Sterling Drug Inc. v. Sebring

• Decision Date: 08 May 1975
• Docket Number: Patent Appeal No. 74-624.
• Citation: 515 F.2d 1128
• Parties: STERLING DRUG INC., Appellant, v. SEBRING, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

515 F.2d 1128

STERLING DRUG INC., Appellant, v. SEBRING, Appellee.

Patent Appeal No. 74-624.

United States Court of Customs and Patent Appeals.

May 8, 1975.

Rogers, Hoge & Hills, New York City, attorneys of record, for appellant; Marie V. Driscoll, New York City, of counsel.

William H. Pavitt, Jr., Bernard Kriegel, Los Angeles, Cal., attorneys of record, for appellee.

Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.

RICH, Judge.

This appeal is from the majority decision, one member dissenting, of the Trademark Trial and Appeal Board, 183 USPQ 117 (1974), dismissing appellant's opposition to the registration of a design mark in the form of an ankh or ansate cross¹ as follows:

Appellee's application, serial No. 377,976, filed Dec. 17, 1970, claims first use in April 1966² with first use in interstate commerce in January 1967 and describes the goods as hair conditioner and hair shampoo. The evidence shows the conditioner to be an aerosol spray for holding the hair in place.

Appellant-opposer pleaded four registrations of the ankh mark owned by it and an institutional use, said use and one of the registrations having dates prior to appellee's earliest asserted date. Priority of use is clearly in appellant, as the board found, and is not contested by appellee.

The controlling statute is section 2(d) of the Trademark Act of 1946 (15 U.S.C. § 1052(d)) which, in pertinent part, reads:

No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it —

* * * * * *

(d) consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive * * *. Emphasis ours.

Appellant's earliest registration is No. 434,468, issued November 18, 1947, to Aschenbach & Miller, Inc., acquired by assignment which was recorded in the Patent Office on April 29, 1966. Appellee raises no question about appellant's ownership. The registration was renewed in 1967. The goods named in the registration are "a remedy for rheumatism, sciatica, lumbago, neuralgia, toothache, backache and like ailments, and veterinary medicines." The mark registered is as follows:

The other registrations are No. 819,786, Dec. 6, 1966, issued to Sterling Drug Inc. as assignee of Aschenbach & Miller, for the same mark, the goods named being "glycerine for use in cough medicines and a liniment to be used externally for muscular soreness due to exertion, exposure or fatigue, mild neuralgia, mild headache and sprains"; No. 839,048, Nov. 21, 1967, for "analgesic preparation for human use"; and No. 932,812, Apr. 25, 1972, for "pharmaceutical preparations for human and veterinary use." The ankh illustrated in the last two registrations is as follows:

The genesis of appellant's use of the ankh was in connection with a division of the corporation known as the Sterling-Winthrop Research Institute. The director and assistant director of that institute encountered the ankh on a trip to Egypt in 1945 and later decided to use it as a symbol of the Institute. A new building built for it about 1950 incorporated the symbol in the terrazzo flooring of the main entrance and on various glass doors. It was applied to the Institute's stationery, employees' business cards, reprints of scientific articles distributed to the academic community and pharmaceutical industry, and on various souvenirs given to those attending seminars given at the Institute. The work of the Institute has been primarily research for Sterling Drug and the development of new products for its divisions and subsidiaries, it has worked for the United States Government, conducted seminars, collaborated with consultants and consulting laboratories, and has made its building available to many professional groups in the medical, dental, chemical, and pharmaceutical fields for meetings. The research director estimated that about 10,000 souvenirs bearing the ankh symbol had been given away, some of which, such as ash trays, had ended up in the waiting rooms of doctors and dentists. Among products developed by the Institute there have been a surgical scrub sold by Winthrop Laboratories, under the name "pHisoDerm," and a shampoo known as "pHisoDan" also developed for Winthrop Laboratories, a division of appellant. It is not contended that the ankh was used on either of those products. The evidence was intended to show that shampoo is not foreign to Sterling's business.

Apart from the use by the Institute, appellant's use of the ankh as a trademark on products is summarized in its brief as follows (references to the record only omitted):

In or about January, 1964, Sterling decided to extend the use of its valuable ansated cross symbol and use it as a trademark on products distributed by it. It stamped the symbol directly on analgesic pills and made trademark use on that product by shipping it on January 14, 1964. This use was extended to cold tablets in February of that year. Both the analgesic product and the cold tablet were distributed for investigational new drug use. As of 1966 the symbol was still being used on the analgesic * * *.

Then, in October, 1967, use of the mark was extended to a veterinary product and to three prescription products including anti-malarial preparations and a muscle relaxant * * *. These products are distributed through pharmacies, discount chains, supermarkets, and to small hospitals and surgical supply accounts * * *. Since 1967, appellant has sold $12 million of these products * * *.

Appellee does not contest these statements.

OPINION

On the facts as above set forth, we believe the board erred in dismissing the opposition and we reverse.

On the face of the board's opinion we feel that it erred in three particulars. It held that the evidence as to the use of the ankh by the Sterling-Winthrop Research Institute "is clearly irrelevant and immaterial." We disagree. The Institute's use was the beginning of the use by appellant. Section 2(d) is not limited to use as a trademark or service mark; it refers broadly to "a mark or trade name previously used in the United States by another." If a mark such as the ankh has come to symbolize the business of an opposer, to be its identifying mark, its use by another may well lead the public to believe there is some connection, and confusion as to the origin or sponsorship of a product may well result. The evidence of the Institute's use is both relevant and material to the issue here.

The board said that evidence that opposer and certain other pharmaceutical houses distribute both ethical drug products and grooming aids such as shampoo is "of no particular consequence here if for no other reason than that it has not been...