Elgin American Mfg. Co. v. Elizabeth Arden, Inc.

• Decision Date: 01 June 1936
• Docket Number: Patent Appeal No. 3637.
• Citation: 83 F.2d 687
• Parties: ELGIN AMERICAN MFG. CO. v. ELIZABETH ARDEN, Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

83 F.2d 687 (1936)

ELGIN AMERICAN MFG. CO. v. ELIZABETH ARDEN, Inc.

Patent Appeal No. 3637.

Court of Customs and Patent Appeals.

June 1, 1936.

Ephraim Banning, of Chicago, Ill., and Charles R. Allen, of Washington, D. C., for appellant.

Hugo Mock and Asher Blum, both of New York City, and James Atkins, of Washington, D. C., 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 Trade-Mark Interferences dismissing appellant's notice of opposition and holding that appellee was entitled to the registration of its trademark for use on soap.

Appellee's mark is in the form of a monogram, and, although it supposedly consists of the letters "EA," it will be observed that the letter "A" is so formed that it also constitutes the letter "M."

Appellant's mark consists of the letters "EAM."

For the purpose of clarity, we reproduce the marks of the parties:

Appellant's trade-mark was registered May 15, 1917, registration No. 116,616, on an application filed December 19, 1914, for use on "lockets, cigarette-cases, vanity-cases, card-cases, match-safes, and powder-boxes."

In its application, appellee stated that it had used its trade-mark on its goods since April, 1926.

In its notice of opposition, appellant alleged that it had used the trade-mark "EAM" on a variety of articles and containers, "including soap receptacles," and "fills and refills for the * * * containers and receptacles aforesaid * * *"; that it has built up and now possesses a large and valuable trade in its products; that the goods of the respective parties possess the same descriptive properties; that appellee's trade-mark consists essentially of the letters "EA," and so nearly resembles the trade-mark of appellant that their concurrent use by the respective parties on their goods would cause confusion in the trade; and that appellant would be damaged by the registration of appellee's trade-mark.

Although in its answer appellee denied that its trade-mark was confusingly similar to appellant's trade-mark, and that the goods of the parties possessed the same descriptive properties, it alleged, nevertheless, that it had used its trade-mark on various articles, including "refillable cartons for talcum powder, soaps, perfumes, and bath salts, goods in part of the same descriptive properties as the goods of the Opposer herein." (Italics ours.)

The case was presented to the tribunals of the Patent Office on stipulated facts. It appears therefrom that appellant has used its trade-mark, "EAM," on a variety of articles, including soap receptacles; that its goods are known as the "EAM" goods; that appellee's goods are known as the "EA" goods; that both parties are actually engaged in the business of selling a variety of toilet articles and containers therefor; and that, to some extent, their goods are sold in the same stores.

In his decision affirming the decision of the examiner, the Commissioner of Patents said:

"I am convinced that appellant's business is restricted almost exclusively to the manufacture and sale of metal novelties, including toilet articles but not toilet preparations; and that the determinative question upon this phase of the controversy is whether or not ornamental containers for toilet preparations possess the same descriptive properties as the products they are designed to contain. Counsel for appellant argue that they do, and cite as their authority Cluett, Peabody & Co. v. Hartogensis (Cust.& Pat. App.) 41 F.(2d) 94. In that case it was held by the Court of Customs and Patent Appeals that shirts and collars are of the same descriptive properties as collar buttons, because `they clearly belong to the same general class of men's wear.' I think the situation here is entirely different. It would require a very distorted meaning of terms to say that a cake of soap belongs to the same general class as a metal soap box, or that an ounce of perfume has characteristics in common with its ornamental container. Once that be held it would necessarily follow that barrels and beer are of the same descriptive properties; likewise bottles and pickles, crates and eggs, bags and flour, etc. I have found no case that goes to that length, and in the absence of a binding judicial pronouncement to the contrary my own opinion is that no such meaning can properly be read into the language of the statute. * * *

"While I think the decisions of the Examiner of Trade-Mark Interferences in these cases are right as far as they go, I am also of the opinion that the marks involved lack deceptive similarity. Applicant's mark in each case consists of the letters `EA' arranged to form a distinctive monogram. Opposer's mark, as disclosed in its registration and in all the specimens of record, is made up of the three initials `E. A. M.,' printed in perfectly plain type. It may be that if the letters were arranged in substantially the same manner the difference in their number alone would not be sufficient to negative the possibility of confusion, but here the arrangement is so strikingly different as to remove all semblance of similarity save only the occurrence of the two letters in common.

"The goods to which the parties apply their marks being of different descriptive properties, and the marks themselves...