author: GRAHAM, Presiding Judge. LENRQOT, Associate Judge

text:
    UNRUH v. SNYDER. MAYTAG CO. v. UNRUH (No. 2759).
    Patent Appeal Nos. 2758, 2759.
    Court of Customs and Patent Appeals.
    June 1, 1931.

      LENROOT, Associate Judge, dissenting.
    Joseph H. Milans and Calvin T. Milans, both of Washington, D. C., for appellant Unruh.
    Wallace R. Lane, of Chicago, HI. (William S. Hodges, of Washington, D. C., and Frederick F. Mason, of Chicago, '111., of counsel), for appellant Maytag Co.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

These are cross-appeals from the decision of the Board of Appeals of the United States Patent Office, arising out of an interference declared between the application of Cornelius C. Unruh, filed in the Patent Office June 18, 1925, for an improved dolly for washing machines, and the eopending application of the Maytag Company, assignee of Howard F. Snyder, deceased, which was filed in the Patent Office on June 14, 1922. The Unruh application is for a reissue of his patent No. 1,459,483, granted June 19, 1923, on an application filed January 22, 1923.

The particular issue here involved arises out of a motion to dissolve the interference made by the party Unruh, and, as heard by us, involves only counts 1, 12, 13, and 14 of the interference, which are as follows:

“1. The method of deansing fabrics in a tub consisting in agitating a washing fluid in such a way as to create positively driven violently flowing currents moving away from and back to the plane of the source of agitation, and also around the tub in one direction in a plane approximately parallel with the plane of agitation and then causing it to move away from and back to the plane of the source of agitation and in a reverse direction in a plane parallel with the plane of agitation so as to bodily and forcibly cause the fabrics in the tub to travel in substantially the same paths as the fluid, whereby thorough cleansing of the fabrics is effected without material contact with rubbing surfaces.”
“12. An agitating member for a washing machine comprising a cup-shaped disk having a frusto-conieal portion rising from the center thereof, the vertical elements of which are concave so that the surface of said portion merges into the surface of said disk, and a round upwardly tapering portion projecting above said frusto-conieal portion and terminating in a rounded surface, and narrow radial wings projecting from said latter portion and extending along the sides thereof and across the surface of said disk and having rounded outer edges merging into the concave surface of said disk.
“13. A dolly for a washing machine comprising an annular trough, a stem rising centrally from said trough and having a plurality of circumferentially spaced radial wings projecting therefrom and extending along its sides and across the surface of said trough the top surface of said wings above said trough curving downwardly and inwardly.
“14. A rotatable dolly for a washing machine adapted to be disposed in a liquid containing receptacle comprising a dish-shaped member having a central upstanding tapered stem with a rounded- upper end, ribs extending across said dish and upwardly along the side of said stem and having rounded upper edges merging into the rounded surface of said stem.”

The contention made by Unruh in the tribunals below and here is that the counts in question do not read on the Snyder disclosure in the application involved in these interference proceedings. The interference, as originally declared, comprised thirty-one counts, as to which the preliminary statement of the junior party Unruh alleged no date prior to the party Snyder’s filing date. Thereupon notice was given to Unruh that judgment on the record would be issued against -him if he did not show cause. In reply to this, Unruh filed his motion to dissolve, which was granted as to certain of the counts and denied as to the remainder, including the counts now at issue. Three additional eounts were added by Snyder by amendment, and testimony was taken on these by Unruh, who claimed a prior date of conception. The Examiner of Interferences, on consideration of the testimony taken by Unruh, approved the finding by the Law Examiner as to Snyder’s right to make the counts, and awarded priority of invention of the subject-matter in controversy to Snyder.

The Board of Appeals modified the decision of the Examiner of Interferences, and awarded priority to Snyder as to counts 1 and 14, and to Unruh as to counts 12 and 13.

Unruh contended that Snyder had no right to make count 1, because his application was filed June 14, 1922, for certain alleged improvements in a machine, and that his amendment injecting a process claim was not filed until more than two years later, that is, July 19, 1924, which, it was claimed, barred his right to make the same. As to this matter, the Board of Appeals held that the process was disclosed in Snyder’s original application, and that his failing to make his process claim for two year’s was not fatal to his right to make the same.

As to count 12, the Board of Appeals held that Snyder’s disclosure did not show the wings of the dolly to have “rounded edges merging into the concave surface of said disk.”

As to count 13, the Board of Appeals held that the Snyder disclosure did not show “the top surface of said wings above said trough curving downwardly and inwardly.” While the Board conceded that the top surfaces of said wings were joined to the straight inclined surface which tapered toward the cup of the disk by a curve rather than au angle, the Board was of opinion this was too small a part of the top surface of the wing to fairly support the count. It further held that, while it considered the Snyder disclosure a full equivalent of the Unruh device, the question of equivalency could not be considered in determining Snyder’s right to make this count of the issue.

As to count 14, ¿he Board of Appeals held that the same read fairly on Snyder’s disclosure, noting particularly that the upper edges of the ribs in Snyder’s disclosure were rounded or curved where they merged into the rounded surface of the stem of the dolly.

These conclusions of the Board of Appeals fairly state the issues as they are now before us, and, although counsel have filed comprehensive and extended briefs in the matter, we are of opinion that the issues are quite simple, and can be easily disposed of.

We agipe with the Board of Appeals as: to its construction of count 1 of the interference. The original application of Snyder, together with the drawings accompanying ¿he same, plainly show ¿he movement of a washing fluid in the container as set out in count 1. It seems to be the settled law that Snyder’s failure to present a process claim for more than two years after his application was filed does not defeat his right to make the claim, if his original disclosure was suf7 ficient upon which to base it. Counsel for Unruh cites, in this connection, Chapman v. Wintroath, 252 U. S. 126, 40 S. Ct. 234, 64 L. Ed. 491, in which the question arose as to the right of a party to file a divisional application, copying the claims of a patentee and claiming a combination shown by the original disclosure. The court held that such claim, in such divisional application, must be made within two years from date of issuance of the patent in question.

No sueh question is involved here. The only point made is that Snyder delayed for over two years after filing his original device application before adding a process count. There is no statutory or other limitation affecting this right so far as we are advised. A case in point is Williams Co. v. Miller et al. (C. C.) 107 F. 290, 1901 C. D. 517.

As to count 12, we are unable to agree with the conclusion of the Board of Appe'als. The Law Examiner pointed out in his decision “that the count did not specify that the rounded part of the outer edges merged into the eoneave surface of the disk,” and that, the upper corner of the wings being rounded, the wings disclosed the structure covered by the language of the count. We concur in this view of the matter. The outer surfaces of the wings are rounded, and merge into the concave-surface of the disk.

We are also unable to agree with the Board of Appeals as to its construction of count 13. The top surface of the Snyder wing shows its outer extremity, to be a rounded corner, then a horizontal surface, and then a rounded comer connecting this horizontal surface with an inclined surface which extends downward and inward to the cup of the disk. Wo are of opinion the Snyder disclosure is sufficient for the purposes of the language in the count, “the top surface of said wings above said trough curving downwardly and inwardly.” The extent of the curve is not made an essential part of this count.

