute and registration must be denied. Where only part of a corporate name is appropriated, registrability turns on whether the partial appropriation is such as to be calculated to deceive or confuse the public to the injury of the corporation. The identity of descriptive properties of the goods is a relevant, but not necessarily controlling, factor.	The court relied on this decision to conclude that identity of descriptive properties of the goods does not automatically control when the proposed mark is the distinguishing word of a corporate name. Applying the rule, the court found that "Duro" had become so identified with the Duro Company that its use by the applicant would likely cause confusion and injure the opposer, supporting reversal of the Patent Office's decision to register.

Court's Reasoning and Analysis

The court began by noting the Patent Office tribunals' reasoning: that the goods of the parties had different descriptive properties and that the applicant's stylization of "Duro" meant it was not merely the distinguishing word of the opposer's corporate name, leading to registrability. The court then examined and relied upon the Supreme Court's decision in the Simplex case (American Steel Foundries v. Robertson), which addressed when a corporate name or a portion of it bars registration of an identical or similar mark by another entity.

The court stressed key points from the Simplex decision: (1) a corporation's name, once assumed, is exclusively appropriated by that corporation and wrongful appropriation may injure the corporation's identity; (2) if appropriation of the corporate name is complete, the statute demands denial of registration; and (3) where only part of the corporate name is appropriated, the inquiry turns on whether that partial appropriation is sufficiently likely to deceive or confuse the public to the corporation's injury. The Simplex opinion also emphasized that the fact that the goods are of different descriptions is relevant and entitled to weight, because the probability of confusion is generally less where the goods differ.

The court explained that the Supreme Court in Simplex did not hold that identity of goods was determinative when the proposed mark is the distinctive part of a corporate name. The court further quoted Simplex discussing words that have become so identified with a particular corporation that they denote that corporation when used alone.

Applying these principles to the record before it, the court concluded that, at the time California Cedar adopted "Duro," the word had already "become so identified with the particular corporation" (the Duro Company) that it designated that corporation to the public. Although the parties' products are technically different, both are used in residences and the court found that concurrent use of the mark by the applicant would tend to cause confusion concerning the identity of the Duro Company and would risk loss of the company's identity if other companies also adopted the mark.

The court rejected the appellee's attempt, referenced in briefing, to introduce alleged Patent Office registrations not contained in the record; it emphasized that the case must be decided on the record made before the tribunal whose decision was appealed.

Holding and Implications

REVERSED.

Holding (direct effect): The Court of Appeals reversed the Patent Office's decision granting registration of the word "Duro" to the California Cedar Products Company. The court concluded that "Duro" had become identified with the Duro Company and that permitting the applicant to register and use the mark would be likely to cause confusion and injure the Duro Company's identity.

Implications: The decision denies the applicant's registration in this case and protects the opposer's existing identification with the word "Duro." The opinion applies the Supreme Court's test from the Simplex decision—that appropriations of corporate names or their distinctive parts may bar registration even where the goods are not identical—and emphasizes that differences in descriptive properties of goods are a relevant factor but not necessarily controlling. The court did not make any ruling based on alleged registrations not in the record and did not purport to establish any novel precedent beyond the application of the cited Supreme Court authority to the facts before it.

This summary is prepared exclusively from the text of the provided opinion and contains no information beyond that opinion.

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DURO PUMP MFG. CO. v. CALIFORNIA CEDAR PRODUCTS CO.

ROBB, Associate Justice.

Appeal from a decision of the Patent Office in a trade-mark proceeding brought by the Duro Pump Manufacturing Company, hereinafter called the Duro Company, and opposing the registration by the California Cedar Products Company of the word "Duro" as a trade-mark.

The Patent Office tribunals ruled that the goods of the respective parties possessed different descriptive properties, and that the word "Duro," having been written by applicant in such a peculiar way as not to constitute "merely" the distinguishing word in the corporate name of the opposer, was registerable.

