Shoe Corporation of America v. Juvenile Shoe Corp.

• Decision Date: 28 April 1959
• Docket Number: Patent Appeal No. 6334.
• Citation: 266 F.2d 793,46 CCPA 868
• Parties: SHOE CORPORATION OF AMERICA, Appellant, v. JUVENILE SHOE CORPORATION of America, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

46 CCPA 868, 266 F.2d 793 (1959)

SHOE CORPORATION OF AMERICA, Appellant, v. JUVENILE SHOE CORPORATION of America, Appellee.

Patent Appeal No. 6334.

United States Court of Customs and Patent Appeals.

April 28, 1959.

A. Yates Dowell and A. Yates Dowell, Jr., Washington, D. C., for appellant.

Kingsland, Rogers & Ezell, St. Louis, Mo. (Edmund C. Rogers, St. Louis, Mo., of counsel), for appellee.

Before O'CONNELL, Acting Chief Judge, and WORLEY, RICH, and MARTIN, JJ.

O'CONNELL, Acting Chief Judge.

This case was originally argued here on January 10, 1958, and an opinion was thereafter rendered by the court on April 23, 1958. A petition for rehearing was subsequently filed by appellee and the case was set for further argument on November 6, 1958. Pursuant to such argument and the additional briefs filed by the parties, the opinion of April 23, 1958, is hereby withdrawn and the following opinion is substituted therefor:

The appeal was taken in an opposition proceeding from the decision of the Assistant Commissioner of Patents, 110 US PQ 430, affirming the decision of the Examiner of Interferences, which sustained the opposition and held that the applicant (appellant here) was not entitled to the registration sought.

Appellant applied for registration on the principal register of its mark "Lazy Pals" for men's, women's and children's shoes, asserting use since January 21, 1949. Registration was opposed by appellee, owner of a registration for "Lazy Bones" for shoes and slippers of leather or kid.¹ The letters making up the mark "Lazy Bones" are each somewhat suggestive of bones. The record indicates that first use of appellee's "Lazy Bones" was in October, 1935, and appellant's "Lazy Pals" sometime in 1949. Both marks have been used continuously since the date of first use. Thus, appellee is clearly the prior user.

Appellant's application as hereinbefore described states that "Lazy Pals" is used in conjunction with "shoes for men, women and children" while appellee's registration certificate recites "shoes and slippers of leather or kid." Appellee's witness, however, testified that the mark "Lazy Bones" is not applied to men's shoes. Appellant's witnesses testified that "Lazy Pals" is used only on men's house slippers. Appellant relies on this distinction in goods in its argument that there is no possibility of confusion between the marks in issue. We cannot agree with appellant's view of this aspect of the case, in view of section 7(b) of the Lanham Act, which provides:

"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." (Emphasis added.) 15 U.S.C.A. § 1057 (b).

It is obvious from the above provision that appellant cannot rely on certain goods recited in its application for registration, and then assert in an opposition proceeding, on the basis of testimony adduced during such proceeding, that the goods with which its mark is used differ from those recited in its application. Therefore, we shall restrict ourselves to a consideration of the goods recited in appellant's application, and for the purposes of this proceeding, consider the goods of the respective parties to be practically identical. The case thus reduces itself to the question of confusing similarity between appellee's "Lazy Bones" and appellant's "Lazy Pals."

The Assistant Commissioner in reaching the conclusion that concurrent use of the two marks in issue would result in likelihood of confusion placed stress on a consent decree which had been entered into by the parties to this proceeding at a time prior to appellant's adoption and use of the mark "Lazy Pals," and stated:

"The parties of this proceeding are not strangers to one another. In December of 1947 applicant changed its name from The Schiff Company to Shoe Corporation of America. The Juvenile Shoe Corporation of America, opposer here, filed a civil action against applicant in the District Court for the Eastern District of Missouri, and on October 22, 1948 a consent decree was entered enjoining applicant from using the name `Shoe Corporation of America\' in connection with the manufacture, advertisement, purchase, sale or shipment of shoes (except to its own subsidiaries and wholly-owned retail stores and departments), and permitting the use of the name for signing leases, borrowing money and other corporate purposes, but only in conjunction with the words `An Ohio Corporation.\' Three months after entry of the decree, applicant commenced using the mark `Lazy Pals\'; and five months after entry of the decree, the application to register `Lazy Pals\' was filed in the name of `Shoe Corporation of America.\'

"Applicant\'s record shows that it continues to use the name `Shoe Corporation of America\' in buying shoes."

