author: BALDWIN, Judge. RICH, Judge

text:
    JIFFY, INCORPORATED, Appellant, v. JORDAN INDUSTRIES, INC., Appellee.
    Patent Appeal No. 8917.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.
    Rehearing Denied Oct. 25, 1973.
    Arthur H. Seidel, Seidel, Gonda & Goldhammer, Philadelphia, Pa., attorneys of record, for appellant. Edward C. Gonda and Ronald L. Panitch, Philadelphia, Pa., of counsel.
    Alan H. Bernstein, Caesar, Rivise, Bernstein & Cohen, Philadelphia, Pa., attorneys of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, dismissing an opposition to appellee’s application to register the mark JIF-LOK for “fasteners.” The mark as it appears in the application is slightly stylized:

JIF-LOK

The opposition was based on appellant’s prior use and registration of the mark JIFFY for “adhesive cloth picture hanger, adhesive cloth picture eyelet, magnetic key container, magnet, magnetic clip, magnetic hook, metal picture hanger, picture hanging kit, picture frame holder, picture frame pender, screw eyes, picture wire, bottle opener, combination bottle opener and closer, expansion wall fastener, wall hook, closet rod bracket, door stop, shower curtain ring, eyelet with eyeletting tool combination, mirror holder, skeleton key, lid fastener, potato baking nails, lacing pins, bumper set, can holder, leg tips, cup hook, friction catch, can opener, window sash lock, casters, clothesline plates, broom handle tips, chair glides, and soap dish sponge.”

The board opinion is reported in full at 167 USPQ 563 (1970). Familiarity with that opinion is assumed.

Opinion

We think that the board gave too much weight to the marks of third parties, to appellee’s use of the mark JIF-EZE, and to the suggestive nature of JIFFY. It is undoubtedly true that the suggestive nature of the mark made it what is termed a “weak” mark, at least when the mark was first used. However, under well established law, a weak mark need not remain a weak mark forever. Development of association with the user as a source of the goods through continued sales and advertising of the goods may turn a “weak” mark into a strong, distinctive trademark. Clinton Detergent Co. v. Proctor & Gamble Co., 302 F.2d 745, 49 CCPA 1146, 1150-1151, 748 (1962) ; Roux Laboratories Inc. v. Clairol Inc., 427 F.2d 823, 57 CCPA 1173 (1970); Standard International Corp. v. American Sponge & Chamois Co., 394 F.2d 599, 55 CCPA 1155 (1968).

While the board’s opinion did mention the large number of sales by appellant, the nature of appellant’s position is made clearer by consideration of the following excerpts from the testimony of its president, Mr. Margulis, on direct examination :

Q401 How many Jiffy picture hangers approximately have you sold since 1950 or 1949 ?
A I’d say our records of hooks would show in the billions.
Q402 Literally, in the billions ?
A Billions, yes.
Q403 Where have they been sold? A They’ve been sold in the leading chain store syndicates. When I say syndicates, I mean Five and Dime, such as F. W. Woolworth Company, W. T. Grant, G. C. Murphy, J. J. New-bury, Ben Franklin Stores and the like type, similar to the Five and Ten Cent stores. In addition to that, we are one of the leading suppliers to ARMI, American Rack Merchandisers Institute, and SMA, which is Service Merchandisers Institute. They service ninety-five per cent of the leading chain store food markets, such as Food Fair, Acme, A and P, and Piggly Wiggly Stores, and Kroeger Stores.
And each one of these type of supermarkets have a houseware and hardware department, and the majority of them are serviced by rack jobbers.
In addition to that, a lot of them buy and purchase direct, and we sell them direct too. Plus the fact we sold the leading wholesale hardware companies in the United States, who service retail stores in every State in the United States, including Alaska, including Honolulu, Hawaiian Islands, including Puerto Rico, including very many countries in Europe, such as the Scandinavian countries, England, France, Belgium, Italy, too many numerous foreign countries to mention. South America, Panama, and so on and so forth.
****** Q431 * * *
A * * * Now, in addition to that, I did not mention this before. I just touched on the fact of selling Five and Ten Cent Stores, hardware stores, hardware retailers, supermarkets, food chains. We sell art and gift shops. We sell stationery stores. We sell picture frame companies. We sell people that have general stores that want to set up a section for hardware and houseward [sic] products. And this is the purpose of this rack. Some want sixty-items, some want a hundred and twenty items, some want two hundred, three hundred items, and this is how we line these racks up, according to what they want.
Q432 How many accounts do you have, Mr. Margulis?
A We sell the leading drug chains, in addition to art and gift shops and stationery stores, which I had forgotten for the moment. * * *
Q433 By leading drug chains, you mean whom?
A For instance, I’m talking about Cunningham Drugs, I’m talking about People’s Drugs, from Washington to the Midwest. I’m talking about Marshall Drugs, I’m talking about Sun Ray Drugs, I’m talking about Thrifty Drugs. There’s too many to mention. Q434 How many accounts does Jiffy Enterprises and Jiffy, Inc., have? How many accounts do you have ?
A Well, when you use the word accounts, I’d like, to define that very clearly. For instance, you take an account like Woolworth. We classify this as one account, but in reality they have over 3500 stores. In addition to that, they presently have 100 Woolco stores, which are department stores or discount stores. We sell every one of their discount stores. We not only sell them, like, one or two or three items; they take our complete catalogue and they buy on the average of three or four hundred, two hundred, one hundred items that we make; and we sell it to these Woolco Stores direct.
Plus the fact, when I say the Ben Franklin Stores, we call them one account and they are approximately 2500 to 3500 stores.
Q435 How many accounts do you have, considering—
A Wait a minute. You take, for instance, W. T; Grant. They have close to 1000 stores. We call them one account. Take J. J. Newbury, they might have 800 stores. You take G. C. Murphy, well, we call that one account. They might have 1400 stores.
So, an accumulation, I’d venture to say that we sell perpahs [sic] a quarter of a million stores throughout the United States, where we might only have 7500 or 10,000 accounts, which might seem small, 7500, 10,000 accounts. But when you multiply that where one outfit has 2500 stores, another one has 1000 stores, another one has 1500 stores, they figure out to, you know, a couple of hundred thousand stores.
As a matter of fact, a couple of years ago we figures [sic] out that an average of 100,000 packages of Jiffy hangers — of different products, rather —not only the hangers, are sold daily, according to what we ship, 100,000 packages in the various stores.
We indicated and say this very clearly on the second page of our catalogue, our 1968 catalogue. Would you like me to read this, sir?
Q436 Is that based on actual inventory of shipments?
A Shipments.
Q437 About 100,000 packages or products a day going out ?
A Of the various products. This was two years ago. Now, since then our sales increased on the average of a quarter of a million to four hundred thousand dollars yearly, or 150,000, and this would tend to prove that there is more than 100,000 various Jiffy packages sold daily.

Appellee contends that appellant has failed to show any secondary meaning for its mark for a variety of reasons. First, it is pointed out that appellant did not introduce any invoices, sales documents or sales summaries. However, we are of the opinion that the alleged sales figures are adequately established in this record. Mr. Margulis’ testimony concerning the number of sales finds corroboration in the catalogue to which he referred, as well as by constant reiteration of the phrase “over one billion sold” in advertising which preceded his testimony by a number of years. While we are aware that statements made in advertising are not always one hundred percent accurate, the manner in which the statement was used in the present case makes it extremely unlikely that Mr. Margulis’ testimony was purely “puffing” as appellee contends. We also note that Mr. Margulis’ testimony concerning the companies with whom appellant does business is supported by the testimony of the man in charge of appellant’s advertising.

Appellee states that “Appellant’s testimony is silent as to whether the sales to a quarter million stores were products bearing the Trademark JIFFY or bearing some other trademark.” This contention is flatly contradicted by Mr. Margulis’ testimony concerning the package for JIFFY expansion wall fasteners :

Q415 Have you used the trademark Jiffy on this product continuously since 1956?
A Yes, sir, we have, without a let-up. As a matter of fact, every one of our packages have the logo Jiffy on them. The logo means the exact slant of the way the word is written, you know what I mean.
Q416 And is that true of every product?
A Every product we have has the word Jiffy on it. Every package we manufacture or we make has the logo, the word Jiffy on it. At the present time we make over 600 different products.
Q417 And each one of them is packaged with the word Jiffy?
A With the word Jiffy on them.

