476 F.2d 1357 (Fed. Cir. 1973), 8866, In re Application of E. I. DuPont DeNemours & Co.

Docket Nº:Patent Appeal 8866.
Citation:476 F.2d 1357, 177 U.S.P.Q. 563
Party Name:Application of E. I. DuPONT DeNEMOURS & CO. (Assignee of Horizon Industries Corporation).
Case Date:May 03, 1973
Court:United States Court of Customs and Patent Appeals
 
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476 F.2d 1357 (Fed. Cir. 1973)

177 U.S.P.Q. 563

Application of E. I. DuPONT DeNEMOURS & CO. (Assignee of Horizon Industries Corporation).

Patent Appeal No. 8866.

United States Court of Customs and Patent Appeals.

May 3, 1973

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Eugene L. Grimm, Wilmington, Del., atty. of record, for appellant. Gerald A. Hapka, Washington, D. C., of counsel.

S. Wm. Cochran, Washington, D. C., for Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation.

MARKEY, Chief Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, 166 USPQ 351 (1970), affirming a refusal to register DuPont's mark RALLY for a combination polishing, glazing and cleaning agent for use on automobiles 1 on the basis of likelihood of confusion under section 2(d) of the Lanham Act with Horizon's registered mark RALLY for an all-purpose detergent. 2 We reverse.

The application now before us was originally filed by Horizon. DuPont had earlier filed for registration of RALLY for a combination wax and cleaning agent for automobiles. 3 That application was refused in view of Horizon's registration. DuPont appealed and the board affirmed. 4

While its appeal was pending, DuPont purchased Horizon's mark for the automobile product, the present application and the good will of that business. Because Horizon retained RALLY for allpurpose detergent, an agreement designed to avoid conflict was entered into on the same day. Boundaries of use of the marks were established, permitting the sale of products "incidentally usable" in the other party's market but prohibiting any promotion as "especially suited for use in such market." DuPont's realm was the "automotive aftermarket." Horizon's encompassed the "commercial building or household market."

The examiner, aware of the assignment and agreement, nonetheless refused registration, citing Horizon's registration and describing the issue as "ruled upon" in the board's earlier decision. The board affirmed, holding:

It is our opinion that despite any agreement between the parties the public interest cannot be ignored, and when the goods of the parties are as

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closely related as those here involved, their sale under the identical mark "RALLY" would be likely to result in confusion, mistake, or deception. cf. In re Avedis Zildjian Co., 157 U.S. p. 2517 [394 F.2d 860, 55 CCPA 1126] (CCPA, 1968); and In re Continental Baking Company, 156 U.S. p. 2514 [390 F.2d 747, 55 CCPA 967] (CCPA, 1968). * * * The mere fact that registrant may have precluded itself from selling an automobile cleaner under the mark "RALLY" does not overcome the likelihood of confusion as set forth in Section 2(d) of the Trademark Statute.

OPINION

Our decision turns on the application of Sec. 2(d) to the facts before us. DuPont, having an unquestioned right to use, argues that the "right to register follows the right to use, " particularly where the right on its goods is exclusive, Horizon having given up use of the mark in DuPont's market. The Patent Office solicitor denies such a broad relationship in the rights to use and register and emphasizes the duty of the Patent Office "to guard the public interest" against confusion.

Both parties have cited prior opinions of this court. We are thus presented with a welcomed opportunity to set forth a reliable guide for decision-making in cases involving Sec. 2(d). It need hardly be said that concepts expressed in our prior opinions and inconsistent with what we say here may be considered no longer viable in this court.

The Statute

We begin with interpretation of the Lanham Act (Chapter 22, Title 15) as it applies here. The legislative history 5 of the Act as a whole describes its objectives as making registration "more liberal, " dispensing with "mere technical prohibitions and arbitrary provisions" and modernizing the trademark statutes "so that they will conform to legitimate present-day business practice." The basic goal of the Act, which dealt with a good deal more than registration, was "the protection of trademarks, securing to the owner the good will of his business and protecting the public against spurious and falsely marked goods." Accordingly, we consider the pre-Lanham Act decisions 6 presented here to be inapt.

