Planters Nut & Chocolate Co. v. Crown Nut Co.

• Decision Date: 15 August 1962
• Docket Number: Patent Appeal No. 6812.
• Citation: 305 F.2d 916,134 USPQ 504
• Parties: PLANTERS NUT & CHOCOLATE COMPANY, Appellant, v. CROWN NUT COMPANY, Inc., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

134 USPQ 504, 305 F.2d 916 (1962)

PLANTERS NUT & CHOCOLATE COMPANY, Appellant, v. CROWN NUT COMPANY, Inc., Appellee.

Patent Appeal No. 6812.

United States Court of Customs and Patent Appeals.

August 15, 1962.

Mason, Fenwick & Lawrence, Boynton P. Livingston, Washington, D. C. (G. Cabell Busick, Washington, D. C., of counsel), for appellant.

Robert K. Youtie, Philadelphia, Pa., for appellee.

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board (128 USPQ 345) dismissing the opposition of Planters Nut & Chocolate Company to the registration of a design mark, in the form of an animated peanut, by Crown Nut Company, Inc., application Ser. No. 5,979, filed April 9, 1956, Opposition No. 37,911. Applicant claims use only since February 17, 1953, on the goods named in the application, "Nuts, shelled and unshelled, and salted and unsalted." It is a relative newcomer.

No testimony was taken. The parties stipulated certain facts and opposer introduced with its stipulation 36 exhibits showing the long use and extensive advertising of its marks.

Appellant-opposer relies on its prior use, since 1916, of a trademark symbol consisting of a humanized peanut on the same goods as those named by applicant. Inter alia, it has four registrations of the mark. No. 121,818, May 28, 1918, for "salted peanuts and peanut bars," is a male humanized unshelled peanut having a stovepipe hat on the top, a face on the upper part of the peanut, spindly black arms and legs and a cane held in one outstretched hand with its tip resting on the ground. Depending on how one considers the figure, the peanut shell is either the torso of the man or a long beard which conceals the torso. A monocle with a dependent cord is worn in one eye and the figure wears spats. No. 508,052 of March 29, 1949,¹ and No. 538,882 of March 6, 1951,² show substantially the same humanized figure having generally the same appearance as the first registration except that the nut shell is clearly a torso and not a beard, the posture is slightly changed and reversed, the hat is a dress hat lowered in the crown and bears the words "MR. PEANUT" on its band. No. 553,895 of January 22, 1952,³ shows a Spanish version of Mr. Peanut changed from the foregoing in style by the substitution of a Spanish type low-crowned hat and the addition of a striped shawl carried on the left arm of the figure hanging to its knees.

These variant forms of appellant's Mr. Peanut have been used and advertised as set forth in the following paragraph of the stipulation:

"10. Opposer since 1916 when the MR. PEANUT DESIGN was adopted and placed in active use has had sales in excess of three hundred and fifty million dollars ($350,000,000.00) of nuts and nut products under said trademark, and Opposer has expended in advertising and promoting its said trademark comprised of the humanized figure of a peanut, in excess of ten million dollars ($10,000,000.) during the past ten years."

The specimens of advertising in the exhibits show that this Mr. Peanut character is featured both on packages and in advertisements in different postures and engaging in various activities. He appears on billboards and in three-dimensional form in giant size on the rooftops of stores and factories.

The August 1950 issue of "Modern Packaging" magazine,⁴ in an article entitled "Planters Peanuts," "twentieth of a series," shows that Mr. Peanut has been on an animated Times Square spectacular and in more than human size has been on parade floats and riding on the Atlantic City boardwalk. The article states:

"Birth of a Salesman.

"One of the most important single factors in the development of the Planters Company, aside from packaging itself, was the creation of Mr. Peanut in 1916. * * *

* * * * * *

"Mr. Peanut today appears on every package and every container filled by the company. He has star billing in advertisements and displays. Statutes of him will be found at all company buildings. He has been brought to life and is frequently seen strolling the business streets of many cities. He attends many public gatherings, likes to ride on a salesman\'s car and for a time he was frequently seen on the boardwalk at Atlantic City."