The appellee points to the board’s finding that “most of opposer’s promotional efforts have been directed to the trade and not to the general public.” Appellee also points out that appellant’s total advertising budget amounts to only $20,000 to $30,000 per year, and maintains that secondary meaning cannot be established on that basis. We cannot ignore the evidence concerning the manner in which both appellant’s and appellee’s goods are actually sold. Both place their products on the familiar “bubble cards” which are hung on peg boards and floor racks which are on display in the stores which sell the goods. The mark JIFFY appears prominently on the reproductions of appellant’s bubble cards in the record. While appellant may not have allocated the cost of printing such cards as “advertising” costs, the consumer who views such racks is confronted with advertising just as much as if appellant went to the expense of producing separate signs calling attention to its products. The level of appellant’s sales testifies to the success of this method of “advertising.” The happy circumstance that further advertising appears unnecessary carries no implication that appellant’s mark has not attained distinctiveness.

Appellee states:
Appellant’s testimony is also silent as to what products were sold. Perhaps the bulk of Appellant’s sales are for picture hangers * * * and only an infinitesimal amount are for expansion fasteners. This cannot be determined in view of the utter paucity of the record.

Clearly the least that can be said is that appellant has established substantial consumer response with regard to its picture hangers. Considering the similarities between the marks it is our opinion that the use of JIF-LOK on fasteners would be likely to cause confusion or mistake within the meaning of section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), in view of appellant’s established use of JIFFY on its picture hangers.

Moreover, had the board not erroneously found that appellant’s mark is a weak one, the fact that appellant’s prior registration specifically covers “expansion wall fasteners,” which is an apt description of appellee’s product, should at least have given rise to a doubt as to likelihood of confusion. Of course, that doubt would have to be resolved against appellee. Myrurgia, S. A. v. Comptoir De La Parfumerie, S. A. Ancienne Maison Tschanz, 441 F.2d 673, 58 CCPA 1167, 169 USPQ 587 (1971).

For the reasons stated above, the decision of the board is reversed.

Reversed.

MARKEY, C. J., dissents.

RICH, Judge

(dissenting).

I would affirm on the unanimous opinion of the board, 167 USPQ 563 (1970). The board considered the voluminous sales under the JIFFY mark which, no doubt, have made it well known. The better known it is, the less likelihood of confusion there would be, in my opinion, assuming concurrent use of JIF-LOK. Compare Lever Brothers Co. v. Producers Chemical Service, 283 F.2d 879, 48 CCPA 744 (1960), and In re General Electric Co., 304 F.2d 688, 49 CCPA 1186 (1962).

      . Application Serial No. 295,147, filed April 8, 1968, alleging first use February 27, 1968.

      . Registration No. 782,695, issued January 5, 1965, alleging first use July 25, 1950.

      . The record establishes that appellant also used the mark on locks for telephone dials with no evidence as to when that use began.


source: Caselaw Access Project

author: BALDWIN, Judge.

license: Public Domain

text:
    Application of Erwin PLOCKINGER and Wolfgang Holzgruber.
    Patent Appeal No. 8953.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.

      Arthur 0. Klein, New York City, attorney of record, for appellants. Alfred W. Vibber, New York City, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 2-11 of appellants’ application. No claims have been allowed.

The Invention

The invention is a process for producing steels having high machinability characteristics. Claims 10 and 11 are representative:

10. A process for producing a steel having good machining properties, which comprises immersing a consumable electrode of a starting material having substantially the composition of the desired steel into a molten slag, electrically fusing said electrode in said slag, and zone casting the resulting molten metal in a metal mold, said starting material containing at least one alloying element which improves the machinability of the steel and which is soluble in the molten metal, said slag consisting essentially of:
a) 10%-40% Al203;
b) 10%-50% Si02;
c) upto40%TiO2;
d) up to 40% of oxides of alkaline earth metals;
e) up to 70% of CaF2 provided that the slag is substantially free of boric acid;
f) up to 20% of boric acid provided the slag is substantially free of CaF2;
g) the balance up to 10% consisting of inevitable purities [sic: impurities?]; the Si02 content of the slag amounting to at least 1.1 times the oxides of alkaline earth metals content.

11. A process for producing a steel having good machining properties, which comprises immersing a consumable electrode of a starting material having substantially the composition of the desired steel into a molten slag, electrically fusing said electrode in said slag, and zone casting the resulting molten metal in a metal mold, said starting material containing at least one alloying element which improves the machinability of the steel and which is soluble in the molten metal, said slag being selected from the following group of slag compositions:

1. 10%-40% Si02, 20-50% A12Os, balance CaF2 and impurities;
2. 20-30% CaO, 30-40% Si02, balance A1203 and impurities;
3. 20% CaO, 30% Si02 20% A1203, balance CaF2 and impurities;
4. 14% Si02, 21% CaO, 14% Al2,Os, 21% CaF2, 30% Ti02.

The physical steps recited in the claims correspond to a process known as “electroslag refining,” or “electric slag zone refining.” Appellants point out that it was “already known in the art to use an electroslag remelting process for production of certain types of steels.” Appellant states that while this process would appear to be attractive for the production of steels having good machining characteristics,

a problem arises, which has not been solved before and which resides in that certain alloying elements which improve the machining properties by the formation of occlusions, such as sulfur, phosphorus, selenium or tellurium, can readily be introduced into the starting material, but are removed from the molten steel during the reaction with the molten slag. * * *
Thus, the present invention is concerned with the problem of providing slags which when reacting with the molten starting material do not remove the desired alloying elements from said material and which are nevertheless suitable for the process in question. * * *
* * -X- -X- * -X-
The slags to be used according to the invention consist suitably of 10-40% AI2O3, less than 10% impurities, balance oxides of alkaline earth metals, preferably CaO, in an amount of up to 40%, and/or CaF in an amount of up to 70%, preferably 10-70%. In the presence of oxides of alkaline earth metals, the silicon content should be at least 1.1 times the amount of such oxides.

Claims 2-9 all depend from claim 10, and contain limitations which it is unnecessary to detail here.

The References

Peras is directed to the eleetroslag refining of ferrous metals and alloys. The process is disclosed to be useful for purification of reduced ores such as sponge iron, the material primarily exemplified, as well as steel and other alloys. Peras uses a slag which may include :

such oxygenated constituents as silica, alumina and calcium oxide used for the purpose of adjusting the basicity (such that the minimum index of basicity shall be 1) and the temperature of melting, such halogenic fluxes as fluor-spar and possibly sodium fluoride, barium chloride or cryolite, such oxygenated fluxes as sodium silicate and fluidifying agents such as titanium oxide, manganese oxide, and the like. The object sought is to regulate the fusibility, the fluidity, the eleetrolytic conductivity and the solubility of the iron oxide, and the basicity of the slag. The composition of the slag is determined according to the electrolysis reactions which will dictate the limits of oxygen, sulphur and phosphorus contents of the fused steel, and the suitable silicon, manganese and aluminum contents to be chosen according to the properties that are sought.

Several more specific examples of suitable slang compositions are given, none of which meet the limitations of the present claims. In describing the apparatus used in his process, Peras further states:

In this device the electrolytic reactions originated in the slag ensure the reducing character of the surface reactions of the metal bath and a correct composition of the steel; with this treatment, the steel may be freed of any noxious elements such as nitrogen oxygen, phosphorus, sulphur and non-metallic inclusions by properly adjusting the slag compositions.

Hopkins is directed to an improved flux composition for use in the system described as follows:

After molten metal, especially of the ferrous alloy type, has been deposited in a mold, it is desirable to hot-top the deposited metal to control its solidification and/or to maintain the top portion thereof fluid until the last, and in condition to feed the shrinkage cavity below. For that purpose, electric current is discharged through a gap, or gaps, between the end, or ends, of one or more non-consumable electrodes and the surface of the molten metal in the mold while the end of the electrode, or electrodes, the surface of the molten metal and the gap, or gaps, are maintained beneath the surface of a body of flux. The electric current discharged across the gap, or gaps, effects the necessary heating of the metal.

