Smith v. Tobacco By-Products and Chemical Corp., Patent Appeal No. 6264.

• Decision Date: 04 April 1957
• Docket Number: Patent Appeal No. 6264.
• Citation: 243 F.2d 188,113 USPQ 339
• Parties: Benjamin D. SMITH (Black Panther Company, Inc., Assignee, Substituted), Appellant, v. TOBACCO BY-PRODUCTS AND CHEMICAL CORPORATION (Diamond Black Leaf Company, Assignee, Substituted), Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

113 USPQ 339, 243 F.2d 188 (1957)

Benjamin D. SMITH (Black Panther Company, Inc., Assignee, Substituted), Appellant, v. TOBACCO BY-PRODUCTS AND CHEMICAL CORPORATION (Diamond Black Leaf Company, Assignee, Substituted), Appellee.

Patent Appeal No. 6264.

United States Court of Customs and Patent Appeals.

April 4, 1957.

John Howard Joynt, Washington, D. C., for appellant.

Walter H. Free, New York City (Thornton F. Holder, Painesville, Ohio, and Richard G. Fuller, New York City, of counsel), for appellee.

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

WORLEY, Judge.

This is an appeal from the decision of the Assistant Commissioner of Patents, hereafter referred to as the commissioner, reversing the decision of the Examiner of Interferences and sustaining an opposition to the application of Benjamin D. Smith, for registration of a mark comprising a representation of a green leaf, with the words "Green Leaf" superimposed thereon, as a trademark for a spray for fruits and vegetables. The mark was also denied registration on the ex parte ground that Smith was no longer using the mark, having previously assigned his rights therein to his son. Since the filing of the instant appeal, Smith has been replaced by the assignee of his application, Black Panther Company, Inc., appellant here. Opposer, Tobacco By-Products and Chemical Corporation, has been replaced by its assignee, Diamond Black Leaf Company, appellee.

The opposition is based on ownership of registrations and prior use by appellee of the trademarks "Black Leaf" and "Black Leaf 40," both marks having allegedly been used alone and also in association with a leaf design. Although there is some mention in the record of alleged use by appellee's predecessors of the marks "Gold Leaf" and "Rose Leaf," they are not relied on. We agree with the commissioner there is no such evidence as to the use of either to affect appellant's right to registration of the instant "Green Leaf" mark.

The first question to be determined is whether the marks are so similar as to be likely to cause confusion or mistake, or to deceive purchasers, when used on the goods of the respective parties. There appears to be no significant difference between the goods of the parties, since both include plant and garden sprays, although additional use of appellee's product as an insecticide for use on animals is also stressed in some of the exhibits.

It is evident that the words "Green Leaf" and "Black Leaf" are the dominant portions of the marks, rather than the leaf, and must be given primary consideration in determining the question of confusing similarity.

In contending that the word "Leaf" is the dominant portion of each mark, and that the marks are confusingly similar, appellee relies on the decisions of this court in Bielzoff Products Co. v. White Horse Distillers, Ltd., 107 F.2d 583, 27 C.C.P.A., Patents, 722, and Frankfort Distilleries, Inc. v. Kasko Distillers Products Corporation, 111 F.2d 481, 27 C.C.P.A., Patents, 1189. Both cases relate to trademarks for alcoholic beverages. In the former, "Red Horse" was held confusingly similar to "White Horse" and "Black Horse." In the latter, a similar holding was made with respect to "Maryland Rose" and "Four Roses."

Those cases appear to be easily distinguishable from the facts here. Whereas the words "Rose" and "Horse" are arbitrary as applied to alcoholic beverages, the word "Leaf," as applied to a plant spray is not arbitrary, but is definitely suggestive of the use to which the product is to be put.

It has frequently been held that trademarks, comprising two words or a compound word, are not confusingly similar even though they have in common one word or part which is descriptive or suggestive of the nature of the goods to which the marks are applied, or of the use to which such goods are to be put. The following are instances in which such marks were held not to be confusingly similar: Miles Laboratories, Inc., v. Pepsodent Co., 104 F.2d 205, 26 C.C.P.A., Patents, 1272 (Pepso-Seltzer and Alka-Seltzer); Sears, Roebuck & Co. v. Elliott Varnish Co., 7 Cir., 232 F. 588 ("Never Leak" and "Roof Leak"); James Heddon's Sons v. Millsite Steel & Wire Works, Inc., D.C., 35 F.Supp. 169 (Millsite Basser and Head-On Basser); Franco-Italian Packing Corp. v. Van Camp Sea Food Co., Inc., 142 F.2d 274, 31 C.C.P.A., Patents, 1029 (Gem-of-the-Sea and Chicken of the Sea or Sea Chicken); Morton Manufacturing Corporation v. Delland Corporation, 166 F.2d 191, 35 C.C.P.A., Patents, 917 (Slick Stick and Chop Stick); Rite-Rite Mfg. Co. v. Rite-Craft Co., 181 F.2d 226, 37 C.C.P.A., Patents, 963 (Rite-Craft and Rite-Rite); Magnaflux Corp. v. Sonoflux Corp., 231 F.2d 669, 43 C.C.P.A. Patents, 868 (Magnaflux and Sonoflux); Burton-Dixie Corp. v. Restonic Corp., (Orthotonic and Orthoflex). See also Goldring, Inc., v. Town-Moor, Inc., 228 234 F.2d 668, 43 C.C.P.A., Patents, 950 F.2d 254, 43 C.C.P.A., Patents, 740, and cases there cited. The reasoning in those cases would clearly suggest that "Black Leaf" and "Green Leaf" are not confusingly similar.

Further, we agree with the examiner that appellant's mark "Green Leaf," as applied to a plant spray, suggests that use of the spray would make or keep the leaves of the plants green. Since obviously no such suggestion would result from the mark "Black Leaf," that fact constitutes an additional distinction.

The examiner noted that there has been concurrent use of the "Green Leaf" and "Black Leaf" marks for a considerable time without any evidence of confusion. While that fact is not conclusive on the issue of likelihood of confusion especially when, as pointed out by the commissioner, the use of the "Green Leaf" mark has been relatively limited, we think it is still a factor which may properly be given some weight in determining the issue presented. In re Myers, 201 F.2d 379, 40 C.C.P A., Patents, 747; A. J. Krank Mfg. Co. v. Pabst, 6 Cir., 277 F. 15, and Coca-Cola Co. v. Carlisle Bottling Works, D.C., 43 F.2d 101.

It is also noted that appellant's application shows a composite mark comprising the words "Green Leaf" together with a picture of a five pointed leaf, generally similar in appearance to the maple leaf, while appellee's marks either involve no leaf picture, or a picture of a leaf with only two points, thus resembling a tobacco leaf. The commissioner observed that since 1950 there has been a change in the leaf design used by appellant "so that the present leaf simulates opposer's leaf design...