BF Goodrich Co. v. Hockmeyer

• Decision Date: 14 April 1930
• Docket Number: Patent Appeal No. 2208.
• Citation: 40 F.2d 99
• Parties: B. F. GOODRICH CO. v. HOCKMEYER (ZIP-ON MFG. CO. Substituted).
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

40 F.2d 99 (1930)

B. F. GOODRICH CO. v. HOCKMEYER (ZIP-ON MFG. CO. Substituted).

Patent Appeal No. 2208.

Court of Customs and Patent Appeals.

April 14, 1930.

Eakin & Avery, of Akron, Ohio (William D. Eakin, of Akron, Ohio, of counsel), for appellant.

James R. Hodder, of Boston, Mass., for appellee.

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

HATFIELD, Associate Judge.

This is an appeal from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences denying the application of appellant for the cancellation of trade-mark registration No. 192,312, issued December 2, 1924, to Clive E. Hockmeyer (thereafter, when the Zip-On Manufacturing Company was organized, assigned to that company), for the trade-mark "Zip-On" for use on "leggings; men's, women's, and children's knicker-bockers; children's rompers, children's sleeping and carriage suits, children's hats, children's coats, children's suits, children's overalls, children's play suits, children's bath robes, children's blouses, children's bloomers."

It was claimed by appellant in its application for cancellation that it had used the word "Zipper" as a trade-mark for "boots made of rubber and fabric, and more especially overshoes made of rubber and fabric," since June, 1923; that on April 7, 1925, appellant obtained registration No. 197,090, of the word "Zipper" as a trade-mark for "boots made of rubber and fabric"; and that appellee had not used the mark "Zip-On" prior to March, 1924.

It appears from the record that, with the exception of hats, the articles above enumerated upon which the trade-mark "Zip-On" is used by appellee, as well as those upon which the trade-mark "Zipper" is used by appellant, are equipped with "hookless fasteners." The fasteners are obtained by each of the parties from the Hookless Fastener Company. Appellant is licensed to use them solely on rubber footwear, while appellee has the right to use them on the various articles enumerated in its trade-mark registration. It further appears from the record that appellant, prior to the year 1918, manufactured and sold various articles of wearing apparel composed of "all-rubber clothing, as well as double-texture, cloth, rubberized raincoats, caps, and, in fact, clothing for all purposes, both for dress and for work wear"; and that "Double texture refers to two distinct pieces of cloth which are bound together with a rubber binder, making them, to all intents and purposes, one piece; and the rubber binder between the two fabrics gives the waterproof properties."

It further appears that the following articles were formerly manufactured and sold by appellant: "Raincoats; rubber leggings; rubber blankets; rubber capes; rubber caps; rubber hats; rubber fishing shirts; policeman's rubber coats; rubber jackets, being short coats; firemen's rubber-coated leggings; firemen's rubber jackets, being short rubber coats; rubber service-cap covers for police caps; miner's white rubber coats; acid-resisting rubber suits, consisting of hat and jacket, or blouse; double-coated rubber wash-aprons"; that the manufacture of many of these articles was discontinued by appellant due to the fact that during the "World War" the government "required these facilities for the manufacture of gasmasks; and this department was disbanded to make room for that work"; and that, while appellant manufactures "cloth and rubber in the sheeting form similar to that which was formerly used in clothing" which is now purchased by manufacturers of various articles, it has not resumed the manufacture of those articles of wearing apparel, due to the present unfavorable market conditions. It appears, however, that appellant still has the necessary equipment for the manufacture of such articles, and that, in addition to boots and overshoes, it now manufactures the following named articles of wearing apparel: "Rubber bathing-caps, rubber bathing belts, woolen lumbermen's socks, short woolen hose or socks, felt boots, knit shoes with felt soles, leather shoes with rubber-composition soles."

