The Pep Boys, Manny, Moe and Jack v. Fisher Bros. Co.

• Decision Date: 24 January 1938
• Docket Number: 3841.,Patent Appeals No. 3840
• Citation: 94 F.2d 204
• Parties: THE PEP BOYS, MANNY, MOE AND JACK, v. FISHER BROS. CO. FISHER BROS. CO. v. THE PEP BOYS, MANNY, MOE AND JACK.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

94 F.2d 204 (1938)

THE PEP BOYS, MANNY, MOE AND JACK, v. FISHER BROS. CO.^*

FISHER BROS. CO. v. THE PEP BOYS, MANNY, MOE AND JACK.

Patent Appeals Nos. 3840, 3841.

Court of Customs and Patent Appeals.

January 24, 1938.

Clarence A. O'Brien, of Washington, D.C. (Charles E. A. Smith, Thomas E. Turpin, George C. Baldt, and Clarence R. Gorman, all of Washington, D. C., of counsel), for The Pep Boys.

Donald A. Gardiner, of Washington, D. C., and John Harrow Leonard, of Cleveland, Ohio, for Fisher Bros. Co.

Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.¹

BLAND, Associate Judge.

These are cross-appeals in a trademark opposition proceeding arising in the United States Patent Office. For convenience of statement, in view of the cross-appeals, the Fisher Brothers Company, a corporation whose application for registration is involved, will be hereinafter referred to as the applicant, while The Pep Boys, Manny, Moe, and Jack, also a corporation, will be hereinafter referred to as the opposer.

On August 18, 1934, the applicant filed in the United States Patent Office an application for registration as a trade-mark of the words "CAN O' GOLD," for motor lubricating oils in class 15, oils and greases. In the drawing accompanying the application the words "CAN O' GOLD" are shown disposed centrally within a diamond shaped background, the word "GOLD" being beneath the words "CAN O'." Above the said words, and within the diamondshaped background, is a representation of a container in the form of a can, on which can are the words "CAN O' GOLD," while in the lower part of said background are the words "MOTOR OIL," the word "MOTOR" being above the word "OIL." Extending from the borders of the diamond-shaped background along a diagonal line is a broad band or stripe. The application for registration alleged that said mark had been continuously used and applied to said goods in applicant's business since about February 13, 1933. Said application, as amended, also contained the following: "* * * The words Motor Oil, and the representation of the containers are disclaimed apart from the mark shown in the drawing."

On November 3, 1934, the opposer filed notice of opposition to the registration asked for by applicant, and since one of the questions before us is based upon the contents of said notice of opposition, the same is set out here at such length as is pertinent to said question.

"The grounds of opposition are as follows:

"1. The Pep Boys — Manny, Moe and Jack, are a corporation organized, existing and operating in accordance with and by virtue of the laws of the Commonwealth of Pennsylvania, which corporation is hereinafter designated the Opposer and has its principal place of business at Tenth and Somerville Avenue, in the City of Philadelphia, State of Pennsylvania.

"2. The Opposer is the owner of a chain of automobile accessory stores in Pennsylvania, Delaware, and New Jersey wherein is offered for sale every character of equipment for automobiles, including lubricating oils and greases.

"3. Long prior to the alleged use of the alleged trade-mark disclosed in trademark application, Serial No. 355,133, by the alleged corporation The Fisher Brothers Company hereinafter designated the Applicant, to wit, in or about June 1929, the Opposer adopted and continuously used from thence hitherto now, the legend: `Pure as Gold.'

"4. The said legend Pure as Gold has been and is used exclusively by the Opposer, who has expended large sums of money for many years in advertising sales promotion, and kindred efforts bearing said legend, to the end where the purchasing public recognize the said legend Pure as Gold as being owned by, originating in, and representing the Opposer.

"5. The Opposer, from the date of adoption and from thence hitherto now, has continuously affixed the legend Pure as Gold to `Cans' of lubricating oils and grease shipped in interstate and intrastate commerce, and two of such cans are attached hereto and made a part hereof and are identified by the marking `Exhibit A.'

"6. Knowing full well the purchasing public recognize goods, and advertising bearing the legend Pure as Gold designates origin of ownership in the Opposer, the alleged applicant has alleged adoption and use of the alleged trade-mark Can O' Gold on goods of identical properties with the Cans of Pure as Gold containing Opposer's products including lubricating oils and grease, and by reason thereof there is a likelihood of confusion in the minds of the purchasing public resulting in financial loss and damage to the Opposer.

