APPLICATION OF CONTINENTAL BAKING COMPANY, Patent Appeal No. 7863.

• Decision Date: 11 April 1968
• Docket Number: Patent Appeal No. 7863.
• Citation: 156 USPQ 514,390 F.2d 747
• Parties: Application of CONTINENTAL BAKING COMPANY.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

156 USPQ 514, 390 F.2d 747 (1968)

Application of CONTINENTAL BAKING COMPANY.

Patent Appeal No. 7863.

United States Court of Customs and Patent Appeals.

February 15, 1968.

Rehearing Denied April 11, 1968.

Warren H. Rotert, New York City (Morgan, Finnegan, Durham & Pine, Granville M. Pine, New York City, of counsel), for appellant.

Joseph Schimmel, Washington, D. C. (Jere W. Sears, Washington, D. C., of counsel), for the Commissioner of Patents.

Before WORLEY, Chief Judge, CLARK, Justice,^* and RICH, SMITH, and KIRKPATRICK,^** Judges.

WORLEY, Chief Judge.

Continental seeks registration of "County Fair" for fresh bread, cake and sweet goods — namely cinnamon sticks, sweet rolls and assorted pastries. Registration has been refused on the ground that applicant's mark so resembles the mark "County Fair," previously registered for frozen fruit and cream pies, as to be likely to cause confusion. In so holding, the Trademark Trial and Appeal Board stated, 147 USPQ 333:

Applicant\'s director of marketing in his affidavit has pointed out the differences in the production and marketing of fresh bread, cake and sweet goods, on the one hand, and frozen fruit and cream pies on the other. Notwithstanding that there may be differences in the production and marketing of such goods by companies as the applicant and registrant, it is common knowledge that bread, cake, sweet goods, and pies of all sorts are produced and/or sold in the same bake shops. It may be argued that this is true only with regard to the neighborhood bakery but the fact remains that the public knows that bread, rolls, cakes, pastries and pies do emanate from a single producer or seller. In this regard we note that applicant, through its various divisions, produces and sells bread, rolls, pastries, frozen fruit pies and frozen cream pies.

The involved products are bakery products which are sold in the same type retail outlets to the same class of purchasers. In view of the identity of the marks, we conclude that there is a likelihood of confusion.

We have found nothing in the record to refute that reasoning and conclusion.

During proceedings below appellant introduced a document signed by an officer of Carnation Co., present owner by assignment of the registered mark "County Fair." In evaluating that instrument the board stated:

Applicant has submitted an affidavit by an official of the Carnation Company, the present owner of the cited registration, and it is stated therein that "The said Carnation Company hereby consents, in the matter of the above-entitled trademark application, and otherwise to the use by the Continental Baking Company of the trademark `County Fair\' for fresh bread, cake and sweet goods," and further that "The Carnation Company, being engaged in and thoroughly familiar with the business of food production and distribution, considers said goods * * * to be in a different category from frozen fruit and cream pies * * *, and believes that the use by Continental Baking Company to which consent is above given is in no way likely to cause confusion or mistake or to deceive."

A fair reading of the above clearly indicates that the owner of the cited registration consents to applicant\'s use and registration of "County Fair" for bread, cake and sweet goods. (Emphasis supplied).

* * * * * *

The cases relied upon by applicant are readily distinguishable. In the case of In re National Distillers & Chemical Corp., 297 F.2d 941, 49 CCPA 854 132 USPQ 271, 273 (CC PA, 1962), the court ruled that the marks there involved did not look alike, sound alike nor evoke the same psychological responses and in the case of In re Electro Vox, Inc., 134 USPQ 463 (TT&A Bd., 1962) the cited mark and the mark sought to be registered were not the same. In the instant case, we have identical marks. The situation here also differs from that of In re A. C. Gilbert Company, 135 USPQ 38 (TT&A Bd., 1962), where it was found that there were differences between the goods, both in character and uses, that the trade channels differed, that the means of production were different and that the classes of purchasers were different. Here the goods are bakery products which can be made by the same producers, which are sold in the same type of retail outlets and which are or can be purchased by the same person.

We express no doubt as to our conclusion that there is a likelihood of confusion and therefore do not find the registrant\'s consent or its opinion persuasive in this matter.