The tribunals of the Patent Office held that the goods of the respective parties were not of the same descriptive properties. With regard to the similarity of the trade-marks, the Commissioner of Patents made the following observations:

"Both marks involved are formed from the word `Zip.' The record shows that long prior to the adoption and use by the petitioner of its trade-mark `Zipper,' the word `Zip' and other words comprising the word `Zip' had been adopted and used by others as trade-marks for various articles of merchandise. The registrant in its motion to dismiss the petition for cancellation lists forty-six registrations consisting of the word `Zip,' or other words comprising the word `Zip.' Of these special mention may be made of Registration No. 119,139, October 23, 1917, of the trade-mark `Zip' for snap fasteners. The goods manufactured and sold by the parties to this proceeding and to which their respective marks are appropriated, however, are not fasteners. The slide fasteners used by them, according to this record, are manufactured and sold by the Hookless Fastener Company.

"In view of the prior adoption and use by many others of the word `Zip' and other words comprising the word `Zip,' as trademarks on various articles of merchandise, the members of the public naturally exercise care in discriminating distinctions, between such marks, and when exercising such care they would not be apt to confuse the mark `Zip-On,' as printed, with the mark `Zipper,' even though the two marks were appropriated to goods of the same descriptive properties; and in view of such prior adoption and use of marks consisting of or comprising the word `Zip,' it seems evident that the petitioner's trade-mark rights under his trade-mark `Zipper' are confined within narrow limits."

The record clearly establishes that appellant has expended considerable time and money in advertising its trade-mark "Zipper," and that appellee has expended a less amount in advertising its trade-mark "Zip-On." It appears that the word "Zip" and other words comprising the word "Zip" have been registered as trade-marks for various articles. It does not appear, however, that any of these marks have been registered for use on clothing or wearing apparel.

It is claimed by appellant that the goods of the respective parties possess the same descriptive properties; that the mark "Zip-On" is confusingly similar to the mark "Zipper"; that the mark "Zipper" has been popularized by appellant; and that the use of the word "Zip-On" as a trade-mark on the articles of clothing covered by appellee's registration would cause confusion in the trade, dilute the popularity of appellant's trademark, subtract from its established good will, and lessen the distinctiveness of appellant's trade-mark. Many other claims are made by appellant, but we think they need not be stated here.

Counsel for appellee, on the contrary, contends that the goods of the respective parties do not possess the same descriptive properties, and that neither party is entitled to the exclusive use of "the common word or root `Zip.'" We quote from the brief of counsel: "The use of the word `Zip' is a common English suggestive of speed, and right here we will contend that the entire difficulty into which the Goodrich Co. has involved this Registrant and others is because of the unfair, improper, and inequitable attempt of the Goodrich Co. to monopolize this word `Zip,' despite the fact that it is a common English word largely descriptive, or at least suggestive, of hookless or slide fasteners — a point not involved in this proceeding. Because Goodrich made the mistake of utilizing, popularizing and advertising a trade-mark which incorporated a common English word does not give such company the right to cull from the public domain the word `Zip' and exclude all people in other lines of industry and making other goods from a different use of `Zip.'"

It was conceded by counsel for appellee, at the time of the oral argument in this court, that the word "Zip-On" was similar to the word "Zipper," and that, if the goods of the parties possessed the same descriptive properties, appellee would not be entitled to have the word "Zip-On" registered as a trademark.

The pertinent part of section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), reads as follows:

"Sec. 5. That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark unless such mark — * * *

"Provided, That trade-marks which are identical with a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered. * * *"

Section 13 of that act (15 USCA § 93) provides for the cancellation of the registration of trade-marks, where it is made to appear that the registrant was not entitled to the use of the mark at the date of his application for registration.

Section 16 (15 USCA § 96) provides in part "that the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership."

The language "merchandise of the same descriptive properties" contained in section 5 has given the courts considerable concern. It has been held in many cases that the Congress intended to use the words "same descriptive properties" "in the natural and ordinary sense" and that "two trade-marks may be said to be appropriated to merchandise of the same descriptive properties, in the sense meant by the...