E-Z Waist Co. v. Reliance Mfg. Co.

• Decision Date: 05 February 1923
• Docket Number: 1534.
• Citation: 286 F. 461
• Parties: E-Z WAIST CO. v. RELIANCE MFG. CO.
• Court: U.S. Court of Appeals — District of Columbia Circuit

286 F. 461

E-Z WAIST CO. v. RELIANCE MFG. CO.

No. 1534.

United States Court of Appeals, District of Columbia.

February 5, 1923

Appeal from the Commissioner of Patents.

J. W Milburn, of Washington, D.C., for appellant.

Earl F Pierce, of Chicago, Ill., for appellee.

Before SMYTH, Chief Justice, and ROBB and VAN ORSDEL, Associate justices.

SMYTH Chief Justice.

The Reliance Manufacturing Company sought registration of the trade-mark 'E-Z-ON' for work shirts. Opposition was interposed by the E-Z waist Company as the owner and user of the registered trade-mark 'E-Z,' applied by it to children's knitted waists, knitted and nainsook union suits, and sleeping garments, on the ground that the goods of both parties were of the same class, and that because of this the registration of the mark to the Manufacturing Company would be likely to lead to confusion. Applicant claims use of the mark since November 14, 1916, while the opposer's date is as far back as 1895. The opposer, therefore, is entitled to priority. It is admitted by the applicant that its mark and that of the opposer so nearly resemble each other that, if used on goods of the same descriptive properties, confusion might result; but it insists that work shirts, to which the one is applied, do not belong to the same class of goods as those upon which the other is used. The two tribunals of the Patent Office united in holding that the opposition was not well founded, and that the application for registration should be granted.

Section 5 of the Trade-Mark Act (33 Stat. 725; Comp. St. Sec. 9490) says that no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration, except in certain cases which are immaterial here.

This means that a mark by which the goods of the owner may not be distinguished from other goods of the same class shall not be registered. If the marks before us so nearly resemble each other that the mark of the applicant would not distinguish its goods from those of the opposer, it should not be registered.

The opposer is the pioneer user of the mark. We think manufacture of work shirts would come within the natural development of its business as a maker of children's waists, union suits, sleeping garments, etc. The goods belong to the same class and possess the same descriptive properties. We have said that the owner of a trade-mark will not be hampered or embarrassed in the legitimate extension of his business by the registration of the mark to another. Canton Culvert &amp Silo Co. v. Consolidated Car-Heating Co., 44 App.D.C. 491. In another case Mr. Justice Van Orsdel, speaking for this court, declared that the word 'class,' as used in the statute, means broadly a genus including as species any goods upon which the use of the same mark, when the goods are exposed side by side, would tend to mislead the purchasing public. The goods of the contending p...