Miles Laboratories v. Pepsodent Co.

• Decision Date: 05 June 1939
• Docket Number: Patent Appeal No. 4147.
• Citation: 104 F.2d 205
• Parties: MILES LABORATORIES, Inc., v. PEPSODENT CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

104 F.2d 205 (1939)

MILES LABORATORIES, Inc., v. PEPSODENT CO.

Patent Appeal No. 4147.

Court of Customs and Patent Appeals.

June 5, 1939.

Chas. R. Allen, of Washington, D. C., for appellant.

Parkinson & Lane, of Chicago, Ill. (Wallace R. Lane, George Mankle, and J. Rex Allen, Jr., all of Chicago, Ill., of counsel), for appellee.

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

LENROOT, Associate Judge.

This is an appeal in a trade-mark opposition proceeding wherein the United States Commissioner of Patents affirmed a decision of the Examiner of Interferences dismissing appellant's opposition to the registration of appellee's trade-mark, application for which was filed on June 27, 1936, under the Trade-Mark Act of February 20, 1905, 15 U.S.C.A. § 81 et seq.

"Pepso- The trade-marks involved are Seltzer" registration of which appellee applied for and appellant's trade-mark "Alka-Seltzer," sometimes used in a horizontal line and "Alka- sometimes used as follows Seltzer".

Appellant in its notice of opposition alleged registration of its mark in June, 1931; in said registration the mark appears in the following form: "Alka-Seltzer."

In its registration application appellee disclaimed the word "Seltzer" apart from the mark shown, and in appellant's registration the term "Seltzer" was disclaimed apart from the mark shown.

The marks of the respective parties are used upon substantially identical goods, viz., an "effervescent alkalizing" preparation.

Appellant alone took testimony.

The issue before the Patent Office was formed upon appellee's motion to dismiss appellant's notice of opposition, the ground being that "as appears from the face of the Notice of Opposition the trade-mark `Pepso-Seltzer' of applicant is not deceptively or at all similar to * * * opposer's trade-mark `Alka-Seltzer'."

Appellee elected to stand upon its motion to dismiss and waived the right to file an answer.

Only one question is before us for determination, viz., whether the marks of the respective parties are confusingly similar.

Appellant contends that its testimony shows non-use by appellee of its mark, but as this matter is not pleaded in appellant's notice of opposition it will not be considered by us.

The Examiner of Interferences dismissed the notice of opposition, holding that when the marks of the parties are considered in their entireties it must be concluded that their concurrent use in trade would not be likely to result in confusion.

Upon appeal the commissioner affirmed the decision of the Examiner of Interferences, stating: "The only question for determination is whether or not the involved marks are so similar as to be likely to confuse the public or to deceive purchasers. I am clearly of the opinion that they are not. In each mark the word "Seltzer" is the name of the goods; and it seems to me that the prefixes "Pepso" and "Alka" are so widely different in all respects as to render the marks in their entireties sufficiently dissimilar to insure against any reasonable probability of confusion."

Appellant challenges the statement of the commissioner that "the word `Seltzer' is the name of the goods" and insists that there is nothing in the record warranting this conclusion. While the commissioner may have been in error in that his statement was too broad, we are clear that the word "Seltzer" is descriptive of the character of the goods upon which appellant's mark is applied, and this word, standing alone, would be barred from registration under section 5 of said trade-mark act because descriptive.

Funk & Wagnalls New Standard Dictionary defines "Seltzer" as follows: "An effervescing alkaline mineral water, originally from Nieder Selters, a village in Prussia."

It is a matter of common knowledge that the word is used, both alone and in combination, applied to effervescing waters and preparations.

It is therefore our opinion that the portion of each mark consisting of the word "Seltzer" would furnish no indication to purchasers of the origin of the goods, and when such word is used in combination with another, non-descriptive, word or term, the latter would be the dominant part of the mark and would be relied upon to indicate origin of the goods to which the mark is applied.

In our decision in the case of American Brewing Co., Inc. v. Delatour Beverage Corporation, etc., 100 F.2d 253, 255, 26 C.C.P.A., Patents, ___, we said: "* * * It is true that the general rule is that marks should be regarded in their entirety, including disclaimed words, but we do not think it could well be argued that disclaimed descriptive words could ever constitute the dominant part of a mark."

In the case of Beckwith's Estate v. Commissioner of Patents, 252 U.S. 538, 546, 40 S.Ct. 414, 417, 64 L.Ed. 705, the court said: "* * * a disclaimer on the part of applicant that no claim is made to the use of the words `Moistair Heating System' apart from the mark as shown in the drawing and as described, would preserve to all others the right to use these words in the future to truthfully describe a like property or result of another system, provided only that they be not used in a trade-mark which so nearly resembles that of the petitioner `as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers' when applied `to merchandise of the same descriptive properties' section 5."

It is clear to us that anyone has the right to use the disclaimed word "Seltzer" in a descriptive way, if descriptive of his merchandise, and appellant may not rely upon the word "Seltzer" in its mark as indicating origin of its goods;...