As to count 14, we find ourselves in agreement .with the conclusion of the Board of Appeals. The count calls for “ribs extending across said dish and upwardly along the side of said stem.” The Snyder disclosure shows such a construction. The count does not recite to what point along the stem these ribs shall extend, and henee the contention that is made that they shall extend to the top thereof is not one that is fairly inferable from the count itself, which must be the measure of the rights of the parties herein.

We therefore conclude that priority should be awarded to the Maytag Company, assignee, on each of the counts 1, 12, 13, and 14 of the interference, and the decision of the Board of Appeals is reversed as to counts 12 and 13, and affirmed as to counts 1 and 14, and priority will be awarded accordingly.

Modified.

LENRQOT, Associate Judge

(dissenting).

I am compelled to dissent from the conclusion of the majority reversing the decision of the Board of Appeals as to counts 12 and 13, and awarding priority as to said counts to the Maytag Company, assignee.

Count 12, which is quoted in 'full in the majority opinion, includes as an element, in the description of the radial wings therein referred to, the following: “And having rounded outer edges merging into the concave surface of said disk.” It is clear to me that Snyder, neither in his specification nor drawings, discloses this element. His drawings show the outer edges of his radial wings to be vertical and horizontal, except for a rounded corner uniting the horizontal and vertical edges. Upon this point the Board said:

“ * * s The law examiner points out that the edges merge into the disk at 55 in Pig. 4 of Snyder and are rounded at their upper ends. He held that the “count does not specify that the rounded part of the outer edges merge into the concave surface of the disk.”

“We are unable to concur in this holding of the law examiner. In our opinion the count calls for a construction in which the rounded outer edge merges into the concave surface of the disk. It is not fairly shown in appellant’s construction where a straight outer edge merges into the concave surface of the disk and is surmounted by a rounded comer. We accordingly find that Snyder cannot make count 12.”

I am clearly of the opinion that the Board was correct in its construction of this element, and that its decision awarding priority as to count 12 to Unruh should be affirmed.

With regard to count 13, which is also quoted in the majority opinion, in describing the radial wings therein referred to, the element is stated of “the top surface of said wings above said trough curving downwardly and inwardly.” With regard to this count the Board said, speaking of Snyder’s disclosure: “* * B While it is true that the straight horizontal upper edge or *surfaee of the wing is shown as joined to the straight inclined surface at 56 by a curve rather than an angle, this curve constitutes too small a part of the top surface of the wing to fairly support the count. K * B ”

With respect to this element, while it is fully supported by the disclosure of Unruh’s application, from which both counts 12 and 13 were copied, Snyder’s disclosure shows a straight horizontal line of the top surface of the wing and a downwardly extending straight line, a short, slight curve, almost imperceptible in the drawings, connecting) said lines together. The said horizontal and inclined straight lines appear, from the drawings, to form more than 96 per cent, of the top surface of the wing, and the slight curve that is shown merely serves to blend said lines, thereby avoiding an angle where said straight lines meet. I am unable to see how, under any proper rule of interpretation, Snyder can be said to disclose “the top surface of said wings above said trough curving downwardly and inwardly.” (Italics mine.) I therefore think that the Board should be affirmed in its award of priority as to this count to Unruh.

With regard to both of said counts, we cannot assume that the differences between the disclosures of Unruh and Snyder are merely differences in design having no functional significance. When we consider the nature and purpose of the device here in issue, the differences in function between the blades disclosed by Unruh and those disclosed by Snyder are, to my mind, clearly apparent, and, this being true, the counts, should be more strictly construed than if it were merely a matter of choice of design having no functional significance.

The decision of the majority upon priority as to these particular counts is of no importance, except to the parties here involved, but I greatly fear that the holding of the majority, considered in the light of the facts here involved, will be very embarrassing in the future and will open the door, in interference eases, to awards of priority to those not entitled to them.


source: Caselaw Access Project

author: GRAHAM, Presiding Judge.

license: Public Domain

text:
    FEDERAL MILL & ELEVATOR CO., Inc., v. PILLSBURY FLOUR MILLS CO.
    Patent Appeal No. 2714.
    Court of Customs and Patent Appeals.
    May 25, 1931.
    Edward S. Rogers, Allen M. Reed, and William T. Woodson, all of Chicago, 111. {Browne & Phelps and Thos. L. Mead, Jr., all of Washington, D. C., and Chas. C. Reif, of Minneapolis, Minn., of counsel), for appellant.
    Williamson & Williamson, of Minneapolis, Minn. (James F. Williamson, of Minneapolis, Minn., and James A. Hoffman, of Washington, D. C., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Asspeiate Judges.
   GRAHAM, Presiding Judge.

The appellee, Pillsbury Flour Mills Company, filed its application in the United States Patent Office on March 4, 1927, for the registration of the trade-mark “Lucky Strike,” to be used on wheat flour, alleging in its application that it had continuously used and applied the same to its said goods since February 9, 1911.

The appellant, Federal Mill & Elevator Company, Inc., duly filed notice of opposition thereto, basing its opposition upon its ownership and use of its trade-mark “Lucky,” which said trade-mark was registered in the United States Patent Office on September 22,1914, as serial No. 99,864, and which said trade-mark, it alleged, was still in use and the property of the opposer.

Both parties took testimony. The appellee introduced evidence to the effect that on November 1, 1910, a certificate of registration, No. 80,091, was issued to the Geo. Tileston Milling Company for the trade-mark “Lucky Hit,” to be used in connection with the sale of wheat flour. This testimony also shows that the said trade-mark is now owned by the Great Northern Flour Mills Company, a corporation doing business under the laws of the state of Minnesota, and that the Great Northern Flour Mills Company used this mark continuously up until the year 1927, and still owns the same.

The Examiner of Interferences dismissed the opposition, and this decision was affirmed on appeal to the Commissioner of Patents. Both tribunals in the Patent Office based their decisions upon the ground, in principal part, that the use of the appellant’s mark “Lucky” was concurrent with the use of the mark “Lucky Hit” by the Great Northern Flour Mills Company and its predecessor, for a considerable period; that no confusion resulted from the use of the said two trade-marks; that no actual confusion between the trade-marks “Lucky Hit” and “Lucky”.is shown by the record; that therefore there is no more likelihood of confusion between the use of the trade-marks “Lucky Strike” and “Lucky” than there would have been between the trade-marks “Lucky” and “Lucky Hit”; that, because of these facts, the appellant cannot claim the exclusive right to the field which might be covered by the use of the word "Lucky” in connection with other words as applied to wheat flour, but must be willing to have his trade-mark “Lucky” rfcstricted to its narrow scope.

