Frederick Gash, Inc. v. Mayo Clinic

• Decision Date: 10 August 1972
• Docket Number: Patent Appeal No. 8677.
• Citation: 174 USPQ 151,461 F.2d 1395
• Parties: FREDERICK GASH, INC., Appellant, v. MAYO CLINIC and Mayo Foundation, Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

174 USPQ 151, 461 F.2d 1395 (1972)

FREDERICK GASH, INC., Appellant, v. MAYO CLINIC and Mayo Foundation, Appellees.

Patent Appeal No. 8677.

United States Court of Customs and Patent Appeals.

June 15, 1972.

Rehearing Denied August 10, 1972.

Alan H. Levine, Judah B. Felshin, New York City, attys. of record, for appellant.

Phillip H. Smith, Minneapolis, Minn., Robert G. McMorrow, Washington, D.C., attys. of record, for appellees.

Before RICH, ALMOND, BALDWIN and LANE, Associate Judges, and ROSENSTEIN, Judge, United States Customs Court, sitting by designation.

LANE, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, 162 USPQ 263 (1969), sustaining an opposition to the registration¹ of "mayo 7," stylized as shown below, for "imitation, low calorie mayonnaise." Our review of the record and arguments in this case convinces us that the board committed reversible error, and we accordingly reverse its decision.

The Mayo Clinic is a voluntary association of individuals engaged in the group practice of medicine at Rochester, Minnesota. Its fame admittedly extends world-wide. The Mayo Foundation is asserted to be an eleemosynary corporation of Minnesota which owns and holds legal title to all of the assets and properties used by the Mayo Clinic. The name "Mayo" derives from that of the Clinic's founders, the Doctors William J. and Charles H. Mayo.

In their notice of opposition, appellees alleged that the Mayo Foundation is the owner of the name "Mayo" and that the Mayo Clinic uses "Mayo" with the Foundation's consent. The name "Mayo," it was asserted, has come to be recognized by the public as synonymous with the services rendered by the Clinic. Among those services is the prescription of diets and the preparation of diet manuals for the Clinic's patients. Because of the presence of the name "Mayo" and the fact that the food product to which "mayo 7" is applied is a dietetic product, the mark sought to be registered is, appellants urge, likely to suggest a connection with the Mayo Clinic.

Much of the board's opinion is devoted to the nature and reputation of the Mayo Clinic. The board also observed that "for some reason, a spurious diet referred to by many publications and by many people as the `Mayo Clinic Diet' has received wide circulation." The board noted that although the Mayo Clinic sought to "dispel any association of that diet with the Clinic," many inquiries were nevertheless received. Against the factual background herein outlined, the board held:

Considering the fame of the name "Mayo Clinic" and that the public does associate that name with diet menus and programs and considering that applicant\'s low calorie imitation mayonnaise is a diet product which would be purchased by diet conscious persons, it is our opinion that the utilization of "MAYO" as part of applicant\'s mark will result in confusion in the minds of such persons to the extent that such persons will readily conclude that opposer sponsors or recommends applicant\'s product. Since such is not the case, opposers will necessarily be damaged by the issuance of the registration sought by applicant.

Appellant contended that the term "mayo" is a well-known slang expression for mayonnaise and quoted the Dictionary of American Slang which states: "Mayo-n. Mayonnaise. Common lunch counter use since about 1930." The board rejected the argument holding that:

Applicant\'s product, however, is one that comprises a grocery store product and there is no indication that the public, aside from lunch counter personnel, is aware of such meaning. The dictionaries available to us, Webster\'s Unabridged, second and third editions, Funk & Wagnall\'s New Standard Dictionary of the English Language, 1958; and the Complete Dictionary of Abbreviations, Robert J. Schwartz, Thomas Y. Crowell Company, New York, 1955, do not include any reference to "mayo" as an indication for or abbreviation of the word "mayonnaise". There is no evidence of any probative value to buttress applicant\'s contention.

The issue before us is expressed by appellees as:

* * * whether in view of the widespread popularity of the name "MAYO" and the public\'s association of that name with diet menus and programs, the Trademark Trial and Appeal Board erred in determining that Appellant\'s proposed use of the mark "mayo 7" would result in confusion of the extent that diet conscious persons would readily conclude that Appellees sponsor or recommend Appellant\'s product.

