In re Brockway Glass Co.

Garrett, Presiding Judge, delivered the opinion of the court: Appellant seeks reversal of the decision of the Commissioner of Patents (speaking through the First Assistant Commissioner), 62; USPQ 53, affirming the action of the Examiner of Trade-Marks denying appellant’s application filed April 18, 1941, for the registration of the notation “Sani-Glas” as a trade-mark for glass bottles (the suffix “Glas,” being disclaimed “apart from the mark”) on the ground that it is confusingly similar to a prior registration (No. 77,405) of the notation “Sanitop” as a trade-mark for use on identical goods — glass bottles. The registration dated April 5,1910, is in the name of Anthony F. McDonnell. It shows, in the usual manner, that it was renewed, the date of renewal, however, not being stated. During the prosecution of the involved application in the Patent Office appellant presented certain papers upon which it based a claim that the reference mark should be considered to have been abandoned but no cancellation proceeding was instituted. An issue concerning that claim is raised before us in the reasons of appeal and is hereinafter discussed. It is deemed proper to consider first the question of whether appellant’s mark “Sani-Glas” so nearly resembles the registered mark. [971] “Sanitop” that the application oí “Sani-Glas” to glass bottles would be “likely to cause confusion or mistake in the mind of the public or to deceive purchasers.” In our view that question requires hut little discussion. The brief of the Solicitor for the Patent Office sets forth a long list of decisions in which compound marks having one or more syllables in common were held to be confusingly similar even though in some cases there was a wide difference in the remaining portions. This principle is so well established that we need not repeat the solicitor’s citations. The commissioner cited as parallel the comparatively recent case of The Hygienic Products Company v. Huntington Laboratories, Inc., 31 C. C. P. A. (Patents) 773, 139 F. (2d) 508, 60 USPQ 205, an opposition proceeding in which this court held .“Toilet San” (“Toilet” being disclaimed) and “Sani-Flush” both applied to goods used for identical purposes, to be confusingly similar, and commented as follows: So Rere, and for the same reason, applicant’s mark is dominated by the word “Sani,” and so here, applicant’s mark and the mark of the reference are appropriated to identical merchandise. And in my opinion there is greater resemblance between “Sani-Glas” and “Sanitop” than there is between “Toilet-San” and “Sani-Flush.” It is asserted in the brief for appellant that “The use of the letters ‘sani’ is within the public domain.” Should that view be accepted, it is clear that appellant would have nothing registrable, because the suffix “Glas” of its mark is descriptive and, for that reason, was disclaimed upon the suggestion of the examiner. The commissioner aptly said: * * * the word “glas” in applicant’s mark is purely descriptive, and has been disclaimed for that reason; so that unless the prefix “sani” be regarded as arbitrary, the mark as a whole is nonregistrable under the Act of 1905. In its reasons of appeal appellant alleged error on the part of the commissioner in failing to discuss an alleged registration of the word “Sanijar,” and the contention of appellant asserted to have been raised in its brief and argument before the commissioner as to .the effect the action of the examiner in allowing it should have on the instant case.» Neither the brief befóte the commissioner nor the alleged registration, is included in the record before us. So, obviously, appellant is in no position to have it considered by us, but it is not improper to say that even if it be assumed that there was such a registration it could have no controlling influence in this case. If a mistake was made in granting that registration (and we express no view as to that) it would furnish no precedent justifying another improper registration. See The Pepsodent Co. v. Comfort Manufacturing Co., [972] 23 C. C. P. A. (Patents) 1224, 83 F. (2d) 906, 29 USPQ 601, and cases therein cited. With respect to the question of abandonment hereinbefore referred to appellant, as has been stated, did not institute any cancellation proceeding in,conformity with the statute, but contented itself with the presentation of certain papers upon the basis of which, it contended, the registered mark “Sanitop” should have been treated as having been abandoned. - Briefly, it appears that after the examiner’s first rejection of appellant’s application based upon the “Sanitop” registration an attorney (whose affidavit stating that he is associated with the firm of attorneys representing appellant is in the record) wrote McDonnell. The letter said to have been so written is not in the record but the affidavit states that it asked “for quotations of prices, descriptive literature and a sample of a ‘Sanitop’ bottle.” It does not appear that any reference was therein made to the trade-mark registration. There was filed with the affidavit a paper which affiant stated was a copy of a letter he received in reply. In the letter McDonnell stated, in substance, that he was sending the sample requested and that he also had a patented bottle and offered to send a sample of that if desired. The letter further stated: I Rave not sold any bottles since the early twenties and therefore do not know the price of bottles today but the price of these Sanitop bottles should not be any more than the price of ordinary crown finish bottles, plus the cost of royalty: twenty cents a gross. It being understood, of course, that no' manufacturer can make these bottles without a license to make same. The affidavit stated that the word “Sanitop” did not appear blown in the bottle which affiant, received but that it was on a typewritten gummed label attached thereto. It is noted that the certificate of registration states that the mark is applied “to the goods, and to the packages containing the same, by being blown into the glass, and on printed labels bearing the trademark, said labels being pasted on cartons and other containers containing the bottles.” Based upon (a) the statement in the affidavit that the bottle which affiant received did not have the mark blown into the glass and (b) the statement in McDonnell’s letter that he had not sold any bottles since the early twenties, appellant insists that the mark should be held to have been abandoned. We think the tribunals of the Patent Office properly declined to so hold. If appellant believed that the McDonnell mark had been- abandoned and that it would be injured by the registration remaining uncancelled it should, as a matter of orderly procedure, have brought an action for cancellation under section 13 of the trade-mark registra [973] tion act (15 U. S. C. § 93) in which McDonnell would have had an opportunity to be heard. See In re Fred Wilcox & Co., 36 App. D. C. 107, 1911 C. D. 264. There is nothing in the affidavit to indicate that the letter written to McDonnell gave him the slightest intimation that appellant believed or had any reason to believe that be had abandoned the mark and there is nothing in McDonnell’s reply to indicate that lie had abandoned it, or any of his rights under his registration. Whether a question of abandonment properly may be raised and determined in an ex parte proceeding need not be passed upon here, because, upon -the facts recited, it is clear that it should not be held that the registration involved had been abandoned. The decision of the commissioner is affirmed.