Puerto Rico Distilling Co. v. Coca-Cola Co.

• Decision Date: 03 July 1941
• Docket Number: Patent Appeal No. 4471.
• Citation: 120 F.2d 370
• Parties: PUERTO RICO DISTILLING CO. v. COCA-COLA CO.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

120 F.2d 370 (1941)

PUERTO RICO DISTILLING CO. v. COCA-COLA CO.

Patent Appeal No. 4471.

Court of Customs and Patent Appeals.

June 9, 1941.

Rehearing Denied July 3, 1941.

Ivan P. Tashof, of Washington. D. C., (S. Pierre Robineau and Garland M. Budd, Jr., both of Miami, Fla., of counsel), for appellant.

Spalding, Sibley, Troutman & Brock and Frank Troutman, all of Atlanta, Ga., and Edward S. Rogers, of Chicago, Ill., for appellee.

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

GARRETT, Presiding Judge.

This is an appeal from the decision of the Commissioner of Patents reversing that of the Examiner of Interferences in a trade-mark opposition proceeding instituted in the United States Patent Office by appellee, Coca-Cola Company, against an application filed by appellant, Puerto Rico Distilling Company, for the registration of the notation "Ronricola" as a trade-mark for rum, alcoholic cocktails, and beverages containing substantial portions of rum.

The appellant is a corporation duly organized under the laws of the territory of Puerto Rico, and for many years has been engaged in the manufacture of a rum which is sold under the trade name or brand of "Ronrico." In 1937 it began the manufacture of a drink, referred to as "Cuba Libre," composed of Ronrico rum, cola syrup, and lime juice, the rum being the principal ingredient, and on June 16, 1937, filed the application for registration of "Ronricola" as a trade-mark for such mixed drink, alleging use "since April 15, 1937." The application having been passed for publication and published, appellee filed notice of opposition, pleading the use and registration of the well known mark "Coca-Cola" on its syrup product, used in making soft drinks long prior to the date of appellant's application, and alleging, in substance, that the goods are of the same descriptive properties; that the respective marks are of such close resemblance that the use of "Ronricola" by appellant would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers, and that appellee would be injured by its registration. Appellant made answer to the notice of opposition and so the issue was joined.

Testimony was taken on behalf of both parties which it is unnecessary to review in detail.

The Examiner of Interferences dismissed the notice of opposition and held that appellant was entitled to the registration sought. In so doing, he did not hold the goods of the respective parties to be of different descriptive properties, but said, inter alia:

"The record shows that the beverage sold by the applicant is a mixture of rum and cola syrup and that in this beverage the rum is the dominant part thereof and the cola syrup a minor part. Cola syrup is the generic name of an article of trade and is commonly used in the making of beverages. Its significance to purchasers as a feature of a composite mark used on a beverage of which it is also an ingredient is deemed not to be fanciful or arbitrary.

* * * * *

"The goods of the opposer are in the nature of a soft drink and are so regarded by the general public. Their trade appeal is obviously quite different. It is thus apparent that the differences in the marks and the properties of the goods are considerable and it is believed that in view of the cumulative effect thereof concurrent use of these marks in trade on these goods would not be likely to confuse the public or to deceive purchasers. * * *"

In reversing the decision of the Examiner of Interferences and sustaining the opposition, the commissioner held that the goods of the respective parties "do in fact possess the same descriptive properties within the meaning of the Trade-Mark Act."