In tMs connection the First Assistant Commissioner, in Ms written decision, makes the following statement:

“ * * * Under these conditions it is thought proper to hold that the status of the parties should not be disturbed. If the op-poser company were now given the exclusive right to use the word “Lucky,” to the extent of preventing its use in combination with the word “Strike,” it would in a large measure obtain the benefit of the good will, which, without its objection, the applicant company has built up during all these years for its product. As was said in connection with the Victor Stove Company v. Hall-Neal Furnace Co., 58 App. D. C. 65, 24 F.(2d) 893, 374 O. G. 252.
“Such a result would be plainly inequitable.” See, also, France Milling Co., Inc., v. Washburn-Crosby Co., Inc. (C. C. A. 2d Cir.) 7 F.(2d) 304, 348 O. G. 269.

The conclusion reached by the Patent Office tribunals is not in harmony with our recent decisions in similar eases. The op-poser’s goods and the goods of the applicant are, admittedly, of the same descriptive properties. There can be no doubt .that confusion might result in the minds of purchasers from the use of the trade-marks “Lucky” and “Lucky Strike” concurrently. If this be true, then the words “Lucky Strike” cannot be registered, under the express language of the statute. In such ease, the question whether the trade-mark “Lucky Hit” was registered before the registration of the trade-mark “Lucky,” and whether such marks have been used concurrently, is immaterial to tMs issue.

We discussed similar issues in the following cases: Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; California Packing Corp. v. Tillman & Bendel, 40 F.(2d) 108, 17 C. C. P. A. 1048; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 699; 17 C. C. P. A. 906; Standard Oil Co. v. Epley, 40 F.(2d) 997, 17 C. C. P. A. 1224; MacEachen v. Tar Products Corp., 41 F. (2d) 295, 297, 17 C. C. P. A. 1264.

In the American Fruit Growers’ Case cited we said:

“ * .* * Appellee, however,.is not injured by the registration of appellant’s mark, and, while it may be that appellant is not the originator of a representation of a goose for use in a trade-mark, neither is appellee. Can it be said then that appellant is so narrowly restricted in the use of its mark that it is not entitled to the protection afforded by the statute? We think not. Accordingly, the goods of the parties possessing the same descriptive properties, the sole question for determination is whether the mark of appellee is confusingly similar to that of appellant. If it is, registration ought to be denied. If it is not, registration ought to be granted.”

Further applying the general rules involved in such cases, we said in the MacEaehen Case, supra:

“While it is the rule that prior registrations may be looked to in considering whether the trade-mark use of a word has become so common or general as to affect the question of probability of confusion by an additional registration of a somewhat similar mark, nevertheless, in the effort to preserve what we conceive to be the real purpose of the trademark registration law, we tMnk it should be held that an applicant for an opposed registration generally may not rely upon pri- or registrations of marks resembling Ms and opposer’s as a complete defense to the opposition. The public has an interest wMeh must be preserved, and it is not safe to dismiss an opposition proceeding wholly upon prior registrations, if it appear that the marks are M fact of close resemblance. It may be true that in some eases the use and registration of some words have become so common and general as that an additional registration might be thought to do no more at most than create a situation of 'confusion worse confounded,’ but, upon the whole, the safer rule, and the one wMch appears to us to be truly interpretive of the law, is to reject registration when there is confusable conflict between the words at issue themselves.”

Appellee contends that appellant’s mark was not alone the word “Lucky,” but was a design, the principal part of which was the : Swastika emblem, in connection with the word “Lucky.” He argues from tMs that no one would confuse the two marks, on account of their dissimilarity of appearance. The appearance of the mark is but one factor which may cause confusion. This court has uniformly held that the test of sound, as well, should be applied. Celanese Corp. v. Vanity Fair Silk Mills, 47 F.(2d) 373, 18 C.C. P. A. -; Cluett, Peabody & Co. v. Wright, 46 F.(2d) 711, 18 C. C. P. A.-; Postum Cereal Co. v. Enzo Jel Co., 41 F. (2d) 101, 17 C. C. P. A. 1258; Malone v. Horowitz, 41 F.(2d) 414, 17 C. C. P. A. 1252; Apex Elec. Mfg. Co. v. Landers et al., 41 F.(2d) 99, 17 C. C. P. A. 1184; California Cyanide Co. v. American Cyanamid Co., 40 F.(2d) 1013, 17 C. C. P. A. 1146.

It seems to ns that the introduction of the proof as to the prior registration of the trade-mark “Lueky Hit,” instead of being an aid to appellee’s cause, is in itself an unfavorable answer to his contention that he is entitled to registration. In these opposition proceedings, we have held we may investigate, not only the issues made by the parties, but the registrability of the mark involved. California Cyanide Co. v. American Cyanamid Co., supra; Etablissements Rene Reziers v. Reid, Murdoch & Co., 48 F.(2d) 946, 18 C. C. P. A.-. Irrespective of the appellant’s trade-mark “Lueky,” it will be conceded, we believe, that appellee’s trade-mark ■“Lucky Strike” invades the field occupied by the trade-mark “Lucky Hit.”

The decision of the Commissioner of Patents is reversed, and an order'will be entered sustaining the opposition.

Reversed.


text:
    CALIFORNIA CANNERIES CO. v. LUSH’US PRODUCTS CO.
    Patent Appeal No. 2763.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    Edward D. Jones, of Chicago, 111. (Eugene E. Stevens, of Chicago, 111., of counsel), for appellant.
    Bertha L. MacGregor, of Chicago, 111. (Charles R. Allen, of Chicago, HI., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

California Canneries Company, the appellant, filed opposition in the United States Patent Office to the application of the appellee, Lush’us Products Company, to register, as a trade-mark on canned peas, a mark which is substantially as follows: The picture of a chef with jacket and cap, holding a dish of peas in one hand and the cover of the dish in the other. On the mark, in conjunction with this picture of a chef, are the two words “Lush’us Peas” in heavy-faced black type.

The applicant was required by the Patent Office to disclaim the exclusive right to the use of the words “Lush’us” and “Peas,” and it hence appears from the record that the only part of the mark upon which the applicant would be entitled to exclusive use would be the picture of a chef, as heretofore described.

The opposer claimed to be the owner of a trade-mark which is in evidence, and which consists of the words “Lusk’s Luscious,” which was registered under the act of March 19, 1920 (15 USCA § 85), certificate No. 227,714, on May 10, 1927. Opposer claimed, and established by its proof that it had been using this mark on food products, particularly for canned fruits and canned vegetables, since on or about December 1, 1921, in interstate commerce.

The applicant claimed to have been using its trade-mark for about a year prior to the talcing of testimony, which was on May 6, 1929, on peas, canned fruits, and vegetables, in interstate and intrastate commerce.