The Assistant Commissioner concluded, in the light of the above, and in view of appellee's extensive advertising and sales of its shoes under the mark "Lazy Bones," that "this course of conduct on the part of applicant indicates an intent to trade in some manner on opposer's good will." That conclusion, taken in conjunction with the similarities which she felt exist between the two marks, led her to decide that "their contemporaneous use is reasonably likely to cause confusion or mistake or deception of purchasers," and accordingly to sustain the opposition.

We are of the opinion that the Assistant Commissioner erred in giving undue weight to the consent decree and in sustaining the instant opposition.

Evidence bearing upon the motive of a party in selecting a given trademark may influence the ultimate question of likelihood of confusion. Lever Brothers Co. v. Riodela Chemical Co., 41 F.2d 408, 411, 17 CCPA 1272. There it was stated that:

"* * * if, in the adoption and use of the mark there be a purpose of confusing the mind of the public as to the origin of the goods to which it is applied, we have a right, in determining the question of likelihood of confusion or mistake, to consider the motive in adopting the mark as indicating an opinion, upon the part of one vitally interested, that confusion or mistake would likely result from use of the mark. * * *"

Notwithstanding the foregoing citation, intent is not necessarily controlling in an opposition proceeding, as this court further held in the same decision:

"Of course, if confusion or mistake is not likely to result from the use of the two marks, the motive of the later applicant in adopting its mark can not affect its right to registration; * * *"

The similarity between "Lazy Pals" and "Lazy Bones" resides in the common word "Lazy." That word, as applied to shoes, is not arbitrary. It contains a definite suggestion of comfort, relaxation and suitability for informal wear. Words or syllables of that character are considered to be weak in a trademark sense and will not be given as great weight in determining the likelihood of confusion between marks as will words or syllables which are of an arbitrary nature. Smith v. Tobacco By-Products & Chemical Corp., 243 F.2d 188, 44 CCPA 880, and cases there cited.

We are of the opinion that prospective purchasers would be more apt to regard the word "Lazy" in each of the marks here involved as indicative of the character of the shoes, rather than of their origin; and that the distinctive words "Pals" and "Bones" would be relied on as identifying the source from which they emanated.

Appellant has called attention to the following five trademarks involving the initial word "Lazy," which have been registered for footwear: "Lazy Lacer," Reg. No. 362,784; "Lazy Lad," Reg. No. 374,144; "Lazy Joe," Reg. No. 417,125; "Lazy Dogs," Reg. No. 420,814; and "Lazy H," Reg. No. 574,031.

Appellee urges that third party registrations may not properly be considered in these proceedings and cites the following authorities in support of that proposition: Sharpe & Dohme v. Parke, Davis & Co., 37 F.2d 960, 17 CCPA 842; American Fruit Growers, Inc. v. Michigan Fruit Growers, Inc., 38 F.2d 696, 17 CCPA 906; California Packing Corporation v. Tillman & Bendel, Inc., 40 F.2d 108, 17 CCPA 1048; Standard Oil Co. v. Epley, 40 F.2d 997, 17 CCPA 1224; MacEachen v. Tar Products Corp., 41 F.2d 295, 17 CCPA 1264; Federal Mill & Elevator Co., Inc. v. Pillsbury Flour Mills Co., 49 F.2d 1042, 18 CCPA 1353; Weyenberg Shoe Manufacturing Co. v. Hood Rubber Co., 49 F.2d 1046, 18 CCPA 1449; National Biscuit Co. v. Sheridan, 44 F.2d 987, 18 CCPA 720; Decker & Cohn, Inc. v. S. Liebovitz Sons, Inc., 46 F.2d 179, 18 CCPA 781; Celotex Co. v. Millington, 49 F.2d 1053, 18 CCPA 1484; Trustees for Arch Preserver Shoe Patents v. James McCreery & Co., 49 F.2d 1068, 18 CCPA 1507.

The foregoing decisions, so far as they may hold that third party registrations can never be considered in deciding whether an opposer's mark is confusingly similar to that of an applicant, are not sound. In determining whether a word or syllable has a descriptive or suggestive significance as applied to merchandise it is proper to take notice of the extent to which it has been used in trademarks by others on such merchandise. If it has been frequently so used, the inference is warranted that it is not purely arbitrary; that it would be likely to be understood by purchasers as identifying or describing the merchandise itself, rather than the source thereof, and hence as having little or no trademark significance.

While the cases relied on by appellee have not been heretofore expressly overruled, this court, in recent years, has considered third party registrations as bearing on the weight to be given to portions of trademarks. Burroughs Wellcome & Co., Inc. v. Mezger Phar. Co., Inc., 228 F.2d 243, 43 CCPA 703; ...