Purex Corporation, Ltd. v. Maryland Paper Products Co.
| Decision Date | 21 February 1961 |
| Docket Number | Patent Appeal No. 6596. |
| Citation | 48 CCPA 848,287 F.2d 186 |
| Parties | PUREX CORPORATION, LTD. (Assignee of Manhattan Soap Company, Inc.), Appellant, v. MARYLAND PAPER PRODUCTS CO., Appellee. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
James M. Naylor, Naylor & Neal, San Francisco, Cal. (James Atkins and Russell Law, Washington, D. C., of counsel), for appellant.
Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Judges, and Judge WILLIAM H. KIRKPATRICK.*
This appeal was taken from the Assistant Commissioner's dismissal (121 U.S. P.Q. 611) of appellant-opposer's opposition to appellee-applicant's application for registration of the trade-mark "Sweetheart."1
Each party uses the word "Sweet-heart," as its trademark. Opposer's predecessor had used and registered the mark for toilet soap many years before applicant used it on any of the various paper products which it sells.
Applicant took no testimony but gave notice under rule 2.123(c), 15 U.S.C.A. Appendix that it would rely upon its registrations of the mark "Sweetheart" as official records of the Patent Office as follows:
(6) Trademark Registration No. 654,599 for paper food containers and plates.
The notice further states, "The purpose of these registrations is to show the rights of applicant and a related company in the use of the name Sweet-heart in connection with various paper products."
The record here does not show any objection was made by opposer to any of the foregoing registrations.
The issues which require determination are:
(1) Has opposer as the prior user and registrant of the mark "Sweetheart" for toilet soap lost its right to oppose the registration of the same mark by applicant on the goods specified in the application here in issue?
(2) Is there likelihood of confusion, mistake or deception of purchasers as to source or origin of applicant's goods as specified in the application for registration where the mark "Sweetheart" is applied thereto?
It is applicant's position that since opposer has not previously challenged applicant's right to use the mark "Sweetheart" on the goods specified in the registrations referred to in the notice under rule 2.123(c) it is guilty of laches and for this reason cannot maintain the present opposition as it would not be "equitable" at this time to prohibit registration of the mark on what applicant asserts to be the related paper products specified in the application here in issue. In asserting this position applicant invokes section 19 of the Lanham Act (15 U.S.C. § 1069, 15 U.S.C.A. § 1069) that "In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied."
Delay, as one of the elements of laches, must be an inexcusable delay. United States v. Alex Dussel Iron Works, Inc., 5 Cir., 1929, 31 F.2d 535, 536; Loverich v. Warner Co., 3 Cir., 1941, 118 F.2d 690, 693. The fact that opposer elected not to oppose the prior registrations does not constitute such an "inexcusable delay."
Registration of the mark "Sweet-heart" by applicant as its trademark on drinking straws, cups, spoons, forks, plates, food containers, matches and cellulose ribbons, does not per se place a duty upon opposer to take legal action on peril of losing its exclusive rights to its mark on toilet soap and products related thereto.
On the issue of likelihood of confusion, mistake or purchaser deception, the examiner, relying on the decision of this court in Lever Brothers Co. v. Sitroux Co., 109 F.2d 445, 27 CCPA 858, and on the decision of the Commissioner in Lever Brothers Co. v. Fort Howard Paper Co., 91 U.S.P.Q. 341, held there was a likelihood of confusion, mistake or deception and sustained the opposition. The Assistant Commissioner reversed the examiner after distinguishing these cases on the basis they did not involve "an ordinary English word in everyday usage in describing people and things."
We do not find this to be a tenable distinction. It is true that none of the marks in issue in those cases, i. e. "Lux," "Sit-Ru-Lux" and "Paperlux" was "an ordinary English word in everyday usage in describing people and things," but this is not the determinative test of whether or not a word may become a trademark.
The mark "Sweetheart" here in issue is a proper trademark when applied to the goods of...
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Mother's Restaurants Inc. v. Mother's Bakery, Inc.
...trademark, its use in connection with the services in question necessarily must be distinctive. See Purex Corporation, Ltd. v. Maryland Paper Products Co., 287 F.2d 186, 188 (C.C. P.A.1961). In this case, the frequent use of "Mother's" in connection with all types of business ventures, incl......
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