Sec. 2 (15 U.S.C. § 1052), in pertinent part reads:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it

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(d) Consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant to cause confusion, or to cause mistake or to deceive: * * *

Under the statute the Commissioner must refuse registration when convinced that confusion is likely because of concurrent use of the marks of an applicant and a prior user on their respective goods.

The phrase "on account of its nature" in Sec. 2 clearly applies to the "resembles" element of Sec. 2(d). But the question of confusion is related not to the nature of the mark but to its effect "when applied to the goods of the applicant." The only relevant application is made in the marketplace. The words

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"when applied" do not refer to a mental exercise, but to all of the known circumstances surrounding use of the mark.

The Decisional Process

The ultimate question of the likelihood of consumer confusion has been termed a question of fact. Coca-Cola Company v. Snow Crest Beverages, Inc., 162 F.2d 280 (1st Cir. 1947), cert. den. 332 U.S. 809, 68 S.Ct. 110, 92 L.Ed. 386 (1947). If labeled a mixed question or one of law, it is necessarily drawn from the probative facts in evidence. As so often said, each case must be decided on its own facts. There is no litmus rule which can provide a ready guide to all cases.

In testing for likelihood of confusion under Sec. 2(d), therefore, the following, when of record, must be considered:

(1) The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

(2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.

(3) The similarity or dissimilarity of established, likely-to-continue trade channels.

(4) The conditions under which and buyers to whom sales are made, i. e. "impulse" vs. careful, sophisticated purchasing.

(5) The fame of the prior mark (sales, advertising, length of use).

(6) The number and nature of similar marks in use on similar goods.

(7) The nature and extent of any actual confusion.

(8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.

(9) The variety of goods on which a mark is or is not used (house mark, "family" mark, product mark).

(10) The market interface between applicant and the owner of a prior mark:

(a) a mere "consent" to register or use.

(b) agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks by each party.

(c) assignment of mark, application, registration and good will of the related business.

(d) laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.

(11) The extent to which applicant has a right to exclude others from use of its mark on its goods.

(12) The extent of potential confusion, i. e., whether de minimis or substantial.

(13) Any other established fact probative of the effect of use.

Where the Patent Office follows such process, 7 it is not abandoning its duty under Sec. 2(d) or allowing individuals to take the law into their own hands. Consideration of evidence emanating from the only place where confusion can occur, i. e. the marketplace, is not related to who decides but to the process of deciding.

The required inquiry, though more sweeping, is not unlike that provided for in Patent Office Rule 2.41 wherein the applicant is specifically invited to submit all evidence, including letters from the trade or public, tending to show that the mark, otherwise merely descriptive, distinguishes the goods.

The evidentiary elements are not listed above in order of merit. Each may

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from case to case play a dominant role. In Schenley Distillers, Inc. v. General Cigar Co., Inc., 427 F.2d 783, 57 CCPA 1213 (1970), and in McKesson & Robbins, Inc. v. P. Lorillard Co., 120 USPQ 306 (TTAB 1959), element (9) led to a finding that confusion was unlikely when the same mark was used on a beverage and a tobacco product. In John Walker & Sons, Limited v. Tampa Cigar Company, Inc., 124 F.Supp. 254 (S.D. Fla.1954), aff'd, 222 F.2d 460 (5th Cir. 1955) element (5) made confusion likely when the same mark was used on beverages and tobacco. See, also, Carling Brewing Company, Inc. v. Phillip Morris, Inc., 277 F.Supp. 326 (N.D.Ga.1967) and Geo. A. Dickel Co. v. Stephano Brothers, 155 USPQ 744 (TTAB 1967) involving beverages and tobacco.

We find no warrant, in the statute or elsewhere, for discarding any evidence bearing on the question of likelihood of confusion. Reasonable men may differ as to the weight to give specific evidentiary elements in a particular case. In one case it will indicate that confusion is unlikely; in the next it will not. In neither case is it helpful or necessary to...

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