Burton-Dixie Corporation v. Restonic Corporation, Patent Appeal No. 6185.

• Citation: 234 F.2d 668,110 USPQ 272
• Decision Date: 20 June 1956
• Docket Number: Patent Appeal No. 6185.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: BURTON-DIXIE CORPORATION, Appellant, v. RESTONIC CORPORATION, Appellee.

110 USPQ 272, 234 F.2d 668 (1956)

BURTON-DIXIE CORPORATION, Appellant, v. RESTONIC CORPORATION, Appellee.

Patent Appeal No. 6185.

United States Court of Customs and Patent Appeals.

June 20, 1956.

Wilson & Geppert, Ira J. Wilson and Carl F. Geppert, Chicago, Ill., for appellant.

Hill & Hill, Roy W. Hill, and John W. Hill, Chicago, Ill. (Edwin E. Greigg, Washington, D. C., of counsel), for appellee.

Before O'CONNELL, Acting Chief Judge, and JOHNSON, WORLEY, COLE and JACKSON, retired, Judges.

JOHNSON, Judge.

This is a trade-mark opposition proceeding, brought by Burton-Dixie Corporation, owner of the trade-mark Orthoflex (or, as apparently used in advertising, Ortho-Flex), in opposition to the registration of the mark Orthotonic to the applicant, Restonic Corporation. According to stipulation, the marks are used on substantially identical goods, mattresses and box springs, which are marketed through the same channels of trade to the same classes of purchasers and are sold in competition with each other.

Opposer's mark, Orthoflex, is registration No. 292,811, registered March 29, 1932, under the Act of 1905, renewed March 29, 1952, and republished under the Act of 1946, 15 U.S.C.A. § 1051 et seq., on October 24, 1950. The mark has been in continuous use since 1931. Restonic's application is serial No. 617,211, filed August 1, 1951, first use having been alleged as of June 18, 1951.

The Examiner of (Trade-mark) Interferences sustained the opposition, basing his decision primarily on his belief that the term "Ortho," appearing in both marks, would be likely to cause the marks in their entirety to be confused or mistaken by purchasers when applied to identical goods.

The Assistant Commissioner of Patents, acting for the commissioner, reversed the holding of the examiner, being of the opinion that both marks were secondary marks, that purchasers were likely to remember the marks in their entireties rather than only the prefix, and that, considered in their entireties, there was no likelihood of confusion, mistake or deception between them. Opposer, Burton-Dixie Corporation, appeals from that decision.

The basic issue in this case, of course, is whether the mark sought to be registered, Orthotonic, so resembles the registered mark, Orthoflex, "as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers * * *." Trade-Mark Act of 1946, § 2; 15 U.S.C.A. § 1052. If it does, then the opposition must be sustained.

This case presents an interesting question of whether the fact that opposer's registered mark has been used with other marks in the past may properly be considered on the issue of likelihood of confusion in the future. Specifically, the Assistant Commissioner stated:

"It is clear from the record that the marks of the parties are secondary marks, opposer\'s primary mark being `Slumberon\' and applicant\'s being `Restonic.\'

* * * * *

"As above stated, both marks are secondary marks. The record supports the view that the commercial impression created by them is tied closely to their use with the primary marks — i. e., `Restonic Orthotonic\' and `Slumberon Ortho-Flex.\' I am not convinced that they are mere model, style or type designations, however; but in view of the suggestive nature of the marks, their use as secondary marks, their sound and significance, I do not believe that there is any likelihood of confusion, mistake or deception of purchasers." Italics ours.

Opposer challenges the factual basis of this holding. An examination of the exhibits and testimony, while showing that Orthoflex was frequently used with "Slumberon," shows that it was sometimes used alone and sometimes with a mark other than "Slumberon." We do not think that the meager evidence here is sufficient to establish that Orthoflex is indeed a secondary mark. However, the more basic question is whether such concurrent use is properly considered at all in an opposition proceeding. The Assistant Commissioner cited no cases in support of her holding, and appellee has not seen fit to do so either.

On first impression, it would seem logical to conclude that if marks involved in an opposition were used concurrently with other primary marks, that likelihood of confusion would be substantially diminished, because the use of the primary mark would help distinguish the goods. However, the cases which have considered the question have rejected that reasoning. In Hat Corp. of America v. John B. Stetson Co., 223 F.2d 485, 487, 42 C.C. P.A., Patents, 1001, the involved marks were "Railbird" and "Game Bird," and the Assistant Commissioner had held that "`* * * the marks of both parties are apparently always used in conjunction with the more familiar and better known trade-marks "Dobbs" (opposer's) and "Stetson" and device (applicant's), thereby eliminating likelihood that purchasers would be confused, misled or deceived into believing that the hats so marked emanate from the same source; * * *." This court, although affirming the decision below, distinctly indicated that it did not follow the reasoning of the Assistant Commissioner with respect to the usage of the marks with Stetson and Dobbs, because the controversy as presented in the opposition proceedings was between "Game Bird" and "Railbird" alone.¹

In Weco Products v. Milton Ray Co., 143 F.2d 985, 987, 31 C.C.P.A., Patents, 1214, we said:

"Appellant urges one other point, to the effect that its mark `Vray\' is associated with, and used in connection with, the name `Dr. West\'s\', and that this should have been given consideration in connection with the determination of the likelihood of confusion. It is too obvious to require extended discussion that this argument is without merit. Appellant\'s practice in this regard would be subject to change. Citing cases."

The logic behind these cases becomes clear. To argue that marks which have been used as "secondary" marks will not be confused, it is necessary to assume that the marks will continue to be so used in the future. Such an assumption could be justified only if each party had no legal right to use his registered mark by itself. So far as we are aware, there is no such limitation on the right to use a mark, at least under the facts of this case. We would not be willing to support a ruling which would give a broad right to register a mark, but a limited right to use that mark. Neither are we willing to assume that Ortho-Flex and Orthotonic will continue to be used in association with other marks. It is not uncommon for a manufacturer to use more than one mark on his goods, and to vary the emphasis placed on various marks, to change the way in which a mark is used, or to discontinue it altogether.

The exhibits in this case show that Ortho-Flex has been used in several different ways in the past, sometimes alone, sometimes with other marks, sometimes emphasized, sometimes not. There is no justification for assuming that such variation will not occur in the future. Likewise, we see no reason for assuming that applicant will continue to use Orthotonic with "Restonic." The mark it seeks to register is Orthotonic without qualification, not Restonic Orthotonic.

Another facet of the case which has been emphasized by appellee, is the fact that the mattresses, etc., which have been sold by opposer bearing the Ortho-Flex mark, contain springs constructed according to certain patents owned by the opposer. Appellee argues that the mark Ortho-Flex has been used to identify the patented spring construction, rather than the mattress, and such appears to have been the holding of the Assistant Commissioner, although it is not clear what weight she gave to that holding. In our opinion, however, the exhibits in the case show that such has not been the exclusive use of the mark. Exhibit 3, for example, is an advertisement which states "* * be sure to use an...