The composition of Hopkins’ flux is as follows:

Percent
A1203 ............... 30-65
CaF2 ............... 10-20
Si02 ............... 5-25
CaO ............... 0-15
MgO ............... 0-20

The fluxes disclosed are said to have desirable properties including high conductivity and low viscosity.

The Rejections

Claims 2-10 were rejected under 35 U.S.C. § 103 as unpatentable over Peras. The examiner considered that since Per-as taught control of the amount of sulfur in the end product by control of the slag composition, it would have been obvious to control the slag components to get the optimum desired end product. Appellant responded with the contention that those skilled in the art would have considered the Peras process unsuitable for manufacturing highly machinable steels, since that process was known to remove non-metallic inclusions, such as sulfur, which impart the desired machinability to the steel. In support of their argument, appellants pointed to Peras itself, which notes that “the steel may be freed of any noxious elements such as * * * sulphur,” an article by one Williams, and a partial translation of an article by one Richling. While the examiner did not specifically mention the Williams or Richling article in his answer, he maintained his position that it was “a clear teaching of Peras * * * to vary and control the slag composition and, in turn, to control or limit the composition of the steel casting.” Appellants also pointed to the requirement in Peras that the index of basicity be greater than one and contended that the limitation in claim 10 that the silicon to alkaline earth oxide ratio be above 1.1 fixed appellants’ maximum index of basicity at 0.9, below Peras’ requirement. The examiner responded:

The contention of Applicants that the easting produced by Peras would materially differ from the casting produced by their process because the silica to alkaline earth oxide ratio of Pera s’ slag would be less than at least 1.1, as claimed, is obviated by the teaching of Peras that the sulfur content of Peras’ casting is limited or controlled, by varying the slag composition; therefore, a sulfur containing, and necessarily machinable, steel casting can be produced by the process of Peras.

Claim 11 was rejected under 35 U.S.C. § 103 as unpatentable over Peras in view of Hopkins. The examiner considered that it would have been obvious “to control the slag composition within the percentage ranges of Hopkins which overlap” the first of the composition formulas recited in claim 11. The reasoning behind the rejection is substantially the same as that behind the rejection of the other claims.

The board essentially adopted the position of the examiner.

Opinion

I. Appellants’ Motion

A few days before oral hearing, appellants filed a motion, objecting to what appellants considered to be new issues raised in the Solicitor’s brief, and asking the court to either decide the case without considering those issues, or to remand the ease to the board for consideration of them. At the time of oral argument, May 7, 1973, we indicated our intent to grant the motion, and oral argument was limited by excluding discussion of the questioned issues. However, at the close of oral argument it was pointed out that the Solicitor had not been given adequate time to respond to the motion, and we granted additional time for that purpose. Within that time the Solicitor submitted a “Motion to Vacate Order of May 7, 1973,” and appellants have responded to that motion.

As appellants point out, throughout at least a major portion of the prosecution of the application appellants have relied on the criticality of the limitation in claim 10 that the Si02 content of the slag must be at least 1.1 times the amount of the oxides of the alkaline earth metals, stating that this requirement must be met if the sulfur is to be retained in the alloy. That contention was questioned in the Solicitor’s brief on two bases. The first basis was stated thus:

Appellants have not disclosed that the claimed ratio of Si02 to alkaline earth metal oxides is critical, because the specification discusses * * * only the ratio of silicon [the element, Si, not silica, Si02] to alkaline earth metal oxides [emphasis added, footnote omitted].

This refers to the portion of appellants’ specification quoted at footnote 2, supra. In the papers submitted in support of appellants’ motion it is pointed out that the spelling of silicon in the specification was merely a typographical error. The Solicitor accepts that explanation, and thus the first “new issue” is no longer before us.

The second basis on which the Solicitor questioned appellants’ allegations of criticality was that appellants’ own specification states that “slags with which good results have been achieved” included the fourth composition recited in claim 11, in which composition the Si02 to alkaline earth metal oxide ratio is less than 1.1. In a declaration in support of their motion, appellants agree that this discrepancy exists, allege that it only exists because the specification was in error, and suggest that the claim and the specification be amended in a certain way. Appellants also complain that this discrepancy was not considered by the examiner or the board, and stated that “the Solicitor in now arguing against the criticality of this ratio has raised a new ground of rejection and therefore has raised a new issue.”

The final “new issue” apparently alleged by the appellants is the fact that the Solicitor in his brief mathematically demonstrated that compositions meeting the limitations of the claims, including the limitation of the Si02 to alkaline earth oxide ratio of a minimum of 1.1, could still have an index of basicity greater than one, using Peras’ formula. This is directly contrary to appellants’ contention before the board that their minimum ratio of 1.1 ensured a maximum index of basicity of about 0.9.

While the questions presented are difficult ones, we do not consider that the Solicitor’s observations (1) that appellants’ contentions of criticality of the 1.1 ratio were contradicted by the utility of a composition below that ratio, or (2) that appellants’ contentions concerning the index of basicity of their claimed compositions were in error, amounted to new rejections or new issues on the facts of this case. The issue concerning the index of basicity was brought before the examiner and the board by appellants, in order to show that Peras’ teachings run contrary to appellants invention. Appellants complain that the fact that the board said nothing on this issue led them to “the assumption that the Board of Appeals had considered the record before it and had agreed with applicants’ interpretation of the teachings of Peras and applicants’ specification.” While discussion by the examiner and board certainly would have been desirable, we do not think that the board’s silence justifies appellants’ assumption. In view of the fact that the board affirmed the examiner’s rejection, it may well be that the board felt appellants’ contention to be so blatantly erroneous as to require no comment.

Under the circumstances of this case, the Solicitor should be allowed to point out to us the facts underlying Peras’ concept of the index of basicity, all of which were before the board, in order to rebut appellants’ contentions with regard thereto.

Likewise, appellants introduced the issue of criticality in order to rebut any prima facie case of obviousness established by the Patent Office. In order to determine the propriety of the rejection, this court must be able to examine the evidence to determine whether, and to what degree, the criticality contended for by appellants exists. Without introducing a new theory of rejection, the Solicitor should have the power to focus this court’s attention on the evidence which is pertinent to issues of criticality, unexpected results, etc., where both that evidence and that issue were before the lower tribunals. If the Solicitor had formulated what was tantamount to a new theory of rejection in this case, we would refrain from considering it in reaching our decision. However, that has not happened here. Rather, the Solicitor has merely functioned as any other attorney would by pointing to the evidence of record which is favorable to his client’s position, and explaining its relevance.

For the foregoing reasons, the motion to vacate our order of May 7, 1973, is granted, and appellants’ motion to remand or to disregard the Solicitor’s contentions with regard to the criticality and the index of basicity issues is denied.

II. The Rejections

On this record, we agree with the conclusions of the examiner and the board. Peras does suggest that those skilled in the art would have known how to control the amount of sulfur or other inclusions removed from the metal treated in the electroslag process by varying the slag composition. The fact that sulfur was undesirable in the metals Peras refined does not detract from that suggestion. The Williams and Richling articles also appear to deal with metals in which sulfur is undesirable, and add little to Peras in that regard. As noted, appellants claim criticality in the minimum silica/alkaline earth oxide ratio of 1.1, which appellants contend minimizes the extraction of the desirable included materials and thus allows materials to be refined which have substantially the same composition as the desired steel product. That allegation of criticality is effectively refuted in this record by the fact that, of the two specific slag compositions for which good results are reported in the specification, one (corresponding to composition 3 in claim 11) satisfies that requirement and one (composition 4 of claim 11) does not meet that requirement. While appellants have explained that their specification is erroneous and should be amended, the proper forum for such a move is the Patent Office, not here. Finally, the Solicitor was clearly correct in stating that many compositions meeting the 1.1 ratio would have an index of basicity greater than one, the Solicitor giving one example of such a composition where magnesium oxide is the alkaline earth oxide. Appellants appear to have neglected to divide the concentrations of the various components by their molecular weight in calculating their indices of basicity, whereas the index of basicity equation used by Peras requires that step.