The Examiner of Interferences dismissed the notice of opposition, basing his decision upon the proposition that the word “Luscious” used by the opposer was descriptive, and that it was not owned by the opposer within the meaning of the a.ct of 1905 (15 USCA §§ 81-109); that the opposer had based its opposition upon tbe confusion in trade clause of section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), and could not qualify as an opposer for thiá reason, under section 6 of said act (15 USCA § 86). Proceeding on this premise, he concluded that no statutory damage to the opposer could exist, and therefore dismissed the opposition. The Commissioner of Patents, on appeal, affirmed this decision, and held, in so doing, that that part of the op-poser’s mark, namely, “Luscious,” was descriptive, that the applicant was also entitled to use this word, even misspelled, and that, these being the only features of similarity between the marks, the opposer could not prevail.

There were introduced in evidence, on behalf of the opposer, certified copies of certain certificates of registration in the United States Patent Office. One of these, No. 88,-830, registered October 29, 1912, by Berdan ■& Go., shows a picture of a chef, with cap .and jacket, holding a spoon, and with the word “Chef.” • This mark is used on canned vegetables and other food products. Another, No. 101,617, registered January 5, 1915, by Berdan & Co., shows a similar picture of a chef, in a slightly different position, with the word “Chef,” and is used on cereals and the like. No. 117,814, registered August 7, 1917, shows a similar picture of a chef, with the word “Chef,” and is used by Berdan & Co., .as a trade-mark on cereals, etc. No. 143,661, registered June 7, 1921, to the Lake Odessa Canning Company, shows the picture of a chef, in cap and jaeket, holding a dish of peas, and is used on canned peas and the like. Several other registrations'are also in evidence, showing the registration of the word “Chef” in combination with some other word, all of which registrations antedate any use made of its mark by the appellee.

Many issues are raised here which it will not be necessary to discuss. The question of •the effect'given to disclaimers in the United States Patent Office has been discussed in the briefs quite fully. However, we believe the practice of the Patent Office in requiring such disclaimers, without requiring the disclaimed words to be eliminated from the label, has been fully discussed and approved by the Supreme Court in Estate of Beckwith v. Commissioner of Patents, 252 U. S. 538, 40 S. Ct. 414, 64 L. Ed. 705. In the ease cited, the Supreme Court reviewed the somewhat conflicting decisions of the courts with respect to the effect of these disclaimers, but •cgme to the conclusion, after such discussion, that the practice of the Patent Office was right, and that no apparent necessity existed for the elimination of the words which were, disclaimed. We therefore conclude that this is the settled rule in this jurisdiction. We so indicated in Warner-Patterson Co. v. Malcomb, 39 F.(2d) 274, 17 C. C. P. A. 984.

We have had occasion, since our jurisdiction was first established in this class of eases, to construe the provisions of the TradeMark Act of February 20, 1905, particularly sections 5, 6, and 7 thereof (15 USCA §§ 85-87), on several occasions. The question has been quite frequently before us as to the functions and duties of the tribunals of the Patent Office in opposition proceedings brought under said section 6 (15 USCA § 86).

In California Cyanide Co. v. American Cyanamid Co., 40 F.(2d) 1003, 1005, 17 C. C. P. A. 1198, this court, speaking through Hatfield, J., dismissed section 7 of’said act (15 USCA § 87), and concluded: “Accordingly, the Patent Office tribunals may, in an opposition proceeding, dispose of any question relating to the proposed registration that might properly arise in an ex parte ease.” In that ease the opposer had been using, as a trade-mark the words “Calcium CyanidS,” and the registrant was attempting to register the word “Caleyanide.” In that case, as here, the Examiner of Interferences held that the opposer, having a descriptive mark, could not oppose the registration, and this holding was reversed by the Commissioner of Patents on appeal; the Commissioner also holding that the mark proposed to be registered, “Caleyanide,” was descriptive, and could not be registered. We there approved the holding of the Commissioner, and held that the statutory right to oppose the registration of a trade-mark did not depend' upon the exclusive ownership by the opposer of a similar mark, but that it was only necessary that he show he would probably be damaged by the registration thereof.

Another case in point is Bookman v. Oakland Chemical Co., 40 F.(2d) 1006, 1008, 17 C. C. P. A. 1213. In that ease the appellant was endeavoring to register as a trade-mark the word “Peroxogen,” and the opposer had been using the trade-mark “Dioxogen” on goods of the same descriptive properties, which mark had been caused to be duly registered in the United States Patent Office. There the argument was again made that the opposer could not invoke the confusion in trade clause of section.5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), as the basis of-its opposition, and that, as the opposer could not show statutory injury by said registration, the appellant was entitled to have the mark registered, which is the argument here. There this court said:

“The question of the descriptiveness of appellant’s mark, in view of the quoted definitions, requires no discussion. Obviously, if the word ‘Dioxogen’ is descriptive, the word ‘Peroxogen’ is none the less so. If neither is descriptive, then, in our opinion, the use by appellant of the mark ‘Peroxogen’ on goods possessing the same descriptive properties as those on which appellee uses its registered mark ‘Dioxogen’ would be likely to cause confusion in the mind of the public and to deceive purchasers.

“The right to oppose the registration of a trade-mark is not limited to those who possess exclusive ownership of a similar mark; nor are the Patent Office tribunals limited, in an opposition proceeding, to a consideration of the precise questions presented in a notice of opposition. On the contrary, in such a proceeding, they may dispose of any question relating to the proposed registration that might properly be considered in an ex parte, case.”

We have recently reiterated the doctrine that in opposition proceedings the registrability of the mark is directly involved. Etablissements Rene Beziers v. Reid, Murdoch & Co., 48 F.(2d) 946, 18 C. C. P. A. -; Federal Mill & Elevator Co. v. Pillsbury Flour Mills Co., 49 F.(2d) 1042, 18 C. C. P. A.-.

When the opposition proceeding. herein was begun, the application of the appellee for registration was pending in the Patent Office, and was subject to any action which might lawfully be taken there. It bad gone to publication in the Official Gazette, but no certificate bad been issued. Therefore, it was within the power of the Commissioner of Patents to allow,or disallow the issuance of the certificate of registration. His power to do this did not depend upon the opposition. However, when the opposition- proceedings were begun, the first question presented to the tribunals of the Patent Office, under section 7 of the Trade-Mark Act of 1905 (15 USCA § 87), was “to determine the question of the right of registration to such trade-mark.” The appellant bad disclaimed the use of the words “Lush’us” and “Peas.” It is obvious, from the registrations appearing in the record, that the picture of a chef holding a dish of peas was already in use, as a trade-mark, by many other registrants. In view of this situation, it is plain that the appellant was not entitled to registration of its mark. There was no part of it which had not been disclaimed, but which was the subject of registration to others already in the field. This being true, it becomes unimportant to determine the many questions which are raised as to the validity of appellant’s mark.

To register the proposed mark of the appellee would produce confusion in trade, irrespective of appellant’s use of its mark. The statute was not intended to promote such confusion, but to prevent it. Therefore, in the proceedings of the tribunals of the Patent Office, and in the exercise of our jurisdiction, there should be constantly kept in mind the objects of the statute, which are the promotion of the interests of the trade and commerce of the country, and the protection of trade-marks which are lawfully used or owned by those engaged in such trade and commerce.

