Application of Sun Oil Company
426 F.2d 401, 57 C.C.P.A. 1147 (1970)
Premium Feature
Subscribe to Lexplug to listen to the Case Podcast.
Rule of Law:
A term that is merely descriptive of a product is not registrable as a trademark under the Trademark Act unless the applicant proves the term has acquired a secondary meaning, signifying to the public that the product comes from a single source.
Facts:
- Sun Oil Company sells gasoline at its service stations using special pumps called 'blending pumps'.
- These pumps allow a customer to select from various grades of gasoline, which are then blended to meet the customer's specific requirements.
- Sun Oil has displayed the term 'CUSTOM-BLENDED' on these pumps since 1956.
- The term 'custom' is commonly used in commerce to indicate that goods or services are made to a customer's specific order.
- Other companies in the market also sell multi-grade, pump-blended gasoline.
Procedural Posture:
- Sun Oil Company filed an application with the U.S. Patent and Trademark Office to register 'CUSTOM-BLENDED' for gasoline on the Principal Register.
- The application was a continuation of an earlier application that had also been refused.
- The Trademark Examiner refused registration on the ground that the mark was merely descriptive of the goods.
- Sun Oil Company appealed the examiner's refusal to the Trademark Trial and Appeal Board (TTAB).
- The TTAB affirmed the examiner's decision, finding the mark merely descriptive and the evidence of secondary meaning insufficient.
- Sun Oil Company (as appellant) appealed the TTAB's decision to the U.S. Court of Customs and Patent Appeals.
Premium Content
Subscribe to Lexplug to view the complete brief
You're viewing a preview with Rule of Law, Facts, and Procedural Posture
Issue:
Does the term 'CUSTOM-BLENDED' for gasoline fall under the statutory bar against registering merely descriptive marks because it has not acquired a secondary meaning identifying the source of the goods?
Opinions:
Majority - Almond, J.
Yes. The term 'CUSTOM-BLENDED' is merely descriptive of the gasoline and is unregistrable because the evidence fails to establish that it has acquired a secondary meaning. The court adopted the reasoning of the Trademark Trial and Appeal Board, finding the term immediately indicates to patrons that the gasoline is blended to their needs. The survey evidence presented by Sun Oil was insufficient, as it only demonstrated that purchasers familiar with Sunoco gasoline knew that the gasoline was custom blended; it did not show that the term 'CUSTOM-BLENDED' itself served as an indication of origin pointing exclusively to Sun Oil.
Concurring - Rich, Acting C.J.
Yes. The term 'CUSTOM-BLENDED' is so highly descriptive of gasoline that is blended to a customer's order that it is legally incapable of ever acquiring a secondary meaning and becoming a distinctive trademark. No amount of evidence could overcome this inherent descriptiveness. Allowing one company to monopolize such a common and apt descriptive phrase would improperly deprive competitors of the ability to use the language necessary to describe their own similar products. All generic or highly descriptive names for a product belong in the public domain.
Dissenting - Fisher, Dist. J.
No. The term 'CUSTOM-BLENDED' has acquired a secondary meaning through extensive and exclusive use and should be registered. The evidence showed twelve years of continuous use, extensive advertising, and significant sales. Furthermore, surveys suggested that the public in certain areas primarily associates the term 'CUSTOM-BLENDED' with Sun Oil, not just the product type. Granting trademark rights would not deprive competitors of their right to use normal language, as other descriptive terms are available.
Analysis:
This case demonstrates the significant challenge of registering a descriptive term as a trademark. It underscores the critical role of secondary meaning, where the applicant must prove a shift in consumer perception from the product's characteristics to its source. The concurrence introduces a key distinction between terms that are 'merely descriptive' (potentially registrable with secondary meaning) and those that are 'so highly descriptive' they are generic and legally incapable of trademark protection, regardless of evidence. This decision reinforces that even long-term, exclusive use and advertising may be insufficient if the evidence, such as consumer surveys, fails to definitively prove that the mark has become an indicator of origin.
Unlock the full brief for Application of Sun Oil Company