Meredith Pub. Co. v. OM Scott & Sons Co.

• Decision Date: 01 March 1937
• Docket Number: Patent Appeals No. 3683.
• Citation: 88 F.2d 324
• Parties: MEREDITH PUB. CO. v. O. M. SCOTT & SONS CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

88 F.2d 324 (1937)

MEREDITH PUB. CO. v. O. M. SCOTT & SONS CO.

Patent Appeals No. 3683.

Court of Customs and Patent Appeals.

March 1, 1937.

W. P. Bair and Will Freeman, both of Des Moines, Iowa (Paul Finckel, of Washington, D. C., of counsel), for appellant.

Lester L. Sargent, of Washington, D. C., for appellee.

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

GRAHAM, Presiding Judge.

The appellee, O. M. Scott & Sons Company, filed an application in the United States Patent Office for the registration of the trade-mark, "Better Homes," used in connection with the sale of lawn grass seeds. The appellant, Meredith Publishing Company, filed notice of opposition, alleging as grounds therefor that it was the publisher of a monthly magazine, "Better Homes and Gardens," and had been since long prior to the use of said mark by the applicant. The ordinary statements were made in the notice of opposition as to confusion and the like. The opposer took testimony. This testimony shows, in a general way, that the magazine was well known, had an extensive circulation and a good reputation, and was quite often referred to by the public as "Better Homes." It appeared also that on one occasion, in May, 1933, a letter had been received in the office of the Meredith Publishing Company, complaining about the quality of certain "Better Homes" lawn seed thought to be produced by the appellant. This, it is argued by the appellant, is proof of actual confusion in the mind of the public, as to the origin of appellee's product.

The Examiner of Interferences dismissed the opposition, and the matter was appealed to the Commissioner of Patents. The commissioner was of opinion that actual confusion had taken place, basing this conclusion upon the one letter which has been heretofore mentioned. The commissioner was also of the opinion, as expressed at some length in his decision, that the case of the California Packing Corporation v. Tillman & Bendel, Inc., 40 F. (2d) 108, 111, 17 C.C.P.A.(Patents) 1048, laid down the rule that if confusion existed, the goods were of the same descriptive properties. He also called attention to a line of cases in this court, beginning with Cheek-Neal Coffee Company et al. v. Hal Dick Mfg. Co., 40 F.(2d) 106, 107, 17 C. C.P.A.(Patents) 1103, which the commissioner thought were not in harmony with the California Packing Corporation v. Tillman & Bendel, Inc. Case, supra. The commissioner was further of the opinion that the goods in the case at bar were not of the same descriptive properties, "because I know of no reasonable general definition that includes both grass seed and periodicals." Thereupon the commissioner held that the goods were not of the same descriptive properties, and affirmed the decision of the Examiner of Trade-mark Interferences, allowing the registration. The matter now comes to us on appeal.

Shortly after the jurisdiction over appeals from the United States Patent Office was transferred from the Court of Appeals of the District of Columbia (now the United States Court of Appeals for the District of Columbia) to this court, the provisions of the Trade-mark Registration Act of February 20, 1905, as amended, were brought to our attention. Especially was the meaning of the first proviso of section 5 of that act (15 U.S.C.A. ß 85) a matter of earnest consideration. The proviso is as follows:

"Provided, That trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered."

The courts of the country had written many decisions relative to this proviso and its meaning, and there was still much apparent conflict as to the exact construction to be given to the words of the proviso. This court was of the opinion, after much thought, that the words "of the same descriptive properties" ought not to be given too strict a construction and be confined to the "ordinary and colloquial meaning" of the words, but that a more flexible and liberal meaning should be given to the words, so that, in so far as was possible, confusion in the mind of the public might be avoided.

The first case in which the court gave expression to its general views on the matter is California Packing Corporation v. Tillman & Bendel, Inc., supra. In that case, registration was sought for the mark "Del Monte" upon coffee. The registration was opposed by a company which was using the same mark upon canned, dried, and preserved fruits, vegetables, sardines, pickles, and the like. It was contended that the goods were not of the same descriptive properties. This court went into a general discussion of the whole subject-matter, called attention to the fact that there had been confusion and differences of opinion expressed by the courts as to the meaning of the words, "of the same descriptive properties," and expressed the majority views of the court that the primary idea of the act was to prevent confusion. In doing so, we refused to follow closely the "ordinary and colloquial meaning" of the term, but said, among other things:

"Therefore, the right to register depends upon the distinguishing dissimilarity between the goods or the marks. The same degree of difference in the marks or goods or both must exist so as to distinguish the goods of the owner as is required to prevent the probability of `confusion or mistake in the mind of the public,' etc. This distinguishing difference or indistinguishable similarity may rest not only in the `essential characteristics' of the goods themselves with reference to their form, composition, texture, and quality, but may rest in the use to which they are put, the manner in which they are advertised, displayed, and sold, and probably other considerations. The question as to whether confusion and failure to distinguish will result may also depend largely upon the class of purchasers, or persons concerned."

Again we said, in summing up:

"The goods being of the same descriptive properties, so that the registration of the proposed trade-mark will lead to confusion, the statute requires that registration be denied, irrespective of other legal rights between the parties."

On the same date that the California Packing Corporation v. Tillman & Bendel, Inc. Case, supra, was decided, this court decided the case of B. F. Goodrich Co. v. Clive E. Hockmeyer et al., 40 F.(2d) 99, 103, 17 C.C.P.A.(Patents) 1068. We further developed our views as to the proviso in question. In the last-named case, the appellant had used the name "Zipper" as a trade-mark for boots and overshoes made of rubber and fabric, and was seeking to cancel a registration to the appellee of the trade-mark "Zip-On" for use on leggings, knickerbockers, rompers, and the like. The tribunals of the Patent Office held that the goods of the respective parties were not of the same descriptive properties, and this court was called upon to review that finding. In so doing, the court held that the language, "goods of the same class," contained in said section 5, should be construed as having the same meaning and application as the words "merchandise of the same descriptive properties" found in the proviso. Such a construction the court felt was necessary in order to give the statute the effect which it evidently was desired to accomplish, namely, to prevent confusion. In connection with our discussion of this matter, we said this:

"* * * And, that, keeping in mind the principles of equity as applied to the law of trade-marks, the words `same class' and `same descriptive properties' were intended to be given a limited or an extended meaning and application, according to whether or not the use of identical or similar trade-marks would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers. And, of course, in this connection, the use, appearance, and structure of the articles, the similarity or the lack of similarity of the packages or containers in which, the place or places where, and the people to whom, they were sold should be considered."

Finally we held that the goods were of the same general class and "that they possess the same descriptive properties."

It is true that in both the preceding cases, there were expressions which, taken by themselves, and without regard to the context and the general purport of the opinions, might have indicated that the existence of confusion was the test by which we should determine whether the goods were of the same descriptive properties. However, the cases should not be so read. When we consider the degree of similarity of the trade-marks and goods involved in those cases, the state of the facts and the general conclusions arrived at by the court, it will be seen that the court was endeavoring to give to the words "same descriptive properties" a reasonable application and meaning, in order to effectuate the purposes of the registration act, and did not have in mind the virtual elimination of the words from the statute.

Many cases have been passed upon by this court since the last two cases above cited, and from these cases we may readily deduce the meaning which this court has applied to the statutory words, "merchandise of the same descriptive properties."

On the same day that the last two cases were decided, this court handed down the decision in Cheek-Neal Coffee Company et al. v. Hal Dick Mfg. Co., supra. In that case the applicant was attempting to register a mark...