determining that when used for banking services, the marks AMERICAN SECURITY and AMERICAN SECURITY BANK are legal equivalents because "customers using the services would know they were dealing with a bank."
How later courts described this case
- determining that when used for banking services, the marks AMERICAN SECURITY and AMERICAN SECURITY BANK are legal equivalents because "customers using the services would know they were dealing with a bank."
- holding that "AMERICAN SECURITY" could be tacked on to "AMERICAN SECURITY BANK"
- holding “American Security” legally equivalent to “American Security Bank”
- “Whatever appellant’s right to use its name may be — and that is not a question which is before us — appellee’s right is, in our judgment, superior to any right of appellant on the only issue we have to consider, namely, appellee’s right to register.”
Written by the judges who cited it.
The opinion
FORD, Judge, *
dissenting.
The statement in the majority opinion construing the requirements of § 1 of the Lanham Act, 15 U.S.C. § 1051 , as merely requiring “the statement of beliefs about exclusive rights, not their actual possession” *569 appears to be at variance with this court’s past interpretations of the requirements of § 1. As stated by Judge Rich for the court in In re Deister Concentrator Co., 1 289 F.2d 496, 501 , 48 CCPA 952, 962, 129 USPQ 314 , 320 (1961), “Under section 1, only ‘The owner of a trademark’ can apply for registration.” Ownership of a mark was explained as implying “the right to exclude others.” The court further reasoned that “[i]f the law will not protect one’s claim of right to exclude others from using an alleged trademark, then he does not own a ‘trademark’.” 289 F.2d at 501 n. 5, 48 CCPA at 963 n. 6, 129 USPQ at 320 n. 5. This requirement of ownership, bearing on the right to register a mark, was further explained by the court:
In contemplating the registration of a mark on the Principal Register we must bear in mind the significance of such registration. Under section 7(b) of the Lanham Act (15 U.S.C. 1057(b)) it constitutes “prima facie evidence of the validity of the registration, registrant’s ownership of the mark, and of registrant’s exclusive right 2 to use the mark in commerce in connection with the goods or services specified in the certificate” (our emphasis). This means . . . that we cannot sanction registration on the Principal Register of anything unless the applicant for registration would have the right under the general law to prevent others from using or copying it.
Id. 289 F.2d at 501 , 48 CCPA at 962, 129 USPQ at 319-20. On a rather meager record appellant has shown that it has established rights to use the mark AMERICAN SECURITY BANK for banking services in at least the State of Hawaii. I am inclined to agree with the statement of Judge Miller in his dissenting opinion in Hollowform, Inc. v. Delma AEH, 515 F.2d 1174, 1178 , 185 USPQ 790, 793 (Cust. & Pat.App.1975) wherein it is stated:
If an opposer shows facts which refute an applicant’s claim that applicant is the owner of a trademark and that no one else has the right to use the mark in commerce, the Commissioner has clear authority to deny the application for an unrestricted registration. ... As this court has pointed out, “the Act does intend . . . that registration and use be coincident so far as possible.” In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 1364 , 177 USPQ 563, 659 (Cust. & Pat.App.1973).
Neither can I join the concurring opinion of my colleague, Judge Baldwin. Appellant is not relying solely on § 2(d) of the Act as a basis for its opposition. It has argued that appellee does not have an exclusive right to use the mark in commerce (i. e., is not the “owner” of the trademark.)
Furthermore, the board, in basing its decision to dismiss on its conclusion that “op-poser cannot ... be damaged by the granting of such registration,” committed error. As stated by this court in DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 661 , 48 CCPA 909, 917, 129 USPQ 275 , 279-80 (1961) (opinion by Rich, J.):
When the statute, section 13 [15 USC 1063], says that a person who “believes he would be damaged by the registration of a mark” may oppose registration, we take it to mean that if we find clear possibility of damage to established rights of an opposer which are entitled to legal protection, then we shall sustain the opposition. .
DeWalt does not have the right to exclude Magna from the use of the words “power shop.” To put it in possession of prima facie proof of a right it does not have, which it might at any time decide to assert against Magna, *570 would, in our opinion, be damaging to Magna .
It appears appellee does not have the right to exclude appellant from the use of the mark AMERICAN SECURITY BANK in at least Hawaii. See 15 U.S.C. § 1115 (b)(5). Thus, appellant has shown facts which refute appellee’s claim that it is the “owner” of a trademark and has an exclusive right to its use in commerce throughout the United States; appellant clearly would be “damaged” by the grant of an unrestricted registration to appellee.
In view of the foregoing I would reverse the decision of the board.
The Honorable Morgan Ford of the United States Customs Court sitting by designation pursuant to 28 U.S.C. § 293 (d).
. Admittedly the facts in that case were different. However, the court’s statements regarding ownership of a trademark are equally applicable in this case.
. “Exclusive right” means the right to exclude others from using the mark throughout the United States. Giant Food Inc. v. Malone & Hyde, Inc., 522 F.2d 1386, 1400 , 187 USPQ 374, 385 (Cust. & Pat.App.1975) (Rich, J., dissenting).