Nestle's Milk Products v. Baker Importing Co.

• Decision Date: 09 May 1950
• Docket Number: Patent Appeals No. 5655.
• Citation: 182 F.2d 193
• Parties: NESTLE'S MILK PRODUCTS, Inc. v. BAKER IMPORTING CO., Inc.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

182 F.2d 193 (1950)

NESTLE'S MILK PRODUCTS, Inc. v. BAKER IMPORTING CO., Inc.

Patent Appeals No. 5655.

United States Court of Customs and Patent Appeals.

May 9, 1950.

Mock & Blum, New York City (Asher Blum, New York City, and Charles R. Allen, Washington, D. C., of counsel), for appellant.

Munn, Liddy & Glaccum, New York City (Sylvester J. Liddy and John H. Glaccum, New York City, of counsel), for appellee.

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

JOHNSON, Judge.

This is an appeal from the decision of the Commissioner of Patents, 76 U.S.P.Q. 392, reversing the decision of the Examiner of Interferences sustaining appellant's notice of opposition¹ to appellee's application for registration of the notation "Hycafe" as a trade-mark for "coffee extract," and holding that appellee was entitled to register the mark under Section 5 of the Trade-Mark Act of February 20, 1905, 33 Stat. 725, 15 U.S.C. 85 § 1052.

It is alleged in appellee's application for registration that appellee has continuously used its mark on its goods since June 18, 1945.

In its notice of opposition dated October 27, 1945, appellant alleges that it is the owner of the trade-mark "Nescafe"; that it has used its mark on its goods since prior to June 18, 1945; that it "has extensively advertised and used the trade mark, Nescafe, for coffee extracts, coffee preparations and the like, exclusively prepared and sold" by it throughout the United States, and that "as a result of such use, said trade mark has become well known to the public and has attained a wide secondary meaning" as designating appellant's goods; that the trademark "Nescafe" is duly registered in the United States Patent Office and is now in full force and effect, unrevoked and uncancelled; that the goods upon which applicant claims use of its mark are identical with and of the same descriptive properties as those upon which opposer uses "Nescafe"; that the goods of applicant and those of opposer are sold in the same trade channels; that "Hycafe" so closely resembles "Nescafe" as to be likely to produce confusion and mistake in the minds of the public and to deceive purchasers, causing them to believe that applicant's goods have their origin with appellant; that the use and registration of the mark "Hycafe" by appellee will work irreparable injury to appellant's business, and that the use by appellee of the mark "Hycafe" on its goods will enable appellee to trade on and get the benefit of the reputation of appellant and its goods and lead the public to believe appellee and its goods are associated with the appellant.

In its answer dated January 15, 1946, appellee admits the registration by appellant of the trade-mark "Nescafe" and that the goods of the parties are of the same descriptive properties and are sold in the same trade channels. Appellee denies, however, that "Nescafe" has attained a secondary meaning as designating opposer's goods, that "Hycafe" so closely resembles "Nescafe" as to cause confusion or mistake in the mind of the public or to deceive purchasers into believing that his goods are associated with appellant. Appellee also alleges that the only similarity between the marks of the respective parties resides in the use of the descriptive word "cafe," which is disclaimed in appellee's application, and that the word "cafe" is now and has for many years prior to the alleged date of adoption of the trade-mark "Nescafe," meant to the trade and the purchasing public generally a coffee product, and has been used by the trade generally in combination with distinctive designation to define a concentrated coffee product.

Both parties filed briefs and were present at the oral argument. Appellant alone took testimony.

The sole issue presented by the record is whether or not the marks are confusingly similar within the meaning of the Trade-Mark Act of 1905.²

The examiner conceded that "cafe" is the French equivalent of "coffee" and would thus have, when applied to coffee products, a descriptive significance to persons familiar with the French language, but considered that purchasers not so informed would regard the term as distinctive when applied to such products. Considering the terms "Nescafe" and "Hycafe" in their entireties, he held that despite the difference between the prefixes "Nes" and "Hy," the marks so resemble each other as to be likely to cause confusion in trade. Thus, he sustained the opposition.

The commissioner thought that "cafe" though of French derivation had become an accepted word of the English language designating either coffee or an establishment for serving refreshments, and quoted Webster's New International Dictionary as follows:

"1. Coffee.

"2. A coffeehouse; a room for coffee and light refreshments; a restaurant; formerly, in the United States a barroom."

Webster's New International Dictionary, Second Edition, 1934 (1949 reprint), however, indicates³ that "cafe" is a French word meaning "coffee," and when used not as a foreign word (not italicized) means "A coffeehouse, etc." That dual nature of the word, as a French term for coffee, or as an English term for restaurant or coffeehouse, is corroborated by the Oxford "A New English Dictionary," Vol. II, 1893,⁴ and is not changed by the supplemental volume with new and additional meanings of words, published in 1933. Funk & Wagnalls "New Standard Dictionary," 1942, identifies⁵ the word "cafe" as a foreign word (French) whose most common and important meaning is "A coffee-house, refreshment-room, or restaurant" with a less common meaning as "coffee." Words and Phrases states,⁶ "The word `cafe' as ordinarily and popularly used means a restaurant or house for refreshments. Proprietors' Realty Co. v. Wohltmann, 95 N.J.L. 303, 112 A. 410."⁷

We must disagree with the commissioner's statement that "cafe" has become an accepted word of the English language designating coffee. The dictionaries make it manifest that only as a foreign language term (French) does cafe mean coffee. That, however, does not invalidate the commissioner's conclusion that "cafe" has descriptive significance relating to coffee. Foreign language words, not adopted into the English language, which are descriptive of a product, are so considered in registration proceedings despite the fact that the words may be meaningless to the public generally. In re Northern Paper Mills, 64 F.2d 998, 20 C.C.P.A. Patents 1109, and cases cited; Walgreen Co. v. Godefroy Manufacturing Co., 74 F.2d 127, 22 C.C.P. A. Patents 818.

Appellant's label, Exhibit 3, appears to bear out the descriptive nature of "cafe" in the statement there set forth, as follows:

"A cup of Nescafe, made according to directions, is a cup of full-flavored, full strength coffee with added carbohydrates.

"The carbohydrates (dextrins, maltose and dextrose) are added for the sole purpose of protecting the natural flavor of the freshly-roasted, freshly-brewed coffee. They are not a coffee substitute, nor do they diminish the coffee's flavor, strength or stimulation. In Nescafe you get all the flavor, all the `lift' of really fine coffee."

Further showing that appellant recognizes "cafe" as meaning "coffee" is appellant's Exhibit 8, used in its advertising, which states:

"`Nescafe certainly makes a grand cup of coffee' * * * makes it every time. You'll want a second cup and can have it so-o easily. (Italics quoted.)

* * * * * *

"A quick cup of Full Flavored Coffee — that's Nescafe."

It must be recognized that both marks, "Nescafe" and "Hycafe," consist of a foreign term, admittedly descriptive of the product to which the marks are applied, coupled with a prefix. The registrations to appellant, 364,017 and 379,117, are for the entire trade-mark "Nescafe." In appellee's application for registration of "Hycafe," "cafe" is disclaimed apart from the combination shown.

The likelihood of confusion in the mind of the public as to origin of the goods it purchases because of the similarity of the marks is, of course, the test applied by this court in opposition proceedings, Standard Laboratories, Inc., v. Proctor & Gamble Co., 167 F.2d 1022, 35 C.C.P.A. Patents 1146, as well as by other courts in trade-mark infringement and unfair competition actions, Best & Co. v. Miller, 2 Cir., 1948, 167 F.2d 374, 376. The marks considered in their entireties must be considered, Yeasties Products, Inc., v. General Mills, 77 F.2d 523: 22 C.C.P.A. Patents 1215, Miles Laboratories v. Foley & Co., 144 F.2d 888, 32 C. C.P.A. Patents 714; Apollo Shirt Co. v. Enro Shirt Co., Inc., 165 F.2d 469, 35 C.C.P. A. Patents 849. In considering contested marks in their entireties, the court may notice the descriptive as well as disclaimed portions despite the rule that the validity of registered marks which are merely descriptive is not to be challenged in opposition proceedings, West Disinfecting Co. v. Lan-O-Sheen Co., 163 F.2d 566, 35 C.C.P.A. Patents 706. A descriptive word, having little trade-mark significance, will not be regarded as the dominant part of a mark, Atlantic Seafood Packers v. Florida Fruit Canners, Inc., 166 F.2d 586, 35 C.C.P.A. Patents 985; National NuGrape v. Judge & Dolph Ltd., 154 F.2d 521, 33 C.C.P.A. Patents 1032; Miles Laboratories, Inc., v. Foley & Co., supra.

In the instant case, we consider "cafe" to be a descriptive term as applied to a coffee product. The balance of the marks, "Nes," and "Hy," are suggestive of the Nestle's Milk Products Company and the Hygrade Food Products Corporation (the parent company of appellee herein), respectively, producers of the products to which the contested marks are applied. They are not similar, and, considering the marks "Nescafe" and "Hycafe" in their entireties, we do not find grounds for disagreeing with the commissioner's decision that their concurrent use would not be likely to cause confusion in the trade.

The decision appealed from is affirmed.

Affirmed.

O'CONNELL, Judge (dissenting).

Appel...