Spice Islands, Inc. v. FRANK TEA AND SPICE COMPANY, Patent Appeal No. 74-567.

• Decision Date: 27 November 1974
• Docket Number: Patent Appeal No. 74-567.
• Citation: 505 F.2d 1293
• Parties: SPICE ISLANDS, INC., Appellant, v. The FRANK TEA AND SPICE COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

505 F.2d 1293

SPICE ISLANDS, INC., Appellant, v. The FRANK TEA AND SPICE COMPANY, Appellee.

Patent Appeal No. 74-567.

United States Court of Customs and Patent Appeals.

November 27, 1974.

John P. Sutton, Limbach, Limbach & Sutton, San Francisco, Cal., attorney of record, for appellant.

Frank P. Presta, Jacobi, Lilling & Siegel, Arlington, Va., attorney of record, for appellee.

BALDWIN, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board¹ dismissing an opposition to appellee's application² to register SPICE TREE and tree design for garlic powder and minced onion and denying a petition to cancel appellee's registration³ SPICE TREE per se for the same goods. Appellant asserts that appellee's marks so resemble appellant's mark SPICE ISLANDS,⁴ either alone or with various tree designs, or with its registered tree design⁵ for seasoning herbs and spices as to be likely to cause confusion, mistake, or deception. We reverse.

No dispute arises over appellant being the first user, and, as stated by the Trademark Trial and Appeal Board:

Since it thus appears that opposer is here the prior user and the goods of the parties are in part identical in kind, this case turns solely on a comparison of the marks.

Appellant's marks appear as shown below:

Appellee's marks appear as follows:

The record shows that appellant for many years has continuously used the mark SPICE ISLANDS alone and/or in association with a representation of a tree or the top of a tree in connection with the sale of spices and food seasonings of various kinds, including garlic powder and minced onions. Its goods are marketed throughout the United States, its sales thereof have ranged between five and ten million dollars a year, and it has spent approximately $500,000 a year in promoting its goods through such media as radio, nationally distributed consumer magazines, and the distribution of seasoning charts and cookbooks.

Appellant markets condiments displaying both its SPICE ISLANDS mark and tree mark.⁶ Further, store marketing displays⁷ similarly depict both marks being used together.

Since March of 1970, appellee has used its marks in connection with the sale of a line of spices, food seasonings, and condiments. Its sales under these marks have totaled approximately $500,000. From 1959 until 1970 appellee sold its goods under another mark,⁸ a portion of which comprises the same tree design that appears in the instant application, and sales under that mark amounted to approximately $51,000,000.

OPINION

After having carefully reviewed the record and the arguments of counsel, we are convinced that the board erred in dismissing the opposition and in denying the petition for cancellation of appellee's registration.

In reaching its decision, the board improperly dissected the marks. For example, the board stated:

In this regard, the word "SPICE", common to the word marks "SPICE ISLANDS" and "SPICE TREE", possesses an obvious descriptive connotation as applied to the goods of both parties, and as further shown by the record herein, this word or variations thereof form a part of numerous marks registered by third persons for goods of the character here involved. While it is true opposer points out that the instant marks are used in association with tree designs, there obviously are substantial differences between the designs in appearance.

Of paramount interest is not the descriptive nature of SPICE,⁹ but the overall commercial impression derived by viewing the marks in their entireties in determining whether a likelihood of confusion exists. Clairol Incorporated v. Roux Laboratories, 442 F.2d 980, 58 C.C. P.A. 1170 (1971). Arguments to the effect that one portion of a mark possesses no trademark significance leading to direct comparison between only what remains is an erroneous approach. Magnavox Co. v. Multivox Corp. of America, 341 F.2d 139, 52 C.C.P.A. 1025 (1965).

Furthermore, it is unclear whether the board accorded proper weight to appellant's most pertinent trademark usage in arriving at its conclusion that a likelihood of confusion does not exist. Although the board acknowledged that appellant markets its goods under the mark SPICE ISLANDS in connection with its tree mark, which depicts an entire tree, it stated that the grounds for the opposition and cancellation were the mark SPICE ISLANDS alone and in association with a design depicting the top of a tree, positioned to the left and right of SPICE ISLANDS.¹⁰ The former trademark usage would give rise to an association, in the minds of consumers, between appellant's mark SPICE ISLANDS and various tree designs. We find that this usage is certainly more pertinent than the usage apparently...