Petition — Golomb v. Wadsworth

- Qapreme Court, U. &

FILED

MAY 17 1979

IN THE

Supreme Court of tie Unicel sane oe

October Term, 1978

a

SOLOMON W. GOLOMB,

Petitioner,

vs.

WILLIAM KENT WADSWORTH,

Respondent.

PETITION FOR WRIT OF CERTIORARI.

RoBERT D. HORNBAKER,

A Member of

FREILICH, HORNBAKER, WASSERMAN,

ROSEN & FERNANDEZ,

A Professional Corporation,

10960 Wilshire Boulevard, Suite 1434,

Los Angeles, Calif. 90024,

(213) 477-0578; 477-4039,

Attorneys for Petitioner.

Parker & Son, Inc., Law Printers, Los Angeles. Phone 724-6622

SUBJECT INDEX

I. Page

Reference to Reports of Opinions Delivered in the

EE led EIS AU ley Rane ONS are 1

Il.

Concise Statement of the Grounds on Which the

Jurisdiction of This Court Is Invoked .................. 1

Il.

Questions Presented for Review ....................----.----- 2

IV.

Constitutional Provisions, Statutes and Regulations

Whicn the Case Involves ..........:............:.............. 2

V.

a I, a asuninwmenieiiibe 3

VI.

BN orcas a onan vpsinanpsninen nnbiedimeteecin 8

VI.

Nee een A cseenacuaeucbnanii 10

Appendix A. Opinion, Dated March 21, 1978 ........

VATE TRS 3 CEE NSE: re App. p. 1

Appendix B. Opinion, Dated March 8, 1979 .......... 22

Appendix C. Order, Dated April 19, 1979 0.0.00... 28

ii. | iii,

TABLE OF AUTHORITIES CITED Textbooks Page

BNA’s Patent, Trademark & Copyright Journal, No.

Cases Page |

. 423, dated April 5, 1979, pp. A-6, A-7 ...............- 8

Consolidated Foods v. Ferro, 189 USPQ 582 (TT&

etre OR ee Sens ea ee 8 10 Intellectual Property Law Review (1978), pp.

| PO ERROR Sie Ree MEN Ce Meee Pentre Mitoy ean Ni 8

Greene v. McElroy, 360 U.S. 474 (1958) ......0...-.-- 9 |

; 1 McCarthy, Trademarks and Unfair Competition,

Old Monk Olive Oil Company v. Southwestern

Set: DOD Ge Te sicesicksvecknancienichiotennslanialjanes 7

Coca-Cola Bottling Co., 118 F.2d 1015, 49 ;

See Gee ee, AE eee AE 7. 8 Wright and Miller, Federal Practice and Proce-

Gente, Dats. RATT, Bi. TO faiiekcscsin enlccisresttntigenss 8

mane 8 Wright and Miller, Federal Practice and Proce-

Rules of Practice in Trademark Cases, Rule 112 dete, ee. SITE Ae oes oes 8

FPF I Ma RA) ckbecnstcecivictssindeedns ea ers ae

Rules of Practice in Trademark Cases, Rule 116

(37 CFR §2.116)

Rules of Practice in Trademark Cases, Rule 116(e)

eI Me BD oss whectanctndenicssacwsniasidicecdons 7

Rules of Practice in Trademark Cases, Rule 122(c)

Ce Me RCS Os Souhcascescetouesdilapdasalecbuicednons 6

Statutes

Trademark Act of 1946, Sec. 2(e) (15 USC $1052

NDR indi peenacciiictncestntnnoyenpieyascbonnsastitiascssiagmependine 4

Trademark Act of 1946, Sec. 14 (15 USC §1064)

US SITES ACRES A SRO AO ROR oR Re ee eee aeRO aa: ?

Trademark Act of 1946, Sec. 21(a) (15 USC

SS ERR Mire ae aac SCL ST nd gee Ritch bed 7c 4

United States Code, Title 28, Sec. 1256 ......... heats 2

IN THE

Supreme Court of the United States

October Term, 1978

Pi atest

SOLOMON W. GOLOMB,

Petitioner,

vs.

WILLIAM KENT WADSWORTH,

Respondent.

-

PETITION FOR WRIT OF CERTIORARI.

I. |

Reference to Reports of Opinions Delivered

in the Courts Below.

The Trademark Trial and Appeal Board, hereafter

called the Board, rendered an unreported opinion, dated

March 21, 1978, attached as Appendix A.

The Court of Customs and Patent Appeals, hereafter

called the CCPA, affirmed the Board, in an unreported

opinion, dated March 8, 1979, attached as Appendix B.

Il.

Concise Statement of the Grounds on Which the

Jurisdiction of This Court Is Invoked.

Dr. Golomb seeks a review of the judgment of the

CCPA, dated and entered on March 8, 1979.

‘ The CCPA denied Dr. Golomb’s petition for a rehear-

ing, in an Order, dated April 19, 1979, attached as

Appendix C.

le

This Court has jurisdiction to review the judgment,

by writ of certiorari, under Section 1256 of Title 28,

United States Code.

Il.

Questions Presented for Review.

1. Is a party required to appear pursuant to a

notice of taking his trial deposition, in a proceeding

before the Board, and is his refusal to appear pursuant

to a notice a denial of procedural due process under

the Fifth Amendment of the United States Constitution?

2. Does a cancellation petitioner have standing,

in a proceeding before the Board, if he fails to allege,

and prove, facts showing how he is, or will be, damaged

by the registration sought to be cancelled?

IV.

Constitutional Provisions, Statutes and Regulations

Which the Case Involves.

The Fifth Amendment states that:

“No person shall be .. . deprived of life,

liberty, or property, without due process of law;

”

.

Rule 116 of the Rules of Practice in Trademark

Cases, 37 CFR §2.116, provides that:

“(a) Except as otherwise provided and where-

ever applicable and appropriate, procedure and

practice in inter partes proceedings shall be gov-

erned by the Federal Rules of Civil Procedure.”

Section 14 of the Trademark Act of 1946, also

called the Lanham Act, 15 USC §1064, provides that:

“A verified petition to cancel a registration of

a mark, stating the grounds relied upon, may, upon

inal

payment of the prescribed fee, be filed by any

person who believes that he is or will be damaged

by the registration of a mark on the principal

register established by this Act, .. .”

Rule 112 of the Rules of Practice in Trademark

Cases, 37 CFR §2.112, states that:

“The petition to cancel, ..., must set forth a

short and plain statement showing how the peti-

tioner is or will be damaged by the registration,

”

V.

Statement of the Case.

Dr. Golomb filed an opposition, on July 25, 1975,

to Wadsworth’s application, filed November 16, 1974,

to register “Pentomino Challenge,” for “equipment in-

cluding a board having at least one playing area marked

with ninety (90) squares and at least one set of eighteen

(18) one-sided pentominoes for playing games and

solving puzzles,” with the word “Pentomino” disclaimed

apart from the mark as shown. Tr. 4-5, 47-51.*

Dr. Golomb’s opposition was based, in part, on his

registration No. 1,008,964, issued April 15, 1975, for

“Pentominoes,” for “equipment, consisting of the twelve

distinct five-celled square figures and a playing board,

for use in various combinational puzzles and in competi-

tive board games.” Tr. 47-50.

