Franco-Italian Packing Corp. v. Van Camp Sea Food

• Decision Date: 04 April 1944
• Docket Number: Patent Appeal No. 4881.
• Citation: 142 F.2d 274
• Parties: FRANCO-ITALIAN PACKING CORPORATION v. VAN CAMP SEA FOOD CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

142 F.2d 274 (1944)

FRANCO-ITALIAN PACKING CORPORATION v. VAN CAMP SEA FOOD CO., Inc.

Patent Appeal No. 4881.

Court of Customs and Patent Appeals.

April 4, 1944.

Jackson, Webster & Read, of Washington, D. C. (Chas. R. Allen, of Washington, D. C., and William H. Mackay, of San Francisco, Cal., of counsel), for appellant.

Minier & Fihe, of Los Angeles, Cal. (Albert J. Fihe, of Chicago, Ill., of counsel), for appellee.

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

BLAND, Associate Judge.

The appellant, Franco-Italian Packing Corporation, hereinafter referred to as applicant, filed its application in the United States Patent Office for the registration of its trade-mark "Gem-of-the-Sea", which it uses in the sale of canned fish. The Van Camp Sea Food Co., Inc., hereinafter referred to as opposer, filed notice of opposition to the said registration, alleging its ownership and use of the two "registered trade-marks "Chicken of the Sea" and "Sea Chicken."

The Examiner of Interferences held that since the goods were identical, the marks as a whole were so similar that there would be likelihood of confusion, sustained the opposition, and adjudged that applicant was not entitled to the registration sought.

The Commissioner of Patents, upon appeal, affirmed the decision of the Examiner of Interferences, and from the commissioner's decision applicant has here appealed.

Applicant concedes to opposer priority in the use of the marks and presents here the sole issue as to whether or not the tribunals below correctly found that the marks were so similar as to lead to confusion within the meaning of the trademark law. Much is said in both briefs on the subject of the descriptive character of the marks or portions thereof, it being urged by opposer that the marks must be considered as a whole under the well-settled rule, and that, the term "of the Sea" in one of opposer's marks and in the mark of applicant being identical, the public would be led to believe, upon seeing applicant's goods, that they originated with opposer.

We are of the opinion that the tribunals below fell into error in holding that the marks, when viewed as a whole, were confusingly similar. It is true, as pointed out by the opposer, that it is settled law that in determining the question of likelihood of confusion the marks must be viewed as a whole. So far as we know, the law has never been otherwise — certainly not since the Supreme Court in the case of Beckwith's Estate, Inc., v. Commissioner of Patents, 252 U.S. 538, 40 S.Ct. 414, 417, 64 L.Ed. 705, said:

"The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety * * *."

This fact, however, is no justification for a refusal to consider the similarity of certain portions of the marks and separating them for the purpose of such consideration. Marks may contain descriptive or geographical terms which, by themselves, anyone has the right to use, and their extensive common use is sometimes persuasive of the conclusion that such similar descriptive or geographical portions of a mark would not be looked to as indicating the origin of the goods.

The correct rule has been stated by this court many times. We must look to the mark as a whole, regardless of descriptive portions, and determine whether or not the use of the whole mark in the same field in which the mark of another is used would be likely to cause confusion.

While the facts in the case of Young-husband v. Kurlash Co., Inc., 94 F.2d 230, 231, 25 C.C.P.A., Patents, 886, in which the marks "Starlash" and "Kurlash" were involved, differed from those at bar, we there said:

"It is familiar doctrine that, in determining the question of confusing similarity of marks, they must be considered as a whole, but it does not follow that portions of marks which are similar must be given equal weight with portions of marks which are dissimilar. * * *

"We believe that purchasers would pay little attention to the last syllable of the marks as bearing upon the origin of the goods, but, seeing the marks as a whole, the mind would fasten upon the syllable `Kur' in appellee's mark and `Star' in appellant's mark, and the last syllable in each mark would be given little attention other than with respect to its descriptive character."

In Miles Laboratories, Inc., v. Pepsodent Co., 104 F.2d 205, 207, 26 C.C.P.A. Patents, 1272, where the marks "Pepso-Seltzer" and "Alka-Seltzer" were involved, this court, in holding that the term "Seltzer" was descriptive, pointed out that any other conclusion than that at which we arrived would "result in appellant having practically a monopoly of the word `Seltzer' in a trade-mark."

To the same effect was our holding in Miles Laboratories, Inc., v. United Drug Co., 112 F.2d 814, 817, 27 C.C.P.A., Patents, 1273, where the marks "Rex-Seltzer" and "Alka-Seltzer" were involved. We there said:

"* * * if the term `Rex' in appellee's mark is sufficiently dissimilar from the term `Alka' in appellant's mark so that when considered in their entireties, the marks of the parties are not confusingly similar, appellee is entitled to have its mark registered. * * *"

See also Yeasties Products, Inc., v. General Mills, Inc., 77 F.2d 523, 22 C.C.P.A., Patents, 1215.

The case of Hall v. Pennzoil Co., etc., 126 F.2d 506, 508, 29 C.C.P.A., Patents, 933, seems to be closely in point on the nice question here presented. In that case we had before u...