Rockwood Chocolate Co. v. Hoffman Candy Company

• Decision Date: 16 February 1967
• Docket Number: Patent Appeal No. 7712.
• Citation: 372 F.2d 552,152 USPQ 599
• Parties: ROCKWOOD CHOCOLATE CO., Inc., Appellant, v. HOFFMAN CANDY COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

152 USPQ 599, 372 F.2d 552 (1967)

ROCKWOOD CHOCOLATE CO., Inc., Appellant, v. HOFFMAN CANDY COMPANY, Appellee.

Patent Appeal No. 7712.

United States Court of Customs and Patent Appeals.

February 16, 1967.

A. D. Caesar, Alan H. Bernstein, Stanley H. Cohen, Philadelphia, Pa., for appellant.

G. Cabell Busick, Henry W. Leeds, Washington, D. C., for appellee.

Before WORLEY, Chief Judge, RICH, SMITH, and ALMOND, Judges, and Judge WILLIAM H. KIRKPATRICK.^*

SMITH, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board in consolidated opposition and cancellation proceedings, 145 USPQ 91. Appellant, hereinafter designated Rockwood, sought to register "BAG-O-GOLD" as a mark for candy,¹ asserting ownership of a registration of the mark "ROCKWOOD BAG-O-GOLD" for candy.² Appellee, hereinafter Hoffman, brought an opposition against the application for registration of the mark "BAG-O-GOLD" and also a petition for cancellation against the registration of the mark "ROCKWOOD BAG-O-GOLD." In both actions Hoffman's position is based on its asserted prior and continuous use of "CUP-O-GOLD" as a mark for candy. The board sustained the opposition and granted the petition to cancel.

The issue is whether the board erred in finding that Hoffman proved prior and continuous use of its "CUP-O-GOLD" mark and in finding a likelihood of confusion between that mark and Rockwood's marks "BAG-O-GOLD" and "ROCKWOOD BAG-O-GOLD."

Our review of the record establishes that there was an adequate basis for the board's finding that Hoffman used its mark "CUP-O-GOLD" prior to any date proven by Rockwood as the date of first use of its marks. The relevant testimony and exhibits are adequately set forth in the board's opinion and support the board's conclusion, with which we agree, "that Hoffman is, as between the parties, the prior user." We would add, however, that our agreement with this conclusion is predicated very largely on the weaknesses of the record on behalf of Rockwood.

The record on behalf of Hoffman cannot be characterized as establishing a strong case of its use of the mark "CUP-O-GOLD" by December 2, 1935. As the board stated:

It is true that the oral testimony in behalf of Hoffman as to first use can be characterized as "hazy" but there is of record an invoice which indicates a shipment of one box of "CUP-O-GOLD" on December 2, 1935. This invoice was taken from the business records of Hoffman albeit the witness identifying the document was not with the company at the time said invoice was made. Under the "shop-book" rule (Title 28 Sec. 1732) a record made in the regular course of business is admissible, the question is really one of weight. We are persuaded that said invoice is corroborative of testimony that Hoffman, through a predecessor, used "CUP-O-GOLD" as a mark for candy at least as early as December 2, 1935.

Hoffman's case is, however, sufficiently strong for shifting to Rockwood the burden of proving an earlier date. While Rockwood asserted 1957 as the date of first use of the mark in its application for registration, we agree with the board that factor alone does not preclude it from establishing an earlier date. When we examine the record on behalf of Rockwood, we agree with the board that the oral testimony as to Rockwood's use prior to 1936 does not carry sufficient conviction to establish a date of use early enough to overcome the case made by Hoffman. The only documentary corroboration of Rockwood's early use of the mark is a price list dated July 25, 1936. This date, however, is later than the date of first use proven by Hoffman. It therefore requires no further consideration.

Rockwood's assertion of a 1957 date for first use places an added burden on it to prove its later asserted date of priority. Thus, while a party is entitled to carry its date of first use back of one so asserted, proof of such earlier date must be clear and convincing and oral testimony given long after the date sought to be proved must be carefully scrutinized. Elder Manufacturing Co. v. International Shoe Co., 194 F.2d 114, 39 CCPA 817.

Rockwood has placed particular emphasis on the testimony of Misroch, a candy wholesaler. He stated that he remembered purchasing "BAGS-O-GOLD" in the early 1930's. This recollection was based on his having joked that he still had gold when the banks were closed in 1932. Such testimony deserves consideration despite the fact that he mistakenly placed in 1932 an event that actually took place in 1933. However, it is significant that this testimony was given over thirty years after the event and that the record shows that "gold coins" were a form of candy sold by Rockwood under the mark "Gold Coins" in the "early thirties." Misroch's statement that he still had "gold" does not establish that this was "BAGS-O-GOLD" candy.

We shall now consider the question of alleged confusing similarity of the marks. On this question, Rockwood introduced evidence showing that the term "Gold" appeared as part of others' marks for candy. It also presented testimony of professional buyers that confusion was not likely to result from concurrent use of the marks involved. However, these buyers conceded that because of their long experience in the field they could not be regarded as average purchasers. They also stated that they did not know of other trademarks for candy which ended in "O-GOLD."

Under these circumstances, we think the board correctly found:

While it appears that the designation "GOLD" is somewhat lacking in distinctiveness as applied to candy, it does not appear that "O-GOLD" is afflicted with the same infirmity. The similarity between the marks thus goes beyond merely the common use of "GOLD".

Considering the marks "BAG-O-GOLD" and "CUP-O-GOLD", in their entireties, we agree with the board that their use on candy would create likelihood of confusion, particularly since the only difference lies in different three letter words used as a prefix suggestive of a type of container in which the "O-GOLD" candy may be sold.

However, there are such differences between the marks "ROCKWOOD BAG-O-GOLD" and "CUP-O-GOLD" that further and separate consideration must be given to this issue. Our first consideration is that "ROCKWOOD BAG-O-GOLD" is and has been registered as appellant's trademark since March 8, 1960.

The Trademark Act of 1946, section 7(b) (15 U.S.C. § 1057(b)) states:

A certificate of registration of a mark upon the principal register provided by this Act shall be prima facie evidence of the validity of the registration, registrant\'s ownership of the mark, and of registrant\'s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein.

This prima facie presumption in favor of a registration has been recognized by the courts in many cases.³ Moreover, as we stated in Prince Dog & Cat Food Co. v. Central Nebraska Packing Co., 305 F.2d 904, 49 CCPA 1328:

* * * Cancellation of a valuable registration around which a large and valuable business goodwill have been built should be granted only with "due caution and only after a most careful study of all the facts." Sleepmaster Products Co., Inc. v. American Auto-Felt Corp., 241 F.2d 738, 44 CCPA 784. Petitioner, to sustain its burden of proof, must leave nothing to conjecture.

The existence of Rockwood's registration thus placed on Hoffman, inter alia, the burden of proving that Rockwood did...