Morehouse Manufacturing Corp. v. J. Strickland and Co.

• Citation: 160 USPQ 715,407 F.2d 881
• Decision Date: 06 March 1969
• Docket Number: Patent Appeal No. 8047,8048.
• Parties: MOREHOUSE MANUFACTURING CORPORATION, Appellant, v. J. STRICKLAND AND COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

160 USPQ 715, 407 F.2d 881 (1969)

MOREHOUSE MANUFACTURING CORPORATION, Appellant, v. J. STRICKLAND AND COMPANY, Appellee.

Patent Appeal Nos. 8047, 8048.

United States Court of Customs and Patent Appeals.

March 6, 1969.

George H. Baldwin, Jacksonville, Fla., for appellant.

Harry W. F. Glemser, Bacon & Thomas, Washington, D. C., for appellee.

Before WORLEY, Chief Judge, and RICH, ALMOND, BALDWIN and KIRKPATRICK,^* Judges.

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 150 USPQ 688 (1966), in two proceedings. The first is Opposition No. 42,662 (Appeal No. 8048) and the second is Cancellation No. 8,310 (Appeal No. 8047).

Appellant, Morehouse Manufacturing Corporation, opposed appellee J. Strickland and Company's application serial No. 145,741, filed May 29, 1962, to register "Blue Magic" for pressing oil, claiming first use on such goods on March 15, 1956.

Appellee already had a Principal Register registration of "Blue Magic," No. 589,044, issued April 27, 1954, and claiming first use on February 24, 1953, for hair dressing. Appellant seeks to cancel that registration.

The record shows that Strickland's "hair dressing" and "pressing oil," both sold under the "Blue Magic" trademark, are one and the same product. It is a semi-solid, petroleum-base material resembling petroleum jelly (petrolatum or "Vaseline") in consistency, light blue in color, and perfumed. Hair dressing is used as the name implies, to hold the hair in place and to give it gloss. Pressing oil is used in conjunction with a hot comb for straightening undesirably curly hair. Appellant's product is useful for both purposes. Its market is primarily persons of the Negro race.

The product was labeled as "hair dressing" from February 1953 to March 1956. From then to July 1957 it was not named on the label but was described thereon as "for pressing and dressing the hair." Thereafter it was designated on the label as "pressing oil."¹ It was, however, still hair dressing.

The above-mentioned registration having described the goods as hair dressing, appellee's record shows that the present application, which designates the same goods as pressing oil, was filed as "a precautionary measure * * * to technically protect its trademark rights * * *." The date of first use stated in the application at bar is the date of the change in the designation of the goods on the label, notwithstanding the goods themselves remained the same.²

Morehouse filed its Notice of Opposition on March 13, 1963. It did not file its Petition for Cancellation until July 17, 1964, more than a year after it received actual notice of Reg. No. 589,044, in the Answer to the Notice of Opposition. Morehouse made several attempts to consolidate the opposition and cancellation, all of which were denied, four times by the board and once on Petition to the Commissioner. The testimony and exhibits were taken and introduced in the opposition and introduced into the cancellation on a motion before the board, which it granted. A few additional documents were introduced in the cancellation. Notwithstanding the several refusals of the board to consolidate, it appears to have concluded, sua sponte, that both proceedings should be considered and decided in a single opinion.³

In its opinion, the board, after disposing of preliminary questions, dealt first with the cancellation. It decided five different issues raised by Morehouse as grounds of cancellation, all adversely to Morehouse, and therefore denied the petition to cancel, which left standing Strickland's registration of "Blue Magic" for "hair dressing." Having reached that conclusion, the board then dismissed the opposition because it did not see how Morehouse could be damaged by the issuance of another registration of "Blue Magic" for the identical goods, albeit the label featured the goods as "pressing oil" rather than "hair dressing," where the goods are sold as useful for both purposes. Directly or indirectly, the board relied on Artichoke Industries, Inc. v. Regina Grape Products Co., 138 USPQ 687 (TTAB 1963); Eastern Metals Research Co. v. Hunter Spring Co., 119 USPQ 448 (TTAB 1958); Scudder Food Products, Inc. v. Southern Fruit Distributors, Inc., 119 USPQ 450 (TTAB 1958); and Standard Motor Products, Inc. v. Standardized Products Co., 107 USPQ 147 (Comr. 1955). The proposition for which these cases were cited is that, as a matter of law, the opposer cannot be damaged, within the meaning of section 13 of the statute, by the issuance to the applicant of a second registration where applicant already has an existing registration of the same mark for the same goods. Implicit in this are the corollaries that if opposer cannot procure the cancellation of the existing registration it cannot prevent the granting of the second registration; that there is no added damage from the second registration of the same mark if the goods named in it are in fact the same; and that if there is no added damage, there is no ground for sustaining the opposition.

