Simplex Electric Heating Co. v. Ramey Co.

U.S. Court of Appeals for the D.C. Circuit
Simplex Electric Heating Co. v. Ramey Co., 46 App. D.C. 400 (D.C. Cir. 1917)
1917 U.S. App. LEXIS 2561

Simplex Electric Heating Co. v. Ramey Co.

Opinion of the Court

Mr. Chief Justice Shepard

delivered the opinion of the Court:

The Examiner of Interferences sustained the opposition on two grounds; namely, that “Simplex” was the name of the op-poser corporation, and also because the goods are of the same general descriptive properties. This decision was reversed by the Assistant Commissioner; and appeal has been taken to this court.

Both grounds of the decision have been decided by this court several times.

It is not permissible to register as a trademark the name of any person or corporation. This is expressly prohibited by the language of the act. Asbestone Co. v. Philip Cary Mfg. Co. 41 App. D. C. 501; Re United Drug Co. 44 App. D. C. 209; D. H. Burrell & Co. v. Simplex Electric Heating Co. 44 App. *406D. C. 452; Mansfield Tire & Rubber Co. v. Ford Motor Co. 44 App. D. C. 205.

“Simplex” is the distinctive part of the name of this corporation, which has been in existence for years prior to the manufacture by the Ramey Company. It was recognized by the Simplex Electrical Company and succeeded to the particular class of electric devices which it advertised, and had registered the word “Simplex” as its own. The question is fully discussed in the foregoing cases and further discussion is unnecessary.

Second. The goods are of the same general descriptive properties. Simplex Electric Heating Co. v. Gold Car Heating & Lighting Co. 43 App. D. C. 28; Fishbeck Soap Co. v. Kleeno Mfg. Co. 44 App. D. C. 6; N. Wolf & Sons v. Lord, 41 App. D. C. 514; Anglo-American Incandescent Light Co. v. General Electric Co. 43 App. D. C. 385. This last' case involved the trademark “Mazda” for incandescent gas mantles. The General Electric Company registered, advertised, and used this work as a trademark for incandescent lamps prior to its adoption and use by the appellant. The appellant knew of the use of “Mazda” upon electric lamps by the General Electric Company and adopted the same for gas mantles. The decision of the Patent Office Commissioner, denying the registration, was affirmed by this court. In the opinion it was said by Mr. Justice Robb; “We think Congress, in using the words ‘descriptive properties,’ intended that they should be given their popular signification. Giving them that signification, no trademark may be registered when it is appropriated to goods of the same general qualities or characteristics as those of the goods to which another trademark already has been appropriated.”

There is some difficulty attending these questions of classification. A thing may not be the same, and yet of the same general description, and used for similar purposes. In this case the corporate name, which is widely advertised for electrical goods, caused persons to suppose that these cleaners were the product of the Simplex Company. With the enormous range afforded-for.the selection of trademark names, it is not unrea*407sonable to suspect that tbis trademark was adopted for the purpose of obtaining the benefit of the wide advertising that had been done by the Simplex Company. In such a case the benefit of any doubt in regard to the classification should be given to the one who has used, developed, and advertised the mark and given it trade value.

The decision is reversed, and the clerk will certify this decision to the Commissioner of Patents, as required by law.

Reversed.

Reference

Full Case Name
SIMPLEX ELECTRIC HEATING COMPANY v. RAMEY COMPANY
Status
Published
Syllabus
Trademarks; Corporate Names; Similarity; Evidence. 1. It is not permissible to register as a trademark the distinctive part of the name of a corporation which had been in existence for many years prior to the application for registration. (Citing Asbestone Co. v. Philip Cary Mfg. Co. 41 App. D. C. 507; Mansfield Tire & Rubber Co. v. Ford Motor Co. 44 App. D. C. 205; Re United Drug Co. 44 App. D. C. 209; and D. H. Burrell & Co. v. Simplex Electric Heating Co. 44 App. D. C. 452.) 2. The word “Simplex” is not registerable as a trademark for vacuum cleaners over the opposition of a company the distinctive part of the corporate title of which is “Simplex,” and which for many years prior to the adoption of the word by the applicant had made use of the word as a trademark on goods manufactured by it, consisting of articles used in housekeeping, including electrically operated portable devices, and lamp sockets similar to those used in connection with the applicant’s cleaner, especially where the evidence shows that confusion in trade has already been caused by the use of-the word by the applicant. (Following N. Wolf & Sons v. Lord, 41 App. D. C. 514; Simplex Electric Heating Co. v. Gold Car Heating & Lighting Co. 43 App. D. C. 28; Anglo-American Incandescent Light Co. v. General Electric Co. 43 App. D. C. 385; Fishbeck Soap Co. v. Kleeno Mfg. Co. 44 App. D. C. 6. ) 3. In su trademark interference involving the question whether the goods of the applicant to which the mark is applied are of the same descriptive character as those of the opposer any doubt will be resolved in favor of the opposer, where it is not unreasonable to suspect that the applicant adopted the mark for the purpose of obtaining the benefit of wide advertising done by the opposer.