MISHAWAKA RUBBER & W. MFG. CO. v. Bata Narodni Podnik

• Decision Date: 28 April 1955
• Docket Number: Patent Appeal No. 6088.
• Citation: 222 F.2d 279
• Parties: MISHAWAKA RUBBER AND WOOLEN MFG. CO. v. BATA NARODNI PODNIK (Now by change of name, Svit Narodni Podnik).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

222 F.2d 279 (1955)

MISHAWAKA RUBBER AND WOOLEN MFG. CO. v. BATA NARODNI PODNIK (Now by change of name, Svit Narodni Podnik).

Patent Appeal No. 6088.

United States Court of Customs and Patent Appeals.

April 28, 1955.

Miles D. Pillars, Washington, D. C. (Eugene M. Giles, Chicago, Ill., of counsel), for appellant.

Pierce, Scheffler & Parker, Washington, D. C. (Ralph E. Parker, Washington, D. C., of counsel), for appellee.

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY and COLE, Judges.

O'CONNELL, Judge.

This is an appeal from the decision of the Examiner-in-Chief of the United States Patent Office, acting by delegation of authority for the Commissioner of Patents and affirming the decision of the Examiner of Trade-Mark Interferences, 98 U.S.P.Q. 284, dismissing appellant's opposition to the registration by appellee of a composite mark comprised of the letter "B" superimposed upon a circular ball-like background, colored red, and used on "Pneumatic tires, inner tubes and tire insertion pieces."

The record is silent as to the applicant's use of its mark in the commerce of the United States, and the application, filed under section 44(d) of the Act of 1946, 15 U.S.C.A. § 1126(d), is based on the foreign registration, No. 10,528 of record, which was applied for and granted on the same day, April 2, 1948, in Czechoslovakia, for use there on the goods thus listed in said registration:

"1) Bata, narodni podnik, (National Enterprise) Zlin. "2) Manufacture of Leather, footwear and leather goods of all kinds and exploitations of the industrial and other rights of the nationalized enterprises incorporated in the `Bata, narodni podnik\', Zlin.

"3) Pneumatic tires, inner tubes and tire insertion pieces." (Italics supplied.)

Thereafter appellee filed an application for registration of said Czechoslovakian mark in the United States Patent Office, July 9, 1948, only for use, however, with a part of the goods of appellee hereinbefore described; namely, pneumatic tires, inner tubes, and tire insertion pieces, known as rim liners.

Appellant, Mishawaka Rubber and Woolen Manufacturing Company of Indiana, herein referred to as Mishawaka, has been successfully engaged since 1886 in the production and sale of "soft" rubber products and predicated its opposition upon its prior use and ownership of two trade-marks or group of registrations, such as (1) its principal mark, a circular ball-like disc, colored red, registered respectively on May 28, 1901, No. 36,471; April 20, 1915, No. 103,909; May 24, 1927, No. 228,151; April 12, 1938, No. 356,086; and (2) the equally well-known notation "Ball Band," printed in large and bold black face letters, or capitals, registered January 19, 1897, No. 29,476; April 2, 1901, No. 36,151; and November 23, 1948, No. 504,111.

The term "Ball Band" was derived from the rubber or leather band at the top of boots sold by Mishawaka and the red ball imprinted on the lug or straps thereof for pulling on the boots. The application for registration filed in 1892 states:

"Said trade-mark consists of the arbitrarily-selected word-symbol or compound word `Ball-Band.'

"In the facsimile filed herewith there is shown a wool boot having a dark band at the top thereof, as well as having dark straps, the strap on the side of the boot represented having thereon in white letters the trade-mark word `Ball-Band,' as well as a representation of a ball or circular figure. Said circular figure, as used by said company, as an additional distinguishing mark or brand, is generally, for the purpose of giving the same greater prominence, woven by using warp of red color into both straps.

It is asserted, and shown in appellant's exhibits of record, that Mishawaka for years has used in the extensive advertising of its goods the slogan "Look for the Red Ball."

Appellant Mishawaka has sold through 44,000 dealers in the United States, advertised as "Ball Band" dealers, and otherwise through catalogues and regular sales channels throughout the world, including Czechoslovakia, more than a half billion dollars worth of its merchandise; $500,000,000 in footwear and $5,000,000 in rubber floor mats and cushions for automobiles. Such articles were sold throughout the world under both of Mishawaka's trade-marks hereinbefore described and specifically include or have included:

"* * * footwear made of rubber and of combinations of rubber and fabric and of rubber and leather, — namely boots, shoes, overshoes, arctics, gaiters, rubbers, footholds, locker sandals, overs, canvas shoes, casual and novelty shoes, also rubber soles and heels, wool boots, knit gaiters, knit wool bootees, insoles, and wool socks.

