WE Kautenberg Co. v. Ekco Products Company

• Decision Date: 22 January 1958
• Docket Number: Patent Appeal No. 6307.
• Parties: W. E. KAUTENBERG CO., Appellant, v. EKCO PRODUCTS COMPANY, Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

45 CCPA 761, 251 F.2d 628 (1958)

W. E. KAUTENBERG CO., Appellant, v. EKCO PRODUCTS COMPANY, Appellee.

Patent Appeal No. 6307.

United States Court of Customs and Patent Appeals.

January 22, 1958.

COPYRIGHT MATERIAL OMITTED

Kent W. Wonnell, Chicago, Ill. (Ellsworth M. Jennison, Washington, D. C., of counsel), for appellant.

Roy E. Petherbridge and Stanley Hoods, Chicago, Ill., for appellee.

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

JOHNSON, Chief Judge.

This is an appeal in an opposition proceeding from the decision of the Commissioner of Patents, 109 USPQ 107, speaking through the Assistant Commissioner, reversing the decision of the Examiner of Interferences which dismissed the opposition and which held that applicant (appellant here) was entitled to the registration sought.

The stipulated facts of record indicate that appellee is primarily engaged in the manufacture and sale of household utensils, including baking pans, kitchen tools, cutlery and household mops. Appellee was incorporated in 1903 under the name of "The Edward Katzinger Company" and began using the mark "Ekco" (obviously taken from the name of the company) in connection with kitchen and household tools and utensils in 1904. In 1944, the corporate name was changed to "Ekco Products Company," which name is presently that of appellee. In the latter part of 1951, appellee acquired the assets of the Minute Mop Company of Chicago, which at that time had been engaged in the manufacture and sale of mops and various other cleaning implements, including brushes, scouring pads and the like, since July, 1941. The business of the Minute Mop Company has been continued since the date of acquisition by appellee as a division of the latter. Appellee had not, before its acquisition of the Minute Mop assets, ever manufactured or sold mops, brushes and the like. It was further stipulated that, since 1944, appellee has spent upwards of 5 million dollars in advertising its products under the trade-mark "Ekco."

Appellant was organized as the "W. E. Kautenberg Company" in 1922 and has been continuously since that time in the business of manufacturing and selling mop holders, mops, mopsticks, cellulose sponge mop units, etc. Its earliest use of "Wekco," the mark sought to be registered, was in 1949. It was stipulated that appellant has spent "many thousands of dollars" in advertising and the like in connection with the marketing of "Wekco" products.

Appellee, in opposing this registration, relies on its registrations of "Ekco" and "Ekcoware"¹ for kitchen cutlery, pots, pans, kettles, shovels, ice cream dishes and molds and other kitchen utensils. While its use of "Ekco" in conjunction with "Minute Mop" on the packages of its mops has been set forth in the record, it does not rely on such use in its opposition.

Reduced to its simplest terms, this case presents the question of whether appellee, owner of the mark "Ekco" as applied to kitchen utensils generally, may successfully oppose the registration to appellant of the mark "Wekco" as applied to mops and related products (the latter mark having been first used subsequent to the former) based upon the confusion-in-trade clause of § 2 of the Lanham Act, 60 Stat. 428 (1946), 15 U.S.C.A. § 1052 (1952).

The Assistant Commissioner was of the opinion that mops and mop heads "are a `normal,' `usual' or `expected' expansion of opposer's line of houseware items" and that, therefore, there was likelihood of confusion. We feel constrained to agree with the decision rendered below. Though appellant's mark has a "W" added to "Ekco," we are of the opinion that this is not sufficient to distinguish its mark from the "Ekco" of appellee. The marks are similar in appearance, sound and spelling and would not be likely to be distinguished by the average purchaser of the merchandise involved. Secondly, the marks were each derived from the initials of the corporate names of appellant and appellee² and present a strange and unusual combination of letters and should be classed, therefore, in the category of coined or fanciful names.

It is well settled that coined or fanciful marks should be given a much broader degree of protection than words in common use. Intercontinental Mfg. Co. v. Continental Motors Corp., 230 F. 2d 621, 43 C.C.P.A., Patents, 841. As stated by Callman, 3 Callman, Unfair Competition and Trade-Marks (2d ed. 1950) at 1504:

"* * * If the mark is weak, its protection may have an "extremely narrow scope"; and may indeed be limited to similar goods similarly marketed. Only the strong mark will be protected against infringements³ arising out of its use in connection with noncompeting goods. * * *"

It is in the area of noncompeting goods that the often discussed concept of the "natural expansion of business" arises, a concept relied upon by the Assistant Commissioner in her decision sustaining the opposition below. This concept has been said to have two aspects: (1) the possibility that the trade practices of the second user may stain the owner's reputation in the minds of his customers; and (2) the possibility that at some time in the future he may wish to extend his business into that market which the second user has begun to exploit. See S. C. Johnson & Son, Inc., v. Johnson, 2 Cir., 1949, 175 F.2d 176, 179, 180. The first aspect, which represents merely another facet of the subject of confusion-in-trade, is the one with which we are here concerned. The confusion involved, of course, is not a confusion of goods but a confusion of business; the deceived customer here buys one party's product in the belief that it originates with the other party or that it is in some way affiliated with the other party's business. 3 Callman, supra, at p. 1539. He does this...