Wadsworth filed an Answer on or about October

20, 1975. Tr. 52-54.

Paragraph 10 of the Answer requested affirmative

relief by way of cancellation of Dr. Golomb’s registra-

tion. Tr. 53-54.

*Transcript of Record, pages 4-5, and 47-51.

ills

In that Paragraph, Wadsworth alleged only that “Pen-

tominoes” is descriptive, and that Section 2(e) of the

Trademark Act, 15 USC §1052(e), bars registration

of a mark which “when applied to the goods of ap-

plicant is merely descriptive . . . of them, .. .”

Wadsworth did not allege that he believed he was,

or would be, damaged by the registration, as required

by Section 14 of the Act, 15 USC §1064, nor did

he set forth a short and plain statement showing how

he was, or would be damaged, as required by Rule

112 of the Rules of Practice in Trademark Cases,

37 CFR §2.112.

Dr. Golomb filed a Reply to Request for Affirmative

Relief by Way of Cancellation, on October 30, 1975,

in which he denied each and every allegation in Para-

graph 10, and alleged it failed to state a claim upon

which relief could be granted. Tr. 55.

In the unreported opinion, dated March 21, 1978,

attached as Appendix A, the Board dismissed Dr. Gol-

omb’s opposition, and granted the petition to cancel.

Tr. 75-92.

Golomb filed a timely notice of appeal. Tr. 1-2.

In the unreported opinion, dated March 8, 1979,

attached as Appendix B, the CCPA affirmed the Board.

The CCPA had jurisdiction under Section 21(a)

of the Trademark Act of 1946, 15 USC §1071(a).

Wadsworth did not prove, or attempt to prove, any

use of “Pentomino Challenge,” at any time, and did

not otherwise prove, or attempt to prove, any facts

showing how he was, or would be, damaged by Dr.

Golomb’s registration.

saaiilbini

Which raises this question: What facts did the CCPA

rely upon to find Wadsworth had standing?

The record is bare, except for his application to

register “Pentomino Challenge,” filed November 16,

1974, almost a year before he filed his petition to

cancel, on October 20, 1975.

In Old Monk Olive Oil Company v. Southwestern

Coca-Cola Bottling Co., 118 F.2d 1015, 49 USPQ

192 (CCPA 1941), the CCPA itself said this was

not enough.

There, Old Monk filed, on June 10, 1938, a petition

to cancel Coca-Cola’s registration, issued April 22,

1924, for “Old Monk,” for soft drinks. Old Monk

had filed an application, on April 13, 1938, to register

the same mark, for juices, and alleged use prior to

Coca-Cola.

Like Wadsworth, however, Old Monk offered no

evidence.

So the CCPA dismissed its petition.

Said the Court, at pages 196-197:

“There is no evidence in the record showing

use by appellant [Old Monk] of its mark at

any time within five years immediately preceding

the filing of its petition, unless petitioner’s applica-

tion for registration of its mark, filed April 13,

1938, is prima facie evidence of use of the mark

by petitioner on or about that date, as contended

for by appellant.

* * *

“Appellant has cited no cases supporting its

contention, and we have found none. When the

use of its mark by appellant at the time of filing

nelle:

its petition was put in issue by appellee’s answer,

the burden was upon appellant to establish such

use by competent proof. To consider appellant’s

application for registration of April 13, 1938 as

supplying such proof would deprive appellee of any

opportunity to cross-examine appellant’s represent-

atives respecting the correctness of the recitals

in said application. In our opinion said application

stands in the same relation to this proceeding

as would an ex parte affidavit on behalf of appel-

lant, which obviously could not be properly con-

sidered over the objection of appellee.*” (Italics

added. )

Golomh, on the other hand, testified as follows:

“Q Have you been able to find a set of the

puzzle or game sold under the name Pentomino

Challenge?

“A No, I have never seen such a product.

Since I first became aware of Mr. Wadsworth’s

application I have made serious efforts specifically

to look for and to ask for such a game or puzzle

in game stores, novelty stores, department stores

and stationery stores. However, none of these

stores that I have visited anywhere in my extensive

travels have ever heard of such product. More-

over, I have never seen it advertised in either

general or trade publications or elsewhere. Also

my game agent, Dr. Atwater, who is an expert

in the field of games and puzzles and very knowl-

*Wadsworth did not offer his application in evidence, or

notice it under Rule 122(c) of the Rules of Practice in

Trademark Cases, 37 CFR §2.122(c). So Dr. Golomb had

no opportunity to object to it. Golomb’s briefs, however,

often objected to its consideration.

os. vu

edgeable about the marketplace has never seen

or heard of this product under the name Pento-

mino Challenge being offered for sale. The fact

is that I have never seen or heard anything to

indicate that Mr. Wadsworth has actually used

this mark.” Tr. 30-31.

Significantly, Wadsworth did not object to this testi--

mony, or move to strike it.

What’s more, Wadsworth refused to appear pursuant

to Golomb’s notice of taking his trial deposition, on

April 19, 1976, for examination on this issue.* Tr.

57-61, 70-74.

Instead, Wadsworth moved to vacate the notice, on

the frivolous ground that the discovery period had

closed on February 19, 1976. Tr. 58-59.

The Board granted Wadsworth’s motion, and denied

Golomb’s motion for a default judgment, but on the

ground, not urged by Wadsworth, that he had not

been served witu a subpoena. Tr. 70-74.

The Board also denied Golomb’s motion for an

extension of his testimony period, to serve Wadsworth

with a subpoena. Tr. 61, 70-74.

*Rule 116(e) of the Rules of Practice in Trademark Cases,

37 CFR §2.116(e), provides that the taking of trial depositions

corresponds to the trial in court proceedings. See also 1

McCarthy, Trademarks and Unfair Compecition, §$20.28 and

20.29.

— en

VI.

Argument.

The specialized CCPA failed to recognize one of

the most important issues in the case, an issue outside

the scope of its specialty: the denial of procedural

due process under the Fifth Amendment.*

Dr. Golomb noticed Wadsworth for a trial deposition,

on April 19, 1976. Tr. 57-61, 70-74.

Wadsworth refused to appear.

In granting Wadsworth’s motion to vacate, and deny-

ing Golomb’s motion for default judgment, and exten-

sion of time to serve a subpoena, the Board relied

on its own isolated decision, in Consolidated Foods

v. Ferro, 189 USPQ 582 (TT&AB 1976), published

after the date set for Wadsworth’s deposition, which

did not mention Rule 116 of the Rules of Practice

in Trademark Cases, 37 CFR §2.116, or the Federal

Rules of Civil Procedure referred to therein.

However, the Federal Rules of Civil Procedure make

it abundantly clear that a subpoena was not required.

For example, as stated in 8 Wright and Miller,

Federal Practice and Procedure, §2107, at page 390,

and §2112, at page 403:

“Rule 37(d) provides sanctions for the failure

of a party—or an officer, director, or managing

_ *This Court has recently reversed the CCPA in four cases

in its specialty. See 10 Jntellectual Property Law Review

(1978), at pages xci to xciii. Nevertheless, Senator Kennedy

introduced legislation to merge the CCPA and the Court of

Claims, to form the U.S. Court of Appeals for the Federal

Circuit, which would have exclusive jurisdiction over all issues

in appeals from the District Courts in cases involving patent

and trademark issues. See BNA’s Patent, Trademark & Copy-

nn fine See No. 423, dated April 5, 1979, at pages A-6

and A-7.

