APPLICATION OF NATIONAL DISTILLERS AND CHEMICAL CORP.

• Decision Date: 12 January 1962
• Docket Number: Patent Appeal No. 6706.
• Citation: 297 F.2d 941,132 USPQ 271
• Parties: Application of NATIONAL DISTILLERS AND CHEMICAL CORPORATION, doing business as National Distillers Products Co.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

132 USPQ 271, 297 F.2d 941 (1962)

Application of NATIONAL DISTILLERS AND CHEMICAL CORPORATION, doing business as National Distillers Products Co.

Patent Appeal No. 6706.

United States Court of Customs and Patent Appeals.

January 12, 1962.

Breed, Abbott & Morgan, New York City (Gerald J. Craugh, New York City, of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (George C. Roeming, Washington, D. C., of counsel), for Commissioner of Patents.

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

SMITH, Judge.

The Commissioner of Patents, purporting to act under Rule 7 of this court, 35 U.S.C.A.Appendix, has filed a Petition for Rehearing of the decision of this court which was rendered herein on August 16, 1961.¹ In this petition of some 27 pages we are told that there are 20 "errors manifest" or matters "overlooked or misapprehended" which are explained and argued at great length and in considerable detail.

This petition amounts to a reargument of the case which was more concisely argued in the Commissioner's main brief of but 21 pages. The petition presents nothing new, nothing that was overlooked, and nothing that was not briefed and argued by the parties and fully considered by this court prior to rendering the decision herein. The Commissioner's Petition for Rehearing is therefore denied both on its merits and for failure to comply with the requirement of our Rule 7 that:

"The petition in each case shall be confined to a brief statement of points supposed to have been overlooked or misapprehended by the court, with proper references to the particular portion of the transcript of the record or original briefs relied upon, and with authorities and suggestions, concisely stated, in support of the points. * * *" (Emphasis added.)

In order, however, to revise certain portions of our prior opinion it is hereby withdrawn and the following opinion is substituted therefor.

This case comes to us on appeal by the applicant from the original decision of the Trademark Trial and Appeal Board of the United States Patent Office rendered April 8, 1960, In re National Distillers & Chemical Corp., 125 USPQ 197, affirming the decision of the Examiner of Trademarks refusing registration of applicant's trademark MERITO for rum,² and from a decision on applicant's petition for rehearing or reconsideration rendered May 9, 1960 which, in effect, adheres to the original decision of April 8, 1960.

The board held that the marks MERITO for rum and MARQUÉS DEL MÉRITO for wines,³ so resemble each other that confusion or mistake or deception of purchasers would be likely, and affirmed the examiner in rejecting, under section 2(d) of the Lanham Act 15 U.S.C. § 1052(d), 15 U.S.C.A. § 1052(d), the application for registration of the mark MERITO for rum.

The issue before us on this appeal is whether the examiner and the Trademark Trial and Appeal Board properly refused to register the mark MERITO for rum. The board below, in refusing this registration, stated in its decision of May 9, 1960:

"The board remains of the opinion that applicant\'s mark so resembles the registered trademark as to be likely, when applied to such goods, to cause confusion or mistake of purchasers."

Applicant asserts that there are such differences in the marks and in the goods as would eliminate likelihood of confusion or mistake or deception of purchasers, and in addition asserts its right to use the mark MERITO on rum based on agreements with the owner of the reference mark.

We shall first consider whether the differences in the marks and in the goods are such that confusion or mistake or deception of purchasers is likely. The marks MARQUÉ'S DEL MÉRITO and MERITO do not look alike, sound alike nor evoke the same psychological responses. Wines and rum are goods whose differences are clearly recognized by the purchasers thereof. These differences are sufficient to raise a doubt as to likelihood of confusion, mistake or deception of purchasers arising from the common use of the word MERITO. Under these circumstances, we think the alleged agreements between applicant and the owner of the reference registration are of evidentiary value.

As was stated in Avon Shoe Co., Inc. v. David Crystal, Inc., 171 F.Supp. 293 (D.C.S.D.N.Y.1959), affirmed 279 F.2d 607:

"Likelihood of confusion is a relative concept which can be determined only according to the particular circumstances of each case. Mere comparison of the trademarks side by side is not sufficient. The conditions in the market place, not the courtroom, are the controlling factors. Gort Girls Frocks, Inc. v. Princess Pat Lingerie, Inc., D.C.S.D. N.Y.1947, 73 F.Supp. 364."