With regard to claim 11 appellants state:

Claim 11 * * * clearly recites that the starting material, namely the consumable electrode, includes at least one alloying element which improves the machinability of the steel and which is soluble in the molten metal. * * * Peras does not mention such alloying elements being present in the consumable electrode.

On the contrary, Peras does disclose the refusing of metals which contain sulfur, albeit Peras desires to get rid of the sulfur, as noted above. Appellants argue that Hopkins requires the presence of MgO in the flux, which is allegedly excluded from claim 11. It is hard to see that magnesium oxide is required when the range given for that material is from zero to twenty percent. Appellants’ other contentions are equally unpersuasive of error in the rejections.

The decision of the board is affirmed.

Affirmed.

      . Serial No. 597,229, filed November 28, 1966.

      . Sic: silica. See note 7 infra and accompanying text.

      . TJ.S. Patent No. 3,234,608, issued February 15, 1966, on an application filed September 3, 1964, which was a continuation-in-part of applications No. 68,751 and No. 68,772, filed November 14, 1960.

      . U.S. Patent No. 2,694,023, issued November 9, 1954.

      . A. O. Williams, Uses of the electroslag remelting process, J. Iron and Steel Inst., pp. 581-87 (July, 1964). Only page 581 of the article appears in the record before us.

      . This is referred to only as “an article by W. Richling in the journal entitled: ‘Neue Huette’, volume 9, published in September 1961.”

      . This explanation is supported by the fact that claim 1, as originally submitted, contained essentially similar language to that of the specification, but using “SiCfe” instead of “silicon.”


author: ALMOND, Senior Judge.

text:
    Application of George Cruise MULLIN et al.
    Patent Appeal No. 8905.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.
    Charles M. Hogan, Cincinnati, Ohio, Abraham Ogman, Peabody, Mass., attorneys of record, for appellants. Morris Fidelman, Fidelman, Wolffe, Leitner & Hiney, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. John W. Dewhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 1-5 and 12 of appellants’ application for “Abrasive Article And Method For Its Production.” Claims 1-5 were rejected under 35 U.S.C. § 102. Claim 12 was rejected under 35 U.S.C. § 103. We affirm the rejection of claims 1-4 and reverse as to claims 5 and 12.

Invention

Appellants’ invention is best considered in light of the claims involved in this appeal. They are set forth below:

1. An abrasive device having a surface deposit comprising an accumulation of fluorocarbon particles covering at least that portion of the surface not covered by the abrasive particles.
2. An abrasive device as described in Claim 1 wherein the deposit comprises a plurality of layers of fluorocarbon particles.
3. An abrasive device as described in Claim 1 wherein the deposit is a loosely applied accumulation of particles.
4. An abrasive device as described in Claim 1 wherein the deposit is an accumulation of particles utilizing Van de Waals forces as a bonding means.
5. An abrasive device as described in Claim 1 in which the abrasive device is a coated abrasive and the ratio of the fluorocarbon to abrasive particles on the surface is % to % by weight.
12. A treatment for an abrasive article comprising a substrate containing abrasive particles bonded to the substrate, said treatment comprising a coating of an accumulation of fluorocarbon particles bonded to each other and to the substrate by means of a surfactant.

Appellants’ specification broadly states that the invention involves abrasive articles such as abrasive belts or grinding wheels that have a surface deposit or coating made up of an accumulation of fluorocarbon particles. These particles can be loosely or densely compacted on the article’s surface. Use of the coating is said to extend the useful lifetime of the article and to improve grinding efficiency.

The fluorocarbon particles can be applied in at least three ways. In one disclosed method the abrasive device is precoated by spraying it with a dispersion or suspension of fluorocarbon particles in a suitable medium. Water is one such medium. A surfactant is usually included in the medium and functions to bind the particles together after the medium is removed by evaporation. A suspension of fluorocarbon particles without a surfactant can be used if the particles are of such a size that so-called Van de Waals forces are set up between them which binds them together.

In an alternative approach, the abrasive article can be sprayed during use to maintain the fluorocarbon coating. In yet another method, as the abrasive article works it can be contacted by a source of solid fluorocarbon in a manner which removes particulate fluorocarbon and deposits it on the abrasive article. Each of these last two techniques are referred to in the specification as a “dynamic coating process.”

The specification states that best results can be obtained under the following conditions:

For abrasive belts, or similar single layer abrasive articles, where the treatment is applied to the surface before use, the optimum ratio of fluorocarbon to abrasive grain is in the range of % to % by weight. When the treatment is applied during the grinding process by moving the abrasive article over a solid fluorocarbon member or by continuously spraying the ratio of fluorocarbon consumed compared to abrasive loss established as effective is within the range of 0.8 to 1 to 6 to 1 by weight. If the amount of fluorocarbon applied is below the stated minimum, there is a sharp drop-off in performance, particularly with regard to life. On the other hand, if the amount of fluorocarbon exceeds the stated maximum, there is a sharp drop in performance due primarily to the glazing over of the grinding surface by the fluorocarbon. The material flows over the grinding surface and covers the grains of abrasive to such an extent that it interferes with the abrading action.

The Reference

All the claims involved in this appeal were rejected as being anticipated by or obvious in view of a single reference, a patent to Haigis et al. (Haigis).

Haigis discloses an abrasive article and its method of manufacture. The article is made by applying a coating of a particulate fluorocarbon resin to the article and curing the resin to form a “continuous coating.” The resin can be applied as a dispersion in water, for example, by spraying, dipping or rolling. When this technique is used, the fluorocarbon resin is cured by sintering it at a temperature which will form the continuous coating.

In the alternative, the fluorocarbon resin can be combined with a thermosetting resin and applied to the abrasive article. When this is done, curing is carried out by heating the article to a temperature at which thermosetting occurs and the thermoset resin forms a matrix for the fluorocarbon particles.

Rejection Under Section 102

Claims 1-5 were rejected as being anticipated by Haigis. In the board’s view, the coating formed by Haigis as an intermediate to the sintering step was precisely the same as that defined in claims 1-5. The board recognized that this intermediate coating was not intended to be used for grinding purposes. In this regard the opinion states:

The fact that the reference then goes on to sinter or cure the coating does not detract from the disclosure of this reference of as much of the claimed subject matter as is recited in these claims. It is clear that at the point in the process of the reference prior to sintering or curing, the abrasive device of the reference satisfies the limitations recited in these claims.

Appellants concede that claims 1-3 read upon the intermediate coating of Haigis that is to be sintered rather than thermoset. However, it is their view that this intermediate structure constitutes an “accidental” and “unwitting” duplication of their invention which has no recognized utility other than as an intermediate. For this reason, they argue that its description in Haigis cannot be regarded as a reference against their claims.

We disagree. The question of whether or not a reference can be regarded as prior art that describes a composition or structure as being an intermediate has been resolved in this court adverse to appellants’ position. See In re Herbert, 461 F.2d 1390, 59 CCPA 1091 (1972).

In that case a reference described a “double emulsion” which was an intermediate in a process comprising several steps. The Patent Office relied upon its description as a reference against appealed claims. Concerning the propriety of this, the court said:

We agree with the solicitor that the fact that the double emulsions disclosed in the reference are only intermediates formed during the production of the products with which the reference is ultimately concerned does not detract from the efficacy of the British patent as a reference.

In support of their position, appellants cite a number of cases including two decisions of the Supreme Court, Tilghman v. Proctor, 102 U.S. 707, 26 L.Ed. 279 (1880) and Eibel Process Co. v. Minnesota and Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923). In our view these cases are not inconsistent with our decision here. At 261 U.S. 66, 43 S.Ct. 329 the Supreme Court in the Eibel Process case, speaking of alleged anticipation, said:

* * * accidental results, not intended and not appreciated, do not constitute anticipation. Tilghman v. Proctor, 102 U.S. 707, 711 [26 L.Ed. 279] [other citations omitted].