The decision of the Commissioner of Patents is reversed, and an order will be entered denying appellee’s application for registration.

Reversed.


author: GARRETT, Associate Judge.

text:
    WEYENBERG SHOE MFG. CO. v. HOOD RUBBER CO.
    Patent Appeal No. 2756.
    Court of Customs and Patent Appeals.
    May 27, 1931.

      Casanave Young, of Milwaukee, Wis. (George W. Wright, of Washington, D. C., of counsel), for appellant.
    Charles C. Gammons, of Boston, Mass., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and .LENROOT, Associate'Judges.
   GARRETT, Associate Judge.

This is a trade-mark opposition proceeding in which appellee, Hood Rubber Company opposes the registration by appellant, Weyenberg Shoe Manufacturing Company, •of a mark comprising the words “Red Arrow” imposed upon a representation of an arrow, which representation has in the feathered portion thereof two concentric circles, within the smaller of which is placed the 'letter “W.”

The mark sought to be registered is stated to have been used by appellant for leather shoes continuously since August, 1923. The ■application was filed March 29,1928.

Appellee, in opposing, relies upon certain registrations by it of marks for use on rubber boots and shoes, rubber overshoes, and rubber sole canvas shoes, which marks have been placed in evidence. The first of these, which 'bears the registration date of January 29," 1907, is for two arrows crossed diagonally; •the seeónd is for the symbol of a single arrow, registered February 12, 1907; a third ¡is for a double-headed arrow having the word “Hood” inserted between the heads, the word «being crossed by the figure of an arrow. This was registered March 23, 1926, the word “Hood” being disclaimed “except in the particular connection and association in which it appears. * * * “The fourth registration, under date of July 6, 1926, is for the word “Arrow,” unaccompanied by any symbol, the letters being perpendicularly arranged.

Use of these marks by appellee on the goods described is shown by the proof to have covered a long period, antedating any use by appellant of its mark.

The Examiner of Interferences held the goods of the respective parties to be of the same descriptive properties, citing Boston Rubber Shoe Co. v. Abramowitz, 47 App. D. C. 199; and also held that the resemblances of the marks “predominate over the differences.” Registration was refused, and, upon affirmation of his decision by the Commissioner of the United States Patent Office, the appeal was taken to this court.

We think there was no error in the decision appealed from.

While in the Abramowitz Case, supra, the Court of Appeals of the District of Columbia did not specifically hold “rubber boots and shoes” to be' of the same descriptive properties as “leather shoes,” deciding the issue rather upon the identity of the marks, it did say:

« .s * * We are disposed to hold that they [the marks] are used upon goods of the same descriptive qualities within the provisions of the trademark law.”

Attention may properly be directed to decisions of this court rendered in other eases since the decisions of the tribunals of the Patent Office in the instant case.

In Goodrich Co. v. Hockmeyer et al., 40 F.(2d) 99, 17 C. C. P. A. 1068, we held men’s, women’s, and children’s knickerbockers and other articles of wearing apparel enumerated in Hoekmeyer’s registration to be of the same descriptive properties as boots 'and overshoes of rubber and fabric, and directed the cancellation of a mark “Zip-On” on account of its resemblance to the mark “Zipper.”

In the recent ease of Cluett, Peabody & Co., Inc., v. Wright, 46 F.(2d) 711, 18 C. C. P. A. -, it was held that leather belts were of the same descriptive properties as belts made of fabric and used largely as bathing belts. It was also there held that the mark “Air-O” so closely resembled “Arrow” as to render the former subject to cancellation under proceedings begun by the owners of the latter.

' In both of the foregoing decisions authorities are cited.

It may be true, as argued iu the very good brief of learned counsel for appellant, that the goods here involved are not of the same species. That depends upon the meaning given to the word “species,” which, it may be said, is not found in section 5 of the TradeMark Registration Act of February 29,1905 (15 USCA § 85). It can hardly be successfully maintained, however, that the goods are not of the same class, under the construction given that word by the courts, and, being of the same class, under our decision in Cheek-Neal Coffee Company, etc., v. Hal Dick Manufacturing Co., 49 F.(2d) 106, 17 C. C. P. A. 1193, 1194, and numerous other eases, they are of the same descriptive properties.

Appellant’s words are “Red Arrow” placed upon a symbol of an arrow. It is stated in its application that the symbol is not limited to any particular color. It is familiar law that in trade-mark procedure a symbol must be given the same meaning as the word which tells what the symbol is.

The issue here, therefore, is between “Arrow” and “Red Arrow” to be applied to goods of the same descriptive properties.

Attention has been directed here, as in many other eases coming before us, to the alleged fact that there have been numerous registrations to other parties of the words and symbols at issue, some of them apparently for use on goods of the very character here involved. We have not traced this matter, because that fact, even when shown, is not of aid to one seeking a registration.. American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 17 C. C. P. A. 996.

The soundness of the rule there stated must be obvious to all upon full consideration when it is remembered that one purpose of the Trade-Mark Registration Act is to aid legitimate commerce by preventing confusion of goods either as to origin or in their sale. If a confused situation already exists, that should not be held to justify an act which would confuse still further. Whatever the rule in eases in equity involving unfair competition, multiplicity of registrations cannot, properly be of weight in the statutory proceeding relating to registration., American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F. (2d) 696, 17 C. C. P. A. 996.

We agree with the holdings of the tribunals of the Patent Office that, by reason of the close resemblance of the marks, confusion would 'likely result from their application to goods of the same descriptive properties. .

The decision of the. Commissioner of Patents is affirmed.

Affirmed.


author: BLAND, Associate Judge.

text:
    CELOTEX CO. v. BRONSTON BROS. & CO., Inc.
    Patent Appeal No. 2886.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    See also 49 F.(2,d) 1951, 1953.
    Charles M. Thomas, of Washington, D.. C., Samuel E. Darby, Jr., and John S. Bradley, both of New York City, and William E.. Seaver, of Washington, D. C., for appellant.
    Before GRAHAM, Presiding Judge, and'. BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This is an appeal from a decision of the-Commissioner of Patents affirming the decision of the Examiner of Interferences, dismissing the opposition and adjudging that’ the applicant was entitled to the registration of. its trade-mark.

The trade-mark of opposer is “Celotex” and the trade-mark of the applicant is“Mametex.” Both, marks are applied to wall hoard.

The Celotex Company was organized in 1920 and began the manufacture of .wall board known as “Celotex” in 1921 and has increased its production from 18,000,000 square feet in 1922 to approximately 500,-000,000 square feet in 1929. Seven thousand retail dealers in eighty-two countries, on the last-named date, were handling “Celotex.” More than $3,500,000 have been expended in advertising “Celotex.” Appellant claims that the word “Celotex” has become a “byword” for wall board and that the merchandise represented by it has an enviable reputation for its insulating and sound absorbing properties. From 1921 to 1928 appellant states no other manufacturer of wall board made any effort to use any trade-mark on its product which involved the suffix “tex” or in any other way sought to simulate its trade-mark; that beginning with the year • 1928 a great number of manufacturers of wall board, including applicant, adopted trade-marks which appellant contends closely resemble “Celotex” and with the obvious purpose of trading upon the popularity of appellant’s mark.

