Opinion
A. Arnold Brand, of Chicago, Ill., Edwin R. Hutchinson, of Washington, D.C., and J. Bernhard Thiess and Ames, Theiss, Olson & Mecklenburger, all of Chicago, Ill., for plaintiff.
R. F. Whitehead, of Washington, D.C., for Commissioner of Patents. Plaintiff, W. A. Sheaffer Pen Company, is a corporation organized and existing and having its office and principal place of business in the city of Fort Madison, Iowa, and brings this suit under the provisions of Section 4915, R.S. (U.S.C., Title 35, Sec. 63, 35 U.S.C.A. § 63), and asks that it be adjudged that it is entitled, according to law, to have the trade-mark shown in the application for registration filed by it on June 27, 1931, Serial No. 316, 385, duly registered in the Patent Office.
The said trade-mark is described in the application for registration as amended as follows:
The trade-mark consists of a symmetrical, some what triangularly shield-shaped design, platinum colored and conforming on two sides to the outline of the writing point end of the pen nib, as shown on the drawing.
The trade-mark is applied to the goods by coating or otherwise applying the mark to that portion of the pen nib as described.
The language used in defining applicant's (plaintiff's) trade-mark was proposed by the Examiner of Interferences of the U.S. Patent Office, was thereafter adopted by applicant, and now constitutes the description (so far as it is possible in words) of the here applied for mark.
The drawing of said application shows a pen nib and it is stated in said application, with reference to that nib, as follows: 'The drawing is lined for the purpose of shading to indicate that the body of the pen is dark in contrast to the light area at the nibs thereof.'
Ink from a fountain pen does not flow on the top surface of the fountain pen nib.
The plating of the top surface of a fountain pen nib does not aid in the flow of ink over the top surface of a fountain pen nib.
Applicant's (plaintiff's) here applied for trade-mark, when affixed to the top surface of a nib for a fountain pen, is functionless and does not serve a useful purpose in a fountain pen.
The placing of the shield-shaped design shown in applicant's (plaintiff's) trade-mark application on, or the removal thereof from, the top surface of a fountain pen nib does not increase or decrease the utility of said fountain pen nib.
Ink flows on the top surface of a dip, or ordinary, pen nib.
Plating on the top surface of a dip, or ordinary, pen nib aids in the flow of ink on that surface.
Corrosion on the top surface of a dip pen nib is not advantageous.
BAILEY, Associate Justice.
I agree with the Commissioner of Patents in his conclusion that while the ink from a fountain pen does not flow on the top surface of the nib, the ink on the top surface of the ordinary nib does flow on the top surface, and the plating of that surface does aid in the flow of the ink. I may add that I do not agree with the plaintiff's contention that corrosion of the nib is advantageous.
This being so, I do not think that a trade-mark should be registered that is based merely on the plating in a particular color of a particular portion of the nib, where the plating with the particular material serves a useful purpose in itself. The trade-mark sought by the plaintiff is not limited to use on nibs for fountain pens.
The applied for trade-mark on the top surface of a fountain pen nib indicates to the pen purchasing public that such fountain pen was manufactured and sold by the W. A. Sheaffer Pen Company of Fort Madison, Iowa.
While the placing of applicant's (plaintiff's) trade-mark on the top surface of a fountain pen nib does not aid the flow of ink or promote the utility thereof and the removal of said trade-mark from a fountain pen nib does not result in a decrease in the utility of the fountain pen nib, this does not establish the registrability of the here applied for mark as shown and described in plaintiff's application, since the statement in said application as to the goods upon which said mark is used is not limited to fountain pens.
Since the here applied for mark includes the application thereof by plating of a particular color on a particular portion of a dip, or ordinary pen nib, whereon such plating is held to serve a usual or useful purpose in itself and is not limited to use on nibs of fountain pens whereon the plating of the mark is of no utility, the trade-mark as now applied for by the plaintiff is not registrable. Plaintiff is not entitled to the registration sought in its said application Serial No. 316,385 for the articles as now defined in that application.
The bill of complaint should be dismissed.