KALART COMPANY, INC. v. Camera-Mart, Inc.

• Decision Date: 01 October 1958
• Docket Number: Patent Appeal No. 6370.
• Parties: The KALART COMPANY, Inc., Appellant, v. The CAMERA-MART, Inc., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

119 USPQ 139, 258 F.2d 956 (1958)

The KALART COMPANY, Inc., Appellant, v. The CAMERA-MART, Inc., Appellee.

Patent Appeal No. 6370.

United States Court of Customs and Patent Appeals.

June 18, 1958.

Rehearing Denied October 1, 1958.

Frederick E. Hane, New York City (Hane & Nydick and Abraham J. Nydick, New York City, of counsel), for appellant.

Bernard J. Levy, New York City (Brower, Brill & Gangel, New York City, of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, and RICH, Judges.

JOHNSON, Chief Judge.

A petition has been filed to cancel the registration of "Camart"¹ for cameras, camera dollies and parts thereof, tripods and boom arms, camera tripods, prismatic lenses for motion picture cameras, camera mounts, lens extension tubes, motion picture cameras and parts thereof and electrical syncronous motors and soundproof housings known as blimps. Petitioner is the registrant of "Kalart"² for photographic cameras and camera attachments, as well as of several other marks, most of which contain the word "Kalart" in combination with another word.

The Examiner of Interferences was of the opinion that the similarity between "Camart" and "Kalart," as applied to the goods in question, was such as to cause confusion, mistake or deception of purchasers. His decision to cancel registrant's mark was reversed on appeal by the Assistant Commissioner, 112 U.S. P.Q. 147, on reconsideration 112 U.S.P.Q. 367, primarily for the reason that the actual trade practices of the parties, as shown by the record, militated against the possibility of confusion urged by petitioner.

Petitioner has appealed from the Assistant Commissioner's decision urging most strenuously that the Assistant Commissioner erred in considering the trade practices of the parties in view of the fact that the certificates of registration of the registrant and petitioner recite identical goods, at least in part.

We agree with the petitioner that the trade practices of the registrant may not be considered in a cancellation proceeding, for the proceeding is based upon the likelihood of damage resulting from the registration of a mark. Since the registration gives the owner thereof certain procedural advantages "in connection with the goods or services specified in the certificate"³ it is rather obvious that a registrant cannot defend in a cancellation proceeding by showing, on the basis of testimony adduced during such proceeding, that the goods with which its mark is actually used (as distinguished from those recited in its certificate) are such as to negative the likelihood of confusion with the petitioner's mark. If the registrant were successful in the proceeding, there is no assurance that its trade practices would not change to correspond with the allegations of the certificate. In view of this fact, we must restrict ourselves to a consideration of the goods recited in registrant's certificate. This case must be considered, therefore, on the basis of the use of the respective marks of the parties on identical goods, namely cameras, parts thereof and the like.

Notwithstanding this identity of goods, we are of the opinion that the decision of the Assistant Commissioner must be affirmed. In our opinion the marks neither look alike nor do they have similar meanings. On the contrary, "Camart" would seem to be suggestive of cameras or the like, whereas "Kalart" is not similarly suggestive. At best, there is only a possibility of a slight similarity in sound, not great enough, however, to raise the possibility of confusion as to origin. Weighing this similarity against the dissimilarities set forth above, we are of the opinion that the marks in question are not confusingly similar.

For the foregoing reasons, the decision of the Assistant Commissioner is affirmed.

Affirmed.

O'CONNELL, Judge (dissenting).

Appellant's mark "Kalart" is arbitrary and nowise descriptive or suggestive of the goods to which it is applied. We have repeatedly held that in cases like this a greater difference is necessary, in sound, meaning and appearance, to avoid the likelihood of confusion with a mark previously owned and in use by another engaged in the sale of identical goods. See, for example, Lauritzen & Co., Inc., v. Borden Co., 239 F.2d 405, 44 C.C.P.A., Patents, 720; Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 44 C.C.P.A., Patents, 880; W. E. Kautenberg Co. v. Ekco Products Co., 251 F.2d 628, 45 C.C.P.A., Patents, 761.

It is well settled also that similarity in sound alone is sufficient to establish the likelihood of confusion. Skol Company, Inc., v. Olson, 151 F.2d 200, 33 C.C.P.A., Patents, 715; Bordo Products Co. v. B. A. Railton Co., 173 F.2d 981, 36 C.C. P.A., Patents, 1059; Salem Commodities, Inc., v. Miami Margarine Co., 244 F.2d 729, 44 C.C.P.A., Patents, 932.

There is not the slightest doubt that "Cam," the first and accented syllable of the appellee's mark, "Camart," is pronounced as cam in "camera," with a short "a" while the "c" therein is a hard "c," which must be, and universally is, pronounced with the identical sound of "K," the same as the initial letter "k" in appellant's mark.

One of the appellee's witnesses testified that he had always heard "Kal," the initial syllable of appellant's mark, pronounced with a broad "a" as in "rate" or "fate."...