discussing registrations for the word "Nylonized” as a trademark for women’s nylon hosiery and as a service mark for the application of a nylon coat
How later courts described this case
- discussing registrations for the word "Nylonized” as a trademark for women’s nylon hosiery and as a service mark for the application of a nylon coat
Written by the judges who cited it.
The opinion
FAHY, Circuit Judge
(dissenting).
The proceedings in the Patent Office were initiated by petitions of private parties for cancellation of the registrations of the trade-mark held by appellant. The proceedings accordingly were inter partes. In my view neither the fact that the ground urged for cancellation was the original nonregistrability of the mark, nor the fact that the decision of the Commissioner granting the petitions rested also on a ground not asserted in the petitions, gave the Patent Office proceedings an ex parte character. If this be so, then the proceedings in the District Court should retain the same inter partes character they had in the Patent Office. While the problem is susceptible of a different solution under the complexities of the existing statutes, the more easily followed rule would be to permit proceedings in court to retain the character they had in the Patent Office; and this appears more likely to have been the Congressional intent. Sections 145 and 146 of 35 U.S.C., originally enacted for patent cases, and section 21 of the Lanham Act, 1 which makes those sections applicable to trade-mark cases under the same conditions, rules, and procedures as in patent cases “so far as they are applicable,” should be construed together to mean that the Commissioner shall not be a necessary party in the District Court action contesting the outcome of inter partes cancellation proceedings in the Patent Office. The Commissioner would be notified and have the right to intervene and protect the public interest if so advised. But, except for this, the parties should be left to contest between themselves in court as they did in the Patent Office. The selection of parties in the District Court would not depend upon the ground of the Commissioner’s decision, which might be plural or uncertain and furnish an indefinite guide. The question of necessary parties would depend rather upon the inter partes nature of the proceedings in the Patent Office. This view is also consistent with our decision in Chris Laganas Shoe Co. v. Watson, 95 U.S.App.D.C. 324 , 221 F.2d 881 .
I would affirm.
. 60 Stat. 435 , as amended, 15 U.S.C. § 1071 (1952), 15 U.S.C.A. § 1071 .