Salem Commodities v. Miami Margarine Company

• Decision Date: 27 May 1957
• Docket Number: Patent Appeal No. 6277.
• Citation: 244 F.2d 729
• Parties: SALEM COMMODITIES, Incorporated, Appellant, v. The MIAMI MARGARINE COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

244 F.2d 729 (1957)

SALEM COMMODITIES, Incorporated, Appellant, v. The MIAMI MARGARINE COMPANY, Appellee.

Patent Appeal No. 6277.

United States Court of Customs and Patent Appeals.

May 27, 1957.

Elisha Hanson, Arthur B. Hanson, and Emmett E. Tucker, Jr., Washington, D. C., for appellant.

J. Gibson Semmes, Washington, D. C. (Semmes & Semmes, Washington, D. C., of counsel), for appellee.

Before JOHNSON, Chief Judge, and O'CONNELL, WORLEY, RICH, and JACKSON, retired, Associate Judges.

O'CONNELL, Judge.

This is an appeal from the decision of the Assistant Commissioner of Patents, 106 U.S.P.Q. 411, reversing the decision of the Examiner of Interferences in a trademark opposition proceeding and holding appellee to be entitled to registration on the Principal Register, under the Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., of the notation "Nu-Maid" displayed in block letters and used as a trademark for margarine. The opposition was based on alleged prior trademark use by appellant of the term "Nu Made."

It is not disputed that appellant is the owner of Trademark Registration No. 336,786, granted under the Act of 1920, for the trademark "Nu Made" as applied to salad dressing, sandwich spread and French dressing, and that appellant and its predecessors in business have continuously used that mark in connection with the sale of mayonnaise since 1935, a date prior to March 5, 1936, which is the earliest date alleged by appellee for use of its "Nu-Maid" mark. There is no definite evidence as to the extent of appellant's use of its mark.

The record shows that in 1927 or 1928 appellee began to use, as a trademark for margarine having a coconut oil base, the words "Nut Maid," associated with a picture of a bonneted girl's head. About March 5, 1936, as a result of using cottonseed and soybean oil as a margarine base, it was decided to change the mark to "Nu-Maid," while retaining but not registering the same picture and package design. Since that time the "Nu-Maid" mark has been extensively used and advertised by appellee, but appellee delayed for almost twelve years in making the application, February 13, 1948, for the registration of the words "Nu-Maid" which constitutes its mark here in issue.

There is no evidence of record showing that actual confusion in trade has arisen from the concurrent use by appellant and appellee of their respective marks.

The Examiner of Interferences held that appellee could derive no benefit from its use of the "Nut Maid" mark, and that appellant's use of "Nu Made" was prior to appellee's use of "Nu-Maid." He further found that those marks and the goods to which they were applied by the respective parties were so similar as to be likely to cause confusion when concurrently used in trade.

The Assistant Commissioner on appeal from the examiner's decision held that appellant must be presumed to have known of appellee's use of the "Nu-Maid" mark and that appellant's failure to object to such use created an estoppel against any right to oppose appellee's registration thereof. She further held that, considering the manner in which appellee's mark had been used in association with a picture of a girl's bonneted head, confusion in trade would not be likely to result from concurrent use by the parties of the marks "Nu Made" and "Nu-Maid."

We agree with the Examiner of Interferences that appellee can derive no material benefit here from its use of the mark "Nut Maid." While that mark differs from "Nu-Maid" only by one letter and a hyphen, the significance of the two marks is entirely different, the former indicating a nut product while the latter suggests a product which is either new or freshly made. The fact that appellee's marks were used in conjunction with the hereinbefore described picture and the package design is not material, since the application here involved is for registration of the words "Nu-Maid" only.

We are also in agreement with the decision of the Examiner of Interferences on the issue of confusing similarity. In holding that the marks were not confusingly similar, the Assistant Commissioner relied on the fact that appellee's mark had always been associated with a picture of a girl. That picture, however, forms no part of the mark here sought to be registered and, in fact, as stated by the Assistant Commissioner, forms the subject of a registration already granted to appellee on a trademark for margarine. There is no assurance that appellee will always use the picture as it has been used in the past. Moreover, since it is here seeking to register the words "Nu-Maid," standing alone, it must be presumed that it intends to use them in that manner. See Lucien Lelong, Inc. v. Elgin American Manufacturing Co., 83 F.2d 690, 23 C.C.P.A., Patents, 1139, and Philadelphia Inquirer Company v. Coe, Com'r Pats., 49 U.S.P. Q. 346. Accordingly, the fact that appellee's mark had been customarily used with the picture is nowise controlling here.

The words "Nu Made" and "Nu-Maid" are closely similar in appearance and identical in sound. As was pointed out in In re Dutch Maid Ice Cream Company, 95 F.2d 262, 25 C.C.P.A., Patents, 1009; Marion Lambert, Inc. v. O'Connor, 86 F. 2d 980, 24 C.C.P.A., Patents, 781; and Traders Oil Mill Co. v. Lever Brothers Co., 100 F.2d 249, 26 C.C.P.A., Patents, 899, identity of sound has become increasingly important since the advent of radio advertising. In such advertising no distinction would ordinarily be drawn between the two marks here involved.

The goods of the respective parties, mayonnaise and margarine, are foods which are usually sold in the same stores and which are similar in nature. Both are commonly used as ingredients in sandwich spreads. We are of the opinion that the use of closely...