— Se

agent of a party—to appear for the taking of

his deposition after notice has been served upon

him and the courts have reasoned that notice

alone, without subpoena, is sufficient.

o * *

“If the person to be examined is a party to the

action, a subpoena is not required and the notice

is sufficient to require his attendance. Thus the

examining party may set the place for the deposi-

tion of another party wherever he wishes subject

to the power of the court to grant a protective

order under Rule 26(c)(2) designating a different

place.” (Italics added. )

So Wadsworth’s refusal to appear deprived Dr.

Golomb of his Fifth Amendment right to confront

and cross-examine him. Greene v. McElroy, 360 U.S.

474, 496 (1958). a

Furthermore, because the Board, and the CCPA,

did not require Wadsworth to plead, or prove, any

facts showing how he was, or would be, damaged

by Dr. Golomb’s registration, as required by Section

14 of the Act, 15 USC §1064, and Rule 112 of

the Rules of Practice in Trademark Cases, 37 CFR

§2.112, they, in effect, required Dr. Golomb to assume

the burden of proving the absence of such facts.

But he could not discharge this difficult burden,

because Wadsworth refused to appear, although Dr.

Golomb noticed his deposition under the applicable

Federal Rules of Civil Procedure.

So the Board, and CCPA, deprived Dr. Golomb

of his trademark registration by denying him the right

to confront and cross-examine Wadsworth.

=

VIL.

Conclusions.

The Board, and the CCPA, have decided two im-

portant questions of federal law, which have not been,

but suould be, settled by this Court:

1. Is a party required to appear pursuant to a

notice of taking his trial deposition, in a proceeding

before the Board, and is his refusal to appear a denial

of procedural due process under the Fifth Amendment?

2. Does a cancellation petitioner have standing,

in a proceeding before the Board, if he fails to allege,

and prove, facts showing how he is, or will be, damaged

by the registration sought to be cancelled?

Also, in ignoring the statutes, regulations, and-rules,

the Board, and the CCPA, have so far departed from

the accepted and usual course of judicial proceedings,

as to call for an exercise of this Court’s power of

supervision.

Respectfully submitted,

RoBERT D. HORNBAKER,

A Member of

FREILICH, HORNBAKER, WASSERMAN,

ROSEN & FERNANDEZ,

A Professional Corporation,

Attorneys for Petitioner.

APPENDIX A.

Opinion.

Hearing: May 26, 1977.

U. S. Department of Commerce, Patent and Trade-

mark Office.

Trademark Trial and Appeal Board.

Solomon W. Golomb v. William Kent Wadsworth.

Opposition, No. 57,214, to application Serial No.

37,220, filed November 14, 1974.

Robert D. Hornbaker for Solomon W. Golomb.

George H. Mortimer for William Kent Wadsworth.

Before Rice, Fowler and Kera, Members, Members.

Opinion by Rice, Member:

An application has been filed by William Kent Wads-

worth to register the mark “PENTOMINO CHAL-

LENGE” for equipment including a board having at

least one playing area marked with ninety (90) squares

and at least one set of eighteen (18) one-sided pento-

minoes for playing games and solving puzzles, use

since April 13, 1971 being asserted.’ The word “PEN-

TOMINO” has been disclaimed apart from the mark

as shown.

Registration has been opposed essentially on the

grounds that since November 1953, opposer has been

using the mark “PENTOMINOES” for equipment con-

sisting of twelve distinct five-celled square figures and

a playing board, for use in various combinational puz-

zles and in competitive board games; that opposer

is the owner of a registration of the mark “PENTO-

1Ser. No. 37,220, filed Nov. 15, 1974.

inital

MINOES” for the aforesaid goods;* that opposer has

expended substantial amounts of money, time and eftort

in advertising, promoting and popularizing his “PEN-

TOMINOES” trademark, so that the trade in general

and the purchasing public in particular have come

to know and recognize opposer’s trademark and prod-

ucts and .o know that the same originate with and

belong to opposer; that the word “PENTOMINO” is

the dominant portion of applicant’s mark “PENTO-

MINO CHALLENGE”; and that said mark so resem-

bles opposer’s mark “PENTOMINOES” as to be likely,

when applied to the goods of the applicant, to cause

confusion or mistake or to deceive.

Applicant, in answering the notice of opposition,

has denied all of the allegations upon which opposer’s

claim of damage is predicated, asserting in connection

therewith that neither word in applicant’s mark is dom-

inant in any physical sense; that the word “PENTO-

MINO” is used in applicant’s mark as a descriptive

word or adjective qualifying the noun or main word

“CHALLENGE”; that if either word is dominant in

a semantic sense it has to be the noun, not the adjec-

tive; and that applicant has disclaimed the word “PEN-

TOMINO” apart from its mark as a whole, which

disclaimer precludes a holding that said word is the

dominant portion ef applicant’s mark. Additionally,

applicant has filed a counterclaim to cancel opposer’s

pleaded registration on the grounds that the word “PEN-

TOMINOES” is descriptjve of polyominoes composed

of five squares and thus of the twelve distinct five-

celled square figures used by opposer in the equipment

described in its pleaded registration; that the word

*Reg. No. 1,008,964, issued Apr. 15, 1974.

snicliien

“PENTOMINOES” was first used in 1953 in a descrip-

tive sense and not a trademark sense; that said word

has continued to be used until today in the descriptive

sense; and that:

“|. . Opposer’s rights, if any, in the word ‘pen-

tominoes’ as a trademark have been abandoned

through acts of commission and omission into

the lexicon of the language generally employed

by those engaged in the manufacture, marketing

and playing of games employing playing pieces

of five-clled square figures.”

Opposer, in its answer to the counterclaim, has denied

every allegation contained therein, and has affirmatively

asserted both that applicant’s counterclaim fails to state

a claim upon which relief can be granted, and also

that applicant is estopped to assert the allegations con-

tained in the counterclaim.

The record consists of the pleadings; the file of

applicant’s application; the file of opposer’s registration

sought to be cancelled; copies of portions of printed

publications made of record by applicant pursuant to

Rule 2.122(c); and testimony in behalf of opposer.

Both parties have filed briefs on the case and were

represented at the oral hearing conducted on this matter.

The record shows that these parties were involved

in a prior opposition’ wherein applicant sought to regis-

ter the mark “PENTOMINO CHALLENGE”, without

a disclaimer of the word “PENTOMINO”, for goods

described in essentially the same manner as those in

applicant’s present application; opposer based its opposi-

tion upon a claim of prior use of the mark “PENTO-

’Opposition No. 53,785; Golomb v. Wadsworth, 184 USPQ

249 (TT&A Bd., 1974).

ee

MINOES” for game equipment and an allegation of

likelihood of confusion; and applicant in turn raised

the issue of whether opposer had used the term “PEN-

TOMINOES” as a trademark or whether opposer pos-

sessed any proprietary rights therein as a trademark.