As to the existing registration being for the same mark, while there are trifling differences it takes careful inspection to detect them. Therefore, essentially the same mark is described in the registration and in the application. Appellant has treated them as identical. We think the board took the proper approach in first determining the cancellation and then dismissing the opposition, on the basis of the cases relied on, for the reason that opposer cannot suffer legal damage from the additional registration, over and above any damage it may suffer from the existing registration. Indeed, it appears to have been opposer's view throughout the proceedings that the issues in the cancellation had to be decided first because they would be controlling, or substantially so. The major thrust of opposer-appellant's brief before us is that appellee's registration should be cancelled though, additionally, it is urged that the opposition should be sustained in any event because of likelihood of confusion under section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)).

Appellant Morehouse bases its petition to cancel and opposition on its ownership of Reg. No. 510,244, issued May 31, 1949, on an application filed August 20, 1947, of the trademark for "a depilatory

in powder form." The registration claims use since 1901. It also relies on Reg. No. 741,715, issued Dec. 4, 1962, on application filed Dec. 18, 1961, for the word "MAGIC" alone for "depilatory in powder form and for after shave cream," again claiming first use in 1901 "on depilatory in powder form."

These marks are shown to be used on "shaving powder," the name appearing on the labels, which is a white, powdered, chemical depilatory used primarily by Negroes in place of shaving. This powder is sold in two strengths, "medium" and "full." The full-strength shaving powder is sold in a 5-ounce fiber can covered with a paper label having a solid red background. The medium-strength product, which is the bigger seller, is similarly packaged but the label has a two-tone blue background, the upper half light and the lower half dark blue. In both cases, opposer's cans carry the full trademark of Reg. No. 510,244, so that on its face it reads, top to bottom, "MAGIC — design of a straight razor and the words NO MORE TROUBLE in a circle — SHAVING POWDER (depilatory) — Removes Beard without a Razor." In a small oval to the left of the razor design portion of the mark are the words "medium strength" or "full strength." At no time relevant to this proceeding has the word "blue" appeared on the label.⁴

With this background, we will now consider the points argued by appellant in attemping to show that the board erred. Like the board, we will consider first the points bearing on the petition to cancel.

Observation of the date of appellee's "Blue Magic" registration will show that it had been issued for five years on April 27, 1959, and hence, being a Principal Register registration, had become "incontestable" before these proceedings commenced provided that the registrant complied with the requirement of the statute for filing an affidavit of continuing use, etc. Section 15, Trademark Act (15 U.S.C. § 1065). The registrant, appellee here, filed such an affidavit, which was accepted, and the mark became "incontestable." To cancel it, appellant must therefore comply with section 14(c) (15 U.S.C. § 1064 (c))⁵ and has attempted to do this in two ways: (1) by showing the registration was "obtained fraudulently" and (2) "contrary to the provisions of * * subsection (a) * * * of section 2 of this Act * * *." We will first consider the allegations of fraud, which were also presented to and rejected by the board.

Appellant says appellee's registration was obtained fraudulently because of the following facts. The first office action rejected the application on the sole ground "that the descriptive word `blue' is not disclaimed apart from the mark." Applicant (appellee) filed a response, which resulted in the application being passed to publication, in which it was stated:

The word "blue" is not descriptive in any sense of applicant\'s goods and, therefore, it is not understood why the registration has been refused upon such ground. Inasmuch as the word "blue" is not descriptive, it would appear to be unnecessary to disclaim such word.

The facts of record are that if one opens the opaque box of "Blue Magic" and looks at its contents — being a body of substance 3" in diameter and 2" deep — it appears to be pale blue, as the ocean sometimes appears to be blue. However, a small dab placed in the palm of one's hand and rubbed out thin, as it would be before being applied to the hair as a dressing, imparts no color to the hands and is, in that sense, colorless, unlike the effect which would be produced by similar manipulation of blue ink or paint or chalk.

It appears to us that both appellee and the board fail to...