Assuming that the Congressional reenactment of the patent statute in 1952 can be regarded as having ineorporated the substance of this decision into section 102, we see no conflict between our decision and the Supreme Court. This is true because, if for no other reason, the intermediate structure of Haigis was both intended and appreciated. It matters not one whit that it was intended to be and appreciated as being an intermediate structure rather than an end use item.

Such is frequently the case with chemical compositions. Some are patentable because they cure disease. Others may be patentable because they are valuable intermediates in the preparation of compounds that cure disease. Certainly it cannot be said that the discovery of an end use for a compound having recognized utility as an intermediate means that a novel compound has been discovered. No different result is required here because the intermediate is an article of manufacture rather than a chemical compound.

Even though Haigis can be regarded as a reference, there remains the question of whether it anticipates all the claims in question. However, in view of appellants’ admission, we need not consider this point with regard to claims 1-3. No similar admission was made with respect to claims 4 and 5.

We affirm the rejection of claim 4 wherein the coating is defined as “an accumulation of particles utilizing Van de Waals forces as bonding means.” Regarding such a coating, appellants’ specification merely states:

A surface was also treated with a coating of a colloidal suspension, Dupont T-42, lacking a surfactant. The coating integrity is preserved by an effect known as Van de Waals forces acting on judiciously sized particles. [Emphasis ours.]

The only dimensions given in the specification for any particles is that they be submicron sized. By comparison, Haigis employs a dispersion of fluorocarbon particles less than one micron in size, in other words submicron in size. Therefore, in the absence of contrary evidence, we are forced to conclude, as the solicitor suggests, that the Haigis coating before sintering must possess Van de Waals forces.

Claim 5 is another matter. It calls for a device wherein “the ratio of fluorocarbon to abrasive particles on the surface is % to % by weight.” Again by comparison, the coating in Haigis is described according to its thickness and this must be at least 0.1 mil but not more than 1 mil. However, Haigis is silent as to the weight ratio of fluorocarbon to abrasive particles.

On this record, we see no way of equating the different quantitative criteria used by appellants and in Haigis, i. e., weight ratio vis-a-vis coating thickness, in order to determine whether a coating 0.1 to 1.0 mil in thickness would have a weight ratio of fluorocarbon to abrasive particles within the claimed range. In our view the Patent Office has failed to establish that the Haigis coating anticipates that of claim 5. Accordingly, the rejection of claim 5 must be reversed.

The solicitor has objected to appellants’ raising for the first time on appeal the argument that claim 5 can be distinguished from Haigis because the latter sets forth no weight ratios. This argument is not well founded. Appellants have consistently argued that the specific limitations of the dependent claims are not present in Haigis and have responded to whatever grounds were raised in the Patent Office in support of the rejection. With regard to claim 5, appellants here are merely responding to the board’s treatment of their contention on petition for reconsideration.

We think it is incumbent upon the Patent Office in the first instance to set forth clearly why it regards a claim to be anticipated, obvious or otherwise defective. A broad statement such as that appearing in the first Office Action of this case that simply states “Claims 1-5 are rejected as obviously anticipated by Haigis et al. under 35 U.S.C. § 102does not necessarily inform an applicant of the reason his claims are regarded as defective. Patent Office Rule 106 requires that “The pertinence of each reference, if not apparent, must be clearly explained * *

That the basis of the rejection was ambiguous in this case can be seen by the course of prosecution. In the first instance, the examiner based his rejection on the final cured coating described in Haigis. Appellants pointed out that their coating differed from this. It was the board that first suggested that the intermediate coating was the basis for the rejection. Therefore, we believe appellants were within their rights when they point here to possible error in the board’s rejection.

Rejection Under Section 103

Claim 12 requires that the abrasive device be treated with a coating of fluorocarbon particles bonded to each other and the substrate by means of a surfactant. The examiner and the board were of the opinion that this treatment was obvious in view of Haigis. We disagree. The intermediate coating of Haigis was intended to be transitory. Therefore, there was no requirement that it have sufficient integrity to withstand the grinding process itself. However, this is a requirement that must be met by appellants’ coating.

The integrity of the Haigis coating is supplied by either surrounding it with a matrix of a thermoset resin or by fusing the fluorocarbon particles to form a continuous coating. Furthermore, there is no indication in Haigis that the intermediate coating can itself be used as a grinding aid. Accordingly, we are of the view that there is no suggestion in the reference that any benefit could be achieved by using a surfactant in the intermediate coating. In view of the subsequent processing, a surfactant would appear to be superfluous.,

The board considered, erroneously we think, the description of the intermediate coating which includes a thermosetting resin to be a sufficient basis for the rejection under section 103. That coating is applied with water and a water-miscible solvent “comprised of aromatics and aliphatic alcohols.” In view of this, the board said:

Even the water-miscible solvents employed in the dispersion, such as the alcohols, may broadly be regarded as surfactants. We, accordingly, do not consider that the claimed treatment patentably distinguishes, if at all, over the disclosure of the reference.

There is no basis for the board’s conclusions. Haigis clearly points out that the solvent is evaporated before curing. Therefore, it cannot be concluded that the intermediate coating would contain any solvent component that might function as a surfactant. If anything bonds the resin particles in that intermediate coating it would have to be the uncured thermosetting resin which cannot be regarded as a surfactant.

For the foregoing reasons, the rejection of claims 1-4 is affirmed. The rejection of claims 5 and 12 is reversed.

Modified.

      . Serial No. 762,315 filed September 16, 1968.

      . U.S. 3,042,508 issued July 3,1962.


text:
    Howard A. ELLIOTT, Appellant, v. Robert A. BARKER and John W. Shank, Appellees.
    Patent Appeal No. 8912.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.

      Sheldon W. Witcoff, Daniel M. Riess, Molinare, Allegretti, Newitt & Witcoff, Chicago, 111., attorneys of record, for appellant.
    Vincent L. Barker, Jr., Mark C. Schaffer, Carl F. Schaffer, Owen & Owen, Toledo, Ohio, attorneys of record, for appellees.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to the appellees Barker and Shank (Barker). Appellant Elliott is involved through his patent No. 3,266,008, issued August 9, 1966 on an application filed January 13, 1964. Barker is involved through application serial No. 595,305, filed November 7, 1966 in which claim 2 of the Elliott patent, corresponding to the count, was copied. That application was co-pending with and accorded the benefit of the filing date of appellees’ application serial No. 315,464, filed October 11, 1963.

The Invention

The invention relates to a terminal for an insulated electrical conductor such as is used as an ignition cable for an automobile. The structure will be apparent from the sole count which reads:

1. In combination,

an ignition cable having an outer sheath of electrical insulation material and an inner core of non-metallic fibrous strands coated with an electrically conductive carbonaceous material; said core having an end portion thereof extending beyond one end of said sheath and folded over said one end of said sheath;
said end portion of said core being impregnated with a conductive medium comprising a dispersion of carbon particles in a resinous base for binding the strands of said end portion of said core together, and
an electrical terminal having a ferrule portion of sheet metal extending around and tightly crimped onto said end of said sheath and the impregnated end portion of said core with said ferrule portion in electrically conductive engagement with said impregnated core.

The Board’s Decision

The board found that appellant’s evidence, in the form of testimony of the inventor Elliott and an associate Lewis, along with five documentary exhibits, did not prove actual reduction to practice by appellant prior to appellees’ record date of October 11, 1963. It thus found it unnecessary to consider evidence of an earlier priority date submitted by appellees or a contention of appellees that appellant had abandoned, suppressed or concealed the invention under 35 U.S.C. § 102(g) even if he had reduced it to practice.