Appellant argues that In re National Distillers & Chemical Corp., 297 F.2d 941, 49 CCPA 854, does control in the present circumstances. Certainly there is nothing in National Distillers to justify the controlling effect appellant seeks here. There a majority¹ expressly found the competing marks and goods to be different, stating:

We shall first consider whether the differences in the marks and in the goods are such that confusion or mistake or deception of purchasers is likely. The marks MARQUÉS DEL MÉRITO and MERITO do not look alike, sound alike nor evoke the same psychological responses. Wines and rum are goods whose differences are clearly recognized by the purchasers thereof. These differences are sufficient to raise a doubt as to likelihood of confusion, mistake or deception of purchasers arising from the common use of the word MERITO. Under these circumstances, we think the alleged agreements between applicant and the owner of the reference registration are of evidentiary value.

It may well be that individual agreements regarding use and registration of trademarks are of "evidentiary value," as the board here has demonstrated. However, in enacting Section 2(d) of the Lanham Act² Congress clearly charged the Patent Office with the initial responsibility of determining whether certain trademarks are entitled to registration, as distinguished from use, within the scope of that section. To hold that the present consent to register should control would be to allow individuals to take the law in their own hands, thus usurping the responsibility that Congress has placed in the Patent Office. Should there be any language in National Distillers intimating that individuals have such rights regarding registration of trademarks, then to that extent that decision is hereby expressly overruled. See also In re Wilson Jones Company,³ 337 F.2d 670, 52 CCPA 805.

The decision is affirmed.

Affirmed.

RICH, Judge (dissenting).

The majority has no basis for disparaging the opinion for the court in National Distillers as that of a "nominal" majority. The majority in that case consisted of Judge Smith, who wrote the opinion, Judge Kirkpatrick, who joined it, and myself.¹ I have just reread my concurring opinion of six years ago and there is not a word in it in conflict with Judge Smith's opinion with which I then fully agreed, as I do now. My only purpose in writing a concurring opinion was, as I stated, to examine the Patent Office Solicitor's concepts, as there stated in his brief, about the Patent Office duty to protect the public by refusing registrations and to show that this not only does not protect the public but actually interferes with the normal protection of the public through the enforcement of private rights.

The same reasoning, some of which appellant quotes in its brief, is equally applicable here.

Lest I again be relegated to a nonparticipating status for lack of an explicit statement, I declare by present full agreement with Judge Smith's dissenting opinion herein.

In no event can I subscribe to an opinion which speaks of "expressly" overruling a prior decision of this court on a hypothetical or "if" basis that it may contain "language" "intimating" something or other. We know what is in our opinions. We can say whether or not we will or will not follow decisions as precedents. Overruling is serious business, not to be confused with distinguishing prior cases or the reasoning in prior opinions. Judge Smith has pointed out how it upsets the business community. The decision in National Distillers stands. "Overruled" is not a term to be bandied about in a casual manner.

For reasons I stated in the National Distillers case, I think we must not be so literal minded about section 2(d) of the Trademark Act of 1946 that we defeat its basic purpose, as the majority is doing here. It follows the reasoning of the board which categorized the goods of both parties as "bakery products." To leave it at that is to leave a false impression and to ignore the evidence in the affidavit of Mr. Boote, the food industry expert employed by appellant, which points out the manufacturing and marketing differences respecting the fresh bakery products of the applicant and the frozen food techniques of production and distribution of the consenting registrant's frozen fruit pies and frozen cream pies.² It is these differences which support the affidavit form of consent (construed by the board to be a consent to both use and registration) by the owner of the reference registration in which the Vice President of that company expresses the view that confusion, deception, or mistake is unlikely.

The facts of this case are, I believe, such as to bring it clearly within the principles expressed by Judge Smith in the three-judge majority opinion in National Distillers as well as the further views of my concurring opinion therein. This calls for reversal.

SMITH, Judge, with whom RICH, Judge joins (dissenting).

On the record here, I respectfully dissent from the conclusion of the majority and disagree with some of the reasons stated by the majority in support of that conclusion.

In order to place this appeal in its proper perspective, it should be noted that, as an appellate court, we are charged by Congress with the responsibility to "hear and determine" an appeal from a decision of the Trademark Trial and Appeal Board "on the evidence produced before the Patent Office." The statute requires that our decision shall be...