MORTON-NORWICH PROD., INC. v. SC Johnson & Son

• Decision Date: 08 April 1976
• Docket Number: Patent Appeal No. 75-619.
• Citation: 531 F.2d 561
• Parties: MORTON-NORWICH PRODUCTS, INC., Appellant, v. S. C. JOHNSON & SON, INC., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

531 F.2d 561

MORTON-NORWICH PRODUCTS, INC., Appellant, v. S. C. JOHNSON & SON, INC., Appellee.

Patent Appeal No. 75-619.

United States Court of Customs and Patent Appeals.

April 8, 1976.

Anthony J. Franze, Norwich, N.Y., attorney of record, for appellant.

Robert M. Newbury, Chicago, Ill. (Pattishall, McAuliffe & Hofstetter) Chicago, Ill., attorneys of record, for appellee. Harold F. Greiveldinger, H. Leroy Richards, Ralph H. Lane, Racine, Wis., of counsel.

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

MILLER, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board¹ sustaining appellee's opposition No. 53,989, filed February 20, 1973, against application serial No. 405,487, filed October 19, 1971, for registration of RAINFRESH for liquid detergents. We affirm.

Appellee's uncontroverted evidence establishes that it is the prior user of the mark RAIN BARREL for a fabric softener; that RAIN BARREL is sold and advertised nationally; that sales of RAIN BARREL have exceeded $39 million and advertising and promotional expenditures have exceeded $13 million since its introduction into the marketplace in 1970; that RAIN BARREL is advertised as and capable of being used in the laundry wash cycle with a detergent; and that appellee's advertising has consistently claimed that RAIN BARREL makes clothes "rainwater soft, rainwater fresh."

Appellant has since 1971 been making token shipments² of liquid dishwashing detergent under the mark RAINFRESH. As noted by the board, however, the description of goods in appellant's application encompasses a liquid laundry detergent that could be used with appellee's fabric softener during the wash cycle; furthermore, the parties' goods move through the same channels of trade to the same customers. It found, therefore, that the parties' goods are closely related. The board referred to the common use of "Rain" and said that the marks create substantially similar commercial impressions—the concepts of softness and freshness of rainwater—especially in view of appellee's consistent advertising use of "rainwater soft, rainwater fresh." Accordingly, considering the marks in their entireties, the board concluded "that applicant's mark so resembles opposer's previously used trademark as to be likely, when applied to applicant's goods, to cause confusion or mistake or deception" and that likelihood of confusion is indicative of probable damage.

Appellant argues that the test is not whether the marks suggest the same characteristics of the goods to which they are applied, but whether they are synonymous; further, that a trademark owner should not be heard to complain if he selects a mark suggestive of a product's qualities and another comes forth with a mark suggestive of the same qualities. Appellant also complains that the board found it necessary "to resort to additional text of Opposer's label to find that Opposer's fabric softner sic would make clothes `rainwater soft, rainwater fresh'."

Appellant's complaint about the board's reliance on the phrase "rainwater soft, rainwater fresh" is not well taken. All relevant evidence must be considered in determining likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Even if use of the phrase does not amount to a trademark use, it may be considered along with prior use of a trademark to show likelihood of confusion to sustain an...