In applicant’s answer to the notice of opposition of opposer is found the following: “Applicant avers that there is no similarity in sound of the two marks Flametex and Celotex, except in the last syllable tex. And in view of the numerous registrations in the same class of goods, of trademarks ending with the suffix tex, to mention a few; Hytex, Unitex, Walltex, Maftex, Suntex, etc., which proves that the opposer has not the exclusive right to the suffix tex.”

The above-quoted suggestion evidently was given great weight by the commissioner, since in his opinion we find the following: “A considerable number of trade-marks ending in this syllable ‘tex’ previously registered for use upon the same class of goods have been noted in the answer, the inference being drawn that ‘tex’ is either publici juris and not capable of exclusive appropriation by anyone, or that this syllable has become so widely known and so commonly used in connection with similar goods that the publie would not rely upon it in connection with the opposer’s or the applicant’s mark.”

In determining the right to register a trade-mark which was so confusingly similar to a known or registered trade-mark owned by another as to be likely to confuse purchasers, this court has frequently said that the question of confusion was the test.

That confusion would result from the registration and use of “Flametex” on wall board, in view of the well-known registered mark “Celotex,” seems too clear to require extended discussion or citation. Furthermore, it seems obvious that the applicant adopted “Flametex” with a view of profiting by the confusion that would result. The applicant has not appeared here, .either by brief, or by counsel for oral argument, and no reason is given anywhere in the record why appellee with a wide field to select from chose the word “Flametex.”

In Lever Brothers Co. v. Riodela Chemical Co., 41 F. (2d) 408, 410, 17 C. C. P. A. 1272, we throughly discussed this phase of the case' and there had the words “Tex” and “Lux” before us for consideration. We there used language which is particularly applicable here:

“ * * * we are of the opinion that the word ‘Tex’ was selected in the hope and belief that such confusion would arise and that appellee would profit thereby. We do not intimate that -appellee did not honestly believe that it had a legal right to use the word ‘Tex’; it undoubtedly was thought that its mark had been differentiated from that of appellant sufficiently to be protected by the law, but that a benefit would be reaped from its close approximation to appellant’s mark. That appellee had knowledge of appellant’s mark at the time it adopted the word ‘Tex’ is fairly presumed from the facts set out in the stipulations. * * .
“Of course, if confusion or mistake is not likely to result from the use of the two marks, the motive of the later applicant in adopting its mark cannot affect its right to registration; but if, in the adoption and use of the mark, there be a purpose of confusing the mind of the publie as to the origin of the goods to which it is applied, we have a right, in determining the question of likelihood of confusion or mistake, to consider the motive in adopting the mark as indicating an opinion, upon the part of one vitally interested, that confusion or mistake would likely result from use of the mark. After all, the determination of the question of likelihood of confusion or mistake in the use of trade-marks must, as a general rule, be a matter of opinion, and not the result of testimony produced as to the existence or absence of such confusion. Therefore the tribunals of the Patent Office, and this court as a reviewing body, may, in' eases where one adopts and uses a mark with the motive of confusing the mind of the publie, consider that motive as one of the factors in determining the question of whether use of such mark is likely to cause confusion or mistake in the mind of the public.”

There is no contention anywhere that “Celotex” is not a valid mark. The commissioner concluded that the suffix “tex” had become public property because of the fact that a considerable number of trade-marks ending with the syllable had been previously registered for use upon the same class of goods and other goods, and evidently gave this fact controlling effect in his decision.

It seems to us that this line of reasoning suggests that if there is confusion or a strong probability of confusion due to the presence of the term “tex” in both marks, that such confusion is excusable and is not sufficient basis for a refusal to register. Irrespective of any rights which the parties or other trade-mark users may have in equity, as determined by their conduct and the use of their respective marks, the registration statute by its express terms denies registration if confusion to purchasers results. As we see it, Congress, by creating a place of registration, sought to minimize rather than to add to the public’s confusion.

Oftimes the users of confusingly similar trade-marks get themselves into such a position that .equity cannot interfere and the public interest cannot be adequately protected. By providing a place of registration and making available certain beneficial results flowing therefrom, Congress, although not privileged to change common law trade-mark rights, has done much to improve the whole trade-mark situation.

The test with the commissioner should have been: Are “Flametex” and “Celotex,” under the circumstances of this case, confusingly similar when applied to wall board? We think they are.

■In B. F. Goodrich Co. v. Clive E. Hoekmeyer et al., 40 F.(2d) 90, 104, 17 C. C. P. A. 1068, the court, in an opinion by Hatfield, J., said: “It is argued by counsel for appellee that the word ‘Zip’ is a common English word and that appellant has no right to the exclusive use of it as a trademark. The answer to this argument is that appellant’s trade-mark is ‘Zipper,’ not ‘Zip/ Nor is appellant entitled to the exclusive use of every trade-mark formed by the use of the word ‘Zip.’ But surely, if the statute providing for the registration of trade-marks is not to be a weapon for the perpetration of fraud and deceit, registrants of trade-marks are entitled to some measure of protection from those who designedly or otherwise closely simulate such marks, and, due to confusion in the mind of the public, trade on the popularity and good will of the registrant.”

This court in Apex Electrical Mfg. Co. v. Landers, Frary & Clark, 41 F.(2d) 99, 100, 17 C. C. P. A. 1184, said:. «* * * In considering whether a trade-name will be confusing or not, consideration should be given to the whole word. * * * ”

In support of our position that appellee is not entitled to register its mark, notwithstanding the fact that the suffix which is common to both marks and which would produce the probability of confusion, was used by others before either of the parties at bar used it, the following authorities are cited: Celanese Corporation of America v. Vanity Fair Silk Mills, 47 F.(2d) 373, 375, 18 C. C. P. A. -; Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 38 F.(2d) 696, 17 C. C. P. A. 906; Decker & Cohn, Inc., v. S. Liebovitz & Sons, Inc., 46 F.(2d) 179, 18 C. C. P. A.-.

In Celanese Corporation of America v. Vanity Fair Silk Mills, supra, this court, while considering the trade-marks “Celanese” and “Silkanese,” used language which, we think, is particularly applicable here. There we said: “ * * * It is true that the marks are not identical and that they differ to some extent both in sound and in appearance. However, the public should not be required to analyze trade-marks with scrupulous care, nor should it be compelled to resort to a studjr of etymology in order to avoid confusion and mistake.”

The decision of the Commissioner of Patents is reversed.

