Proctor & Gamble Co. v. JL Prescott Co.
| Decision Date | 03 June 1935 |
| Docket Number | Patent Appeal No. 3462. |
| Citation | 77 F.2d 98 |
| Parties | PROCTOR & GAMBLE CO. v. J. L. PRESCOTT CO. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Allen & Allen, of Cincinnati, Ohio (Drury W. Cooper, of New York City, and Walter M. Shohl, Marston Allen, and E. S. Allen, all of Cincinnati, Ohio, of counsel), for appellant.
Joshua R. H. Potts, of Philadelphia, Pa. (Basel H. Brune, of Philadelphia, Pa., and Eugene Vincent Clarke, of Chicago, Ill., of counsel), for appellee.
Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
This is an appeal from the decision of the Commissioner of Patents, affirming a decision of the Examiner of Trade-Mark Interferences, sustaining the petition of appellee for the cancellation of appellant's trade-mark "Chipso," both tribunals holding that said mark was confusingly similar to the registered trade-mark of appellee "CHASE-O," said marks being applied to goods of the same descriptive properties.
Appellant's mark "Chipso," printed at an oblique angle, was registered on April 12, 1921, upon an application filed October 22, 1920, under the Trade-Mark Act of February 20, 1905 (see 15 USCA § 81 et seq.). The application stated that the mark was used for soap chips. Appellee's mark "CHASE-O," printed at an oblique angle in a rectangle, was registered December 9, 1913, under said Trade-Mark Act of February 20, 1905.
It is conceded by appellant that through mesne assignments appellee is the owner of the mark "CHASE-O," and that the appellee's use and registration of the mark was prior to any use of the mark "Chipso" by the appellant.
Appellant's mark "Chipso" was registered for use for "soap chips," while appellee's mark "CHASE-O," according to the application, was "for a detergent preparation in crystal form for washing, cleansing, and the harmless bleaching of clothes." The goods of both parties are used for the washing of clothes, and unquestionably the goods are of the same descriptive properties.
Section 13 of the Trade-Mark Act of February 20, 1905 (15 USCA § 93), under the provisions of which application to cancel appellant's registration was made, reads as follows: (Italics ours.)"
The only issues before us are whether the marks of the respective parties were confusingly similar at the time appellant's application for certificate of registration was filed, and whether appellee is, by its conduct, precluded from raising the question of appellant's right to use the mark at the time of application for registration. Both tribunals of the Patent Office held that the marks were confusingly similar and that appellee was not estopped from raising the issue.
Both sides took voluminous testimony. Appellee's testimony tends to establish that confusion actually existed between the two marks from 1924 or 1925 to the time that the testimony was taken in 1932. It is appellant's contention that there was no likelihood of confusion between the two marks at the time of appellant's registration of its mark in 1921, and that appellee is estopped by its own acts from claiming that there was confusing similarity between the two marks at the time of the registration of appellant's mark.
It appears from the testimony that at the time of the registration of appellant's mark it had no actual knowledge of any product being sold under the trade-mark "CHASE-O." (Appellant had caused an examination of registered marks to be made.) It further appears from the testimony that the use of appellant's mark on soap chips began in, and has continued since, 1920.
The first use of said mark by appellant was in Michigan. The colors of the front panel of the carton bearing the mark were, and have since continued to be, blue and orange — a broad organge bar extended in a diagonal direction from about the center of the left side of the panel, as it presents itself to the eye, to the upper right-hand corner of the panel. In this orange bar the mark "Chipso" in blue letters is placed, the mark extending through said diagonal. The balance of the panel is blue, with certain descriptive words thereon which are not material here. Appellee contends that the first diagonal bar employed by appellant was yellow in color, and that in 1929 it changed the color on its granule cartons to orange. With respect to this contention of appellee, while there seems to be a slight difference in the shades of orange in appellant's diagonal bars, there is no greater difference than in the shades of orange in appellee's cartons, and we do not deem such differences in shades material here.
