Philadelphia Inquirer Co. v. Coe
| Decision Date | 08 December 1942 |
| Docket Number | No. 7944.,7944. |
| Citation | 133 F.2d 385 |
| Parties | PHILADELPHIA INQUIRER CO. v. COE, Com'r of Patents. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Messrs. Frank E. Scrivener and Charles K. Davies, Jr., both of Washington, D. C., for appellant.
Mr. W. W. Cochran, Solicitor, United States Patent Office, of Washington, D. C., for appellee.
Before STEPHENS, VINSON, and RUTLEDGE, Associate Justices.
Writ of Certiorari Denied April 19, 1943. See 63 S.Ct. 993, 87 L.Ed. ___.
Appellant was plaintiff in the District Court in what is commonly known as a Section 4915 proceeding.1 Previously, appellant had applied to the Patent Office for registration of the trade-mark "Everybody's Weekly", the name given to the magazine supplement section of the Philadelphia Inquirer's Sunday newspaper.
Inasmuch as the construction of the applicable statutory provisions is the whole of this case, we set forth the pertinent language of the Act immediately in order that the four previous determinations in this case may be understood as recited:
"That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark * * *
* * * * * *
"(b) * * * Provided, That trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered: * * *"2
The Patent Office examined appellant's application and passed it for publication. Whereupon, King Features Syndicate, which releases "Everybody's Pictorial Weekly", filed opposition. The Examiner of Interferences in the Patent Office determined that applicant had its mark in use before the opposer, and the opposition was dismissed, from which action there was no appeal. The opposer, however, introduced evidence which showed that a British publication had used a similar mark prior to applicant. The British publication carried the title "Everybody's — the popular Weekly". On the inside pages was the heading "Everybody's Weekly". The Examiner held that the applicant was not entitled to register its mark because the goods to which it was applied possessed the same descriptive properties as the British article and the two marks bore such close resemblance as to be likely to cause confusion.
Upon appeal to the Commissioner of Patents the decision of the Examiner was affirmed, but upon somewhat different reasoning. The opinion of the Assistant Commissioner clearly held that the two articles were of the same descriptive properties, and while observing that there was actually little likelihood of confusion, he concluded that the statute barred registration.
After a rehearing, at which a decision of this Court was pressed,3 the Assistant Commissioner maintained his conclusion while clarifying his reasoning and holding. He held that not only were the marks applied to goods of the same descriptive properties but also that they were identical, and so the likelihood of confusion became irrelevant under the statute.
The District Court in a well reasoned opinion4 held that the goods were of the same descriptive properties and that the marks were identical. The Court further held that the likelihood-of-confusion test was immaterial because that test is addressed to the similarity of the marks and not to the descriptive properties of the merchandise.
Upon appeal to this Court, appellant concedes that the marks are identical. Its chief argument is that likelihood of confusion is one of the criteria in determining whether goods are of the same descriptive properties. Since it believes that there is no chance of confusion, then it concludes that its supplement must not be of the same class as the British publication, a conclusion contrary to the express holding in the four previous adjudications.
We believe that the statute bars appellant's right to register. In making this holding we accept the reasoning of the District Court.
Appellant bases its argument upon the emphasis that the whole object of statutory and common law trade-mark law is to prevent confusion. With this all-important essence in mind, appellant rides roughshod over the nicer standards the statute creates. Appellant takes the likely-to-cause-confusion test at the end of the proviso and reads it all the way back through the Act. Appellant may have a good idea for trade-mark law. Nonetheless, the statute must be read and applied as written.
We outline the meaning that the statute has for us:
(General Rule) That no mark by which the goods on which it appears may be distinguished from other goods of the same class shall be refused registration;
(Proviso) (1) But (a) if the mark is identical with one already in existence and (b) if it is used on goods of the same descriptive properties (with the same meaning as "same class" in the general rule; synonym, related goods), it shall not be registered; (2) or(a) if the mark so nearly resembles another mark as to be likely to cause confusion and (b) if it is used on goods of the same descriptive properties, it shall not be registered.
In contrast, appellant's construction of the statute, spelled out, would read something like this:
That no mark by which the goods on which it appears may be distinguished from other goods of the same class (the test of the class being the likelihood of causing confusion) shall be refused registration;
Provided, That trade-marks which are identical with a known mark and used on merchandise of the same descriptive properties (the test of the last phrase being the likelihood of causing confusion), shall not be registered; and also provided that trade-marks which so nearly resemble another mark, as to be likely to cause confusion (appellant may cancel the test here),5 and which are applied to goods of the same descriptive properties (again the test being the likelihood of causing confusion), shall not be registered.
If this be the meaning of the statute, it could have been written much more concisely: that no trade-mark shall be refused registration unless it is likely to cause confusion.
Congress, however, chose to lay down more definite standards, and to make differentiations. Congress provided that if a trade-mark is identical with one in existence and if it is applied to related goods, it shall not be registered, and that if a trade-mark so nearly resembles one in existence as to be likely to cause confusion, and if it is applied to related goods, it shall not be registered.
Congress separated the "identical" marks from the "nearly resemble" ones.6 This was done by using sufficient language for standards in each instance and by dividing the two provisions with a comma followed by the conjunction "or". Then in the second part of the proviso, the part dealing with marks of close resemblance, Congress addressed the likely-to-cause-confusion test to the similarity of the marks7 by using the adverbs "so" and "as" to introduce correlative clauses, to wit: "so nearly resemble * * * as to be likely to cause confusion". That the confusion test goes to the similarity of the marks and not to the descriptive properties of the goods is borne out by the fact that the phrase "merchandise of the same descriptive properties" has already appeared in the first part of the proviso, and again in the general rule in the form of the synonym, "goods of the same class", and in neither case was there any descriptive definition test corresponding to "likely to cause confusion".
The construction of the statute to us is clear, and being clear we choose not to be led astray by some of the case language which in all fairness must be said to support appellant.8 That language has often been to the effect that where "similar or identical" trade-marks are concerned the test of registration is the likelihood of causing confusion. The usual problems are whether the marks are confusingly similar on goods of the same descriptive properties or whether the goods are of the same descriptive properties where the marks are substantially identical. If it is fairly clear that the goods do not have the same descriptive properties and their marks are dissimilar, contested cases do not arise. Few cases, on the other hand, present a difficult question on both issues. As a result the adjudicating bodies have not been made acutely aware of the statutory differentiation between similar and identical marks when applied to goods of the same descriptive properties, nor have they, in applying the statute, been accustomed to discussing expressly, in the same case, the two distinct steps, i.e., (1) are the goods of the same descriptive properties, and if so, then, (2) either are the marks so similar as to be likely to cause confusion, or are the marks identical. When the Court of Customs and Patent Appeals, so far as we know, first applied expressly the confusion test to determine whether the goods were of the same descriptive properties, there was a 3-2 division with the minority writing a vigorous specially concurring opinion.9
The facts of this case have shown us, we believe, the proper construction of the Act, and with the statute properly construed, this case is of easy resolution. Appellant concedes that its mark is identical with that of the British publication. This concession is in conformity with the conclusions of the Assistant Commissioner and of the District Court. This concession places appellant within the first part of the proviso. The only other factor for consideration, then, is whether the marks are applied to...
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