It is a fact of which we take judicial notice that in the "market place" the lawful right to use a mark frequently is based on agreements between users of the marks. Such agreements may, as here, constitute a consent by one party to the use of a mark by the other party. The question then arises as to what effect should be given to such consent. As such, it seems to us that here the agreements should have been treated as the written consent was treated in Ex parte Frostmann & Huffmann, 151 Ms.D. 789, 18 TMR 589 (Comm'r, 1928), where First Assistant Commissioner Kinnan, prior to the Lanham Act, stated:

"This consent must be construed to mean that in the judgment of the registrant confusion in the trade would be quite unlikely or entirely absent. If the goods were identical registration should notwithstanding this consent of the registrant, be denied the applicant, but since the goods are different to some degree at least and since woolen goods are not generally used for the same purpose as the goods upon which the registrant uses its mark, it is believed, as the registrant has given consent to the applicant\'s use of the mark upon its particular class of goods, registration should not be denied."

We also agree with Professor Derenberg's statement that:

"* * * where there may exist reasonable doubt in the examiner\'s mind because of differences in either the marks or the goods, or both, consent by a prior registrant should, and under recent practice usually will, have an important persuasive effect in determining registrability. In other words, the Patent Office may conclude that if the previous registrant would not consider himself injured by the application registration, there may be less likelihood that the general public would be confused. Such a liberal attitude toward the acceptance of letters of consent will very often avoid unnecessary contests between two or more parties who honestly believe that simultaneous use of their respective marks never has resulted and probably never will result in likelihood of confusion. * * *" (The Patent Office as Guardian of the Public Interest in Trade-Mark Registration Proceedings, 14 Law and Contemporary Problems 288, 307 (1949), 31 JPOS 647, 676.)

However, before we can consider the legal effect here of the alleged agreements between applicant and the owner of the reference registration, we are faced with a problem as to what "evidence" is before us as to the existence and content of these agreements which support applicant's position. The examiner and the Trademark Trial and Appeal Board acted on the basis of certain alleged facts which were stated by applicant's attorney in responses to the examiner's refusal to grant registration. The Commissioner's main brief here asserts that the allegations of fact thus made by applicant are "unsupported by affidavits or other competent evidence," and are therefore "without evidentiary support."

The position of the Commissioner asserted for the first time by the solicitor in this court, is that the allegations of fact accepted by the examiner and the board are not competent evidence because they are not contained in affidavits but are merely assertions made over the signature of counsel for applicant.

While we agree with the solicitor that statements made over the signature of counsel are not evidence of the facts averred, it seems to us that it is the clear intent of sections 1(c) and 41 of the Lanham Act (15 U.S.C. §§ 1051, 1123, 15 U.S.C.A. §§ 1051, 1123) to vest considerable discretion in the Commissioner in adopting rules which establish the legal effect of signed statements of counsel of the kind which the examiner and the board appear here to have accepted in lieu of evidence.

When counsel for applicant made allegations of fact in signed responses to the Patent Office actions, he certified, under Rule 2.15 of the Trade-Mark Rules of Practice, 15 U.S.C.A.Appendix,⁴ that "there is good ground to support" them. While such statements are not "evidence" of the facts stated, it seems to us that the examiner may either accept such statements and act upon them, or demand evidence of the facts so stated and which are relevant to the issue. A large measure of discretion is properly given the examiner in this respect. Where, as here, no objection was made to the statements of counsel and the examiner acted upon them, it seems to us that such statements have in legal effect become the equivalent of competent evidence. On this basis, we accept, for purposes of resolving the present issue, the following statement of fact set forth in the original opinion of the board:

"According to the record in this application, in 1939, National Distillers and Chemical Corporation, applicant herein, became the sole distributor in the United States of wines bearing the mark `MARQUES DEL MERITO\'. On September 8, 1939, in connection with this exclusive distributorship, the registration in question was assigned to applicant. In June, 1941, applicant adopted and began to use `MERITO\' as a trademark for rum. On November 27, 1946, applicant, in continuance of its distributorship of `MARQUES DEL MERITO\' wines, entered into agreements with companies controlled by the registrant, who supplied the sherry and port wines sold

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