Universal Oil Products Co. v. Rexall Drug & Chemical Co.

• Citation: 174 USPQ 458,463 F.2d 1122
• Decision Date: 03 August 1972
• Docket Number: Patent Appeal No. 8760.
• Parties: UNIVERSAL OIL PRODUCTS CO., Appellant, v. REXALL DRUG AND CHEMICAL CO., d.b.a. Fiberfil, Appellee.
• Court: United States Court of Customs and Patent Appeals

174 USPQ 458, 463 F.2d 1122 (1972)

UNIVERSAL OIL PRODUCTS CO., Appellant, v. REXALL DRUG AND CHEMICAL CO., d.b.a. Fiberfil, Appellee.

Patent Appeal No. 8760.

United States Court of Customs and Patent Appeals.

August 3, 1972.

John T. Lanahan, attorney of record, for appellant; Sidney W. Russell, Arlington, Va., of counsel.

Paul R. Wylie, Robert L. Andersen, Los Angeles, Cal., attorneys of record, for appellant; Donald Diamond, Los Angeles, Cal., of counsel.

Before RICH, Acting Chief Judge, and ALMOND, BALDWIN and LANE, Judges.

LANE, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, reported in full at 164 USPQ 92 (1969), dismissing an opposition to the registration of PROCON for "reinforced synthetic resinous injection-molding materials in pellet or granular form."¹ We affirm.

The record indicates that appellee is a manufacturer of chemical products including thermoplastic polymeric materials used in injection molding processes. One of appellee's witnesses testified that appellee, through its Fiberfil division, produces fiberglass-reinforced thermoplastics in pellet and granular form and devises its trademarks on the basis of the nature of the thermoplastic polymer and the fiberglass content. The witness stated that the mark PROCON applies to reinforced polypropylene wherein the fiberglass content is in the SUPER CONCENTRATE range, i.e., about 80% fiberglass concentration. We agree with appellant that the description of goods in appellee's application for trademark registration is not limited to that specific material, Feed Service Corp. v. FS Services, Inc., 432 F.2d 478, 480, 58 CCPA 708, 710 (1970), and we make note of this testimony only in the way of background information.

Appellant is in the chemical process industry and manufactures, among other things, catalytic materials in pellet and granular form. It owns all the assets of Procon, Incorporated (hereafter Procon, Inc.), a company which the record indicates has been engaged in the construction and maintenance of oil and chemical processing plants under the mark PROCON.² It appears that Procon, Inc., performs these services on plants such as would produce the goods described in appellee's application.

Appellant contends that its opposition is predicated on both §§ 2(a) and (d) of the Lanham Act, 15 U.S.C. § 1052(a) and (d). In its notice of opposition, appellant alleged that:

The trade, the purchasing public and the customers and potential customers of Opposer and Opposer\'s said subsidiary, upon learning of Applicant\'s product, or products, marketed under the Trademark PROCON, are likely to be confused and misled into the belief that Applicant\'s goods are either manufactured and/or distributed by Opposer or Opposer\'s said subsidiary, Procon, Incorporated, or that the goods have been manufactured by Applicant under Opposer\'s supervision and specifications, whereby Opposer has been and will be damaged.

The board dismissed the opposition on two grounds. It first held that appellant "does not have the requisite interest to give it the standing to prevail herein." The board was of the view that notwithstanding the fact that Procon, Inc. is appellant's wholly owned subsidiary, it is independent of the parent corporation in various respects including control over the trademark and trade name PROCON. Appellant urges that it has a clear pecuniary interest in its subsidiary and that any damage to Procon, Inc., would result in damage to appellant. That is sufficient, appellant contends, for standing under § 13, 15 U.S.C. § 1063, which provides in pertinent part:

Any person who believes that he would be damaged by the registration of a mark upon the principal register may, upon payment of the required fee, file a verified opposition in the Patent Office * * *.

The board additionally held that even if appellant has standing to bring this opposition, it could not prevail since:

The construction activities of Procon are in no way related to synthetic injection molding materials, and * * * there therefore would be no occasion for a likelihood of confusion or mistake in the fields of trade in which the parties are involved.

The board held the fact that appellant markets catalytic materials in pellet and granular form to be "of no controlling importance since the mark or trade name `PROCON' is in no way connected with these products."

OPINION

I. STANDING

We agree with appellant that the board erred in its decision on this threshold issue. The board stated that:

We must consider all the facts presented to determine whether or not opposer exercises the prerequisite control over Procon in its use of its mark and trade name such as to give opposer a proper interest herein.

The test for resolving the standing issue implicit in that statement is, in our view, erroneous. Control over the mark or name relied upon is not determinative of standing to oppose. See Wilson v. Delaunay, 245 F.2d 877, 878-879, 44 CCPA 1019, 1021 (1957). Standing, within the meaning of § 13, supra, is found when the opposer establishes a real interest in the proceeding. Tanners' Council of...