"7. Opposer is the owner of trade-mark registration 265,858, January 7, 1930 profert of which is made to the court now here and made a part hereof and the granting of the trade-mark registration on application Serial No. 355,133 will invest in the Applicant exclusive rights to the words Can O' Gold and appropriate to the Applicant all the value and good will established through diligent effort and expenditure of money by the Opposer in creating a sales demand for identical goods in Cans bearing Pure as Gold."

It will be noted that in said notice of opposition the opposer claims registration No. 265,858, registered January 7, 1930. This registration is for the words "PURE AS GOLD." In the registration the word "PURE" is shown to be disposed in a circular form within and adjacent to the upper periphery of a circle, the word "GOLD" being similarly disposed in the lower periphery of the circle. The word "AS" is in the center of the circle. Branching out laterally from the sides of the circle are representations of a pair of wings. The registration shows it to have been issued for "AUTOMOBILE LUBRICATING OILS AND CUP GREASE, in Class 15, Oils and greases, * * *." The words "PURE AS GOLD" were disclaimed apart from the mark shown.

On January 14, 1935, the applicant filed a motion to dismiss, which reads as follows:

"Now comes The Fisher Brothers Company, the applicant in the above entitled opposition and hereby moves that the Notice of Opposition be dismissed for insufficiency of fact appearing on the face of the notice and in the record to constitute a valid cause in:

"1. That it appears on the record that the Opposer relies on a right to a legend which is publici juris and any use thereof or of a similar legend by the applicant or any other party would be no violation of any statutory or common law right of the Opposer entitling the Opposer to maintain this opposition proceedings.

"2. That it appears from the record that the mark of the applicant is so dissimilar in appearance, sound and significance from the phrase `Pure as Gold' that there is no possible likelihood of confusion arising in the mind of the purchasing public as a result of concurrent use of the mark of the Applicant and the public use of the legend `Pure as Gold,' wherefore the Opposer has no standing to object to the registration by the Applicant.

"3. That it appears in the record that a complete opposition was not filed within the time required by the statute but that the same was informally filed during said period in that specimens were not included originally but were added only after the expiration of the 30 day statutory period."

On the same date applicant also filed an answer denying most of the allegations of opposer's notice of opposition, and among other things stating: "6. Applicant admits the allegations in Paragraph numbered 6 in the Notice of Opposition that it has adopted and used the trade-mark `Can O' Gold' on motor lubricating oils and, further answering Paragraph 6, applicant denies that by reason of its use of the mark Can O' Gold there is a likelihood of confusion in the minds of the purchasing public and damage to the Opposer."

On January 23, 1935 the Examiner of Interferences wrote a letter reading as follows:

"The several motions and briefs filed by the parties are all noted by the examiner.

"Before the various questions raised by these motions are considered it is deemed desirable to first ascertain the statutory cause or causes of action of the opposer.

"Although this is a purely statutory proceeding, the notice of opposition discloses no attempt to paraphrase the language of the statute. Reading the notice of this opposition from the four corners thereof, the examiner infers from the allegation contained in paragraphs 1 to 6 that they only relate to and seek to draw in the confusion-in-trade clause of Section 5. As to paragraph 7, the examiner can make no inference. The opposer is requested to duly confirm or deny the inference of the examiner with regard to paragraphs 1 to 6 and also to disclose the statutory language of section 5 to which paragraph 7 is intended to relate, if any. This should be done by inclosing the same within quotation marks. Otherwise stated, the precise theory of the case of the opposer should be revealed. Storm Waterproofing Corporation v. L. Sonneborn Sons, Inc., D.C., 28 F.2d 115.

"Upon failure of the opposer to duly comply with this request the case will proceed as by default and the notice of opposition will be dismissed."

In response to this letter the opposer filed in the Patent Office on January 25, 1935, a communication reading as follows:

"This letter is in response to a query presented by the Honorable Examiner of Trade-mark Interferences dated January 23, 1935.

"Your Honor is advised that paragraphs 1 to 6, inclusive, in the notice of opposition is based on that portion of Section 5(b) of the Trade-Mark Act of February 20, 1905 (as amended) as follows `* * * or which so nearly resemble a registered or known trade-mark owned and in...