J. Wiss & Sons Co. v. WE Bassett Company

• Decision Date: 05 October 1972
• Docket Number: Patent Appeal No. 8694.
• Citation: 59 CCPA 1269,462 F.2d 567
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: J. WISS & SONS CO., Appellant, v. The W. E. BASSETT COMPANY, Appellee.

59 CCPA 1269, 462 F.2d 567 (1972)

J. WISS & SONS CO., Appellant, v. The W. E. BASSETT COMPANY, Appellee.

Patent Appeal No. 8694.

United States Court of Customs and Patent Appeals.

July 13, 1972.

Rehearing Denied October 5, 1972.

Sparrow & Sparrow, New York City, attys. of record, for appellant; Maxwell E. Sparrow, Mark H. Sparrow, New York City, of counsel.

Roy C. Hopgood, New York City, Sandoe, Hopgood & Calimafde, New York City, attys. of record, for appellee; Paul H. Blaustein, New York City, of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, and LANE, Associate Judges, and MALETZ, Judge, United States Customs Court, sitting by designation.

BALDWIN, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board.¹ granting appellee's petition to cancel appellant's registration of TRIMLINE, for "shears, scissors, pinking shears, tinner's nips, pruning shears, hedge shears and grass shears."² We fully agree with the discussion of the facts of this case in the board's opinion, and will merely briefly summarize them here.

As grounds for cancellation, appellee W. E. Bassett Co. (Bassett) established use and registration³ of the mark TRIM and marks based on the word TRIM prior to the application for registration of TRIMLINE by appellant J. Wiss & Sons Co. (Wiss). It was established that Bassett began using the mark TRIM on fingernail clippers in 1947 and the line of goods upon which that mark or marks based on that mark were used expanded considerably before appellant's first use of the mark TRIMLINE. Bassett has heavily advertised its marks.

It was stipulated that appellant has sold grass shears under the mark QUICK-TRIM from 1939 to date, with the exception of the war years. At the time Wiss began using TRIMLINE on shears and scissors, it was well acquainted with Bassett's product line and trademark. Wiss' use of the mark includes use on personal grooming items such as barber shears and pocket scissors.

The board held:

There can be no doubt from the record that Bassett\'s use of "TRIM" on personal grooming items such as fingernail clippers, toenail clippers, tweezers, nail files and the like substantially antedates Wiss\' use of "TRIMLINE" on its shears and scissors. Furthermore, even though Bassett\'s use of "TRIM" on scissors was subsequent to Wiss\' use of "TRIMLINE" on scissors and shears, Bassett has superior right in "TRIM" as to scissors by virtue of its prior use thereof on such closely related goods as fingernail and toenail clippers and other personal grooming items. citing cases

In view thereof and since "TRIM" and "TRIMLINE" are substantially similar, the term "LINE" merely referring to a line of goods and therefore having no trademark significance, it is adjudged that there is likelihood of confusion and that the continued existence of Wiss\' registration is inimical to Bassett\'s rights in "TRIM".

Before us, appellant Wiss contends, based on the use of QUICK-TRIM, "it is appellant that has the superior right to use `TRIM' in whatever form on any cutting implement, since it would be using its mark in the normal expansion of business, i. e., from grass shears to scissors and shears." Appellant also argues that TRIM, because of its descriptiveness, is a weak mark which "could not have acquired any secondary meaning due to appellant's long prior and concurrent use of its trademark `QUICK-TRIM' and the existence of certain third party registrations for `TRIM' and other marks including `TRIM' * * *." For similar reasons appellant contends that appellee is not entitled to the protection given the owner of a "family" of trademarks. Finally, appellant asserts that there is no likelihood of confusion between the marks as applied to the goods.

Opinion

Appellant's contentions that the mark TRIM is incapable of distinguishing goods is totally without merit. While the term may be highly suggestive of the functions of some of the goods on which it is used, such as nail clippers, it is not so as to other goods, such as nail files, to which it is also applied. More importantly, the record in this case solidly establishes that Bassett has developed a strong secondary meaning for the mark. Even appellant's President, Vice President and one of its Assistant Sales Managers have admitted that they identify TRIM with Bassett. See also W. E. Bassett Co. v. H. C. Cook Co....