The Board, in its opinion in that case, described the

professional achievements of opposer, a Professor of

Electrical Engineering and Mathematics at the Uni-

versity of Southern California, then summarized the

remaining evidence made of record therein as follows:

“Insofar as opposer’s actviities pertaining to

mathematical games and puzzles are concerned,

on November 16, 1953, while a graduate student

at Harvard University, opposer gave a lecture to

the Harvard Mathematics Club based on research

he had been doing during 1953 involving figures

made of two, three or more square cells, entitled

‘Combinatorial Geometry and Polyominoes’. In

preparing his lecture, he became aware of a num-

ber of interesting and difficult puzzles involving

five-celled square figures and coined the trademark

‘PENTOMINOES’ ‘to try, or to identify, my own

set of five-celled square figures, as distinct from

anyone else’s.. At the time of the lecture, he

had only a demonstration set of the ‘PENTO-

MINOES’ game or puzzle available, but as a result

of requests made by members of the audience,

the following week he made fifty sets of five-

celled figures out of poster board, and by the

end of 1°53, he had sold all of these sets for

fifty cents each to members of the audience and

their friends and others in the Harvard University.

Each of the sets was contained in an envelope

on which was typed ‘PENTOMINOES’ all in

coibds.

capital letters, and underneath that ‘Made by S. W.

Golomb.’ The game or puzzle consisted of twelve

different shapes that can be made out of five

equal squares or five-celled figures. Opposer pre-

pared a number of different puzzles utilizing these

pieces involving, inter alia, fitting them into rec-

tangle or other shapes.

By the end of 1959, opposer had sold an addi-

tional two hundred sets all bearing the trademark

‘PENTOMINOES’ on the package containing the

individual pieces. Opposer received some of the

orders for the sets by mail after two articles ap-

peared in the mathematical game section of the

May and December 1957 issues of Scientific Amer-

ican magazine. He sold approximately twenty to

thirty of these sets for seventy-five cents each

to people who indicated by mail a desire to pur-

chase them. Again, in the case of every set sold,

the designation ‘PENTOMINOES’ appeared on the

envelope or box in which the five-celled figures

were placed.

Starting in or around 1955, opposer attempted

to interest an established game company in manu-

facturing and selling the ‘PENTOMINOES’ game,

but to no avail. In September 1962, he agreed

with Collier Books to do a paperback book which

would be called Polyominoes. The back cover

of the book was to be stamped with the shapes

of the five-celled square figures and would bear

the mark ‘PENTOMINOES’. It was to be pre-

punched so that the purchaser would have the

ability to instantly have a set of these figures

for use as he follows opposer’s explanation in

conidia

the book. Collier Books, assertedly due to retrench-

ment plans, never did publish the book. It did,

however, reach an agreement with Charles Scribner

& (sic) Sons, publishers of New York, to have

Scribner take over the project of publishing the

book. Scribner did publish a book under the title

Polyominoes; but because it was a hard cover

book and did not lend itself to including a

punched out removable game on the back of the

book, an envelope was glued inside the back of the

book which contained the twelve figures and which

carried the trademark ‘PENTOMINOES’. The

Polyominoes book first appeared on the market

in February 1965. More than ten thousand were

sold, of which seven thousand were distributed

through the Library of Science Book Club. Op-

poser received a royalty on each book. The book

is still in print, and opposer is still receiving royal-

ties which so far have amounted to several thou-

sand dollars. Scribner has sublicensed several for-

eign publishers to do identical versions of the

Polyominoes book with an identical enclosure of

the puzzle identified by the designation ‘PEN-

TOMINOES’.

In early 1967, a Herbert Zimpfer of West Ger-

many exhibited promotional sets of opposer’s game

with the mark ‘PENTOMINO?’ (the two fina! let-

ters ‘E’ and ‘S’ were omitted) at the Nurnberg

Toy Fair and accepted orders. Zimpfer, under

license from opposer, also sold games consisting

of these twelve five-celled square figures under

the trademark ‘PENTOMINOES’ in the United

States during the period of 1967-1969. Opposer

has received royalties on all sales by Zimpfer, and

“1

they have been in excess of fifteen hundred dol-

lars. However, because of tariff and customs dif-

ficulties as well as marketing problems, it was

agreed that Zimpfer would confine his efforts to

selling the game outside of the United States.

In November 1967, opposer recruited an agent

to assist him in finding a game publisher to pur-

chase (sic) and sell the ‘PENTOMINOES’ game.

The agent put him in touch with Hallmark Cards,

Incorporated of Kansas City, Kansas, which exe-

cuted an agreement with opposer as a licensee

to produce and sell the game. In May 1973. Hall-

mark exhibited at the Stationers Show in New

York City a game under trademark ‘PENTO-

MINOES’ and accepted orders from wholesalers

and distributors.

Opposer, over the years, developed a large quan-

tity of exhibits and promotional material, and has

traveled considerable distance to give lectures for

no honorarium or fee to high schools and other

groups, largely for promoting his ‘PENTO-

MINOES’ game.

Applicant’s record consists of copies of articles

by opposer and others that have appeared in such

publications as The Scientific American Book of

Mathematical Puzzles & Diversions, Recreational

Mathematics Magazine, The American Mathemati-

cal Monthly and New Scientist over the years

from 1954 through November 1962 and a copy

of opposer’s book Polyominoes published by

Charles Scribner’s Sons, noticed under Rule 2.122

(c) to *. . . show that the word ‘pentominoes’

from the date of its first use by Opposer and

rar es

others has been used in a descriptive sense and

never in a trademark sense... .’”

Upon consideration of the documents made of record

by applicant in the prior proceeding, the Board found

that the terms “POLYOMINOES” and “PENTO-

MINOES”, though they may have been coined by op-

poser, had been consistently used by opposer and others

interested in mathematical puzzles in a merely descrip-

tive sense to designate, respectively, various shapes com-

posed of certain numbers of squares, and one particular

kind of polyomino, namely, polyominoes of five squares;

and that as a consequence, these terms, together with

their singular forms, had become words of art in the

field of mathematical puzzles and did not and could

not serve to designate origin in anyone producing and

selling a game which involved finding ways to fit to-

gether various shapes or configurations composed of

numbers of connected squares. In support of this find-

ing, the Board cited from the documents of record

numerous representative examples of use of the term

“PENTOMINO” by opposer and others in a descriptive

manner, including examples from opposer’s own book,

Polyominoes, wherein the term “PENTOMINO” was

defined as “A polyomino composed of 5 squares” and

was consistently used by opposer in a descriptive if

not generic manner.* The Board then held that

“

. whatever proprietary rights that opposer

may have acquired in the term ‘PENTOMINOES’

or ‘PENTOMINO’ through the coining and first

4In connection therewith, the Board noted that while opposer

had testified that the envelope (glued inside of the back

of his book) which contained the twelve different five-celled

square figures carried the trademark “PENTOMINOES”, the

envelope in the copy of opposer’s book which was made

of record in the opposition proceeding did not bear any

trademark or other sign of origin.

a ae

use thereof have since been abandoned through

acts of omission and commission into the lexicon

of the language generally employed by those manu-

facturing or participating in playing puzzles or

games involving combinatorial geometry and, in

particular, games of the type in which the parties

here involved are interested in marketing.”