In connection with his holding on this phase of the case, the commissioner cited certain prior decisions made by him. The first decision so cited was that in the case of California Packing Corporation, Applicant v. Silver Swan Liquor Corporation, Opposer, 477 Off.Gaz. 770, 32 U.S.P.Q. 581. The applicant there applied for registration of "Gold Band" for use on whisky. The opposer pleaded, among other things, a registration of the same mark owned by it for ginger ale. The commissioner, seemingly basing his view largely upon certain reasoning of this court in the case of Meredith Publishing Co. v. O. M. Scott & Sons Co., 88 F.2d 324, 24 C.C.P.A., Patents, 956, held "that whisky and ginger ale are merchandise of the same descriptive properties," saying, that "they are frequently mixed together and imbibed from the same glass"; that "they are closely associated in the mind of the drinking public," and that "confusion may well result from their sale under identical marks." (Italics ours.) The second case cited was that of White Rock Mineral Springs Company v. Neurad, 477 Off.Gaz. 770, 33 U.S.P.Q. 163, in which the commissioner held, in effect, that carbonated water possessed the same descriptive properties as distilled alcoholic liquors, including whisky, for which latter Neurad was seeking registration of the term "White Rock," a term which the appellant there had had registered either alone or in combination with other features prior to Neurad's filing date "for mineral water, ginger ale and other carbonated beverages." The third case cited was that of Continental Distilling Corporation, Opposer v. Buston, Applicant, 500 Off.Gaz. 772, 40 U.S.P.Q. 566, wherein the commissioner held, in effect, that gin and cola beverages of the soft drink type were of the same descriptive properties and that confusion would likely result from the registration of "Dixie Bell," the mark used by opposer for gin, for use on such soft drink beverages.

It will be observed that in two of the cases the applicant sought registration for use on a per se nonalcoholic beverage of a mark identical with one previously registered for use on alcoholic beverages and in the other case the applicant sought registration for use on an alcoholic beverage of a mark identical with one previously registered for a nonalcoholic beverage. No one of those cases was appealed but we may say that it is our present view that had we been called upon to review them, we would have felt constrained, under the facts there appearing, to agree with the commissioner's denials of the registrations.

In the case of American Brewing Company, Inc. v. Delatour Beverage Corporation, 100 F.2d 253, 255, 26 C.C.P.A., Patents, 778, which was a cancellation proceeding, the goods consisted of ginger ale on the one hand and beer and ale on the other, and we concurred in the view of the commissioner that these "are of the same descriptive properties." The appellant there sought cancellation of a registration by the appellee, for use on ginger ale, of a mark consisting "of a representation of the Statue of Liberty and the printed words `America Dry Ginger Ale,'" the printed words being disclaimed. The mark of appellee, used on beer and ale, consisted of a composite mark comprising a representation of the Statue of Liberty and the word "Liberty."

The commissioner took the view that while the goods were of the same descriptive properties within the meaning of the Trade-Mark Act, 15 U.S.C.A. § 81 et seq., they nevertheless were specifically different and held that regardless of the presence of the representation of the Statue of Liberty in both marks there was no reasonable likelihood of confusion between them as applied to the goods involved.

In the course of our decision reversing that of the commissioner, we said, inter alia: "If the disclaimed words, `America Dry Ginger Ale,' in registrant's mark should be given the same prominence and weight as the representation of the Statue of Liberty therein, we could agree with the commissioner that, considering the difference in goods and the differences in the marks, there is no reasonable likelihood of confusion arising from the use of the respective marks; but we are of the opinion that disclaimed descriptive words in a mark should not be given the same prominence as that portion of the mark which possesses all of the qualities of a valid technical trade-mark. It is true that the general rule is that marks should be regarded in their entirety, including disclaimed words, but we do not think it could well be argued that disclaimed descriptive words could ever constitute the dominant part of a mark."

After citing certain authorities, we found that "the essential and dominant feature of the mark sought to be cancelled is the pictorial representation of the Statue of Liberty," and upon that basis held, in effect, that confusion would likely result from the use of the mark on ginger ale. The intimation of the opinion clearly is to the effect that had the marks not been, as respected the dominant feature of appellee's mark, substantially identical, our decision might have been different "considering the difference in goods and the differences in the marks."

Under the authorities above cited, we feel constrained to agree with the view of the commissioner that the respective goods of appellant and appellee in the instant case "possess the same descriptive properties within the meaning of the Trade-Mark Act," but it is also true, as was said by the commissioner of the goods involved in the American Brewing Co. case, supra, "they are nevertheless specifically different," and it is, of course, well settled that specific differences in goods which are of the same general descriptive character should be considered in connection with differences in marks in fairly determining the question of likelihood of confusion. Vick Chemical Co. v. Central City Chemical Co., 75 F.2d 517, 22 C.C.P. A., Patents, 996; Joseph Tetley & Co., Inc. v. Fant Milling Co., etc., 111 F.2d 485, 27 C.C.P.A., Patents, 1180.

In the instant case the commissioner first considered the question relating to the descriptive properties of the respective goods, and then considered the matter of...