In effect, two dates were asserted by Elliott for actual reduction to practice. First, there is testimony of Elliott himself and Lewis that prior to September 6, 1956, Elliott made samples of ignition cables as defined by the count and gave them to Lewis who tested or supervised testing of them as indicated in a report designated Exhibit C. The board stated :

3. * * * This report is dated September 6, 1956 and includes the results of a resistance test (in ohms per inch) as well as results of “spark length” tests and “life” tests apparently made in the Electrical Laboratory. In addition to a group of samples made as defined in the count, a group of samples similarly prepared but omitting the step of applying a conductive resin and a third group defined as cables “cut and prepared in Wauseon using standard metal terminals with nail contacts” were also tested. It appears from the record that the present invention was intended as a replacement for the so-called nail type terminal construction.
4. The above shows that the resistances for the cable constructed according to the count were within the values identified in the report as “Ford Specification” values. The report also states, in respect to the “spark length” tests, that “These values showed that each group gave similar operating conditions.” No values for the spark length are set out. As to the life test it is stated that the test was discontinued after 300 hours “with no sign of breakdown or deterioration apparent in any of the samples.” On page 3 of * * * [Exhibit C] it is stated:
Samples for further study and submission to Ford are now being made up at Wauseon. Also several harnesses are being assembled and will be put on some private and company cars for service testing.

The evidence concerning the other date was discussed by the board as follows:

Elliott further testified that sometime in 1963 “The Ford Motor Company came through with orders for sets” and identified EX-D as a document found in Simpkins’ file after his death. Elliott testified that this document dated 6-6-63 refers to the types of devices about which he had just been testifying. Certain pages of EX-D include the caption “Customer Orders” and refer to the Ford Motor Company and another page appears to be a sketch and a description of an ignition cable.

Concerning the tests of September 9, 1956, the board found it significant that there was no evidence to establish the relationship between the conditions of the tests actually carried out and the intended functional setting of the invention, especially in view of the fact that the report indicated that appellant and Essex considered further tests under service conditions necessary. It also held that, while the customer’s orders of Exhibit D might be considered business records admissible under 28 U.S.C. § 1732, the sketch attached to them could not be so considered, leaving Elliott’s testimony as to the kind of devices referred to uncorroborated. Further noting the long delay of seven years in filing appellant’s application, the board held that appellant had proved no more than conception by September 6, 1956. The board further stated:

Since Elliott does not urge that he is entitled to prevail on the basis of a prior conception with reasonable diligence from just prior to the entry of Barker et al into the field until his filing date, we need not consider the question of diligence.

OPINION

We find no reversible error in the board’s holding that appellant had not proved he was entitled to a date of invention prior to appellees’ record date of October 11, 1963.

The record shows that the tests made by September 6, 1956, and reported in Exhibit C included resistivity tests and laboratory tests. The results of the former were indicated to be that the resistance of the conductors was within the limits established by the Ford Motor Company. The latter apparently showed that conductors meeting the count limitation performed equally to prior art conductors under certain simulated conditions using an ignition coil, a distributor and a spark gap and also that no breakdown or deterioration was apparent in a 300 hour life test that was only broadly described. However, the only use for the cables revealed in the record is “as automobile ignition cables or the like.” The relationship between these tests and the only intended functional setting is not established nor is it shown that these tests were usual or 'deemed adequate in the art to establish the utility of ignition cables. The problem to which the invention is particularly directed appears to be making an improved terminal connection for a cable using coated non-metallic fibrous strands for the conductor. The tests reported on Exhibit C would not appear to provide significant proof of the mechanical and electrical utility of such a structure when subjected to the vibration and adverse weather conditions that would be expected in the only use indicated. The statement in the exhibit regarding assembly of additional samples for use in private cars for service testing tends to substantiate the board’s conclusion that the reported tests were inadequate to establish utility in the functional setting of the invention.

The only evidence that further tests took place is testimony of Elliott himself, who stated that sample cables were used in his car and that of Simpkins, Essex’s chief engineer. However, that testimony is meager as to the results, and what is more important, is wholly uncorroborated. While Elliott made general statements about other samples being tested by Lewis and by Ford, that testimony is devoid of any significant indication of results and it too is uncorroborated.

As to Exhibit D relating to asserted sales to Ford in June of 1963, we disagree with the board concerning the sketch attached to the “customer's orders.” It is not a report of scientific research or tests as found inadmissible in Alpert v. Slatin, 305 F.2d 891, 49 CCPA 1343 (1962) but instead purports to describe the items listed in the customer’s orders, and it forms part of the record comprising those orders. But even if we consider the entire exhibit, there is no convincing evidence of actual reduction to practice. At most it shows that Ford ordered 25 assemblies of each of twelve different cable types. The exhibit provides no evidence that the order was filled, that Ford paid for it, or what the price was. Also the small quantity indicates the purchase might well have been for test purposes and no results of tests of them by Ford are provided. The only other evidence concerning the matter is meager testimony of Elliott that Exhibit C came from Simpkins’ files after his death and that “we started to work” on patenting the structure “as a result of the Ford order,” and this is uncorroborated. We do not find this evidence to prove reduction to practice as might be the case with a substantial order that was proved to have been delivered and paid for.

Two matters remain. First, appellant urges that appellee conceded he had actually reduced to practice by September 9, 1956, and that appellee is therefore estopped to contest the question. However, appellee actually made only a qualified admission as part of an alternative argument and plainly did not actully make the concession appellant argued.

Appellant also relies on Schnick v. Fenn, 277 F.2d 935, 47 CCPA 1174 (1960), as showing that the board erred in holding his tests to be insufficient, but that case is readily distinguished on the facts. In Schnick, the “usual” tests “which were accepted by the industry as basic for cigar lighters,” the product involved, were made. Thus those tests, unlike the tests here, proved reduction to practice, and subsequent work toward refining the product did not amount to evidence to the contrary.

The decision is affirmed.

Affirmed.

      . Issued November 8, 1966, as patent No. 3,284,751.

      . Both technical employees of Elliott’s assignee, by change of name, Essex International.

      . Satisfactory performance without causing radio interference apparently required that the resistance be between certain minimum and maximum values.

      . Elliott patent No. 3,266,008, supra.

      . Lewis spoke of the need to test the conductors “as to their thermostability.”


text:
    LEVER BROTHERS COMPANY, Appellant, v. PHYSICIANS FORMULA COSMETICS, INC., Appellee.
    Patent Appeal No. 8856.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.
    Louis F. Kline, Jr., Ossining, N. Y., attorney of record, for appellant.
    Dan R. Sadler, Los Angeles, Cal., attorney of record, for appellee. Nelson H. Shapiro, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and WATSON, Judge, United States Customs Court, sitting by designation.
   BALDWIN, Judge.

This is an appeal by Lever Brothers Company from a decision of the Trademark Trial and Appeal Board dismissing an opposition to the application of Physicians Formula Cosmetics, Inc. to register the words SUN SHIELD as a trademark for “liquid make-up; skin lubricating and protection lotion.”

Registration has been opposed by Lever Brothers Company, registrant of SHIELD for soap, dentifrice, and spray deodorant for human use. The record shows opposer’s use of the mark SHIELD on a dentifrice since at least 1954, that sales for SHIELD toilet soap began in 1956, and that opposer has marketed SHIELD deodorants in various forms, and has expended $600,000 in the advertising promotion thereof, while sales thereof have approximated $100,000. There is no indication as to any present use of SHIELD on deodorants. It is stated that SHIELD has also been used as a mouthwash and a detergent.

Opposer’s witness has testified that for the past few years it has been planning to test market a product with skin care properties under the mark SHIELD. The prior use of the mark by the opposer is established by the record. The goods involved here, for the most part, are toiletries and it can be assumed they move through the same trade channels and retail outlets. The question is, is there a likelihood of confusion by the perspective purchasers as to the source of the respective goods. We think not.

We agree with the decision of the board and feel that they correctly capsuled the question here involved, holding as follows:

When we consider the marks, it is apparent that applicant’s “SUN SHIELD” embodies opposer’s registered mark “SHIELD” in its entirety. On the other hand, such a factor does not necessarily lead to the conclusion that confusion in trade is likely. See: Los Angeles Soap Company v. John H. Breck, Inc., 136 USPQ 488 (TT&A Bd., 1963); and cases cited therein. In our opinion, the marks here involved are distinguishable in sound and appearance, and create different commercial impressions. While opposer urges that the word “SUN” is merely descriptive of applicant’s goods and entitled to little or no consideration in comparing the marks, it is our view that the word “SUN” is not merely descriptive of a skin lubricating and protective lotion and that applicant’s mark, when viewed in its entirety, suggests that applicant’s product will shield the skin from the rays of the sun.

