Durox Company v. Duron Paint Manufacturing Company

• Decision Date: 29 June 1963
• Docket Number: No. 8875.,8875.
• Citation: 320 F.2d 882
• Parties: The DUROX COMPANY, Appellee, v. DURON PAINT MANUFACTURING COMPANY, Inc., Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

320 F.2d 882 (1963)

The DUROX COMPANY, Appellee, v. DURON PAINT MANUFACTURING COMPANY, Inc., Appellant.

No. 8875.

United States Court of Appeals Fourth Circuit.

Argued March 26, 1963.

Decided June 29, 1963.

Francis C. Browne, Washington, D. C. (William E. Schuyler, Jr., Andrew B. Beveridge, Joseph A. DeGrandi, and Browne, Schuyler & Beveridge, Washington, D. C., on the brief), for appellant.

Bruce B. Krost, Cleveland, Ohio (Robert R. Bair, Baltimore, Md., Woodling, Krost, Granger & Rust, Cleveland, Ohio, and Venable, Baetjer & Howard, Baltimore, Md., on the brief), for appellee.

Before HAYNSWORTH and J. SPENCER BELL, Circuit Judges, and PREYER, District Judge.

PREYER, District Judge.

Plaintiff's complaint under 15 U.S.C.A. § 1071 and 35 U.S.C.A. § 146 asked the district court to reverse a decision of the Patent Office Trademark Trial and Appeal Board and to direct the Commissioner of Patents to issue to plaintiff its requested registration of DUROX for "a liquid primer sealer surface coating which may also be used as an additive for paints, enamels and lacquers." The district court found for Durox on its complaint to the extent of a more limited description of its goods than as described in its application in the Patent Office, stating that Durox is "entitled to the more limited registration of DUROX requested at the end of the case, namely, for a `liquid chemical composition for use as an additive for automotive paints, enamels, and lacquers.'" Defendant Duron on appeal denies the district court's authority to modify the findings of the Patent Office in this manner, contending that the district court is limited to affirming or reversing the Patent Office. Defendant Duron also objects to the dismissal of its counterclaim for an injunction restraining plaintiff's use of the mark DUROX.

Defendant's Counterclaim For Infringement

Defendant Duron successfully opposed the registration before the Board on the ground that plaintiff's mark DUROX so nearly resembles defendant's mark DURON as to be likely to cause confusion. The trial in the district court being de novo, there was received in evidence a number of exhibits and considerable testimony over and above that found in the record of the Patent Office. The district court found the facts substantially as follows.

Plaintiff is a distributor of specialty automotive products, which it sells nationally through automotive specialty jobbers, principally to auto body shops, which repair and refinish motor vehicles.

Defendant manufactures a line of paint and paint products, including various additives, which are sold to the general public principally through paint stores and the paint departments of general stores. Defendant's products are sold along the Eastern Seaboard from Massachusetts to South Carolina. They are not sold west of the Appalachians.

Few of the products sold by plaintiff are similar to any products sold by defendant. The only two which have any considerable sale are DUROX S-88, an additive for enamel to improve bond, gloss, flow and drying time, and DUROX L-98, an additive for converting lacquer to semi-enamel. It is primarily for these two products that plaintiff seeks the proposed registration. Although these two additives could be mixed with paints used for various purposes, they are not advertised or sold except to the automotive specialty trade.

Very few dealers sell both (1) automotive paints and (2) house paints and other paints for use by the general public. The evidence disclosed only two related companies in Norfolk and Richmond.¹ Companies such as DuPont, Sherwin-Williams, Pittsburgh Plate Glass and Glidden, which manufacture both automotive and general paints, usually sell the two lines through different channels, often with different trade names. Auto body shops ordinarily purchase paint, as well as other products, from automotive supply houses. The proprietors of such shops are knowledgeable buyers; they are not likely to believe that all of the paints or other products sold under marks beginning with DUR or DURO have a common origin, or that either party to this case is sponsoring the other's product.

No instance of actual confusion of source or any other confusion between plaintiff's and defendant's products has been proved or claimed.

Both DUROX and DURON are weak marks. The first Syllable of each is suggestive and has been used as the first syllable of hundreds of marks, many of them in Class 16, Protective and Decorative Coatings, the class here involved.