Reversed.


author: HATFIELD, Associate Judge.

text:
    CELOTEX CO. v. CHICAGO PANELSTONE CO.
    No. 2887.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    See also 49 F.(2d) 1048,1053.
    Charles M. Thomas, of Washington, D. C., Samuel E. Darby, Jr., and John S. Bradley, both of New York City (William E. Seaver, of Washington, D. C., of counsel), for appellant.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROO'T, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents dismissing the opposition of appellant and holding that appellee was entitled to the registration of the mark “Opal-Tex” for use on ornamental wall board.

In its application for registration, filed November 27, 1928, appellee alleged that it had us'ed its alleged trade-mark “Opal-Tex” since June 4, 1928.

In its notice of opposition, appellant alleged that it was the owner of the trade-mark “Celotex” for use on wall board and similar building materials; that its trade-mark was registered on July 29, 1924, on an application filed March 5,1924; that appellant had built up an extensive business in interstate and foreign commerce for its products, sold under the trade-mark “Celotex”; that it had expended large sums of money in advertising its goods and its trade-mark and had popularized them throughout the United States and in foreign countries; that the goods of the respective parties possessed the same descriptive properties; that the marks were confusingly similar; and that the registration to appellee of the trade-mark “Opal-Tex” would create confusion in the mind of the public, and make it convenient for unscrupulous dealers to pass off the goods of appellee for those- of appellant, to the injury of both appellant and the general public.

In its answer, appellee denied eaeh of the allegations contained in the notice of opposition, and stated that it was without Iniowledge, except as shown in the notice of opposition, that appellant had extensively advertised and popularized its trade-mark “Celotex,” or that it had built up an extensive business in interstate and foreign commerce.

It appears from the record that appellant began the manufacture of wall board in 1921; that, from the year 1922 to 1929, inclusive, its production increased from 18,000,000 square feet of “Celotex” to -approximately 500,000,000 square feet per year; that its products are marketed in the United States through approximately 7,000 retail lumber dealers, by building material dealers, hardware dealers, and others; that its products are sold under the trade-mark “Celotex” throughout the United States and in “82 foreign countries”; that its sales increased from $1,241,826.18, for the year 1923, to $10,-311,569, for the year 1928; that its products and trade-mark have been advertised in magazines, such as The Saturday Evening Post, and otherwise throughout the United States and in foreign countries; that from the year 1923 to the year 1928, inclusive, appellant had expended $3,579,059 ■ in advertising its products and trade-mark; that its products have come to be known as “Celotex”; and that “Celotex” is used as sheathing for structures, replacing wood lumber, as an exterior and interior finish for buildings, as a base for plaster, for the deadening of sound, and for “acoustical corrections” in buildings, as a lining under carpets, as insulating material in the refrigeration industry, and for other purposes.

On this record, the tribunals of the Patent Office concurred in holding that the goods of the parties were substantially identical and possessed the same descriptive properties; that appellant had adopted and used and had expended large sums of money in advertising and popularizing its trade-mark “Celotex,” and had extensively advertised and popularized its “Celotex products” throughout the United States and in foreign countries, long prior to the adoption by appellee of its trade-mark “Opal-Tex” for use on similar goods; and that, if there was probability of confusion, appellee was not entitled to the registration of its mark. They held, however, that, with the exception of the suffix “tex,” the marks were wholly dissimilar in appearance, sound, and meaning; that the suffix was a minor portion of the involved marks and had been registered by others for use on similar goods, prior to appellant’s registration; that the concurrent use of the involved marks would not be likely to cause confusion; and that, therefore, appellee was entitled to have its mark registered.

Preliminary to a discussion of the involved issues, we may say that counsel for appellee has not appeared in this court to present any reasons, orally or otherwise, why the decision of the Commissioner of Patents should be sustained.

Appellee set out in its answer several registrations of trade-marks including the syllable “tex.” However, those registrations do not appear in the record and there is nothing to indicate that any of them were used on goods possessing the same descriptive properties as those involved in this proceeding. Furthermore, it is not contended here that appellee was the first to adopt and use t a trade-mark ending in the suffix “tex.”

Accordingly, it will be presumed, for the purposes of this decision, that appellant’s registration is valid. Van Camp Sea Food Co., Inc., v. Westgate Sea Products, 48 F. (2d) 950, 18 C. C. P. A. —, and cases therein cited.

It appears from the record that appellant has expended large sums of money in advertising its products and its trade-mark in magazines read by millions of people, and through other advertising mediums. Nevertheless, appellee, in its answer, stated that it had no knowledge, except as alleged in the notice of opposition, that appellant had built up an extensive business, there was any pub-lie demand for its products, or that the trademark “Celotex” had been extensively advertised, and denied that the registration of the mark “Opal-Tex” for use on its goods would enable unscrupulous dealers to pass off the goods of appellee for those of appellant. No evidence was offered by appellee to substantiate any of these allegations.

That ihe goods of the respective parties possess the same descriptive properties and are used, or intended to be used, for the same purposes, and that they are sold, or intended to be sold, through the same mediums to the general publie, is obvious. Accordingly, the sole question for our consideration is: Would the concurrent use of the marks “Opal-Tex” and “Celotex” by the respective parties be likely to cause confusion in the mind of the publie and deceive purchasers?

The trade-marks are not identical in appearance, meaning, or sound. However, we are unable to agree with tbe conclusion reached by the Patent Office tribunals that the suffix “tex” is a minor feature of appellant’s trade-mark. On the contrary, we are of opinion that the suffix “tex” is an important and distinctive, if not the dominant, feature of the mark “Celotex”; and that the public would observe and remember that particular feature of the mark. . Of course, appellant is not entitled to the exclusive use of every trade-mark formed by the use of the syllable “tex,” but, when, as in the ease at bar, a newcomer in the field uses the syllable “tex” as a suffix, with a prefix not sufficiently dissimilar from the prefix of the registered mark to prevent confusing similarity of the marks as a whole, the registrant must be given the full measure of protection intended to be conferred by the statute, “the general purpose of which [nothing appearing therein to the contrary] is to prevent one person from passing off his goods or his business as the goods or business of another.” American Steel Foundries v. Robertson, Commissioner, et al., 269 U. S. 372, 46 S. Ct. 160, 162, 70 L. Ed. 317, and eases therein cited; B. F. Goodrich Co. v. Clive E. Hockmeyer et al., 40 F.(2d) 99, 17 C. C. P. A. 1068.

Considering the marks as a whole, therefore, as should be done in eases of this character, we are of opinion that the use by appellee of the mark “Opal-Tex” on its goods, concurrently with the use by appellant of its widely advertised and well-known trade-mark “Celotex” for use on its goods, would be likely to cause confusion in the mind of the publie and would tend to cause, as claimed by counsel for appellant, unscrupulous dealers to pass off the goods of appellee for those of appellant; and that the public would be confused, not only as to the goods, but as to their origin. Whether this is an instance of trade-mark piracy, as argued by counsel for appellant, need not be considered by us. However, the observation, many times reiterated in eases of this character that, except in widely separated fields of activity, which is not the case here, there can be no reasonable excuse for a newcomer to adopt and use a trade-mark confusingly similar to the established mark of another on goods of the same descriptive properties, has particular application to the facts in this ease.

