Lauritzen & Company v. Borden Company

• Decision Date: 30 November 1956
• Docket Number: Patent Appeal No. 6234.
• Citation: 44 CCPA 720,239 F.2d 405
• Parties: LAURITZEN & COMPANY, Inc., Appellant, v. The BORDEN COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

44 CCPA 720, 239 F.2d 405 (1956)

LAURITZEN & COMPANY, Inc., Appellant, v. The BORDEN COMPANY, Appellee.

Patent Appeal No. 6234.

United States Court of Customs and Patent Appeals.

November 30, 1956.

Edwin S. Booth, Chicago, Ill. (Geo. B. Newitt, Chicago, Ill., of counsel), for appellant.

J. Spencer Daly, New York City, for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON (retired), Judges.

WORLEY, Judge.

This is an appeal from the decision of the Assistant Commissioner, acting for the Commissioner of Patents, 99 U.S.P.Q. 216, reversing the decision of the Examiner of Interferences and sustaining a notice of opposition filed by appellee, The Borden Company, against an application by appellant, Lauritzen & Company, Inc., for registration of the trademark "Fortilac" as applied to "a food product in powder form containing milk serums and vegetable extracts and used in commercial baking, said food product being packaged and sold in drums."

The notice of opposition was based upon prior registrations of the trademarks "Protolac," No. 145,077, for a case in food product; "Breadlac," No. 157,714, for powdered milk; "Starlac," No. 181,001, for powdered skimmed milk; "Parlac," No. 171,105, for whole-milk powder; "Akrelac," No. 205,191, for a powdered milk product made from a combination of skimmed milk and cream soured with a pure lactic culture; and "Biolac," Nos. 348,312 and 348,662, for milk food for infants.

No testimony was taken by either party and it is conceded that appellee's use of the registered marks above referred to predates appellant's use of the mark sought to be registered. The only issue, therefore, is that of confusing similarity of the marks.

It is contended by appellee that its registered marks constitute a family of marks ending in "lac," and that the public would assume that any new mark ending in that suffix emanated from appellee. That contention was rejected by the Examiner of Interferences on the ground that "lac" is the Latin word for milk, and that all the marks involved are applied to milk products; and by the Assistant Commissioner on the ground there was no evidence of record to show recognition of those marks as a family. Also, in that connection, appellant made of record five other registrations showing the common use of "lac" as a trademark suffix. Under such circumstances, the holdings that appellee had not established ownership of a family of marks were clearly correct. Burroughs Wellcome & Co. (U.S.A.) Inc., v. Mezger Pharmacal Co., Inc., 228 F.2d 243, 43 C.C.P.A., Patents, 703.

In view of the foregoing, appellee's prior registrations must be considered individually. The Examiner of Interferences held that, as so considered, none of them was confusingly similar to appellant's mark. Upon review, however, the Assistant Commissioner held appellee's mark "Protolac" to be confusingly similar to "Fortilac" and, accordingly, reversed the decision of the Examiner of Interferences in that particular respect. While we have given full consideration to all the marks introduced, it is evident that "Protolac" is the most pertinent and it is, therefore, unnecessary to discuss the others.

Appellant contends that the product to which its mark "Fortilac" is applied is used in commercial baking and packaged in drums and differs substantially from the product to which "Protolac" is applied which, as shown by the specimen submitted with the notice of opposition, is a dietary...