The court below, after finding the above facts, found that there is no likelihood of confusion between the marks of the parties as being presently used in the trade on their respective products and thereupon dismissed defendant's counterclaim for infringement. This finding is binding upon this court unless shown to be clearly erroneous. Nichols v. Minnesota Mining & Mfg. Co., 109 F.2d 162, CCA4-1940; American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, CCA5-1963; and see Sureline Mfg. Co. v. Marzall, 105 F.Supp. 247, Dis.Ct.D.C.-1951.

Infringement is based on the existence of similarity such as would likely cause confusion of any appreciable number of ordinary prudent purchasers as to the source of origin of the goods.² Defendant does not challenge this general rule nor does defendant seriously contend that there is not evidence to support the district court's findings of fact as facts. But defendant argues that the district court committed legal error in the criteria applied in determining whether there was likelihood of confusion as to source of origin. Specifically, defendant objects that the district court distinguished between the products of the parties on the basis of (1) the channels of trade and (2) end uses of the products. Defendant's position is that the use to which goods are put or the channels of trade or classes of purchasers are not determinative of source of origin.

Defendant's position finds support in Esso Standard Oil Co. v. Sun Oil Co., 97 U.S.App.D.C. 154, 229 F.2d 37, cert. den. 351 U.S. 973, 76 S.Ct. 1027, 100 L.Ed. 1491. But the majority of courts have not followed the narrow rule applied in the District of Columbia. The weight of authority is that likelihood of confusion is a question of fact and in arriving at a conclusion all relevant factors should be considered in an over-all perspective. While the determination is not based on the "equities," it is based on balancing the conflicting interests both parties have in the unimpaired continuation of their trade-mark use.³ Avon Shoe Co. v. David Crystal, Inc., 279 F.2d 607, Cir. 2 (1960). We think the trial court was correct in taking into consideration the weak nature of the marks involved, the specific differences in the goods of the parties, the different marketing channels through which the respective goods moved, the difference in customers (whether the goods have common purchasers or not) and the type of persons who purchase the goods (whether sophisticated and knowledgeable). Drexel Enterprises, Inc. v. Richardson, 10th Cir., 312 F.2d 525 (1962); Sears Roebuck & Co. v. Johnson, 3 Cir., 219 F.2d 590 (1955); Miles Shoes, Inc. v. R. H. Macy & Co., Inc., 2 Cir., 199 F.2d 602, 603 (1952); Sears Roebuck & Co. v. Allstates Trailer Rental, Inc., 188 F.Supp. 170 (D.C.Md.1960). Fairway Foods Inc. v. Fairway Markets, Inc., 227 F.2d 193, 9th Cir. (1955); American Law Institute Restatement of Torts, § 729. The district court properly concluded that there is no likelihood of confusion as to the source of origin of the goods.⁴

Power Of The Court To Modify The Patent Office Decree

The district court found that "there is little or no likelihood of confusion so long as plaintiff's and defendant's products are distributed through different channels, as they are at present," but concluded that "there might be some confusion if plaintiff's additives as presently labeled were offered for sale from the shelves of paint stores or general stores." The district court therefore held that plaintiff was entitled to registration of DUROX only in the more limited form of a "liquid chemical composition for use as an additive for automotive paints, enamels, and lacquers" (emphasis supplied). The court thereupon dismissed the complaint without prejudice to plaintiff's right to apply for such registration.⁵ The court further directed that so long as plaintiff sells under the DUROX mark it should either (a) refrain from selling directly or indirectly to or through stores which sell house paints or other paints for use by the general public, or (b) modify its labels on DUROX L-98, DUROX S-88, and any similar or other paint products now or hereafter sold, to show that they are being offered only for use in painting motor vehicles.

Defendant strenuously contends that the district court lacked the statutory power to modify the decision of the Patent Office in this manner, contending that 35 U.S.C. § 145 and 35 U.S.C. § 146 are controlling. These sections provide that the adjudication of the District Court merely "authorizes" the Commissioner to issue the patent or trademark registration "on compliance with the requirements of law."⁶ Defendant points out that 35 U.S.C. § 144, dealing with the alternative route of appeal from the Patent Office to the United States Court of Customs and Patent Appeals, provides that the latter court's determination "governs further proceeding" in the case,⁷ indicating a statutory purpose to limit the jurisdiction of the District Court solely to the application which was before the Patent Office.

Assuming arguendo that defendant's interpretation...