American Fruit Growers v. Michigan Fruit Growers

• Decision Date: 19 March 1930
• Docket Number: Patent Appeal No. 2248.
• Citation: 38 F.2d 696,17 CCPA 906
• Parties: AMERICAN FRUIT GROWERS, Inc., v. MICHIGAN FRUIT GROWERS, Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 906, 38 F.2d 696 (1930)

AMERICAN FRUIT GROWERS, Inc., v. MICHIGAN FRUIT GROWERS, Inc.

Patent Appeal No. 2248.

Court of Customs and Patent Appeals.

March 19, 1930.

R. T. M. McCready, of Pittsburgh, Pa. (Chas. R. Allen, of Washington, D. C., of counsel), for appellant.

James Atkins, of Washington, D. C., for appellee.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.

HATFIELD, Associate Judge.

This is an appeal, in a trade-mark opposition proceeding, from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences dismissing the opposition of appellant and adjudging appellee entitled to the registration of a composite trade-mark, Serial No. 218,983, consisting of the word "Michigander" and representations of two or three kinds of fruit inclosed within a double circle, together with an "outline tracing of the lower peninsula of Michigan, and the representation of a goose in white" upon a black and white background, for use on fresh and canned fruits.

Appellant's trade-mark consists of the words "Blue Goose," appearing immediately above the representation of a "blue goose" inclosed within a double circle. This mark was registered on January 13, 1920. It has been used by appellant and its predecessor throughout the United States and many foreign countries since May, 1918, on fresh fruits and vegetables, and has become associated in the public mind with the highest quality of these commodities. Appellant has sold its products and advertised its mark extensively in every state in the United States, including the state of Michigan. Its trademark appears on packages in which its fruits and vegetables are contained, as well as on the skins of citrus fruits. As illustrative of the extent to which the mark of appellant is used, more than five million blue goose labels were used in 1925 on packages containing its products, and more than ninety-one million "pieces of citrus fruits" were printed with this label. During the same year appellant sold more than thirty-eight thousand carloads of fruits and vegetables for the sum of approximately $40,000,000. Large sums of money have been expended in advertising the mark in the newspapers, on posters, painted signs, in trade papers, magazines, in advertising matter to the growers of fruit, moving signs, etc.

It appears that appellee's application for registration of its mark was filed August 19, 1925. No evidence was submitted by appellee.

On March 5, 1927, the Examiner of Interferences held that, "An inspection of the marks used by the parties makes it seem reasonably probable that confusion in trade would be likely," and, accordingly, that appellee was not entitled to have its mark registered.

On July 9, 1927, the Examiner of Interferences set aside his previous decision, dismissed the opposition, and held that appellee was entitled to have its mark registered for the following reasons:

"This is an opposition which comes to final hearing before the examiner for the second time. The situation is now different by reason of an amendment of the answer. In this amendment the defense of the use of marks by third parties is made. The evidence of this use is wholly statutory and is afforded by registrations, profert of which has been made by means of soft copies.

"The defense relied upon is substantially the same as that which was employed in the cases of Goodall Worsted Co. v. Palm Knitting Co., Inc., 56 App. D. C. 148, 10 F.(2d) 1013, 352 O. G. 535; Booth Fisheries Co. v. Adams & Sons Grocer Co., 56 App. D. C. 142, 10 F.(2d) 1007, 350 O. G. 469. In effect, this defense is that the representation of a goose is less fanciful and arbitrary than it prima facie appears to be from mere inspection of the mark used by the opposer. Of the registrations relied upon, perhaps Registration No. 97,009, issued May 12, 1914, will serve as an example. It discloses the notation `Gray Goose,' accompanied by the representation of a goose, and is used on canned fruits and canned vegetables. It seems to the examiner that this defense is well founded in view of the rulings in the cases just cited and the statutory evidence afforded by these registrations."

On appeal, it was held by the Commissioner of Patents that, although the registration of appellee's mark would probably cause confusion in the trade, nevertheless, in view of prior registrations and particularly registration No. 97,009, issued May 12, 1914, of the words "Gray Goose" accompanied by the representation of a goose for use on canned fruits and canned vegetables, appellee was entitled to have its mark registered. In explanation of this holding, the Commissioner said: "Some of the above noted registrations were issued long prior to the earliest date of adoption and use claimed by opposer. It would appear, in consequence, that opposer was not the first to adopt and use the representation of a goose upon goods of this class and it also appears that the applicant's particular representation of the goose more nearly resembles that disclosed in registration No. 97,009 than it does the representation of a blue goose adopted and used by the opposer. Under these conditions, and following the practice announced in Goodall Worsted Co. v. Palm Knitting Co., Inc., 56 App. D. C. 148, 10 F.(2d) 1013, 352 O. G. 535, and Booth Fisheries Co. v. Adams & Sons Grocer Co., 56 App. D. C. 142, 10 F. (2d) 1007, 350 O. G. 469, the opposer must be deemed restricted in its protection to such distinguishing features of its mark as are not found in prior registered marks used upon the same class of goods. Applying this test, it would seem the applicant's representation of a goose in no way infringes the particular representation adopted by opposer. Except as to the representation of the goose, the applicant's mark is quite dissimilar to that of the opposer." (Italics ours.)

In the case of Booth Fisheries Co. v. Adams & Sons Grocer Co., 56 App. D. C. 142, 10 F.(2d) 1007, 1008, the court had under consideration the opposition of appellant, owner of the registered trade-mark "Black Diamond" and a diamond-shaped figure, to the registration by appellee of the mark "Diamond A," "associated with the representation of a diamond inclosing a large capital `A.'" The goods of the respective parties were of the same descriptive properties. In holding that appellant was not entitled to the exclusive use of the figure of a diamond, or the word "Diamond," or both, the court said:

"There is no dispute that the goods of the respective parties are of the same descriptive properties. It appears that the Patent Office, both before and after adoption of the mark `Black Diamond' by appellant, registered the word `Diamond' in varying forms to many different parties, and...