Lever Bros. Co. v. Riodela Chemical Co.

• Decision Date: 04 June 1930
• Docket Number: Patent Appeal No. 2357.
• Parties: LEVER BROS. CO. v. RIODELA CHEMICAL CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

17 CCPA 1272, 41 F.2d 408 (1930)

LEVER BROS. CO. v. RIODELA CHEMICAL CO.

Patent Appeal No. 2357.

Court of Customs and Patent Appeals.

June 4, 1930.

Archibald Cox, William G. Henderson, and Spencer A. Studwell, all of New York City, for appellant.

Wm. L. Edmonston, of Washington, D. C., for appellee.

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

LENROOT, Associate Judge.

This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences dismissing the opposition of appellant and adjudging the appellee entitled to the registration of the word "Tex" as applied for.

Appellant's trade-mark is the word "Lux," registered January 1, 1907, used upon soap and soap powder.

Appellee's application was filed on March 26, 1925, and was for a composite mark of which the word "Tex" is the dominating feature, used upon washing and cleaning compounds.

No testimony was taken by either side, but stipulations were entered into by the parties, agreeing upon the facts relevant to the controversy, as follows:

"Opposer, Lever Brothers Company, is a corporation organized and existing under and by virtue of the laws of the State of Maine, and is located and does business in the city of Cambridge, County of Middlesex, in the State of Massachusetts. Opposer is the proprietor of United States Certificate of Trade-Mark Registration No. 59,032, which was granted January 1, 1907, for said trade-mark `Lux.'

"For more than fifteen years said trade-mark `Lux' has been continuously used by Opposer as the name of a compound in flakes, having detergent, washing and cleansing properties, a specimen of which is produced herewith and marked `Opposer's Package.'

"If Floyd S. Davis, Secretary of Opposer, and other witnesses connected with opposer were called, they would give evidence to prove the following:

"Opposer has expended in advertising said `Lux' during the last ten years in excess of Ten Million Dollars.

"The sales of `Lux' during the last ten years have been more than Eight Hundred Million Packages.

"Applicant, Riodela Chemical Company (now by change of name The Tex Company) is a corporation organized and existing under and by virtue of the laws of the State of Delaware, and is located and does business in the City of Wilmington, County of New Castle, in the State of Delaware.

"Applicant has pending an application, Serial No. 211,707, filed March 26, 1925, published in the Official Gazette of June 8, 1926, for the trade-mark `Tex,' and this application is involved in this opposition.

"For more than three years said trade-mark `Tex' has been continuously used by Applicant in interstate commerce on his washing and cleaning compounds, a specimen of which is produced herewith and marked `Applicant's Package.'

"If Edward M. Atwood, President of Applicant, and other witnesses who would corroborate his statements were called, they would give evidence showing that:

"Applicant has expended in advertising said trade-mark `Tex' during the last three years in excess of Thirty Thousand Dollars.

"The sales of `Tex' during the last three years have been more than Three Hundred and Fifty Thousand Pounds."

The issues in the case are as follows:

"1. Are the two marks used on goods of the same descriptive properties?

"2. If so, does the mark of appellee so nearly resemble that of appellant as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers?"

If both of these questions be answered in the affirmative, appellant must prevail.

Both of the tribunals of the Patent Office found that the marks were used upon goods of the same descriptive properties, and they were clearly right in so holding. The goods of both parties are washing and cleaning compounds. The goods of appellant are in the form of flakes, while those of appellee are in powdered form. That the goods of both parties are of the same descriptive properties is so clear that it requires no citation of authority as to the rule to be followed in determining this question.

As to the second question, both of the tribunals found that there is no likelihood of confusion or mistake in the use of the two marks.