The opposition was nevertheless sustained on the ground

that the registration sought by applicant, i.e., a registra-

tion of the mark “PENTOMINO CHALLENGE” with-

out a disclaimer of the word “PENTOMINO”, would

be inconsistent with and in derogation of opposer’s

right to continue to use the term “PENTOMINO”

in a descriptive manner in connection with the sale

and advertising of his mathematical games. Applicant

thereafter moved to disclaim the word “PENTOMINO”

apart from its mark as a whole. The motion was

denied, but without prejudice to applicant’s right to

file a new application to register “PENTOMINO

CHALLENGE” with an appropriate disclaimer. Appli-

cant’s present application seeking registration of its

mark with a disclaimer of “PENTOMINO” was filed

two weeks thereafter.

In this proceeding, applicant’s record again consists

solely of copies of articles by opposer and others that

appeared in the publications Recreational Mathematics

Magazine, Scientific American, The American Mathe-

matical Monthly, and New Scientist over the years

from 1954 to 1962, as well as copies of portions

of the book The Scientific American Book of Mathe-

matical Puzzles & Diversions (Simon and Schuster,

New York, 1959) and a complete copy of opposer’s

own book, Polyominoes, published by Charles Scribner’s

Sons in 1965.

—"

Opposer has offered testimony in this proceeding

to the same general effect as that adduced by him

in the prior proceeding. In addition, opposer has testi-

fied that during the period 1967 to 1969, his West

German licensee, Herbert Zimpfer sold the “PENTO-

MINO” game, as produced by Mr. Zimpfer, in the

United States both by mail order and by sales through

retail outlets; that since that time Mr. Zimpfer has

continued to make mail order sales in the United States;

that since 1967 opposer has always exhibited a sample

of the aforesaid game produced by Mr. Zimpfer at

all of opposer’s talks; that opposer has received royalties

from Mr. Zimpfer amounting to more than $4,000,

of which approximately $1,000 was earned prior to

April 1971 (the record does not indicate what portion

of these royalties were from sales in the United States);

that during 1973 and 1974 opposer’s United States

licensee, Hallmark Cards, Incorporated, sold approxi-

mately 20,000 of opposer’s games, as produced by

Hallmark, in boxes whose tops bear the word “PENTO-

MINOES” in relatively large letters, followed by “A

NEW ADULT PUZZLE-GAME FROM _ SPRING-

BOK” in smaller letters, then by the wording “A puzzle-

game not for square thinkers! This mind bender will

test the geometric perception of you and your friends.

Object: arrange the puzzle pieces according to any one

of a number of predetermined shapes,” and, at the

bottom, a copyright notice (1973) on behalf of Spring-

bok Editions, a division of Hallmark Cards, Inc.; that

the games are sold by Hallmark entirely through retail

outlets such as toy stores, novelty stores, stationery

and greeting card stores, department stores, etc.; that

opposer has received in excess of $3,000 in royalties

from Hallmark; that the last royalty check which op-

a | eee

poser received prior to the taking of his deposition,

which check covered the last quarter of calendar year

1975, was for the sale of several hundred sets of

the game; that several other companies have sold games

similar to opposer’s game (i.e., games consisting of

the same set of twelve five-celled square figures), but

none of them have used the term “PENTOMINOES”

in connection therewith; that opposer has made serious

efforts to find applicant’s game bearing the mark “PEN-

TOMINO CHALLENGE” in game stores, novelty

stores, department stores, and stationery shops, but

has been unable to do so; that opposer’s book Polyomi-

noes, published in 1965, has been out of print for

more than two years (as of the time of the taking

of opposer’s rebuttal testimony on August 13, 1976);

that neither opposer nor the publisher of the book

has any plans to reprint or reissue the book as pre-

viously published; that the “PENTOMINOES” games

made by Hallmark were (in the opinion of opposer)

purchased by a broad cross-section of the general lay

public looking for games and toys of general interest,

and having no specialized background; that the purchas-

ers of opposer’s book, and the readers of all of the

other publications relied on by applicant, were (in

the opinion of opposer) a limited set of devotees of

formal recreational mathematics, typically with a profes-

sional background in mathematics, engineering, or the

physical sciences; that Recreational Mathematics Maga-

zine was privately published, had a very limited dis-

tribution (to enthusiasts of formal recreational mathe-

matics), and has been defunct for more than ten years;

that opposer visited nine major public libraries in South-

ern California looking for issues of said magazine,

but was unable to find any; that the magazine New

ae ee

Scientist is published in the United Kingdom; that op-

poser was unable to find any copies thereof in the

nine libraries which he checked; that opposer drafted

a letter dated April 23, 1975 indicating that “PEN-

TOMINOES” is a registered trademark of opposer,

that use thereof should always be accompanied by

acknowledgement of this fact, and that unauthorized

use constitutes infringement; that opposer mailed copies

of this letter to the author or publisher, or both, of

each of the documents relied on by applicant, as well

as to other authors and publishers; that opposer has

also been careful to point out at each of the six

lectures he has given since April 15, 1975 (the date

of the issuance of opposer’s pleaded registration) that

“PENTOMINOES” is a registered trademark for a

game, and that the pieces of the game are called

five-celled square figures; that he has never heard the

term “PENTOMINOES” used in any manner other

than as a trademark since April 15, 1975; and that

in fact several authors have stated in their books and

articles that “PENTOMINOES” is a registered trade-

mark of opposer.

As noted above, the record in this case includes

the file of opposer’s pleaded registration, which is the

subject matter of applicant’s counterclaim for cancella-

tion. An examination of this file reveals that the

application which matured into said registration was

filed on September 13, 1972; that the allegation con-

tained a claim of distinctiveness made pursuant to

the provisions of Section 2(f) of the Act, i.e., an

assertion that the mark had become distinctive of

applicant’s goods as a result of substantially exclusive

and continuous use in interstate commerce for the

five years next preceding the date of filing of the

eae Sem

application (this claim, of course, constitutes an ad-

mission that the term “PENTOMINOES” was at least

at one time merely descriptive as applied to opposer’s

goods); that opposer indicated in the application that

his mark was used by applying it to containers for

his goods and to instructional material associated with

the goods; that the specimens of record consist of

reproductive copies of a portion of the cover of op-

poser’s book, Polyominoes, namely, the front of the

cover and the upper part of the front cover flap;

that the front of the cover contains the word “POLY-

OMINOES” in large letters, the phrases “The Fasci-

nating New Recreation in Mathematics” and “BY

SOLOMON W. GOLOMB?” in smaller letters immedi-

ately thereunder, a representation of the twelve five-

celled square figures, and then the phrase “Including

more than 190 diagrams and a set of pentominoes;”

that the upper part of the front flap of the cover

contained the word “POLYOMINOES” in large letters

with the phrases “by Solomon W. Golomb” and “IN-

CLUDING MORE THAN 190 DIAGRAMS AND

A SET OF PENTOMINOES” in smaller letters there-

under; that the lower section of the front flap is missing,

having apparently been cut out or covered up by op-

poser prior to the making of the reproduced copies

thereof (the copy of opposer’s book which was made

of record by applicant herein indicates that the missing

lower portion of the front flap reads as follows:

“This is the first book on the popular new

mathematical recreation, polyominoes. It is written

by the man who introduced it to American puzzle

fans and invented many of the problems presented

herein.

incites!