While appellant has urged that it has established a family of SHIELD marks, we do not find that this record establishes that appellee’s goods are within the realm of reasonable expansion of appellant’s line of goods, despite testimony that appellant was “planning test marketing of a product with skin care properties under the name of SHIELD.”

We have considered the cases cited by appellant, including Lever Brothers Co. v. Blair Fashions, Inc., 156 USPQ 717 (TTAB 1967), but do not find them controlling on the facts before us.

The decision of the board is affirmed.

Affirmed.

RICH, J., concurs in the result.

      . Abstracted at 166 USPQ 160 (1970).

      . Registration No. 647,223, registered June 18, 1957.

      . Registration No. 594,628, registered August 31, 1954.

      . Registration No. 659,136, registered March 4, 1958.


text:
    JACKES-EVANS MANUFACTURING COMPANY, a Delaware corporation, Assignee of Jackes-Evans Manufacturing Company, a Missouri corporation, Appellant, v. JAYBEE MANUFACTURING CORPORATION, Appellee.
    Patent Appeal No. 8886.
    United States Court of Customs and Patent Appeals.
    Aug. 16, 1973.

      Robert E. Wagner, Chicago, 111., atty. of record, for appellant. William T. Bullinger, Washington, D. C., of counsel.
    Fred Flam, Encino, Cal. (Flam & Flam, Encino, Cal.), attys. of record, for appellee. D. Paul Weaver, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, sustaining an opposition to the appellant’s mark, used on padlocks, which appears as follows:

Opposition was based on likelihood of confusion, mistake or deception with regard to the use of the following marks of appellee:

These marks are registered for use on “builders’ finish hardware — namely, catches, hinges, pulls, knobs, back plates, push plates, towel bars, towel rings, door stops, latch sets, door knobs, rosettes, sash locks, sash lifts, strikes, screen hangers, coat and hat hooks, brackets for shelves and rails, house numbers, door grills and knockers, chain latches, thresholds, pole sockets, hooks, closet rod and shelf supports, slotted shelf brackets, and bumpers.”

Appellant relied on its registrations of the following marks:

for “stove pipe, including elbows, T joints, reducers, and flue thimbles; space heaters * * * ; ovens, heating drums, camp stoves, and rain caps, comprising chimney and stack cowls;”

for solenoid valves; and

for “receptacles — namely, pails, tubs, refuse cans and pails, trash burners, utility buckets and mail boxes.” It appears that the mark has also been used in connection with certain agricultural feeders and waterers. Appellant .pointed out that the use of “JE in a diamond” on the items listed in its Registration No. 506,825, supra, dates back to 1924. Appellant contended that it had a long established name in the hardware field, and that “padlocks are a natural area of expansion” for appellant’s business. Appellant also contended that the nature of the marks, the goods and the channels of trade were such that confusion, mistake or deception would not be likely.

The board held that to the extent that appellant relied on its prior rights in its marks as a basis for attacking the validity of appellee’s registrations, the attack was improper in this opposition proceeding. The board also held that appellant’s prior use of its mark was not “otherwise relevant to the question of its present right to the registration thereof for padlocks,” citing Purex Corp. v. Maryland Paper Products Co., 287 F.2d 186, 48 CCPA 848 (1961). Finally, the board held that there was a likelihood of confusion.

Appellee argues that the “expansion of business” doctrine is purely a defensive one, used only to prevent registration or use of a mark. Appellee states:

The “expansion of business” doctrine is believed to be inoperative for pus-poses [sic] of obtaining the right in gross to use a mark, or securing the right to registration in a situation where the result is likelihood of confusion.

Appellee cites Haggar Co. v. Hugger Corp., 172 USPQ 253 (TTAB 1971) as supporting its position.

Opinion

In Purex Co. v. Maryland Paper Products Co., supra, the applicant was attempting to register SWEETHEART for certain paper products. Opposition was based on registration of SWEETHEART for toilet soap. Applicant relied on its three prior registrations of SWEETHEART for other paper and related products, and contended that since the opposer had not challenged the applicant’s right to use the mark on the goods recited in those registrations, op-poser was guilty of laches. This court held that the fact that the applicant had previously applied for registration of the mark on other products “does not per se place a duty upon opposer to take legal action on peril of losing its exclusive rights to its mark on toilet soap and products related thereto.”

That was the extent of this court’s holding in Purex with regard to prior registrations by an applicant. It did not hold that an applicant’s prior registration or use of a mark could not be relevant to his present right to register, as the board’s opinion in the present case implies. Such a holding would be inconsistent with a long line of cases to the effect that, if an applicant had previously registered the same or a substantially identical mark for the same or substantially identical goods opposition cannot be sustained because of a lack of possibility of damage to the opposer. See Joseph & Feiss Co. v. Sportempos, Inc., 451 F.2d 1402, 59 CCPA 742 (1971); Morehouse Mfg. Corp. v. J. Strickland & Co., 401 F.2d 881, 56 CCPA 946 (1969); and cases cited therein. However, appellant cannot prevail under that line of cases in thej present situation, since padlocks are substantially different goods from those upon which appellant has its previous registrations, and it cannot be said here that there would be no added damage to opposer from appellant’s proposed registration. See Key Chemicals, Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 59 CCPA 1231 (1972).

We agree with appellee that the “expansion of business” doctrine is purely a defensive doctrine. The policy underlying that doctrine is that when a consumer who is familiar with a mark which has been established for a particular line of goods sees the same or a similar mark on goods which the supplier would logically expand his business to include, he would be likely to attribute those goods to that supplier. There is no comparable consideration to be made in the case of an application where the applicant had previously registered or used the mark on different goods, for the statute deals only with a likelihood of confusion between the mark on the goods applied for and the opposer’s mark on his goods. There is no right to register one’s mark on an expanded line of goods where the use of the mark covered by such registration would lead to a likelihood of confusion, mistake or deception. Key Chemicals, Inc. v. Kelite Chemicals Corp., supra, 59 CCPA at-, 464 F.2d at 1043; see also Haggar Co. v. Hugger Corp., supra, 172 USPQ at 254.

Considering the obvious similarities between the marks, the nature of the goods to which they are applied and the channels of trade through which those goods travel, we have no difficulty in agreeing with the board that there would, be a likelihood of confusion within the meaning of section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). In reaching that conclusion we have given consideration to the case of Jenkins Bros. v. Newman Hender & Co., 123 USPQ 50 (TTAB 1959), as well as registration apparently owned by Jenkins Brothers, which was introduced during the testimony taken on applicant’s behalf, but they are not persuasive of error in the board’s decision. However, we have given no consideration to third party registrations which appellee apparently attempted to introduce into the record in its brief before the board, after its testimony period had expired.

The decision of the board is affirmed.

Affirmed.

      . 165 USPQ 537 (1970).

      . Application Serial No. 272,381, filed May 25, 1967, alleging a date of first use of. October 19,1966.

      . Registration No. 784,702, registered February 9, 1965, date of first use June, 1961, and registration No. 785,054, registered February 16, 1965, date of first use October, 1961, respectively.

      . Registration No. 506,852, registered February 22, 1949, date of first use February 1, 1924.

      . Registratiou No. 604,778, registered April 19, 1955, date of first use May 4, 1951.

      . Registration No. 717,362, registered June 27, 1961, date of first use April 14, 1960.

      . Registration No. 593,530, registered August 10, 1954. The mark registered consists of the letters JB within a diamond, for use on various kinds of metal valves.


text:
    Application of William T. NEAL.
    Patent Appeal No. 9082.
    United States Court of Customs and Patent Appeals.
    Aug. 9, 1973.
    William T. Estabrook, Kemon, Palmer & Estabrook, Washington, D.C., attorneys of record, for appellant. Robert A. Spray, Indianapolis, Ind., of counsel.
    S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. R. V. Lupo, Washington, D.C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of the sole claim in appellant’s application.

