473 F.2d 901 (Fed. Cir. 1973), 8876, Paula Payne Products Co. v. Johnson Pub. Co., Inc.

Docket NºPatent Appeal 8876.
Citation473 F.2d 901, 177 U.S.P.Q. 76
Party NamePAULA PAYNE PRODUCTS COMPANY, Appellant, v. JOHNSON PUBLISHING COMPANY, INC., Appellee.
Case DateMarch 01, 1973
CourtUnited States Court of Customs and Patent Appeals

Page 901

473 F.2d 901 (Fed. Cir. 1973)

177 U.S.P.Q. 76

PAULA PAYNE PRODUCTS COMPANY, Appellant,

v.

JOHNSON PUBLISHING COMPANY, INC., Appellee.

Patent Appeal No. 8876.

United States Court of Customs and Patent Appeals.

March 1, 1973

Edward G. Fenwick, Jr., Washington, D. C., Mason, Fenwick & Lawrence, Washington, D. C., attorneys of record, for appellant.

Leonard S. Knox, Chicago, Ill., attorney of record, for appellee.

Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.

LANE, Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, abstracted at 166 USPQ 512 (1970), dismissing an opposition lodged by appellant, registrant 1 of SPRAY 'N STAY for "hair spray, " to the registration 2 of SPRAY 'N' GLOW for "hair conditioner or hair brightener spray." Both parties took testimony and introduced exhibits into evidence. The board concluded from the record that:

[T]he goods of the parties, although differing specifically, comprise spray type hair preparations such as a single producer might well be expected to make, and to sell through the same trade channels to the same average purchasers * * *.

However, the board held that the marks do not so resemble each other that there is a reasonable likelihood of confusion, mistake or deception. We disagree, and we reverse the board's decision.

In reaching its decision, the board reasoned as follows:

We do not agree with opposer that the pronunciation of "SPRAY 'N' [sic: 'N] STAY" and "SPRAY 'N' GLOW" is or would likely be "virtually

Page 902

the same". Nor do we agree that the connotations of these marks in their usage is "identical". On the contrary, opposer's mark suggests a preparation which is to be sprayed upon the hair to hold it in place whereas applicant's mark suggests a preparation which is to be sprayed upon the hair to impart a glow or sheen thereto.

It is apparent that the similarity between "SPRAY 'N' [sic: 'N] STAY" and "SPRAY 'N' GLOW" is occasioned primarily by the inclusion of the "SPRAY" in each thereof which word is clearly descriptive of the nature of the products to which the marks are applied. And, considering the descriptiveness of this word, and the differences between the marks when considered in their entireties, it is our opinion that their contemporaneous use is not reasonably calculated to cause confusion or mistake or to deceive.

The ultimate question before us is whether the...

To continue reading

Request your trial
77 practice notes
  • A New Deference Standard: The Rebuttable Presumption of Validity for USPTO Trademark Likelihood-of-Confusion Determinations
    • United States
    • Iowa Law Review Nbr. 103-1, November 2017
    • November 1, 2017
    ...of likelihood of confusion.39This rejection is communicated through an Office action.40The applicant must Co. v. Johnson Publ’g Co., 473 F.2d 901, 902 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the marks, but rather whether the marks will confuse people into believi......
  • In re Mr. Recipe, LLC, 031816 USTTAB, 86040643
    • United States
    • Federal Cases United States Patent and Trademark Office
    • March 18, 2016
    ...improperly read limitations into the registration.")(internal citation omitted).; Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (CCPA 1973) ("What is more significant than appellee's failure to limit the description of goods to a particular ......
  • In re Mr. Recipe, LLC, 031816 USTTAB, 86040656
    • United States
    • Federal Cases United States Patent and Trademark Office
    • March 18, 2016
    ...improperly read limitations into the registration.")(internal citation omitted).; Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (CCPA 1973) ("What is more significant than appellee's failure to limit the description of goods to a particular ......
  • In re INC International Co., 101315 USTTAB, 85753740
    • United States
    • Federal Cases United States Patent and Trademark Office
    • October 13, 2015
    ...including those bearing the names of college and professional basketball teams. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 U.S.P.Q. 139 (CCPA 1958); In re Linkvest S.A., 24 U.S.P.Q.2d ......
  • Request a trial to view additional results
76 cases
  • In re Mr. Recipe, LLC, 031816 USTTAB, 86040643
    • United States
    • Federal Cases United States Patent and Trademark Office
    • March 18, 2016
    ...improperly read limitations into the registration.")(internal citation omitted).; Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (CCPA 1973) ("What is more significant than appellee's failure to limit the description of goods to a particular ......
  • In re Mr. Recipe, LLC, 031816 USTTAB, 86040656
    • United States
    • Federal Cases United States Patent and Trademark Office
    • March 18, 2016
    ...improperly read limitations into the registration.")(internal citation omitted).; Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (CCPA 1973) ("What is more significant than appellee's failure to limit the description of goods to a particular ......
  • In re INC International Co., 101315 USTTAB, 85753740
    • United States
    • Federal Cases United States Patent and Trademark Office
    • October 13, 2015
    ...including those bearing the names of college and professional basketball teams. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 U.S.P.Q. 139 (CCPA 1958); In re Linkvest S.A., 24 U.S.P.Q.2d ......
  • In re Powerful Vision Limited, 122815 USTTAB, 79145119
    • United States
    • Federal Cases United States Patent and Trademark Office
    • December 28, 2015
    ...goods, and that they are available to all classes of purchasers for those goods. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 U.S.P.Q. 76, 77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 U.S.P.Q. 139, 140 (CCPA 1958); In re Linkvest S.A., 24 U......
  • Request a trial to view additional results
1 books & journal articles

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT