Oakland Chemical Co. v. Bookman

• Decision Date: 05 December 1927
• Docket Number: No. 166.,166.
• Citation: 22 F.2d 930
• Parties: OAKLAND CHEMICAL CO. v. BOOKMAN.
• Court: U.S. Court of Appeals — Second Circuit

22 F.2d 930 (1927)

OAKLAND CHEMICAL CO. v. BOOKMAN.

No. 166.

Circuit Court of Appeals, Second Circuit.

December 5, 1927.

Lanier McKee, of New York City, for appellant.

Bennett I. Schlessel, of New York City, for appellee.

Before MANTON, L. HAND, and SWAN, Circuit Judges.

L. HAND, Circuit Judge (after stating the facts as above).

As to validity, the question is whether the mark was "descriptive," or only "suggestive," of the goods sold. A "descriptive" mark is bad for two reasons: First, because it does not in fact advise the public that the goods come from a "single source" (Coca-Cola v. Koke Co., 254 U. S. 143, 146, 41 S. Ct. 113, 65 L. Ed. 189); second, because, if it did, since the word describes the goods, the protection of the mark would trench upon common speech which should do the same (Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 31 S. Ct. 456, 55 L. Ed. 536; Beckwith v. Commissioner of Patents, 252 U. S. 538, 544, 40 S. Ct. 414, 64 L. Ed. 705; Warner & Co. v. Lilly & Co., 265 U. S. 526, 528, 44 S. Ct. 615, 68 L. Ed. 1161). A "suggestive" mark, which avoids both these defects, may still substantially describe the goods (Keasbey v. Brooklyn Chemical Works, 142 N. Y. 467, 37 N. E. 476, 40 Am. St. Rep. 623; Feil v. American Serum Co. C. C. A. 8 16 F.2d 88; Pennsylvania Salt Co. v. Myers C. C. 79 F. 87), for there is no positive policy that forbids the combination. The mark may be so far from colloquial language as not to be confused with any descriptive phrase, and yet convey the same meaning. This distinction section 5 of the statute (15 USCA § 85) means to preserve.

In the case at bar, the misspelling of oxygen, if once observed, would indeed betray the fabrication of the word and show that it was being used as a trade-mark. It is, however, generally held that mere misspelling is not enough. Standard Paint Co. v. Trinidad Asphalt Co., 220 U. S. 446, 455, 31 S. Ct. 456, 55 L. Ed. 536; Thermogene Co., Ltd., v. Thermozine Co., Inc., 234 F. 69 (C. C. A. 2); Krank v. Pabst, 277 F. 15, 18 (C. C. A. 5); American Druggist Syndicate v. U. S. Industrial Alcohol Co., 55 App. D. C. 140, 2 F. (2d) 942; Parmele Pharmacal Co. v. Weiner, 5 F.(2d) 751 (C. C. A. 2). Whether this is because the public is not assumed to be critical enough to detect the contrivance, or whether the mark could have no scope, the books do not say. The difficulty is double; a reader who knew how to spell might be in doubt whether the mistake was deliberate; one who did not, would be unaware that it was a mistake at all. We need not say that the perversion might not be so obvious as to stamp upon the mark its artificial origin and show its purpose (Feil v. American Serum Co., 16 F.2d 88 C. C. A. 8), for in such matters it is especially unsafe to be absolute. It does seem to us, however, that the misspelling of a single letter is too little, for, while to many it might be enough, over many it would pass unnoticed. We cannot, therefore, treat the mark at bar as entitled to more protection than "Dioxygen."

While that is indeed not itself an English word at all, its composition is apparent. "Di" is not an unknown prefix — e. g., "diphthong," "dilemma," "dichotomy," and "diptych" — and in scientific and technical terminology it is common. Its significance as a prefix to oxygen would be plain to a literate person; the word would mean "double oxygen." True, it would still remain ambiguous; but then too, so would "dioxide," standing alone,...