A domino is the simplest polyomino. Composed

of only 2 squares, it has only one possible shape,

a rectangle. A tromino is a polyomino of 3 squares;

there are 2 possible tromino shapes. Tetrominoes

are polyominoes of 4 squares and have 5 possible

shapes; pentominoes are potyominoes of 5 squares

and have 12 different shapes. All of these forms

are dealt with by Dr. Golomb, as well as poly-

ominoes composed of more squares and n-ominoes,

that is, polyominoes of any specific number of

squares. Diversions with polyominoes of more than

2 dimensions are also presented.

Puzzles in the volume range widely in difficulty;

in some cases the pentominoes can be arranged

in only one way, but one construction has 2,339

solutions. The Problem Compendium contains al-

most 100 problems, offering the reader weeks

of diversion, and there are instructions for a pento-

mino game for 2 or more players.” );

that the Examiner, in his first Office action, advised

opposer that there was pending in the Office an applica-

tion (i.e., the first application of applicant herein,

that is, the application to register the mark “PENTO-

MINO CHALLENGE” without a disclaimer of the

word “PENTOMINO”) for the registration of a mark

which so resembled opposer’s mark as to be likely

to cause confusion within the meaning of Section 2(d),

and that applicant’s said application, being the first

filed, would, if and when it matured into registration,

be cited as a reference against opposer’s application;

that on November 5, 1973 opposer filed a response

stating that it had filed an opposition to applicant’s

application on November 30, 1972, and asking that

action on its own application be suspended pending

calito

the outcome of the opposition; that the response was

accompanied by a copy of the notice of opposition,

wherein opposer asserted prior rights in the term “PEN-

TOMINO” as a trademark; that opposer did not file

a copy of applicant’s answer to the notice of opposi-

tion, wherein applicant placed in issue the question

of whether opposer had used the term “PENTOMI-

NOES” as a trademark and whether opposer possessed

any proprietary rights therein; that the Examiner sus-

pended action on opposer’s application pending the

outcome of the opposition proceeding; that on August

3, 1974, opposer filed a paper the complete text

of which reads:

“In your communication to me dated Feb. 21,

1974 (copy enclosed), you informed me that:

‘Action on this application is suspended pending

the termination of Opposition No. 53,785.’ You

further stated: ‘When the proceeding is terminated,

applicant, if a party thereto, should advise the

examiner.’ I was the Opposer in Opposition No.

53,785. In a decision dated August 8, 1974, the

Trademark Trial and Appeal Board has ruled

as follows on Opposition No. 53,785: ‘Decision:

The opposition is sustained, and registration to

applicant is refused.’ ”

and that opposer’s application was thereupon passed

to publication and matured into registration.

Opposer contends that the issues presented in the

cancellation proceeding are whether applicant was being

damaged by opposer’s registration of the ierm “PEN-

TOMINOES” on or about October 20, 1975, the date

of the filing of the counterclaim for cancellation, and

whether the term “PENTOMINOES” was at_ that

time merely descriptive to ultimate purchasers, that

oe

is, without a distinctive secondary meaning; and that

the sole issue in the opposition proceeding is likeli-

hood of confusion. In connection therewith, opposer

contends that the counterclaim for cancellation should

be dismissed because applicant, who offered no evidence

with respect to his activities under the mark “PENTO-

MINO CHALLENGE”, neither alleged nor proved that

he would be damaged by the continued existence of

opposer’s registration sought to be cancelled; i.e., appli-

cant failed to establish his standing to be heard on

the issues raised in the counterclaim. Under the par-

ticular circumstances presented in this case, we cannot

agree with opposer’s contention. That is to say, the

Court of Customs and Patent Appeals has recently

held that an argument asserting failure of an opposer

to prove that it may be “damaged” is in actuality

an allegation that opposer has not demonstrated its

standing to oppose; and that a party has standing

to oppose within the meaning of Section 13 if that

party can demonstrate a real interest in the proceeding.

See: Federated Foods, Inc. v. Fort Howard Paper Com-

pany, 192 USPQ 24 (CCPA, 1976). See also: Universal

Oil Products Co. v. Rexall Drug and Chemical Co.,

174 USPQ 458 (CCPA, 1972). Similarly, of course,

a party has standing to maintain a petition for cancella-

tion within the meaning of Section 14 of the Act

(which provides that a petition to cancel a registration

of a mark may be filed by “any person who believes

that he is or will be damaged by the registration

of a mark on the principal register”) if that party

can demonstrate a real interest in the proceeding. In

the instant case, applicart’s petition for cancellation

is in the nature of a compulsory counterclaim filed

in answer to the notice of opposition (it having been

aX.

the view of the Board for a number of years now

that it is mandatory that a party assert as a counter-

claim any claim which, at the time of the serving

of his pleading, he has against the adverse party, pro-

vided that the counterclaim arises out of the transaction

or occurrence which is the subject matter of the other

party’s claim—See: Delta Tire Corporation v. Sports

Car Club of America, Incorporated, 185 USPQ 443

(TT&A Bd., 1975), and cases cited therein), and

it is implicit from applicant’s position or standing as

defendant in this opposition, when considered together

with the fact that applicant was involved with opposer

in the above-described prior proceeding and thus mani-

festly is no mere stranger of interloper, that applicant

has a real interest in the cancellation proceeding. More-

over, inasmuch as we have jurisdiction over opposer’s

registration by virtue of the filing of the counterclaim

for cancellation, we have authority under Section 18

of the Act to cancel the registration if it was obtained

fraudulently or is otherwise invalid. In this regard,

opposer’s registration is manifestly invalid since it was

issued immediately after, and in the face of, the Board’s

ruling in the prior opposition that the word “PENTO-

MINOES” was a merely descriptive term which did

not and could not serve to designate origin in anyone

producing and selling a game that involved finding

ways to fit together various shapes or configurations

composed of numbers of connected squares, and that

whatever proprietary rights opposer might have acquired

in the term “PENTOMINOES” or “PENTOMINO”

through the coining and first use thereof had since

been abandoned through acts of omission and com-

mission into the lexicon of the language generally em-

ployed by those manufacturing or participating in play-

aig

ing puzzles or games involving combinatorial geometry

and, in particular, games of the type marketed by

opposer and applicant.®

Aside therefrom, the doctrine of res judicata provides

that “a judgment on the merits in a prior suit involving

the same parties or their privies bars a second suit

based on the same cause of action.” See: Lawlor v.

National Screen Service Corporation, 349 U.S. 322,

75 S. Ct. 865 L.Ed. 1122 (1955). See also: Cromwell

v. County of Sac, 94 U.S. 351 (1878), and Commis-

sioner of Internal Revenue v. Sunnen, 77 USPQ 29

(Sup. Ct., 1948). However, as noted by the Board

in Johnson & Johnson v. Rexall Drug Company, 186

USPQ 167 (TT&A BD., 1975), where a second suit

on the same ground is based upon circumstances or

a course of conduct occurring subsequent to the judg-

ment in the prior suit, then the second suit constitutes

a different cause of action and is not barred by the

doctrine of res judicata. The reason for this rule, ac-

cording to the Lawlor case, supra, is that “the prior

judgment cannot be given the effect of extinguishing

claims which did not even then exist and which could

not possibly have been sued upon in the previous case.”