* * * * * *

"* * * galoshes and rubbers, socks, stockings, garters, and separable fasteners of the slider-controlled type, and has used said trade-mark on rubber tires and other products made wholly or partly of rubber, said trade-mark having been and being prominently displayed upon the opposer\'s goods in a generally circular form, and upon the packages containing same, and in the advertisements thereof, and at the stores in which the opposer\'s goods were and are handled, displayed, and sold, and the opposer contemplates continuing to use it said trade-mark in like manner on such goods and on other goods and articles." (Italics ours.)

The articles described in appellee's foreign registration denote that it is engaged in the same line of business as that of appellant, Mishawaka, although specific articles produced by the latter may differ at times from those of appellee. The extent of appellee's use of the mark in Czechoslovakia or elsewhere has not been established and appellant observes in its brief that appellee "seeks registration solely on the basis of registration in its place of domicile, — Czechoslovakia, — presumably with the intention of distributing its goods here."¹

"Commercial magnetism"² was engendered in an extensive measure in the world-wide sale of the goods of Mishawaka due not only to the fine quality of the products marketed by Mishawaka but also to the effective results of $5,000,000 judiciously spent by Mishawaka in advertising its goods.

Neither party took testimony. In lieu thereof, appellant, Mishawaka, filed stipulated facts agreed to by appellee. Both of the parties filed briefs and were represented at the hearings in the Patent Office.

There can be no dispute that the circular red disc or red ball background appropriated for use in its trade-mark by appellee is no different from the red ball or circular background previously used in its trade-mark by Mishawaka for generations. Nor is there any further dispute that the capital "B" in the newcomer's mark is the first initial or capital letter in each of the two words "Ball Band" which appellant has likewise used in combination with the red ball on its wares or separately in advertising display down through the years.

The court is asked here to take judicial notice of the familiar and readily accessible fact that established manufacturers of rubber goods, such as Goodyear Tire & Rubber Company, B. F. Goodrich Company, and Firestone Tire and Rubber Company, manufacture and sell not only automobile tires and tubes but also rubber heels, rubber boots, galoshes, over-shoes, sponge rubber padding (mattresses, upholstery), and the like. These goods as a class, it is asserted, are considered by the purchasing public as "closely related items" or "goods of the same general kind to which a mark would bear a natural trade significance" since they fall within the field of goods manufactured and sold by kindred rubber companies.

A favorable decision was rendered in favor of Bata by the Examiner of Trade-Mark Interferences who, having formally acknowledged in his decision that, based upon its foreign registration, "it appears that the applicant also manufactures footwear," and furthermore that "it is common knowledge that some rubber manufacturers make a large variety of products, many of which are so totally different from one another as to have nothing in common," nevertheless held:

"The wide differences in the goods of the parties alone are deemed sufficient to obviate any reasonable likelihood of confusion, or deception of purchasers; however, it is not necessary to rely on the differences in the goods alone for obviating a likelihood of confusion since the marks also contain differences which are quite substantial, as the projecting tail-like elements, and the initial letter `B\' contained in applicant\'s mark is not present in opposer\'s mark. These differences in the marks together with the wide differences in the goods are cumulative in their effect, and are clearly deemed to be such as to enable their contemporaneous use for the goods involved, without any reasonable likelihood of confusion, or mistake, or deception of purchasers."

The Examiner-in-Chief reviewed the decision of the examiner with approval and concluded:

"In the instant case applicant\'s mark is clearly dominated by the fanciful form of the letter `B\' which includes the comet or tail-like projections from the stem and to the left of the `B\' and outside of the red circle. This renders the mark as a whole quite unlike opposer\'s mark and clearly distinguishable therefrom. I also agree with the examiner that the goods of the parties are not the same and that the differences in the marks and in the goods are cumulative to such an extent as to obviate any reasonable likelihood of confusion as to the origin of the goods."

Mishawaka wholly disagrees with that conclusion. It argues with emphasis that no purchaser of the goods could envision those small lines on a mark applied to an automobile tire, and that no person, meteorologist, or otherwise, would be able to see or associate the described little projections as having a comet tail effect, with or without the aid of a microscope, citing Guggenheim v. Cantrell & Cochrane, 56 App.D.C. 100, 10 F.2d 895. The applicant's mark...