Appellees' opposition is therefore predicated on § 2(a) of the Lanham Act, 15 U.S.C. § 1052(a), which reads as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—

(a) Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute * * *.

The inquiry under this provision of the statute is similar to that under § 2(d), 15 U.S.C. § 1052(d), which is likelihood of confusion of the marks as applied to the respective goods and/or services. See Morehouse Manufacturing Corp. v. J. Strickland Co., 407 F.2d 881, 888, 56 CCPA 946, 955 (1969).

The thrust of appellant's position is that the board stressed the wrong facts. The board, in appellant's view, focused too heavily on the reputation of the Mayo Clinic and in so doing, failed to appreciate (1) the differences between "mayo 7," stylized as it is with "mayo" in lower case letters, and "Mayo" and (2) the fact that "mayo" is so highly suggestive of mayonnaise. Appellees, on the other hand, contend the board was correct in giving substantial weight to the popularity of the name "Mayo" in connection with the Mayo Clinic and its diet programs and urge that as a whole the name "Mayo" and appellant's mark are quite similar.

OPINION

We do not think that the Mayo Clinic would come to the mind of the average purchaser confronted with a packaged food product bearing the stylized mark "mayo 7." As a practical matter, medical institutions are not thought of as goods producers, and it is not to be expected that a consumer would associate the Mayo Clinic as the source of the mayonnaise in this case. Moreover, we do not think it likely that one would consider that the Mayo Clinic has approved of this low calorie product. This is a food, not a diet. There is no evidence of record of which we are aware that tends to prove that the Mayo Clinic endorses as such any line of foods produced by any food manufacturer. It seems that were an endorsement intended, it would be more clearly expressed than by the mere use of "mayo" in lower case letters with nothing else but a "7" which lacks any particular inherent suggestion. In short, a role of the Mayo Clinic as a sponsor or endorser simply would not be suggested by the mark "mayo 7."

These conclusions are reinforced by the fact that "mayo" is a recognized slang expression for "mayonnaise." The provision for this term in the Dictionary of American Slang² is probative and persuasive evidence of the wide acceptance of "mayo" as a vernacular synonym of "mayonnaise." Unlike the TTAB, we are not disturbed by the absence of "mayo" in other dictionaries of the English language. The Dictionary of American Slang is a specialized and reputable authority on slang expressions, and the inclusion of "mayo" therein is strong evidence that the term is in common usage in America.

Since we conclude that the average purchaser viewing "mayo 7" on a jar of low calorie imitation mayonnaise would not think of the Mayo Clinic, but would instead think of the food product, we do not find any likelihood of confusion of the mark here involved with either the Mayo Clinic, Mayo Foundation or the Mayo Brothers. The decision of the board is accordingly reversed.

Reversed.

ROSENSTEIN, Judge, dissenting, with whom RICH, Judge, joins.

I disagree with the reasoning and conclusion of the majority, and respectfully record my dissent.

In their notice of opposition, opposers Mayo Clinic and Mayo Foundation allege, inter alia, that the name "Mayo" has become well known to the general public as a result of their respective activities and services in the health field, and that "Mayo" is synonymous with opposers and their services; that the goods of appellant are directed to those interested in reducing or on a diet, and are related to the services of Mayo Clinic inasmuch as its doctors often prescribe diets tailored to needs of patients; that appellant's mark "Consists of or comprises * * * matter which may disparage or falsely suggest a connection with persons, living or dead, institutions * * *"¹—in this case, with the persons Doctors William J. Mayo and Charles H. Mayo, now deceased and widely known as the "Mayo Brothers," and with the institutions, Mayo Clinic and Mayo Foundation; and that appellant's mark "mayo 7" so resembles "Mayo", "Mayo Brothers", "Mayo Clinic" and "Mayo Foundation" as to be likely, when applied to appellant's low calorie mayonnaise, to cause confusion or mistake on the part of the purchasing public with the result that said purchasers would likely assume that appellant's goods are manufactured by opposers or under their supervision, or have received opposer's endorsement or approval, or are associated in some manner with opposers, all fraught with damage and detriment to opposers and the public.

In its opinion, the board made extensive findings of fact based, apparently, on testimony and exhibits introduced into evidence in the proceedings...