SAN FERNANDO ETC. v. JFD ELECT. COMPONENTS CORP., Appeal No. 77-576.

• Citation: 565 F.2d 683
• Decision Date: 23 November 1977
• Docket Number: Appeal No. 77-576.
• Parties: SAN FERNANDO ELECTRIC MFG. CO., Appellant, v. JFD ELECTRONICS COMPONENTS CORPORATION, Appellee.
• Court: United States Court of Customs and Patent Appeals

565 F.2d 683

SAN FERNANDO ELECTRIC MFG. CO., Appellant, v. JFD ELECTRONICS COMPONENTS CORPORATION, Appellee.

Appeal No. 77-576.

United States Court of Customs and Patent Appeals.

November 23, 1977.

Robert C. Comstock, Los Angeles, Cal., of record, for appellant.

Edward A. Meilman, Ostrolenk, Faber, Gerb & Soffen, New York City, of record, for appellee; Sidney G. Faber, New York City, of counsel.

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

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board (TTAB)¹ dismissing an opposition to the registration² of MICROCERAM for "electrical capacitors" broadly, there being no limitation as to type, size, materials, fields of use, type of users, or channels of trade. We reverse.

Opposer is the owner of registration No. 761,880 issued December 24, 1963, of the mark MONOCERAM for "capacitors" without limitation. Its priority of both use and registration by at least ten years and its continuing use are uncontested. Sales of capacitors under its above mark in the period of 1970-75, as found by the board, were in excess of $35 million.

The goods being identical, the sole issue is under § 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) which provides that registration shall be refused if MICROCERAM "so resembles" MONOCERAM "as to be likely * * * to cause confusion, or to cause mistake, or to deceive."

It is too well settled as an axiom of trademark law to require citation of precedent that on the statutory issue involved here doubts are to be resolved against the newcomer and in favor of the prior user.

In view of opposer's ownership of its presently existing registration of MONOCERAM for "capacitors" broadly, the particular uses of the mark it happened to be making at the time of testimony are irrelevant, together with the particular types of purchasers assumed to be buying from opposer. It appears to us that the TTAB gave too much weight to factual conclusions it drew on these points from opposer's exhibits in reaching its key conclusion that

Here, since the goods are capacitors that find application, according to opposer's brochure, in technical or sophisticated equipment, the purchasers would normally be technically trained and informed in this field and know what they want and therefore purchase with care. Emphasis ours.

Opposer's rights are not to be tied to its current business practices, which may change at any time. Its rights are as broad as its registration for "capacitors." Wella Corp. v. California Concept Corp., 558 F.2d 1019, 1021-22, 194 USPQ 419, 421-22 (Cust. & Pat.App.1977); Contour Chair-Lounge Co. v. Englander Co., 324 F.2d 186, 187-88, 51 CCPA 833, 835, 139 USPQ 285, 286-87 (1963).

Capacitors are of enormous variety in type and size, ranging from a unit of a couple of cubic feet or more to an almost invisible speck in an integrated circuit. Even the more limited class of ceramic capacitors, to which the parties here apparently presently apply their marks, is commercially available in great variety, sold to and bought by a wide variety of customers, as may be seen from standard reference works such as electronics dictionaries. Therefore, we cannot agree with the...