With due deference to the findings of the Patent Office upon this question, we cannot agree with the conclusion there reached. It is clear to us that the use of these two words of three letters each, each word ending in the letter "x," upon goods having the same descriptive properties, is likely to cause confusion or mistake in the mind of the public, and we are of the opinion that the word "Tex" was selected in the hope and belief that such confusion would arise and that appellee would profit thereby. We do not intimate that appellee did not honestly believe that it had a legal right to use the word "Tex"; it undoubtedly was thought that its mark had been differentiated from that of appellant sufficiently to be protected by the law, but that a benefit would be reaped from its close approximation to appellant's mark. That appellee had knowledge of appellant's mark at the time it adopted the word "Tex" is fairly presumed from the facts set out in the stipulations.

The word "Lux" is a unique word. It does not even suggest to the ordinary mind the properties of the goods to which it is applied. Appellee argues that the word "Lux" is from the Latin word "lux," meaning "light," while appellee's mark "Tex" is from the Latin word "texere," meaning to weave, to construct, and that therefore its word "Tex" is suggestive of cleaning textiles and that of appellant is suggestive of the appearance of material after the cleaning compound of appellant has been applied to it.

While the two words have different origins, we do not think that either word would be ordinarily understood as appellee asserts. We think that the word "Lux" is a mark indicating only origin of the goods made by appellant, and we would be of the same opinion as to the word "Tex" indicating only origin of the goods made by appellee, did it not so nearly resemble the word "Lux" as to be likely to cause confusion with the latter as to the origin of the goods to which the mark is applied.

It must be remembered that the goods to which the marks are applied are of common everyday use in the household. They are very inexpensive and are consumed in their use. Purchasers therefore would not be expected to exercise such degree of care in their purchase as would be exercised in more expensive and rarely purchased articles. International Silver Co. v. American Silver Co. (Cust. & Pat. App.) 37 F.(2d) 622.

If a person heard for the first time of a cleaning material bearing the name of "Lux," highly recommended, and some time later had occasion to purchase or direct the purchase of a cleaning material, it would not be at all unlikely that a cleaning material bearing the name "Tex" would be accepted in the belief that it was the same as had been recommended to the purchaser.

We think the observations made by the Court of Appeals for the Seventh Circuit in the case of Northam Warren Corporation v. Universal Cosmetic Co., 18 F.(2d) 774, 775, are applicable to the case at bar. The court said:

"While the human mind drops and forgets much that it hears and sees, yet it holds fast to some word, place, name, sign, or symbol contained in an advertisement, through which some human need has been supplied, and that recollection is carried by the people into times and places far removed from the times and places of the publication. * * *

"One entering a field of endeavor already occupied by another should, in the selection of a trade-name or trade-mark, keep far enough away to avoid all possible confusion. We can see no purpose or reason for the selection of `Cuticlean' by one entering the field where another is doing a similar business using as its trade-mark `Cutex,' except it be done with the hope that benefit might accrue from the similarity. There can be no excuse or justification for such acts.

"Whether there is an infringement of a trade-mark does not depend upon the use of identical words, nor on the question as to whether they are so similar that a person looking at one would be deceived into the belief that it was the other; but it is sufficient if one adopts a trade-name or a trade-mark so like another in form, spelling, or sound that one, with a not very definite or clear recollection as to the real trade-mark, is likely to become confused or misled." (Italics ours.)

While there are some expressions in the foregoing quotation with which we might not fully agree, we think that in a general way it expresses the rule that should be followed in proceedings of the character before us.

Appellant's use of its trade-mark began more than fifteen years before appellee began to use its mark. It was registered in the Patent Office more than eighteen years before appellee applied for registration of its mark. It is conceded that, during the ten-year period immediately preceding June, 1927, appellant had sold more than 800,000,000 packages of its goods bearing its trade-mark "Lux" and had expended during said period more than $10,000,000 in advertising said "Lux"; that appellee had sold more than 350,000 pounds of its goods bearing its trade-mark "Tex" during the three-year period immediately preceding June, 1927, and had expended during said period more than $30,000 in advertising said trade-mark "Tex."

In view of the foregoing, we can perceive no possible object in appellee's adoption of the word "Tex" instead of some other word as easy to remember, unless it was for the purpose of profiting by the wide use of appellant's mark, hoping and believing that many purchasers would be confused by the similarity of the two names and thus purchase appellee's goods when really intending to purchase those of appellant.

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