Minnesota Mining & Manufacturing Co. v. Johnson

Rich, Judge.

This appeal1 is from the decision of the Trademark Trial and Appeal Board, abstracted at 160 USPQ 827 (1968), sustaining appel-lee’s opposition to appellant’s application, serial No. 258,646, filed November 15, 1966, to register SKINVISIBLE on the Principal Register as a trademark for adhesive tape for medical and surgical uses, alleging first use on November 2,1966.

The opposition is based on the contention that appellant’s mark is “merely descriptive” when so used, within the meaning of § 2(e) (1) of the Trademark Act (15 USC 1052 (e) (1)).

*972 Despite tRe broader description of appellant’s goods contained in its application, the parties’ briefs and arguments have been directed solely to the application of the mark on transparent adhesive tape for medical and surgical use — to such adhesive tape through which the skin is visible. We shall assume, therefore, that the question before us is whether the mark SKINVISIBLE is “merely descriptive” when applied to adhesive tape through which the skin is visible. The board thought that it is, stating (in its original opinion as modified on reconsideration) , that

Although a coined term, “SKINVISIBLE” possesses an obvious merely descriptive connotation as applied to medical and surgical tapes through which the skin of the user is visible, and that this is so, is evidenced by a statement in applicant’s brief that “* * * the immediate impression evoked by the mark ‘SKINVISIBLE’ is to stimulate an association with seeing the skin, rather than not seeing the tape”.

Notwithstanding the foregoing, it is applicant’s contention that it is nonetheless entitled to registration because no one other than applicant has used “SKIN-VISIBLE” in connection with the sale of translucent medical and surgical tapes. This factor, however, does not diminish the merely descriptive significance of the term nor can it alone confer thereon the status of a trademark.

Opinion

Appellee is not bere to protect its exclusive right to a trademark in the development of which it has invested its time and money. Rather, it is here to try to prevent the encroachment of a claim of ownership on a right which it contends that it has, in common with all members of the public, to the free use of the language. This right, as far as it is concerned, is simply the right to be free from claims of exclusive right by others and from the possibility of harassment based on such claims should it decide to use some part of the language which is our common heritage.

SKINVISIBLE, the trademark in question, is clearly not a part of that common heritage, as such. As the board said, it is a coined term. When one considers the registrability of such marks, which are not themselves part of the existing language but which differ to a greater or lesser degree from words or phrases which are, it should be remembered that such matters as palming off, dilution of trademark rights, getting a free ride on another’s goodwill, and the like are not involved. Because these considerations are involved where the issue is likelihood of confusion caused by conflicting trademark usage, there are real and logical reasons for protecting the private property in a trademark with a wider moat or a higher fence than is required tó be built around publicly owned descriptive words or phrases. The statute, itself so indi *973 cates: § 2 (d) forbids registration of a mark which so resembles a mark or trade name (that is, words or phrases not in the public domain) previously used by another as to be likely, when applied to applicant’s goods, “to cause confusion or mistake or to deceive purchasers,” whereas in § 2(e) the proscription is again registering a “merely descriptive” mark without any such qualification as the above-quoted clause in § 2(d).

Of course, the mark SKINVISIBLE is, as appellee’s witnesses indicated, highly suggestive. It undoubtedly suggests that the skin is visible through or in spite of the goods to which the term is applied. It also suggests the quality of invisibility in the applied tape. However, as Judge Bland of this court wrote many years ago in one of the “Chicken of the Sea” cases, Van Camp Sea Food Co. v. Alexander B. Stewart Organization, 18 CCPA 1415, 1420, 50 F.2d 976, 979, 9 USPQ 541, 544 (1931), often the best trademarks are highly suggestive, and it is well settled that a valid trademark may be highly suggestive. Cf. In re The Realistic Co., 58 CCPA 1204, 440 F.2d 1393, 169 USPQ 610 (1971) (the mark CURV’ held not to be “so descriptive of * * * [permanent wave curling solutions] as to preclude registration”). As one of appellee’s witnesses was pushed into conceding, it is not a “dictionary word,” nor is it, as far as we can tell from this record or our own experience, a word which had any existence in the vernacular before appellant coined it. Nor has.opposer shown that it has become a part of the language. It is a short, snappy way of suggesting advantageous characteristics of the goods. Appellee’s employees in charge of marketing its competing transparent tape admitted that they have been able to describe that product and advertise it without the use of the term coined by their competitor. In our judgement, they are going to have to continue doing so, because the mark is not “merely descriptive.” Registration by appellant is not going to deprive appellee of any right to use the language in the normal way. Therefore the registration cannot damage it.

The two dissenting opinions and one concurring opinion herein call for the observation that the rationale on which the writer decided this case was first propounded and somewhat more fully developed in his concurring opinion in Armour and Co. v. Organon Inc., 44 CCPA 1010, 245 F.2d 495, 114 USPQ 334 (1957).

The present opinion nowhere states that a coined word cannot be descriptive. It is descriptive if it happens to be the new name of a new product. Names are necessarily coined in the beginning. But this is not a name, it is an adjective term which is suggestive without being merely descriptive. Judge Almond’s opinion, fails to explain *974 •why we are setting a dangerous or misleading precedent or what there is about it that is either dangerous or misleading.

The writer of course agrees with Judge Baldwin’s opinion insofar as it finds SKINVISIBLE is not merely descriptive. The rest of the opinion is not understood. There is no attempt here to “relate” decisions under section 2(e) (1) to decisions under section 2(d). Indeed, the burden of the writer’s argument here and in Armour is that such decisions must be made on different processes of reasoning, because the problems are not related at all. It is not seen where a “majority” of tins court has rejected the idea nor that it has been laid to rest, here or elsewhere. Professor Derenberg warmly espoused it in his “Tenth Year of Lanham Act Administration,” pp. 20-21, Patent, Trademark and Copyñght Weekly Reports, Vol. 114, No. 7, Aug. 12, 1957, Part II.2 If Judge Lane is counted as a member of that majority it is done only on the basis that he found it “unnecessary to expound on” any distinction between section 2(e) (1) and section 2(d) issues. He did not say there are no distinctions, nor, having the Derenberg views called to his attention, did he disagree with them. All he did, as his opinion- is understood, was to agree with the board that SKIN-VISIBLE is “merely descriptive” because that is the way he feels about it. He appears to feel that since the public is free “to describe a transparent bandage as rendering the skin visible” or “to describe the result as visible skin” it is, ipso facto, free to do so by applying the uncommon — i.e., previously Unheard of — term SKINVISIBLE. Yet he inconsistently concludes, in addition, that it could become a registrable trademark if § 2(f) proofs rvere submitted. If the public really is free to use SKINVISIBLE, that could not happen.

The decision of the Trademark Trial and Appeal Board is reversed.

WoRLET, C. J., concurs in the results only.

The Petition of Appeal states that the preliminaries for this appeal were taken “pursuant to Title 35, United States Code, Sections 142 and 143,” which pertain to appeals in patent rather than trademark cases. However, we have construed the appeal as if filed pursuant to 15 USC 1071(a), the provision governing appeals to this court in trademark cases.

Derenberg concluded :

It is believed that this opinion may go a long way toward clarifying the fine legal distinctions which must be made between cases based on an opposer’s alleged exclusive right in a trademark as compared with those alleging damage based on similarity of an applicant’s mark to a generic term. [Emphasis ours.]