The Invention

The claimed invention is a device adapted to be secured to the clothing of the wearer and to support up to some plurality of emblems in spaced relationship thereon. The nature of ¿the device will be apparent from the claim set forth below:

1. An emblem-displaying pin device adapted to be secured onto the clothing of the wearer, comprising a supporting body-member having clothing-securing means extending rearwardly of the device and within the span of the device, and effectively concealed thereby, for securing the pin device to the wearer’s clothing, said body-member being provided with a plurality of openings respectively accommodating the passing there-through of the mounting shank of an associated badge or emblem, the said openings being of a small size in comparison to the size of the said body-member so as to be substantially inconspicuous when one or more of said openings are not receiving a said badge or emblem shank, the body-member having a smooth front face extending smoothly from outwardly of each said opening laterally to the adjacent opening and vertically to and including the periphery of said body-member, permitting the accommodation of associated badges or emblems of different sizes and of sizes whose lateral width extends farther than one-half way between adjacent ones of said openings and whose vertical height extends beyond the periphery of said body-member and yet nevertheless lie flush along the front face of said body-member.

The Rejection

The claim was rejected under 35 U.S. C. § 103 as unpatentable over a patent to Stupell either taken alone or in view of a patent to Kelscha.

Stupell relates to a pin in the form of a small bar of suitable material such as metal. The bar has a pin extending from its rear for securing it to the clothing of a wearer. It also has slot means which may be in the form of three horizontally spaced slots for receiving lugs on “ornamental or significatory elements,” such as initials, up to three of which may be displayed on its front side.

Kleschka discloses a watch fob, the fob plate of which has an opening for receiving the attaching means of an “emblematic button” such as fraternal insignia.

The examiner considered the only difference between the claimed subject matter and Stupell to be set out in the portion of the claim reading “the said openings being of a small size in comparison to the size of the said body-member so as to be substantially inconspicuous when one or more of said openings are not receiving a said badge or emblem shank.” He deemed that the slots in Stupell could be considered small in comparison to the size of the body-member and felt that any opening not receiving an emblem lug, as results when only two initials are used in a three slot bar, would be inconspicuous. The examiner alternatively held that it would have been obvious to merely use small openings in the bar of Stupell and attach each emblem by means of a small lug or connecting pin which was “old and well known in the art as taught by Kelschka.”

In affirming, the board regarded the openings in Stupell as small in comparison to the size of the body-member and did not see patentable significance in the requirement that they be substantially inconspicuous. At any rate, it considered that requirement to be met or at least rendered obvious by the apparatus disclosed in Stupell. If further considered that attaching each emblem in Stupell with a small lug or connecting pin as taught by Kleschka would have been obvious.

Opinion

We are of the opinion that the rejection must be sustained under 35 USC 103 for obviousness on Stupell in view of Kleschka. We agree with the board that it would have been apparent to a person of ordinary skill in the art to modify Stupell to make the openings in Stupell of a smaller size. Such a construction would clearly meet the claim limitations including particularly the “substantially inconspicuous” requirement.

Appellant points out that the references are “quite old” and considers that an indication that this combination would not have been obvious. Such a position is not impressive “absent some showing that the art tried and failed to solve some problem notwithstanding its presumed knowledge of the references.” In re McGuire, 416 F.2d 1322, 1327, 57 CCPA 706, 712 (1969).

The decision is affirmed.

Affirmed.

      . Serial No. 673,155, filed October 5,1967.

      . U.S. Patent No. 2,178,055, issued October 31, 1939.

      . U.S. Patent No. 1,715,238, issued May 28, 1929.


author: BALDWIN, Judge. ALMOND, Senior Judge

text:
    KAYSER-ROTH CORPORATION, Appellant, v. SILVER KNIT HOSIERY MILLS, INC., Appellee.
    Patent Appeal No. 8950.
    United States Court of Customs and Patent Appeals.
    Aug. 9, 1973.
    Allan Zelnick, Burns, Lobato & Zelnick, New York City, attorneys of record, for appellant.
    Frank P. Presta, Jacobi, Lilling & Siegel, New York City, attorneys of record, for appellee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, one member dissenting, dismissing an opposition to appellee’s application for registration of the following mark, for hosiery:

Opposition is based on appellant’s use and registration of the mark LONDON GUARDS for hosiery.

After summarizing the record with regard to the goods and past sales of the parties, the board stated:

In our opinion, the mere fact that marks both contain the word “LONDON” is insufficient to support a finding that, when considered in their entireties, they either look alike or sound alike. As to connotations, we are unable to accept opposer’s reasoning that “LEGS” and “GUARDS” have any common implications. Moreover, “LONDON GUARDS” calls to mind the famous royal guards of “LONDON” while, “LONDON LEGS” connotes, if anything, legs of the female sect [sex?]. While opposer urges that we cannot consider any of applicant’s third-party registrations as showing suggestiveness of “LONDON” because only one thereof relates to hosiery, we can accept these registrations as generally showing that marks containing the word “LONDON” have been adopted with some frequency in the clothing field.

The dissenting member found the word “LONDON” to be arbitrary as applied to hosiery, and considered that the similarities between the marks dominated over their differences.

Opinion

We agree with the dissenting board member that the word “LONDON” is arbitrary as applied to hosiery, the third party registrations cited by appellee notwithstanding. As is so often the case, there is no further evidence of use of the marks on the goods recited therein, and there is nothing else in the record which would suggest any other reasonable connection between “LONDON” and hosiery.

The description of the goods in both appellant’s registration and appellee’s application being “hosiery,” the goods and channels of trade must be considered the same, despite the fact that appellant’s mark has previously only been used on men’s socks while appellee’s mark has been used exclusively on women’s hose and pantyhose.

However, we are of the opinion that the marks of the parties are so different that confusion, mistake or deception would not be likely to result from the use of appellee’s mark. The marks are quite different in appearance, sound and meaning. Appellant argues otherwise, and presents a phonetic and connotational analysis of the marks which emphasizes their similarities and minimizes their differences. For example, appellant states:

LONDON LEGS and LONDON GUARDS are both dominated by the prominent word “LONDON” forming their characterizing sound. The second words each end in a sibilent “s” sound and the dominant aural aspect of each word is the letter “G”. Both second words are single syllable plurals characterized by the hard letter “G”. When pronounced, they are strikingly similar. The letters which are different are vowels or soft consonants which do not characterize the sound of the marks.
The similarities noted above extend to the appearance of the marks. Both are two words characterized by “LONDON” and the “S” ending. They are of substantially the same length, differing only by two letters and the letter “G” is a prominent part of each second word.

We do not find the marks “strikingly similar” on viewing or pronouncing them. On the contrary, they are substantially different — in their length, in the letters which make them up and in the sounds called for by those letters, including the “soft consonants” L in appellee’s mark and R in appellant’s mark. Likewise, accepting appellant’s contention that hosiery is an “impulse” item, we do not think the consumer would take the time to derive the complicated similarities in connotations postulated by appellant, and such similarities certainly would not present themselves at first sight of either mark, even to one familiar with the other.

The decision of the board is affirmed.

Affirmed.

ALMOND, Senior Judge

(dissenting).

With all due respect, I do not agree with the majority opinion and would reverse the board.

The majority has stressed too much the differences in sound and appearance of the marks involved here. I do agree that those differences are great enough that a purchaser would not be likely to confuse the marks. However, as we have so often said, the real question to be resolved is whether the marks will confuse purchasers into believing that the goods to which the marks are applied emanate from the same source. See In re West Point-Pepperell, Inc., 468 F.2d 200 (CCPA 1972); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901 (CCPA 1973).

In my view, as applied to hosiery, LONDON LEGS has a feminine connotation, whereas LONDON GUARDS is decidedly masculine. The majority, in its opinion, acknowledges that the goods and channels of trade are identical in this ease. Furthermore, the majority agrees that LONDON as applied to hosiery is arbitrary. Under these circumstances, I believe that a purchaser would be likely to assume that these marks are used by the same manufacturer to identify separate lines of hosiery for women and men. In this case the differences in the marks, i. e., LEGS vis-a-vis GUARDS, merely distinguish women from men’s hosiery, whereas the common word LONDON suggests the same source. Accordingly, I would reverse.

      . 168 USPQ 318 (1970).

      . Serial No. 280,181, filed September 12, 1967.

      . Registration No. 716,913, registered June 13, 1961, first used September 1, 1939.