Standard Oil Co. of New Jersey v. Alden Speare's Sons Co.

Jackson, Judge, delivered the opinion of the court: Appellee filed in the United States Patent Office an application, Serial No. 462,237, dated July 22, 1943, for registration of its trademark “KUTKON,” superimposed upon the depiction of a spear, as applied to a cutting* lubricant. Appellant opposed the registration as being likely to cause confusion in trade under section 5 of the Trade-Mark Act of 1905, relying* upon its use of the trade-mark “KUTWELL” as applied to soluble cutting oil, cutting oil and lubricating oils and greases. The case was submitted upon an agreed statement of facts in which it is disclosed that appellant is the prior user of its mark. The Examiner of Interferences, holding that the goods of the parties are substantially identical, was of the opinion that the only issue present involved the similarity of the respective marks. The. examinfer pointed out that the mark of appellant is descriptive of the character and quality of the goods to which it is applied and, while the mark of appellee contains the descriptive syllable “KUT,” the mark was held, when considered as a whole, to sufficiently distinguish from the mark of appellant as to negative likelihood of confusion in trade. Therefore, he dismissed the notice of opposition and adjudged that appellee is entitled to the registration sought. Appellant requested reconsideration of the examiner’s decision, alleging that he had failed to give proper consideration to the wide use by appellant of its trade-mark and did not consider that it is so well known in the trade by reason of continued use since 1916 that it has acquired a secondary meaning as indicating origin in appellant of the goods to which it is applied; that the examiner had failed to give sufficient weight to the great volume of sales, as appears in the stipulated facts, of appellant’s cutting oil under its involved trademark long* prior to the use by appellee of the mark sought to be registered. The examiner reaffirmed his original decision, stating that the matters alleged in appellant’s request for reconsideration had been carefully considered by him. Upon appeal the Commissioner of Patents, by Leslie Frazer, First Assistant Commissioner, affirmed the decision of the examiner. In his decision, 67 USPQ 220, the commissioner noted that appellant had used its mark since March 1916 in connection with substantially identical merchandise as that of appellee and stated lie was of opinion that although appellant’s mark is descriptive and hence not registrable as a technical trade-mark, it was sufficient for the purpose of [1121] bringing an opposition proceeding. He held, however, that the descriptive character of appellant’s mark must be considered in judging the question of likelihood of contusion, citing Hall v. The Pennzoil Co., Etc., 29 C. C. P. A. (Patents) 933, 126 F. (2d) 506, 53 USPQ 61. The commissioner pointed out that the reasoning of the court there applies to the facts here for the reason that the only resemblance between the marks in issue is in the common descriptive symbol “KUT.” He commented upon cases cited by appellant, among which he said those most nearly in point are: Abraham & Straus, Inc. v. Truval Manufacturers, Inc., 31 C. C. P. A. (Patents) 731, 138 F. (2d) 77, 59 USPQ 162; Marshall Field & Co. v. R. H. Macy & Co., 28 C. C. P. A. (Patents) 807, 115 F. (2d) 921, 47 USPQ 433. He noted that in each of those cases the decision of the court was based upon a finding* that the entire marks of the parties suggested character or quality of the goods and distinguished the instant case from those cited by appellant by pointing out that appellee’s mark is suggestive of character or quality of its goods only with respect to the first syllable-“KUT” and that the second syllable is completely arbitrary as opposed to the completely descriptive character of appellant’s mark. From the commissioner’s decision, this appeal was taken. In his brief and oral argument here counsel for appellant contends that the decision appealed from should be reversed for the alleged reason that the involved marks of the parties are confusingly similar when used on goods of the same descriptive properties; that the marks had been dissected by the tribunals below and not considered in their entireties; that proper weight had not been accorded to the fact that appellant’s mark had acquired a secondary meaning; and that appellee being a newcomer in the cutting lubricant field should not be permitted to register a mark said to be quite similar to that of appellant. It is clear that .there are similarities between the marks “KUT-WELL” and “KUTKON” and that they are applied to goods of the same descriptive properties. It is in effect admitted by appellant that its mark “KUTWELL” is essentially descriptive of the character and quality of the goods to which it is applied. The mark sought to be registered, while its first syllable would indicate its character or quality in the cutting of metal, when considered as a whole, may not properly be held to be a mark descriptive of the character or quality of appellee’s goods. We are of opinion that the decisions below did not “dissect” the marks into their component parts as contended by appellant. In the comparison of trade-marks in this type of litigation it has been held many times by this court that it is proper to analyze the opposed marks as an aid to a decision as to confusing similarity. That is what was [1122] clone in this case by the Examiner of Interferences and the commissioner. Using such proper analysis the tribunals below came to the conclusion that the mark of appellant is wholly descriptive and that the mark sought to be registered by appellee is descriptive only in its first syllable. When the arbitrary syllable “KON” is added to the descriptive syllable “KUT,” in our opinion the entire mark of appel-lee may not be considered descriptive and so differentiates from the mark of appellant that it is entitled to registration. We find no error in the decision appealed from and accordingly it is affirmed.