It further appears that appellant's product "Chipso" entered into the Philadelphia Baltimore territory in a small way in 1920, but in 1923 its sales in such territory amounted to over 60,000 cases of large-size "Chipso" packages, containing 36 packages to a case, and over 75,000 cases of smallsize "Chipso" packages containing 100 packages to a case. From 1920 to 1924, inclusive, appellant expended $1,562,043.22 in general advertising of its product "Chipso."
It appears from the record that the trade-mark "CHASE-O" originated in 1912 in Philadelphia. It was then applied to a product consisting of about 75 per centum soda ash and about 25 per centum bisodium, with sufficient blue to color it and to blue the water when the directions on the carton were followed. This product was manufactured by the Chase-O Manufacturing Company of Philadelphia. The packages retailed for 5 cents each. The front panel of the carton had a white background, with a blue diagonal bar extending from the lower left-hand corner to the upper right-hand corner of the panel. In this blue bar was placed the mark "CHASE-O," extending practically the entire length of the bar. Upon the white background there was printed certain descriptive matter not material here. It was this character of carton and product above described which was upon the market at the time of the registration of appellant's mark.
In March, 1924, appellee acquired said trade-mark and the business and good will in connection therewith from the A-1 Manufacturing Company, which latter company had acquired it from the Chase-O Manufacturing Company in 1918. In the fall of 1924 appellee placed upon the market a package of "CHASE-O" to retail for 10 cents. In this carton the color plan of the 5-cent package was not followed. Instead of the body of the front panel being white, as in the 5-cent package, it was made orange — the same color, substantially, as the broad diagonal bar of appellant's "Chipso" carton. The diagonal bar of blue, with the mark "CHASE-O" in white, remained substantially the same as on the 5-cent carton, but the angle of said bar across the panel was more obtuse than in the 5-cent package. The change in color from white to orange made appellee's 10-cent package much more similar in general appearance to appellant's "Chipso" packages than was appellee's 5cent package with the white background. Appellee continued to market the 5-cent package with its white background, as well as its new 10-cent package.
Early in 1924 appellee also changed the formula of its "CHASE-O" product, adding 15 per centum of soap and reducing the percentages of other constituents accordingly. The result of this change in formula was that the goods of appellee to which the mark "CHASE-O" was applied were more similar in character to appellant's product "Chipso" than they were at the time of the registration of appellant's mark.
Appellee's goods were marketed largely in the Philadelphia and Baltimore territory. It appears from the testimony that the sales of the product "CHASE-O" marketed by the Chase-O Manufacturing Company amounted to about $97,500 from the years 1913 to 1917, inclusive, and that during the years 1918 to 1931, inclusive, the sales by appellee and its predecessor, A-1 Manufacturing Company, of the product bearing the mark "CHASE-O" were as follows:
1918, $ 5,456.00
1919, $47,009.04
1920, $64,962.96
1921, $89,740.20
1922, $105,194.60
1923, $100,632.75.
1924, $107,778.00.
1925, $114,919.68.
1926, $89,038.66.
1927, $73,283.66.
1928, $68,832.58.
1929, $39,915.67.
1930, $26,463.75.
1931, $16,487.98.
It is the contention of appellee that the sales of appellee's product "CHASE-O" rapidly declined from 1925 to 1931, due, it claims, to the confusion existing between its mark "CHASE-O" and appellant's mark "Chipso."
A great deal of testimony is contained in the record upon the subject of confusion, and we think it is fairly established that confusion to a certain extent did exist in the minds of purchasers between appellee's 10-cent package of "CHASE-O" and appellant's smaller package of "Chipso." However, there is no definite evidence of actual confusion existing prior to appellee's adoption of its 10-cent package, the front panel of which, as hereinbefore stated, much more nearly resembled appellant's front panel of its packages of "Chipso" than did appellee's 5-cent package of "CHASE-O." We do not think that actual confusion is established between appellee's 5-cent...
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