Under an illustration of premiums is the caption:

"PREMIUM PROMOTIONS for years have kept customers sending in coupons. Mr. Peanut is a key figure in every premium — even being sealed in fluid at top of a mechanical pencil. * * *"

There have been Mr. Peanut penny banks, salt and pepper shakers, and drinking mugs too, in which the form of Mr. Peanut has varied. As a pencil top he is a torso without legs. The drinking mugs are made only from his head and hat. On the cover of a painting book he is running between two children. In a New Year's advertisement he has even appeared as a naked babe. (Stip. Ex. No. 13.) Modern Packaging said:

"Mr. Peanut, the 34-year-old star salesman for Planters (sales are now in excess of $35 million a year), is, if not the first important personification of a product in this country, at least the best known and most successful trade symbol of its kind to be found anywhere. Pushed to amazing popularity, he established identity for the company\'s package and brand name and enabled advertising to produce maximum results at the point of sale." Emphasis ours.

Appellee's brief thus describes the mark it seeks to register:

"Appellee\'s peanut figure is a grotesque comical king having only its head represented by a peanut. The peanut head is of disproportionately large size relative to the remainder of the short body and limbs. Thus, in Appellee\'s figure, only the head is of the generic peanut configuration. The squatness of the body in Appellee\'s grotesque peanut-king is further emphasized by being fully clothed and draped with a ground-length cape abundantly trimmed with characteristically royal, ermine-dotted fur. Appellee\'s peanut-king figure is substantially covered by the flowing royal robes. An open crown surrounds the upper region of the peanut, with the peanut head visible through the crown. Appellee\'s peanut king carries a short stubby mace in one hand and wears relatively bulky buckle shoes. Prominently printed across the crown is the phrase `Fit For A King.\' Also, the face in Appellee\'s peanut king is one of gaiety and glee, * * *."

The "generic peanut configuration" of appellee's mark above referred to is that of a common, unshelled, double-kernel peanut. But only the configuration of the head is "generic." The crown sits on the top of it and it is made into a caricature of a human face by placing bold features centrally on the peanut shell so that the lower end thereof is the chin. The mark is copied in the board's published opinion as is one of appellant's registered marks.

It should be made clear at the outset that appellee's total figure is not a "generic" symbol, free to all to use. The picture of a peanut, shelled or unshelled, would be such a symbol — an illustration of the goods themselves — and would be "generic" in the sense in which that term is used in trademark law, meaning purely descriptive of the goods involved, their class, or a characteristic thereof. Vandenberg, Trademark Law and Procedure, pages 2, 194. Appellee is clearly not attempting to register such a picture. What we have before us is a symbol which is not intended to show the goods but rather their origin and it has been produced in the form of a little man, having as a part of his body, and being the major feature of the mark, a double-kernel, unshelled peanut, the same type of unshelled peanut which is the major feature of opposer's marks.

With respect to the words "Fit For A King," referred to by appellee as "prominently printed," they are, in fact, relatively inconspicuous, when the mark is viewed as a whole, and on one of the specimen labels submitted to this court they do not appear at all. We do not deem them to be a significant part of the mark for the purposes of this case. Thus appellee's mark must be regarded simply as the above-described symbol in the form of a humanized peanut.

The only issue is likelihood of confusion, mistake or deception under section 2(d) of the Lanham Act (15 U.S.C. § 1052(d), 15 U.S.C.A. § 1052(d) ). The board found that opposer's mark had become well-known in the trade and to the general public as an indication of origin for opposer's products but nevertheless concluded "that the marks of the parties are distinctly different in every material respect and that purchasers would not be likely to attribute products sold thereunder to a single source." (Emphasis ours.) We are unable to agree either with the premise or the conclusion.

In our opinion, formed from observation, the marks resemble each other in many material respects. Each is a symbol in the form of a little man based upon an unshelled, two-kernel peanut. Each is in standing position. Each has something on its head, a hat of one kind or another, or a crown. Each has human features on the shell of the peanut. In each mark, one hand is holding something, a cane or a mace, and the other hand is empty. Each symbol is basically a male version of a "humanized" two-kernel unshelled peanut — the same kind of nut, not different kinds of nuts. They are not different kinds of animations, as, for example, animal, insect or bird forms of a peanut.

Although the board found that appellant's "humanized peanut * * * has become well known in the trade and to the general public as an indication of origin for opposer's products" (our emphasis), the board appears to have felt that it was necessary to disregard the basic and obvious similarities between the marks and consider only their differences, in considering likelihood of confusion, because "a representation of a peanut is obviously descriptive of peanuts and products derived from peanuts." From this it...