For the reasons stated, the decision of the Commissioner of Patents is reversed.

Reversed.


text:
    CELOTEX CO. v. MILLINGTON.
    Patent Appeal No. 2770.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    Charles M. Thomas, of Washington, D. C., Samuel E. Darby, Jr., and John S. Bradley, both of New York City, and William E. Seaver, of Washington, D. C., for appellant.
    Cushman, Bryant & Darby, of Washington, D. C. (Arlon Y. Cushman, Arthur L-Bryant, and John J. Darby, all of Washington, D. C., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

The appellee filed an application on June 2, 1928, for the registration of the mark “Fir-Tex,” to be used in connection with the sale of wood-fibre board. The appellant, the Celotex Company, filed opposition thereto, basing such opposition upon its use and ownership of the trade-mark “Celotex,” used on goods of the same descriptive properties. The Examiner of Interferences dismissed the opposition and granted registration, and this-decision was affirmed, on appeal, by the Commissioner of Patents of the United States Patent Office.

Neither party took testimony in this ease, but the opposer, by stipulation, offered in evidence the record made in Opposition No. 8716, in the matter of Celotex Company v. Des Moines Saw Mill Co., etc.

The Commissioner of Patents held, and we think the testimony supports such holding, that the opposer began the manufacture of this material in 1921 ,or 1922, and ever since that time has been selling the same in largely increasing quantities; that for many years prior to the entrance of the applicant into the field, the opposer has been using the trade-mark “Celotex” in interstate commerce.

The Celotex Company procured the registration of its mark by certificate No. 187,-332, on July 29, 1924. It appears from the testimony and is fully set out in Celotex Company v. Chicago Panelstone Co. (Cust. & Pat. App.) 49 F.(2d) 1051, and Celotex Company v. Bronston Bros. et al. (Cust. & Pat. App.) 49 F.(2d) 1048, decided concurrently herewith, that the opposer has spent very large sums of money in advertising its aforesaid trade-mark and has built up a very large and profitable business in the goods bearing this trade-mark. The appellant is a newcomer in this field, so far as the record discloses.

The Commissioner of Patents, in deciding this matter, called attention to a number of trade-marks in which the syllable “tex” was used, and the use of which was prior to the use by the opposer of its mark “Celotex.” These various marks were marks which had been adopted, and in some cases registered in the Patent Office, used in connection with the sale of oil cloth, bricks, wall paper, gasoline, etc. From this circumstance, the commissioner concluded that the syllable “tex” had been used probably to such an extent as to preclude the opposer from any monopoly thereof, such as the commissioner felt would arise from sustaining such an opposition as the one before us here. ;

There is, in our opinion, but one question for determination here. The statute, section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), which we have on many occasions quoted, provides, in substance, that a mark may not be registered which is identical with a registered or known trade-mark owned and in use by another, and which is appropriated to merchandise of the same descriptive properties, or which so nearly resembles a registered or known trademark appropriated to goods of the same descriptive -properties as to be likely to cause confusion or mistake in the mind of the pub-lie. The only question for the tribunals of the Patent Office, and for this court, in this case, is the question as to whether the registration of the mark “Fir-Tex” will be likely to cause confusion in the minds of the public, and induce purchasers of wall board to mistake the product of the appellant for that of the opposer. If there is likely to be such confusion, then the mark ought not to be registered.

In determining this matter, the marks must be considered as a whole and not dissected. Apex Elec. Mfg. Co. v. Landers et al., 41 F.(2d) 99, 17 C. C. P. A. 1184; B. F. Goodrich Co. v. Hockmeyer et al., 40 F. (2d) 99, 17 C. C. P. A. 1068. The buyer will not stop to dissect thé marks. If he is deceived, he will be deceived by the mark as a whole, and not by any particular part of it.

Nor is it of any importance whether the mark of the opposer be subject to legal attack or not. The appellee cannot defend itself by •attempting to prove by other prior registrations that the opposer has no valid title to the mark which it uses. Sharp & Dohme v. Parke, Davis & Co., 37 F.(2d) 960, 17 C. C. P. A. 842; Standard Oil Co. v. Epley, 40 F.(2d) 997, 17 C. C. P. A. 1224; American Fruit Growers v. Michigan Fruit Growers, 38 F.(2d) 696, 17 C. C. P. A. 906; MacEachen v. Tar Products Corp., 41 F. (2d) 295, 17 C. C. P. A. 1264.

We are convinced there would be confusion if the mark “Fir-Tex” were registered. This conclusion is in harmony with other decisions which we have made in similar cases. Celanese Corp. v. Vanity Fair Silk Mills, 47 F.(2d) 373, 18 C. C. P. A. -; Baltimore Paint & Color Wks. v. Bennett Glass & Paint Co., 40 F.(2d) 1009, 17 C. C. P. A. 1269; United States Gypsum Co. v Plastoid Prod., 46 F.(2d) 580, 18 C. C. P. A.-; Malone v. Horowitz, 41 F.(2d) 414, 17 C. C. P. A. 1252; Int. Postal Sup. Co. v. Pitney-Bowes, etc., 38 F.(2d) 692, 17 C. C. P. A. 911; Bookman v. Oakland Chem. Co., 40 F. (2d) 1006, 17 C. C. P. A. 1213; Int. Silver Co. v. American Silver Co., 37 F. (2d) 622, 17 C. C. P. A. 871.

The question of whether confusion would or would not exist is, after all, one which appeals to the judgment of the court which is called upon to decide that matter. This may account for the wide divergence of views which is found in the decisions of the courts in such matters. The ascertainment of whether confusion will or will not exist is far from being an exact science, and every case must be determined upon its own facts, under the principles of law frequently announced by this court.

We have had frequent occasion to remark that the federal trade-mark registration acts were framed with at least two purposes in mindly First, that one who had built up a good-will and established reputation in connection with the use of a trade-mark might be protected in the exclusive use thereof. Second, that the public might be protected ■ against, confusion. It is an unfortunate fact that when one has adopted some arbitrary trade-mark for his goods, and by patience and labor, or by superior salesmanship, or by the good quality of his goods, or by extensive and costly advertising, or by all of these, has established a profitable and valuable business, there are to be found many who flock to the feast, unbidden guests, and fatten themselves at the table which has been spread.

The argument is made that to sustain the opposition in this ease is to give the appellant a monopoly of the use of the syllable “tex” in any combination of letters or syllables with which it might be used. We do not so hold. There may be, and doubtless are, many ways in which this syllable might be used in a trade-mark or trade-name where it would not conflict and be confusing with the mark of the appellant. In such cases, no legal objection could be made to its being so used.

The decision of the Commissioner of Patents is reversed, and an order will be entered sustaining the opposition.

Reversed.