C. R. Bard, Inc., Appellant, v. Foley Bag Catheter, Inc., Appellee, 394 F.2d 582 (C.C.P.A. 1968)

Appellant seeks review of the decision of the Trademark Trial and Appeal Board¹  dismissing its opposition to appellee's application for registration of the following mark for urological and endoscopic instruments, such as catheters:

NOTE: OPINION CONTAINING TABLE OR OTHER DATA THAT IS NOT VIEWABLE

The application contains the following language which we, like the board, consider adequate to disclaim certain matter:

Applicant seeks no registration rights in the words "The Foley Bag Catheter" or in the reproduction of the goods, or in the word "Foley," apart from the mark as shown.

It also includes the following statement:

The mark "FEB Foley" is the facsimile signature of Frederic E. B. Foley, President of applicant corporation.

The record establishes that appellant has continuously used the term "Foley" on a balloon or inflatable type catheter which it has sold in commerce since 1958, a date prior to appellee's effective date.² 

Although the controlling question is whether appellant will be damaged by the registration appellee seeks,³  appellant contends that the question is res judicata by virtue of a final board decision adverse to appellee in a previous opposition⁴  involving the same parties. There appellee sought registration of the instant mark but without disclaiming what is herein disclaimed. There was evidence that "Foley" is a common descriptive name for a particular catheter, thus the board concluded that registration of the mark sought "would be inconsistent with the right of opposer to continue the use of `Foley' as it has done in the past."

While the present record also supports a finding that "Foley" is descriptive, the issue is different and res judicata does not apply because the disclaimer here avoids that potential restraint against appellant's use of descriptive matter on which the decision in the previous opposition was grounded. As the board observed in the present case:

* * * the registration sought by applicant with the restriction therein would not be inconsistent with opposer's right to continue to do what it has in the past, namely use "Foley", per se, descriptively to designate a particular type of catheter.

That conclusion, with which we agree, disposes of any claim that appellant will be damaged by the registration sought. However, appellant contends that those who observe the composite mark in use with the notation ® indicating registration, but do not investigate to find there is a disclaimer, "will think that Dr. Foley and his company somehow have reclaimed that which he so freely relinquished thirteen years ago."⁵  That contention is not pertinent here. Appellee obviously has the right to use the composite mark and, so far as the public is concerned, the goods of appellee may be distinguished from the goods of others by the mark. It is immaterial to any but appellant and those others who may wish to use the descriptive matter in the mark in commerce that a disclaimer⁶  has been made. Such users or potential users can readily determine the status of the mark.

The decision is affirmed.

Affirmed.