rejecting challenge to standing even though petitioner "was not using the term as a trademark nor did it co[n]template doing so," and concluding that "[a]ppellee as a competitor of appellant clearly has reason to believe it will be damaged to the extent required by statute"
How later courts described this case
- rejecting challenge to standing even though petitioner "was not using the term as a trademark nor did it co[n]template doing so," and concluding that "[a]ppellee as a competitor of appellant clearly has reason to believe it will be damaged to the extent required by statute"
- “turbodiesel” generic; “it is not required that the name precisely describe and define the goods in order to be incapable of registration”
- “Turbodiesel” a generic name for diesel engines having exhaust-driven superchargers
Written by the judges who cited it.
The opinion
SMITH, Judge
(dissenting).
The issue here litigated is whether on the present record the mark “turbodiesel” was incapable of distinguishing appel *896 lant’s goods. Trade-Mark Act of 1946, sections 23, 24 ( 15 U.S.C. §§ 1091 , 1092).
The composite mark “turbodiesel” is derived from the terms “turbine,” its combining form “turbo,” and of “diesel” and was registered on the supplemental register for “internal combustion engines and parts thereof.” The mark has been applied to diesel engines having exhaust gas driven turbine type superchargers as an accessory supercharger to increase the effectiveness of the basic diesel engine.
Considering the dictionary definitions of “turbine,” “turbo,” and “diesel,” alone, appellee clearly must fail in its burden of proof that the registered composite term is incapable of distinguishing appellant’s goods. The composite mark, coined as it is from the above terms, is not the common name for either the goods for which it is registered or the goods upon which the mark is used. “Turbodiesel,” considering the definitions relied on by the majority, conveys the meaning of a turbine combined with a diesel. There is not even a hint in this combined term that a supercharger element is involved.
As I view the matter, and the majority agrees, appellee’s case stands or falls on the evidence bearing upon the meaning of the mark. In my opinion, contrary to the majority’s conclusion, it falls short of establishing that the mark “turbodiesel” was the common name for diesel engines having exhaust gas driven turbine type superchargers. The evidence produced by appellee falls far short of discharging what seems to me to be appellee’s burden of proof in this proceeding. The evidence relied on by the appellee establishes that the term was used as a trademark and in a trademark sense in nearly all instances. The majority opinion I believe errs in treating the use of the term in this manner as the common name of the product. Manifestly, when the mark is capitalized and identifies appellant’s goods, an accurate technical description of the goods need not be coupled with each use of the mark.
I am unable to see how the majority is supported in its result by the authorities cited. The Bailey Meter cases, supra, decided that “Boiler Meter” for boiler meters was the name of the device and therefore not registrable. In Scholler Bros., supra, it was held that “Nylonized” for the treatment of fabrics with an emulsion of nylon lacked trademark significance. These cases do not seem to be germane on the issue here.
I therefore dissent from the majority decision.