PROCTER & GAMBLE COMPANY v. Conway

• Decision Date: 22 January 1970
• Docket Number: Patent Appeal No. 8231.
• Citation: 419 F.2d 1332
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: The PROCTER & GAMBLE COMPANY, Appellant, v. Joseph D. CONWAY, d.b.a. the Certified Chemical and Equipment Co., Appellee.

419 F.2d 1332 (1970)

The PROCTER & GAMBLE COMPANY, Appellant, v. Joseph D. CONWAY, d.b.a. the Certified Chemical and Equipment Co., Appellee.

Patent Appeal No. 8231.

United States Court of Customs and Patent Appeals.

January 22, 1970.

Melville, Strasser, Foster & Hoffman, John W. Melville, Cincinnati, Ohio, for appellant.

Jay M. Cantor, Washington, D. C., for appellee.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, and LANE, Judges, and RAO, Chief Judge, sitting by designation.

ALMOND, Judge.

The Procter & Gamble Company appeals from the decision of the Trademark Trial and Appeal Board, 153 USPQ 480, dismissing its opposition to the application of Joseph D. Conway, d. b. a. The Certified Chemical and Equipment Co. to register "MISTER STAIN" for a stain removing compound,¹ alleging continuous use in interstate commerce since March 4, 1964.

Appellant's opposition is predicated on its allegations of prior and continuous use of the registered marks MR. CLEAN for a sudsing cleaner, cleanser and detergent;² MR. CLEAR for a windshield cleaner,³ and a sudsing cleaner, cleanser, and detergent;⁴ MR. SHEEN,⁵ LADY CLEAN⁶ and MRS. CLEAN,⁷ the latter three being each for a sudsing cleaner, cleanser, and detergent. The notice of opposition also alleges prior and continuous use of the common-law trademark MASTER-KLEAN for a liquid all-purpose detergent and cleaner.

The record reveals that only appellant-opposer took testimony. The appellee-applicant offered no testimony as to its use of the mark MISTER STAIN and therefore the earliest use upon which it can rely is the filing date of its application, namely, July 30, 1964; thus prior use resides with appellant.

It appears that appellant has, since about 1958, continuously used MR. CLEAN as a trademark for a sudsing cleaner, cleanser and detergent. The product under this mark is sold widely in groceries, supermarkets and similar outlets throughout the United States. The MR. CLEAN cleaner has been extensively advertised through such media as television, newspapers and radio. It has been promoted as a general cleaning preparation and is recommended for a variety of purposes. The MR. CLEAN product went into national distribution in 1959, since which time in excess of one million dollars has been spent yearly in advertising. Sales during this period have exceeded one million cases per year, representing more than twelve million bottles.

The record indicates that appellant and a predecessor have used the mark MASTER-KLEAN for a liquid all-purpose detergent and cleaner since 1943.

We deem it pertinent to note that the record on behalf of appellee discloses that the courtesy titles "Mr." and "Master" as parts of trademarks for cleaning and detergent products have been presumptively used and registered by several others. Of record are such third-party registrations of MR. CAPPS for rust and scale removing preparations; MR. PAUL for hair shampoo; MR. BUBBLE for a powdered detergent used as a bubble bath preparation; MR. MEARS for a glass cleaner and comb and brush cleaner; MISTER JINX for an all-purpose household cleaner and detergent; MR. BUB'L for bubble bath preparations, and MR. DRI for a pulverulent absorbent composition for absorbing oil, grease, and wet spots on surfaces.

We agree with the board that the record augmented by the pleaded registrations is sufficient to establish appellant's prior rights in the marks MR. CLEAN, MR. CLEAR, MR. SHEEN, LADY CLEAN, MRS. CLEAN and MASTER-KLEAN, for the cleaning preparations associated therewith. While the competing products of the parties may vary in application, they are, nevertheless, cleaning preparations which would in the ordinary course of trade be sold through the same retail outlets to the same class of purchasers. The sole issue for ultimate resolution, therefore, is whether or not appellee's mark MISTER STAIN so resembles any of appellant's marks that confusion in trade as to the source of the goods sold thereunder is likely to occur.

Appellant-opposer's position below, and in essence here, substantially as quoted in the opinion of the board, is:

The mark MR. CLEAN and each of Opposer\'s other marks * * * consist of a courtesy title (MR., MRS., Lady, (MASTER)) coupled with a word having a significance associated with cleaning (CLEAN, CLEAR, SHEEN). The combination of a word associated with cleaning with a courtesy title and particularly with a courtesy title MR. or MISTER is wholly and entirely arbitrary in the field of cleaning products and obviously it is the courtesy title which makes the mark distinctive. It is the dominant portion of the mark.

Thus, * * * the combination of the courtesy title MISTER with the word STAIN, wherein the MISTER portion of the mark is wholly and entirely arbitrary, is calculated to cause confusion in trade and to lead the purchasing public to believe that MISTER STAIN is another product of the manufacturer of MR. CLEAN, MR. CLEAR, MR. SHEEN, MRS. CLEAN, LADY CLEAN and MASTER-KLEAN, or is in some way sponsored by this Opposer.

To...