Ilco Corp. v. Ideal Security Hardware Corp.

• Decision Date: 29 January 1976
• Docket Number: Patent Appeal No. 75-567.
• Citation: 527 F.2d 1221
• Parties: ILCO CORPORATION, Appellant, v. IDEAL SECURITY HARDWARE CORPORATION, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

527 F.2d 1221

ILCO CORPORATION, Appellant, v. IDEAL SECURITY HARDWARE CORPORATION, Appellee.

Patent Appeal No. 75-567.

United States Court of Customs and Patent Appeals.

January 29, 1976.

Ira Milton Jones, Milwaukee, Wis., atty. of record, for appellant.

John D. Gould, Merchant, Gould, Smith, Edell, Welter & Schmidt, P. A., Minneapolis, Minn., attys. of record, for appellee.

Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.

RICH, Judge.

This appeal is from the decision of the Patent and Trademark Office Trademark Trial and Appeal Board, 184 USPQ 765 (1974), dismissing appellant's petition to cancel registration No. 927,131 of the mark HOME PROTECTION CENTER for "merchandise racks for displaying and merchandising of various types of locks and latches." The marks and goods of the parties are identical, and it is agreed that the sole issue is priority of use. We reverse.

Facts

The goods are display racks, sold to the hardware trade by appellant and appellee for use in retail hardware stores. These racks hold an assortment of various related hardware items manufactured and distributed by the parties. The mark HOME PROTECTION CENTER is applied as a prominent label or sign across the top of the rack. It does not appear on any of the individually packaged hardware items, which bear the marks ILCO (for appellant) and IDEAL or IDEAL SECURITY (for appellee). The racks are not sold through retail trade channels, but customers are expected to see them in stores and to be attracted to the hardware items they display.

The date of first use alleged in the registration is "on or before Dec. 22, 1969." It appears that both parties had initially labelled their racks HOME PROTECTION HARDWARE, but had changed this designation to HOME PROTECTION CENTER soon thereafter. Since the facts, as found by the board, are essential to our decision herein, we reproduce the portions of the board opinion reciting them:

In September 1966, appellant designed and developed a display rack or panel for displaying locks * * * etc.. As originally designed, the heading at the top of the rack prominently bore the notation "HOME PROTECTION HARDWARE" but, within a matter of weeks, it was decided to use the heading "HOME PROTECTION CENTER" thereon. Starting in November 1966, appellant began advertising its displays, including the security hardware assortment sold therewith under either the mark "HOME PROTECTION HARDWARE" or "HOME PROTECTION CENTER," * * *. Beginning in the fall of 1967, appellant sold racks bearing the heading "HOME PROTECTION CENTER" and sales of merchandising racks complete with an assortment of security hardware have been continuous to Woolworth's and other customers since such time.

* * * as early as September 1965, appellee began through a predecessor in title, Ideal Brass Works Incorporated, to use the heading "HOME PROTECTION HARDWARE" on racks for displaying locks, latches and the like and * * * such racks were sold to the trade since as early as the above date and subsequent thereto. In the latter part of 1966, or early 1967, appellee changed the heading on its display racks to the mark "HOME PROTECTION CENTER" and has used this mark since that time.

Based on these findings, the board concluded that appellee was the prior user of HOME PROTECTION CENTER:

The record clearly shows that both of the parties have used "HOME PROTECTION HARDWARE" and "HOME PROTECTION CENTER" interchangeably, and we are therefore unable to make any real distinction between the two terms which merged one into the other. Further, in view of the manner of use by the parties, it seems apparent that they both regarded the feature "HOME PROTECTION" as the distinguishing feature of their marks, and it is equally clear that as between the two parties, appellee is the first user of its merged mark by approximately a year. Emphasis ours.

OPINION

I.

In holding that appellee used HOME PROTECTION CENTER prior to appellant, the board considered appellee entitled, under its "merger" theory, to rely on its use of a different designation¹ for the goods, namely, HOME PROTECTION HARDWARE, for the purpose of proving a date of first use of HOME PROTECTION CENTER. This was error.

The law permits a user who changes the form of its mark to retain the benefit of its use of the earlier form, without abandonment, if the new and old forms create the same, continuing commercial impression. We agree with the following statement of the Trademark Trial and Appeal Board in Humble Oil & Refining Co. v. Sekisui Chemical Co., 165 USPQ 597, 603-604 (TTAB 1970):

It is settled that a person may change the display of a mark at any time because whatever rights he may possess in the mark reside in the term itself rather than in any particular form or arrangement thereof. See: Vacuum Electronics Corp. v. Electronic Engineering Company of California, 150 USPQ 215 (TT&A Bd., 1966), and cases cited therein. The only requirement in these instances is that the mark be modified in such a fashion as to retain its trademark impact and symbolize a single and continuing commercial impression. That is, a change which does not alter its distinctive characteristics represents a continuity of trademark rights. Thus, where the distinctive character of the mark is not changed, the mark is, in effect, the same and the rights obtained by virtue of the earlier use of the prior form inure to the later form.

See also Salem Commodities, Inc. v. Miami Margarine Co., 244 F.2d 729, 44 CCPA 932 (1957). The test to be applied here is whether HOME PROTECTION HARDWARE and HOME PROTECTION CENTER create the same, continuing commercial impression. While it is true that appellant need not show prior trademark use to defeat appellee's right to maintain its registration, Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 59 CCPA 1016 (1972), noting particularly Judge Lane's concurring opinion, appellee's right to register here depends, under § 2(d), on its prior use of HOME PROTECTION CENTER or any variant thereof which is legally equivalent thereto.

In our opinion appellee is not entitled to rely on its use of HOME PROTECTION HARDWARE because it creates a different commercial impression than HOME PROTECTION CENTER, when the marks are applied to the goods.² That appellee may have used them interchangeably is not material because commercial impression is gauged by the impact on the public, in this case hardware store operators and their customers. HOME PROTECTION CENTER signifies a unitary aggregation of goods related to home protection, the one place in the hardware store to go for home protection needs. HOME PROTECTION HARDWARE, on the other...