Celanese Corp. v. EI du Pont de Nemours & Co.
| Decision Date | 04 March 1946 |
| Docket Number | Patent Appeal No. 5066. |
| Citation | 154 F.2d 143 |
| Parties | CELANESE CORPORATION OF AMERICA v. E. I. DU PONT DE NEMOURS & CO. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
I. Seltzer and C. W. Levinson, both of New York City, for appellant.
Stone, Boyden & Mack, of Washington, D. C. (Wilson C. Baily, of West Chester, Pa., and J. Hanson Boyden, of Washington, D. C., of counsel), for appellee.
Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges.
This is an appeal from the decision of the Commissioner of Patents, speaking through the First Assistant Commissioner, 61 U. S. P. Q. 193, affirming the decision of the Examiner of Trade-Mark Interferences sustaining the opposition of appellee to the application of appellant filed June 19, 1942, for registration of the word "Clarifoil," printed in capital letters, as a trade-mark for goods described in the application as "Transparent or Translucent Wrapping and Packing Material." The application alleges use of the mark "since June 16, 1942."
In its notice of opposition appellee relies upon its ownership of registration No. 281,471, issued March 17, 1931, upon an application filed November 1, 1930. The registered mark so relied upon is a composite mark consisting of the word "Du Pont" arranged in an oval, below which oval is the notation "Clar-apel."
It is conceded that the contesting marks are applied to merchandise of the same descriptive properties, and the record discloses that part of the merchandise is substantially identical.
According to the testimony, the merchandise distributed by appellee is a cellulose film widely used as a wrapping material for such products as cigars, cigarettes, and food-stuffs of almost every description; and during normal times a wide line of textiles, trinkets, and things of that sort.
The opposition is based upon that portion of the proviso to section 5(b) of the Trade Mark Act of February 20, 1905, which states: "That trade-marks 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." 15 U.S. C. sec. 85(b), 15 U.S.C.A. § 85(b).
Appellant urges that the merchandise is sold exclusively to a discriminating class of purchasers and therefore the marks may be considered dissimilar, even if they would be considered deceptively similar if the product were sold to the general public.
The record, however, fails to establish the fact that the merchandise is sold to a discriminating class of purchasers; but, if established, it would not be controlling here if the contested marks so nearly resemble one another as to be likely to cause confusion. See, Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A., Patents, 827.
Moreover, it is true, as stated in the decision of the Examiner of Interferences, that "trade practices in this respect may change and hence the class of purchasers to whom the goods are now sold is not deemed to be a controlling factor herein."
Appellee's mark, as hereinbefore noted, is comprised of the separately displayed words "Du Pont Clar-apel"
The Examiner of Trade-Mark Interferences and the First Assistant Commissioner of Patents both correctly held, in accordance with the rule of law laid down and followed by this court, that the addition of the surname "DuPont" to one of two otherwise confusingly similar marks is not of itself sufficient to avoid the likelihood of confusion. Richard Hellman, Inc. v. Oakford & Fahnestock, 54 F.2d 423, 19 C.C.P.A., Patents, 816; California Prune & Apricot Growers Association v. Dobry Flour Mills, Inc., 101 F.2d 838, 26 C.C.P.A., Patents, 910. See also Menendez v. Holt, 128 U.S. 514, 9 S.Ct. 143, 32 L.Ed. 526; Firestone Tire & Rubber Co. v. Montgomery Ward & Co., Inc., 150 F.2d 439, 32 C.C.P.A., Patents, 1074.
In the case last cited, appellant made the distinguishing feature of its corporate name, "Firestone," a part of its trade-mark, "Firestone Air Chief," as appropriated to radios and radio supplies. The name "Firestone," as the reproduction of the mark in the prevailing opinion discloses, is separately displayed and made equally prominent with the other words in the mark. Appellee's mark in that case, upon goods of the same descriptive properties, was "Airline."
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...and syllables in the words, but this form of technical gymnastics is not determinative. See Celanese Corp. of America v. E. I. Du Pont De Nemours & Co., Cust. & Pat. App., 154 F.2d 143. The initial letters and the last syllables — probably the parts of any word which impress themselves most......
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