5Applicant also asserts in its brief on the case that opposer’s

registration is invalid for the further reason that it was obtained

fraudulently, i.e., that- opposer withheld from the Examiner

the information that the Board had found that opposer had

no existing proprietary rights in the term ‘“PENTOMINOES”.

However, this issue was neither pleaded nor tried, and opposer

thus had no opportunity to defend himself against it. In

view thereof, applicant’s charge of fraud is untimely raised

and cannot be considered in our determination of this case.

See: Curtice-Burns, Inc. v. Northwest Sanitation Products, Inc.,

189 USPQ 138 (CCPA, 1976); Browning Debenture Holders

Committee v. DASA Corp., 23 FR Serv2d 1298 (CA 2,

1977); Dap, Inc. v. Litton Industries, Inc., 185 USPQ 177

(TT&A Bd., 1975); and Tatfy’s of Cleveland, Inc. v. Taffy’s,

Inc., 189 USPQ 155 (TT&A Bd., 1975).

~

onic

See also: Commissioner of Internal Revenue v. Sunnen,

supra, and United States v. General Electric Company,

358 F. Supp. 731 (DC NY, 1973). Cf., Old Grantian

Company Limited v. William Grant & Sons Limited,

150 USPQ 58 (CCPA, 1966), and DeCosta v. Colum-

bia Broadcasting System, Inc., 182 USPQ 169 (CCPA,

1974). Where the second action involves a different

claim, cause, or demand, the judgment operates as

a collateral estoppel as to “those matters in issue or

points controverted, upon the determination of which

the finding or verdict was rendered.” See: Cromwell

v. County of Sac, supra. In view of the foregoing,

opposer is estopped, by the Board’s decision in the

prior opposition, from denying herein that as of August

8, 1974 (i.e., the date of said decision), the term

“PENTOMINOES” was a merely descriptive term

which did not and could not serve to designate origin

in anyone proceduring games such as those here in-

volved, and that any rights which opposer may have

acquired in said term through the coining and first use

thereof had been abandoned into the lexicon of the lan-

guage generally employed by those manufacturing or

participating in the playing of such games. Thus the

only question to be determined in this proceeding, inso-

far as the issue of descriptiveness is concerned, is

whether the term “PENTOMINOES” has, since August

8, 1974, become distinctive of opposer’s goods in com-

merce. And inasmuch as the clear import of the Board’s

decision in the prior opposition was to the effect that

the term “PENTOMINOES” was highly descriptive,

if not generic, as applied to games such as opposer’s,

opposer’s burden of proof to establish that it has “re-

captured” said term as a trademark is very heavy.

Cf., Donald F. Duncan, Inc. v. Royal Tops Manufactur-

sensilla

ing Company, Inc., 144 USPQ 617 (CA 7, 1965).

Considering the short period of time which has elapsed

since the prior opposition (i.e., opposer’s testimony as

defendant in the counterclaim herein was taken on

August 13, 1976, only two years after the date of

the Board’s decision in the previous proceeding), to-

gether with the factors that opposer’s oral testimony

is naturally self-serving in nature; is to a large extent

devoted to an attempt to correct deficiencies in the

testimony offered by opposer in the prior proceeding;

and is supported by no documentary evidence other

than material pertaining to opposer’s professional

achievements, a photograph of a box allegedly used

by opposer in the sale of eighteen deluxe (i.e., wood)

sets of his game in the late 1950’s, the tops of the

boxes used by opposer’s West German and U. S. li-

censees in marketing the game, and a copy of the

April 23, 1975 trademark infringement letter allegedly

sent by opposer to a number of authors and publishers,

the record presented herein falls far short of nersuading

us that the term “PENTOMINOES” has in fact become

distinctive of opposer’s goods in commerce. To the

contrary, we believe that the weight of the evidence

in this case supports applicant’s assertion that such

term is merely descriptive of opposer’s games. In view

thereof, and since applicant’s present application to

register its mark “PENTOMINO CHALLENGE” con-

tains a disclaimer of the word “PENTOMINO” apart

from the mark as shown, it is concluded that opposer

would not be damaged by the registration sought

| aae

by applicant. Cf., C. R. Bard, Inc. v. Foley Bag

Catheter, Inc., 157 USPC 579 (CCPA, 1968).

Decision: The opposition is dimissed with prejudice;

the counterclaim for cancellation is granted; and Regis-

tration No. 1,008,964 will be cancelled in due course.

/s/ J. E. Rice

J. E. Rice

/s/ C.R. Fowler

C. R. Fowler

/s/ D. J. Kera

D. J. Kera

Members, Trademark

Trial and Appeal Board

=.

APPENDIX B.

Opinion.

United States Court of Customs and Patent Appeals.

Solomon W. Golomb, Appellant, v. William Kent

Wadsworth, Appellee. Appeal No. 78-582. Opposition

No. 57,214.

DECIDED: March 8, 1979

Before MARKEY, Chief Judge, RICH, BALDWIN,

LANE, and MILLER, Associate Judges.

RICH, Judge.

This appeal is from the decision of the Patent and

Trademark Office (PTO) Trademark Trial and Appeal

Board (board) dismissing appellant’s opposition to the

registration of PENTOMINO CHALLENGE for game

equipment’ and granting appellee’s counterclaim for

cancellation of PENTOMINOES for game equipment.’

We affirm.

The involved goods are essentially identical. A pento-

mino is a “polyomino,” a term appellant Golomb fabri-

cated from “domino” and defined as a simply-connected

set of squares.’ Whereas a domino has two squares

and one configuration (a rectangle), a pentomino has

1Serial No. 37,220, filed November 15, 1974, the word

PENTOMINO being disclaimed, use since April 13, 1971,

being asserted.

“Registration No. 1,008,964, issued April 15, 1974.

3Appellant’s brief argues that “‘Pentominoes’ was * * * in

particular * * * not derived from dominoes,” which we find

to be unsupportably at odds with his statement that he has

“generalize{d| the ‘domino’ to the ‘polyomino’.” Golomb,

“Checker Boards and Polyominoes,” American Mathematical

Monthly 675 (Dec. 1954).

Be Es

five squares and twelve possible configurations. Appel-

lant’s game equipment consists of twelve pentomino

playing pieces (one of each possible shape) and a

game board marked with a playing area of sixty-four

squares. Appellee’s goods consist of eighteen pento-

minoes and a board marked with ninety squares.

