DJ Bielzoff Products Co. v. White Horse Distillers, Patent Appeal No. 4213.

• Decision Date: 04 December 1939
• Docket Number: Patent Appeal No. 4213.
• Parties: D. J. BIELZOFF PRODUCTS CO. v. WHITE HORSE DISTILLERS, Limited.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

107 F.2d 583 (1939)

D. J. BIELZOFF PRODUCTS CO. v. WHITE HORSE DISTILLERS, Limited.

Patent Appeal No. 4213.

Court of Customs and Patent Appeals.

December 4, 1939.

James P. Burns, of Washington, D.C., for appellant.

Randolph B. Cousins, of New York City (Cousins & Cousins, Christopher C. Cousins, Alden D. Redfield, and Francis E. Boyce, all of New York City, of counsel), for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, 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 sustaining appellee's notice of opposition and holding that appellant was not entitled to the registration of a trade-mark comprising the words "Red Horse" in white lettering immediately above a representation in red silhouette of a rearing horse with a rider thereon, all appearing on a black background, for use on cordials, liqueurs, brandies, rums, cocktails, gins, alcoholic bitters, alcoholic syrups for mixing drinks, and ethyl alcohol.

In its application for registration, appellant stated that it had used its trademark on its goods since February 9, 1934.

As originally filed, appellant's application included whiskies along with the other beverages on which it claimed to have used its trade-mark. The term "whiskies" was cancelled, however, by an amendment to the application, made subsequent to the decision of the Examiner of Interferences and while the appeal was pending before the Commissioner of Patents.

It appears from the record that for approximately seven years prior to February 9, 1934, appellant and its predecessor were engaged in the manufacture and sale of non-alcoholic cordials, syrups, and extracts; that about two years prior to the repeal of the Eighteenth Amendment, U.S. C.A.Const., December 6, 1933, appellant's predecessor, D. J. Bielzoff Products Company, a partnership, used a trade-mark comprising the word "Incomparable" in white lettering immediately above a representation in red silhouette of a rearing horse with a rider thereon, and the initials "D. J. B.," also in white lettering, in a circle in the upper left-hand corner of the label, all appearing on a black background, on its non-alcoholic cordials, syrups, and extracts; that the appellant company was incorporated in November 1933, and shortly thereafter acquired the property and good will of the D. J. Bielzoff Products Company; that shortly after the repeal of the Eighteenth Amendment, appellant commenced the manufacture and sale of the alcoholic beverages hereinbefore set forth; and that, on February 9, 1934, appellant changed its trade-mark by substituting the term "Red Horse" for the term "Incomparable" and omitting the initials "D. J. B," and, on that date, proceeded to use the mark so changed on its goods.

It further appears from the record that appellee, a British corporation, is the owner of the following trade-mark registrations: registration No. 101072, dated November 10, 1914, of a trade-mark comprising a pictorial representation of a white horse, together with the words "White Horse Cellar," for use on Scotch whisky; registration No. 312106, dated March 13, 1933, of a trade-mark comprising a pictorial representation of a white horse, appearing on a black background, together with the words "The White Horse," in white lettering, for use on whisky; registration No. 302117, dated March 28, 1933, of the term "White Horse," for use on whisky; registration No. 310140, dated February 13, 1934, issued on an application filed October 7, 1933, of a trade-mark comprising the pictorial representation of a black horse and the words "The Famed Black Horse fine Old Highland Malt Whisky," the words "fine Old Highland Malt Whisky" being disclaimed apart from the mark as shown. It further appears from the record that since the repeal of the Eighteenth Amendment, December 6, 1933, to the time of the taking of the testimony for opposer in this case, May 1938, appellee has expended approximately $543,000 in advertising its product (advertised and known as "White Horse Scotch Whisky") and its white horse trade-mark, registration No. 101072, throughout the United States in newspapers, periodicals, trade papers, menus, catalogues, wine lists, programs, posters, Christmas cards, window displays, and in distributing miniature white horses; that miniature white horses are attached to the neck of each bottle of appellee's "White Horse Scotch Whisky"; that Browne Vintners Company, Incorporated, importer and distributor of wines and liquors, imports and sells in the United States appellee's "White Horse Scotch Whisky"; that the Browne Vintners Company has advertised appellee's product to the extent and in the manner hereinbefore stated; that it has not advertised appellee's "Black Horse" whisky; and that it is not an uncommon practice in the liquor trade for a producer to market its products under closely related trademarks; such as, for example, Seagram's "Five Crown" and "Seven...