Illinois Watch Case Co. v. Shulton, Inc.

Bland, Judge, delivered the opinion of the court: Two appeals are here involved in trade-mark opposition proceedings instituted by the appellant, Illinois Watch Case Company, owner of the registered trade-mark “Elgin American,” issued under the ten-year proviso of section 5 of the Trade-mark Act of February 20,1905, as amended. Opposition No. 16,819> was directed against the application of appellee, Shulton, Inc., to register the trade-mark “Early American” as applied to saponaceous compounds for cleaning the hands, shaving cream, sticks and powder, packages containing soap and towel, soaps, and soap powders. Opposition No. 16,820 was directed against a similar application by appellee to register its same trade-mark as applied to astringents, bleach creams, and many other toilet and, as they are sometimes called, beauty aids. Both of the said applications of appellee claimed use of the mark since April 2, 1937. Appellant, in its notices of opposition, alleged its belief that it will be damaged by the registration of the mark as applied for, claiming use of its trade-mark for more than forty years last past as applied to one or more of certain novelties, viz, vanity cases, rouge and compact boxes, face powder containers, containers for cold cream, perfumes, and other toilet accessories, made of both base and precious metals, and of refills for the containers. Both parties took testimony in a record common to the two oppositions. The decisions of the Examiner of Interferences are identical in [1122] both cases; the-decision-of the commissioner in Opposition No. 16,820 is based upon the reasons set forth in his decision, in Opposition No. 16,819; and upon appeal the cases have been briefed as one. Therefore, they will be disposed of in a single opinion. The Examiner of Interferences held that the goods of the parties possess the same descriptive properties and that the word “American” constitutes the major portion of and is of substantially equal prominence in the marks of both parties, and that the marks when considered as a whole are similar in appearance and sound. The examiner also considered that the word- “American” is the dominant feature of the mark sought to be registered and believed that the registration of the mark would involve a mere evasion of the geographical clause of section 5, siopra, and, accordingly, held this latter clause to be a statutory bar to registration. In his decision the examiner held that in view of the resemblances between the marks there is at least reasonable doubt that the concurrent use of them in trade upon the respective goods of the parties would be likely to cause confusion, and resolved such doubt against the newcomer. The examiner, accordingly, sustained the notice of opposition and further adjudged that the appellee was not entitled to the registration for which it made application. The commissioner in his opinion agreed with the Examiner of Interferences that the goods of the respective parties possess the same descriptive properties. The commissioner did not agree with the Examiner of Interferences in his holding that the concurrent use of the involved marks in trade on the goods involved would be likely to cause confusion, and also held that the trade-mark “Early American” does not suggest any present geographical locality or any company whose name appears in the record, and reversed the decision of the Examiner of Interferences. We agree with the tribunals below in their respective findings that the goods of the parties possess the same descriptive properties. Not only are the goods of the same descriptive properties, but both marks are used upon goods which are identical. We disagree with the decision of the commissioner in his holding that the concurrent use of the marks of the parties on the goods involved would not be likely to result in confusion as to their origin. The appearance of the marks as a whole is quite similar. The marks each contain the same number of syllables. The two words of each mark are not hyphenated. The first letter of the first word of each mark begins with “E.” The last word of each mark is the same. In sound the marks are quite similar. The mark of appellant was registered under the 10-year proviso of section 5 of the trade-mark act of 1905, and, therefore, is presumed to have a secondary meaning other than its geographical significance, which serves to indicate the [1123] origin in appellant of its goods in controversy. In advertising the goods of the parties over the radio and in speaking of them the terms would be easily confused, and the difference in meaning which is stressed here, under such circumstances, we think, would not avoid the likelihood of confusion. Certainly there is a grave doubt on the question and, as did the Examiner of Interferences, we think the familiar rule that the doubt should be resolved against the newcomer should be applied. It is almost trite to repeat here what has so often been said by the courts that the field from which to select a desirable trade-mark to indicate the origin of a seller’s goods is a broad one. California Packing Corp. v. Tillman & Bendel, Inc., 17 C. C. P. A. (Patents) 1048, 1056, 40 F. (2d) 108. The record shows that the mark “Elgin American” has been used on most of appellant’s goods, or those of its predecessors, for nearly half a century and on all of its goods long before appellee adopted its mark, and is one that is well known to the buyers of the goods of the respective parties. Since it is our view that the marks of the respective parties so nearly1 resemble each other as to be likely to cause confusion in the sense that the registration statute was intended to. prevent, it follows that the mark of appellee should not be registered, and that the oppositions should have been sustained. The decisions of the Commissioner of Patentó are reversed.