LJ Mueller Furnace Co. v. United Conditioning Corp.

• Decision Date: 25 May 1955
• Docket Number: Patent Appeal No. 6123.
• Parties: L. J. MUELLER FURNACE CO. v. UNITED CONDITIONING CORP.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

222 F.2d 755 (1955)

L. J. MUELLER FURNACE CO. v. UNITED CONDITIONING CORP.

Patent Appeal No. 6123.

United States Court of Customs and Patent Appeals.

May 25, 1955.

Curtis B. Morsell and Arthur L. Morsell, Jr., Milwaukee, Wis., for appellant.

Sawyer, Kennedy & Murray, New York City (Kenneth H. Murray, New York City, of counsel), for appellee.

Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and COLE, Judges.

JOHNSON, Judge.

This is an appeal from the decision of the Commissioner of Patents, speaking through the Assistant Commissioner, 99 U.S.P.Q. 342, reversing the decision of the Examiner of Interferences which sustained appellant's notice of opposition to the registration by appellee, under the Trade-Mark Act of 1946, 15 U.S. C.A. § 1051 et seq., of the notation "Clime-matic" as a trade-mark for air conditioning units.

Appellee alleged May 12, 1949 as the date of first use of the involved mark in commerce among the several states. The application was examined and passed for publication pursuant to section 12(a) of the Trade-Mark Act of 1946, and the mark was duly published in the Official Gazette on July 10, 1951. On August 7, 1951, appellant filed its notice of opposition to said registration.

In its notice of opposition, appellant alleged that it is the owner of Trade-Mark Registration No. 408,891, dated August 15, 1944, for the term "Climatrol" applied to gas furnaces. Appellant further alleged that it is the owner of Trade-Mark Registration No. 527,679, dated July 18, 1950, for the term "Mueller Climatrol" applied to coal, oil, and gas fired warm air furnaces, boilers, and heaters; gas conversion burners; oil conversion burners; air cooling units for buildings; air moisteners; blowers; heating, ventilating, and air conditioning apparatus pipes, ducts, and fittings; registers for delivering conditioned air; unit heaters; and apparatuses for washing, humidifying and cleaning air circulated in buildings. It was also alleged that the term "Clime-matic" used on air conditioning units so resembles the registered marks of opposer as to be likely to cause confusion or mistake or to deceive purchasers inasmuch as appellee's mark is used in connection with goods identical to or of the same descriptive properties as those upon which opposer has used its mark.

Both parties filed stipulated statements in lieu of testimony.

It appears from the stipulated statements submitted by appellant-opposer that the term "Climatrol" has been applied to gas furnaces manufactured by it and sold in interstate commerce since 1937; that the term "Mueller Climatrol" has been used since November 30, 1947; that appellant advertised various of its "Climatrol" products throughout the United States both in circulars and in various nationally known magazines; and that advertising expenditures exclusively directed toward "Climatrol" have totalled approximately $1,214,000.

It appears from the stipulated statements submitted by applicant-appellee that the term "Clime-matic" has been used by it on air conditioning units of all types throughout the United States; that appellee has extensively publicized its mark; that the prefixes "Clim" or "Clime" are in general use in the industry and therefore not the subject of any one person's exclusive ownership; and that air conditioning units are expensive, and purchasers of these items, generally architects, builders, or engineers, are discriminating buyers and are careful in their selection.

The main issue before this court is whether the term "Clime-matic" so resembles the terms "Climatrol" and "Mueller Climatrol" as to be likely to cause confusion in the trade and deceive purchasers when each of these marks is applied to the above mentioned types of goods.

The test applied by this court in an opposition proceeding is the likelihood of confusion in the minds of the purchasing public as to the origin of the goods. Nestle's Milk Products, Inc. v. Baker Importing Co., Inc., 182 F.2d 193, 37 C.C.P.A., Patents, 1066; Standard Laboratories, Inc., v. Proctor & Gamble Co., 167 F.2d 1022, 35 C.C.P.A., Patents, 1146. This is a subjective test. Therefore prior decisions are of little value since each case must be decided on its own particular set of facts. North Star Manufacturing Co. v. Wells Lamont Corp., 193 F.2d 204, 39 C.C.P.A., Patents, 764.

However, various rules have been developed for the purpose of aiding in the determination of the question of confusing similarity. It is well settled that the marks must be considered in their entireties, Apollo Shirt Co. v. Enro Shirt Co., Inc., 165 F.2d 469, 35 C.C.P.A., Patents, 849; Valpo Co. v. Solis, Entrialgo y. Compania, 175 F.2d 457, 36 C.C.P.A., Patents, 1160. But different features may be analyzed to determine whether the marks are confusingly similar, Hoffman-LaRoche, Inc., v. Kawerk, 148 F.2d 557, 32 C.C.P.A., Patents, 954, and similarities and dissimilarities should both be considered, Younghusband v. Kurlash Co., Inc., 94 F.2d 230, 25 C.C.P.A., Patents, 886.

It has also been held that the common portions of the marks cannot be disregarded, Schering & Glatz, Inc., v. Sharp & Dohme, Inc., 146 F.2d 1019, 32...