Intercontinental Mfg. Co. v. Continental Motors Corp.

• Decision Date: 29 March 1956
• Docket Number: Patent Appeal No. 6182.
• Citation: 230 F.2d 621
• Parties: INTERCONTINENTAL MFG. CO., Inc., Appellant, v. CONTINENTAL MOTORS CORPORATION, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

230 F.2d 621 (1956)

INTERCONTINENTAL MFG. CO., Inc., Appellant, v. CONTINENTAL MOTORS CORPORATION, Appellee.

Patent Appeal No. 6182.

United States Court of Customs and Patent Appeals.

February 21, 1956.

Rehearing Denied March 29, 1956.

Robert B. Harmon, Washington, D. C., for appellant.

Barnes, Kisselle, Laughlin & Raisch, Detroit, Mich., and Hauke & Hardesty (John M. Kisselle, Detroit, Mich., of counsel), for appellee.

Before O'CONNELL, Acting Chief Judge, and JOHNSON, WORLEY, COLE and JACKSON, retired, Judges.

WORLEY, Judge.

This is an appeal from the decision of the Assistant Commissioner of Patents affirming the decision of the Examiner of Interferences sustaining two notices of opposition filed by appellee against appellant's applications for the registration of certain trade-marks. The two proceedings, disposed of by a single decision below, are Nos. 31,182 and 31,184, involving trade-mark applications Nos. 574,967 and 574,966, respectively. Application No. 574,967 relates to a mark comprising a large letter "C" surrounding the number "26," with the word "Intercontinental" superimposed on the letter. The mark involved in application No. 574,966 consists solely of the word "Intercontinental." The goods listed in each of the applications comprise various kinds of agricultural machinery, including tractors, and parts therefor.

The notices of opposition were based on appellee's allegation of prior use of the mark "Continental" on goods including internal combustion engines, and upon a number of registrations of that mark for such goods.

The Examiner of Interferences and the Assistant Commissioner held that the record clearly established use by appellee of the mark "Continental," as applied to internal combustion engines, long prior to any use by appellant of its marks. Those holdings are not disputed here by appellant.

The examiner noted that appellant's applications list goods including tractor parts, and that internal combustion engines commonly form parts of tractors. He therefore concluded that the goods of the respective parties must be considered "as being in part identical in kind," citing General Foods Corporation v. Casein Company of America, Inc., 108 F.2d 261, 27 C.C.P.A., Patents 797. The Assistant Commissioner stated that "It is common knowledge that tractors and motors therefor are sometimes made by a single manufacturer." Both tribunals held that appellant's marks so nearly resembled the mark "Continental" that concurrent use thereof by the parties on their respective goods would be likely to result in confusion.

Appellant argues at some length that the products of the parties are actually so different that confusion is impossible. However, we agree with the Examiner of Interferences that the decision must be based on the goods covered in appellant's applications, and since those goods overlap those of appellee, it must be considered that the goods of the respective parties are of the same descriptive properties.

Since there is no issue of priority between the parties, the question to be decided is whether the marks themselves are confusingly similar.

Appellee points out that its entire mark "Continental" is included in appellant's mark "Intercontinental," and argues that confusion is likely to result "when the subsequent user appropriates a registered mark in its entirety and adds an insignificant syllable thereto."

Clearly the marks involved are not coined or artificial words, but are words in common use. Both are primarily geographical in their significance but their geographical meanings are sharply distinguished, one referring to a single continent and the other to two or more continents. As applied to merchandise, we think they tend to suggest the scope of the actual or expected market. In that connection it is noted that the testimony shows that appellant's goods are sold principally in Turkey, South Africa, Mexico, Argentina, Brazil, and other foreign countries.

Normally, the degree of similarity which is permissible between trade-marks consisting of ordinary words, especially when such words are descriptive or geographical, is greater than that permissible between arbitrary or fanciful marks. Thus, in Nims, Unfair Competition and Trade-Marks, Third Edition, page 611, it is said that:

"Similarity which is based only on the use of descriptive words has been held not to be a ground for denying registration."

and on page 297 of the same work, the statement is made that:

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