The predecessor of the Duro Company, or the Burnett-Larsh Manufacturing Company, early in January of 1916 adopted "Duro" as its trade-mark and extensively advertised the same. Its business was the manufacture and sale of pneumatic pressure systems for pumping, storing, and supplying water to residences, and included pumps, fluid pressure motors, explosive engines, and necessary electrical apparatus. This business soon attained large proportions, and the evidence showed that the mark came to represent and identify the product and the company. For this reason the Duro Company was incorporated in 1921 and took over the business, good will, and trade-mark of the old company. At that time the volume of business amounted to about $2,000,000 per year. Under the facts before us, the Duro Company was the originator of the mark "Duro."

The California Cedar Products Company alleges in its applications for registration that it adopted its mark in 1922, "for wall board in class 12, construction materials," which the company manufactures and sells in the same territory covered by the opposer. The president of the company testified that he "coined" the word "Duro" himself.

American Steel Foundries v. Robertson, Commissioner of Patents, and Simplex Electric Heating Co., 46 S. Ct. 160, 70 L. Ed. ___, decided January 4, 1926, in the Supreme Court of the United States, involved the right of the first-named company to register the mark "simplex"; the goods of the two parties being of different descriptive properties. "The effect of assuming a corporate name," says the court, "by a corporation under the law of its creation is to exclusively appropriate that name. It is an element of the corporation's existence," and in some degree at least the natural and necessary consequence of a wrongful appropriation of that name is to injure the business and rights of the corporation by destroying or confusing its identity. The court further said: "Where the appropriation of the corporate name is complete, the rule of the statute, by its own terms, is absolute, and the proposed mark must be denied registration, without more; but, where less than the whole name has been appropriated, the right of registration will turn upon whether it appears that such partial appropriation is of such character and extent that, under the facts of the particular case, it is calculated to deceive or confuse the public to the injury of the corporation to which the name belongs. The fact, for example, that the articles upon which the mark is used are not of the same description as those put out by the corporation, is entitled to weight, since the probability of such confusion and injury in that situation obviously is more remote than where the articles are of like kind. The cases, naturally, present varying degrees of difficulty for the application of the rule."

It is apparent, from the language already quoted, that the Supreme Court did not intend to rule that identity of the descriptive properties of the goods of two parties was controlling, where one had taken for its mark the distinguishing part of the corporate name of the other. This is made even plainer in subsequent language of the court, as follows: "There may be, of course, instances where a single word in the corporate name has become so identified with the particular corporation that, whenever used, it designates to the mind of the public that particular corporation. But here it is not shown that, standing alone, the word `Simplex' has that effect; that it is any more calculated to denote to the public the defendant corporation than any of the other corporations in the names of which it is likewise embodied; or, indeed, that it signifies the appropriation of some corporate name, though incapable of exact identification."

In the Simplex Case, the court observed that the word "Simplex" comprises the whole or a part of about 60 registrations, by nearly as many parties, upon many kinds of merchandise, that it formed part of the names of other corporations in the country, and hence did not identify any corporation in particular; that it merely was one of a large class of words which had been used for a great many years, because of their suggestive meaning, including such words as "Acme," "Anchor," "Champion," "Eureka," "Excelsior," "Ideal," "Jewel," "Liberty," etc. In the present case, when the California Cedar Products Company adopted the word "Duro" as its trade-mark, that word had "become so identified with the particular corporation" (the Duro Company) that, whenever used, it designated to the mind "that particular corporation." While the descriptive properties of the products of the two companies are technically different, both are used in residences, and under the evidence, we are constrained to the view that their concurrent use would tend to confusion of the identity of the Duro Company. If the California Cedar Products Company were permitted to use this mark, which has come to represent the Duro Company and its product to the public, other companies likewise might use it, with resultant loss of identity of the Duro Company.

Appellee's counsel refers in his brief to certain alleged registrations in the Patent Office not mentioned in the record. Obviously, this attempt to supplement the record cannot avail here, where the case must be decided upon the record made below. What effect, if any, these alleged registrations would have had upon our decision, had they been of record, we need not and do not determine.

It results that the decision is reversed.

Reversed.

DURO PUMP MFG. CO. v. CALIF. CEDAR PRODUCTS