We assume familiarity with a prior opposition in

which appellee sought to register PENTOMINO CHAL-

LENGE without disclaimer of PENTOMINO.* There-

in, appellant, who had filed an application for registra-

tion of PENTOMINOES for game equipment on Sep-

tember 13, 1972, alleged prior and continuous use

of PENTOMINOES and likelihood of confusion as

to origin of the products. Appellee questioned whether

appellant had used PENTOMINOES as a trademark

and had any proprietary rights in the word as a trade-

mark. Apparently addressing itself to appellant’s conten-

tion of prior use as a trademark, the board found:

It is clear from these documents that while

opposer may have coined the terms “POLY-

OMINOES” and “PENTOMINOES” for use in

creating puzzles or problems in combinatorial ge-

ometry, the branch of mathematics dealing with

ways to combine geometric figures, these terms

have been consistently used by opposer and others

interested in mathematical puzzles in a merely

descriptive sense to designate, as in the case of

“POLYOMINOES”, various shapes composed of

certain numbers of squares, and as to “PEN-

TOMINOES”, as one kind of polyomino, namely

polyominoes of five squares. As a consequence,

4Golomb v. Wadsworth, 184 USPQ 249 (TTAB 1974)

(Opposition No. 53,785, application serial No. 391,735, filed

May 11, 1971).

peo

these terms and naturally the singular forms

“POLYOMINO” and “PENTOMINO” have be-

come words of art in the field of mathematical

puzzles and do not and cannot serve to designate

origin in anyone producing and selling a game

which involves finding ways to fit together various

shapes or configurations composed of numbers of

connected squares. [Emphasis ours. |

Notwithstanding its finding that appellant had used

PENTOMINOES merely descriptively, if not generi-

cally, the board sustained the prior opposition on the

ground that registration of PENTOMINO CHAL-

LENGE without disclaimer of PENTOMINO would

be “inconsistent with and in derogation of opposer’s

_ right to continue such [descriptive] use as he has

made of ‘PENTOMINO’.” After the board denied appel-

lee’ motion to disclaim PENTOMINO from his mark,

he filed the present application on November 15, 1974,

seeking registration with such disclaimer. In the mean-

time, appellant’s trademark registration had issued on

April 15, 1974, despite the finding of descriptiveness

by the board.

In the instant opposition appellant has asserted his

registration of the mark PENTOMINOES and prior

use since 1953, and has again alleged that likelihood

of confusion would result if appellee’s mark were regis-

tered. Taking his cue from the board opinion in the

prior proceeding, appellee counterclaimed for cancella-

tion of appellant’s registration on the ground that use

of the word pentomino since 1953 has been descriptive

and that appellant’s rights in the word, if any, “have

been abandoned * * * into the lexicon of the lan-

guage.” .

—

Concerning the counterclaim to cancel his registration

of PENTOMINOES, appellant urges that Wadsworth

has failed to allege damage, or belief of damage, accurd-

ing to Section 14 of the Trademark Act of 1946,

15 USC 1064. We note that in his answer to appellant’s

notice of opposition, appellee has requested cancella-

tion on the ground that PENTOMINOES has been

descriptively used and abandoned into the lexicon of

the game language, all without specific mention of

damage. But nothing else is necessary, for, as’ this

court said in DeWalt, Inc. v. Magna Power Tool Corp.,

48 CCPA 909, 918, 289 F.2d 656, 661, 129 USPQ

275, 280 (1961):

This court, since the earliest days of its jurisdic-

tion over Patent Office appeals, has adhered to

the then already established principle that damage

to an opposer or injury to a petitioner for can-

cellation—those being the terms of the old law

now replaced in the Lanham Act by “damage”

in either situation—will be presumed by inferred

when the mark sought to be registered is descrip-

tive of the goods and the opposer or petitioner

is one who has a sufficient interest in using the

descriptive term in its business. [Citations omitted.

Emphasis ours. |

Cf. Federated Foods, Inc. v. Fort Howard Paper Co.,

544 F.2d 1098, 192 USPQ 24 (CCPA 1976) (opposer

satisfied standing requirement by establishing “real com-

mercial interest in protecting its registered marks” ).

Concerning the descriptiveness issue in the instant

proceeding, the board referred to its prior decision

on that point and, after discussing res judicata and

collateral estoppel, concluded that “opposer is [col-

~~

laterally] estopped, by the Board’s decision in the

prior opposition, from denying herein that as of”

the date of the prior decision PENTOMINOES was

merely descriptive, leaving only the question whether

since that date anything had occurred to change the

situation. The board’s final conclusion was that the

word “pentominoes” had not become distinctive and

that “the weight of the evidence in this case supports

applicant’s [appellee’s] assertion that such term is

merely descriptive of opposer’s [appellant’s] games.”

Since we agree with the board’s conclusion on the

evidence in the case, it is not necessary to consider

whether there was an estoppel. Our own examination

of the evidence shows it to be fully supportive of

the board’s conclusion of descriptiveness. Specifically,

the excerpts from appellant’s articles and book referred

to in the first board opinion show conclusively that

he employed the word “pentominoes” descriptively for

the five-celled pieces and for whatever puzzles they

constitute or whatever games may be played with them.

Appellant argues, inter alia, that his book Polyo-

minoes (1965) and articles in Scientific American mag-

azine from 1957-1962° were directed to and read

by “a limited set of devotees of formal recreational

mathematics,” and that beginning in May 1973 his

pentomino game was sold by Hallmark Cards, Inc.,

allegedly under the trademark “PENTOMINOES,” to

20,000 purchasers of “a broad cross-section of the

general public.” We find the evidence to be to the

5Gardner, “Mathematical Games,” Scientific American, Vol.

196 at 150 (May 1957), Vol. 196 at 166 (June 1957),

Vol. 197 at 126 (Dec. 1957), Vol. 198 at 92 (Jan. 1958),

Vol. 203 at 186 (Nov. 1960), Vol. 230 at 160 (Dec. 1960),

Vol. 204 at 166 (June 1961), Vol. 207 at 151 (Nov.

1962).

a

contrary. The back flap of appellant’s book says that

since 1954, polyominoes “have found an enthusiastic

audience among avid puzzle fans, professional mathe-

maticians, and housewives interested in design,” while

Golomb’s preface to the book states that the reprinting

of his material in the May 1957 Scientific American

“brought polyominoes to the attention of a vast reading

public.” Hence, the name pentominoes reached the

same purchasing public as the game sold by Hallmark.

Moreover, although the alleged mark PENTOMINOES

is carried on the Hallmark box top, the word “pento-

minoes” is nonetheless again used as a descriptive name

in the accompanying booklet. Appellant’s remaining

contentions are similarly insufficient to persuade us

that the counterclaim to cancel should be dismissed.

We otherwise agree with the board that “since ap-

plicant’s prsent application to register its mark ‘PENTO-

MINO CHALLENGE’ contains a disclaimer of the

word ‘PENTOMINO’ apart from the mark as shown,

it is concluded that opposer would not be damaged

by the registration sought by applicant. Cf., C. R.

Bard, Inc. v. Foley Bag Catheter, Inc., 157 USPQ

579 (CCPA, 1968).”

The decision of the board dismissing appellant’s op-

position with prejudice and granting appellee’s counter-

claim for cancellation is affirmed.

AFFIRMED

—

APPENDIX C.

Order.

(Letterhead )

United States Court of Customs and Patent Appeals

717 Madison Place NW.

Washington, D.C. 20439.

George E. Hutchinson, Clerk.

Telephone: 347-1552 Area Code 202

April 19, 1979

Mr. Robert D. Hornbaker

Lindenberg, Freilich, Hornbaker,

Wasserman, Rosen and Fernandez

10960 Wilshire Blvd.

Suite 1434

Los Angeles, California 90024

RE: Golomb v. Wadsworth

Appeal No. 78-582

Dear Sir:

The court denied today the petition for rehearing

in the above appeal. Judge Lane took no part in

the consideration of or decision on the petition.

Very truly yours,

/s/ George E. Hutchinson

cc: Mr. George H. Mortimer