General Shoe Corp. v. Lerner Bros. Mfg. Co.

• Decision Date: 11 April 1958
• Docket Number: Patent Appeal No. 6303.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Parties: GENERAL SHOE CORPORATION, Appellant, v. LERNER BROS. MFG. CO., Inc., Appellee.

45 CCPA 872, 254 F.2d 154 (1958)

GENERAL SHOE CORPORATION, Appellant, v. LERNER BROS. MFG. CO., Inc., Appellee.

Patent Appeal No. 6303.

United States Court of Customs and Patent Appeals.

April 11, 1958.

Ernest P. Rogers, Atlanta, Ga. (Francis C. Browne, Russell L. Law, Washington, D. C., Smith, Kilpatrick, Cody Rogers & McClatchey, Atlanta, Ga., and Mead, Browne, Schuyler & Beveridge, Washington, D. C., of counsel), for appellant.

Charles W. Gerard, Kansas City, Mo., and J. Harold Kilcoyne, Washington, D. C., for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON (retired), Judges.

RICH, Judge.

This is an appeal from the decision of the Commissioner of Patents (108 U.S. P.Q. 341) in Trademark Opposition No. 31,914, reversing the decision of the Examiner of Interferences which sustained appellant's opposition to appellee's application, filed September 26, 1947, to register the word "Holiday" as a trademark for men's outer shirts, and lounging, beach and bath robes. Use since January 1, 1945, is asserted by applicant.

Appellant opposes registration alleging that on May 1, 1944, it commenced using and has since continuously used the trademark "Holiday" on men's, women's and children's shoes, made of leather, fabric and combinations thereof, on which it obtained, on an application filed April 20, 1949, registration No. 529,488 of August 22, 1950, relied on here. Opposer also owns and relies on registration No. 91,874 dated June 3, 1913, of "Holiday" for "rubber boots and shoes, rubber overshoes, and rubber-soled canvas boots and shoes."

The marks as used by both parties are in script, the only difference between them being that opposer's is in a rather nondescript backhand while applicant's is in a more regular and forwardly slanting script. While there is this difference, so that the marks are not identical in fact, it seems to go undisputed that for the purposes of this case they may be considered identical in law and we shall so treat them.

Opposer's priority of use is not questioned and the sole issue is whether the use of "Holiday" on the goods named in applicant's application is likely "to cause confusion or mistake or to deceive purchasers" so as to render the mark unregistrable to applicant under Sec. 2(d) of the Trademark Act of 1946.

The parties have stipulated into the record a few pages from the record of an earlier opposition to which opposer was a party, being the testimony of opposer's vice-president in charge of its women's retail shoe stores. It would appear therefrom that, as of 1951, opposer owned and operated a chain of forty-four "Nisley Shoe Stores" which sell shoes, handbags, gloves and hosiery throughout the United States and, more important here, another chain of fourteen "Holiday" shoe stores in as many different cities. Photographs of fronts of some of the latter are annexed to the notice of opposition and show that the store fronts bear, by way of a name, a large electric sign, often as long as the store is wide, on which the fascimile of opposer's trademark "Holiday" appears as a double row of incandescent bulbs, the testimony being that they are made to flash on and off. In these "Holiday" stores, it would appear that shoes bearing the trademark in question are sold in boxes and wrappings also featuring the mark, which has been promoted locally and nationally by a half-million dollars worth of advertising in the period 1944-1951. The testimony was that the mark had been used on "all types of footwear," on hosiery, and that handbags had been "promoted * * * under the name." There is no specific mention in this testimony of the sale of any men's shoes or other men's wear, or of the sale of any goods bearing the "Holiday" mark anywhere except in the "Holiday" stores and the implication is clear that the latter were women's shoe stores also selling handbags and hosiery and presumably nothing else.

The foregoing testimony, introduced from another opposition against Joseph N. Eisendrath Company, obviously does not purport to develop the total commercial picture of opposer's business under the "Holiday" trademark. It would appear from reading the stipulated testimony and from other evidence put in by the applicant in the present case that the earlier opposition was directed against the registration of "Holiday" for women's fabric gloves and the obvious purpose of the testimony was to show that the sale of gloves in the Holiday stores would be a logical extension of the business done under the mark by opposer. We think that much of this testimony, brief though it is, being directed to a different objective, has had a somewhat misleading effect in the present case, for reasons we shall explain later.

Applicant took the testimony of three witnesses (no attorney appearing for opposer to cross examine), one being a Kansas City merchandise manager in a specialty store handling applicant's sport shirts, the other two being the president and secretary of the applicant, a manufacturer of men's sport shirts and apparently nothing else. They testified to the innocent adoption and continuing use of "Holiday" on sport shirts, from a date later than opposer's adoption, and to a short but discontinued use on men's undershorts; to its use by them on no other goods; to a knowledge of some other uses and trademark registrations of "Holiday" and to lack of actual confusion with any of the other registrants or users or with opposer; to separate markets for shoes and sport shirts at the wholesale level; to channels of distribution for applicant's sport shirts through department, men's wear and men's specialty stores; and to advertising expenditures of $75,000 per year in support of a gross business of $2.5 million annually.

Since this record showed continuing use of the mark by...