Morton Mfg. Corporation v. Delland Corporation, Patent Appeal No. 5382.

• Decision Date: 10 February 1948
• Docket Number: Patent Appeal No. 5382.
• Citation: 166 F.2d 191
• Parties: MORTON MFG. CORPORATION v. DELLAND CORPORATION.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

166 F.2d 191 (1948)

MORTON MFG. CORPORATION v. DELLAND CORPORATION.

Patent Appeal No. 5382.

Court of Customs and Patent Appeals.

February 10, 1948.

Mason, Fenwick & Lawrence, of Washington, D. C. (Edward G. Fenwick, of Washington, D. C., of counsel), for appellant.

Baer & Marks, of New York City (Donald Marks and George H. Klein, both of New York City, of counsel), for appellee.

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

HATFIELD, Associate Judge.

This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents, 69 U.S.P.Q. 616, affirming the decision of the Examiner of Interferences dismissing appellant's opposition to the registration of appellee's trade-mark under the Trade-Mark Act of February 20, 1905, 15 U.S.C.A. § 81 et seq. The issue in the case involves the confusion in trade clause of section 5 of that act.

Appellant's trade-mark is the term "Chap Stick," registered June 4, 1912, registration No. 86,819, for use on a "medicinal preparation for chapped skin, sunburn and hangnails * * *."

It appears from the record that appellant's trade-mark registration was renewed in 1932; that its preparation is always "marketed" under the name "Fleet's Chap Stick;" and that appellant has also registered the mark "Fleet's" and "Fleet's Chap Stick," although such registrations are not in the record.

Appellant's mark "Chap Stick" was registered under the 10-year clause of section 5 of the Trade-Mark Act of February 20, 1905, and the product upon which its trademark is used is composed of camphor, oil of cloves, aromatic oils, petrolatums and waxes, and is used to sooth and relieve irritations of the skin, including irritation of the skin caused by the razor in shaving. It is sold in containers in the form of sticks, and also to some extent, not stated, in jars. Appellant's trade-mark has been extensively advertised in magazines, newspapers, and other types of advertising throughout the United States.

Appellee's trade-mark is composed of the term "Slick Stick" for use on shaving sticks. Its application for registration was filed July 21, 1943, wherein it is stated that appellee had used its mark on its goods since June 8, 1942. In its application for registration the term "stick" was disclaimed apart from the mark as shown.

Appellee's "Slick Stick" shaving preparation is apparently put up in paper containers in the form of sticks and is used to prepare the beard for shaving. Each stick is composed of a combination of earth minerals, a drop or two of olive oil, and perfumed by one or two drops of essential oil. It is dry and greaseless, and its sole purpose, as hereinbefore stated, is to aid in shaving. It is not composed in any part of petrolatums, waxes, camphor, or oil of cloves. It is a hard, round stick approximately 3¼ inches in length and 1½ inches in diameter. The minerals in appellee's shaving stick are alkaline in reaction and slightly styptic, although it does not have the styptic qualities in a sense that it prevents bleeding or that it stops bleeding caused by an abrasion or cut.

It appears from the testimony of Robert H. Delafield, Financial Vice President of the Columbia Gas & Electric Corporation and a director and treasurer of appellee's corporation that

"In order to shave with Slick Stick the face must be thoroughly wet. The stick is then applied to the face where it leaves a chalky deposit. The action of this deposit is to hold the water on the face close to the whiskers, so to speak, to make each whisker a little container for water, and by...