against its right to petition for cancellation of "STA-SLIM." 15 U.S.C. 1092. It should be remembered in this connection that "SLIM" was unregistered and yet its user prevailed in the "VITASLIM" case. It should also be noted that the right of appellant to prosecute this action does not depend upon the exclusive ownership of a trademark. California Piece Dye Works v. California Hand Prints, Inc., 34 CCPA 907, 159 F. 2d 871, 72 USPQ 505.

[2] Also, this court has held that a licensor of an unregistered mark may successfully maintain opposition proceedings. In Wilson v. Delaunay, 44 CCPA 1019, 245 F. 2d 877, 114 USPQ 339, this court said:

It is to be noted moreover that, although the exact terms of the agreements between appellee and his licensees are not shown by the record, it is clear that such licensees accounted to appellee and paid him royalties for the use of the mark "Zombies." Evidently, therefore, appellee was regarded as the owner of the mark whether or not he controlled the exact manner in which it was used or the composition of the products to which it was applied.

[3] Second, the mere fact that this is a cancellation proceeding, whereas the "VITA-SLIM” case involved an opposition, is not significant. Appellant had no opportunity to oppose the registration of "STA-SLIM" on the Supplemental Register but under the Lanham Act was limited to attacking it by a petition to cancel. We find nothing in the statute which indicates that it contemplates a more stringent procedure under these circumstances than when an opposition to registration on the Principal Register is instituted.

Next, appellee contends that the evidence introduced in this case and not found in the previous one distinguishes them. It refers especially to evidence of third party registrations. The only one using "SLIM" which applies to milk is "VITA-SLIM" which was held unregisterable in the "VITA-SLIM" case. [4] Since the other third party registrations are applied to different products than those involved in the case at bar they are of no material significance.

Further, appellee asserts that the length of time which transpired between the registration and the filing of this action provides the distinguishing factor. [5] We do not believe that the lapsed time was unreasonable, and appellee cites no cases to substantiate its contention. Coming now to the marks themselves, it would serve no purpose to analyze again appellant's mark "SLIM" for this court has already done so in the "VITA-SLIM" case in stating:

While the word "Slim" is suggestive of the intended effect of skim milk on the purchaser, as indicated by the fact that both parties have used it in association with the notation "non-fattening," it would not be thought of as relating to the physical properties of the milk itself, and hence is not descriptive in the same sense as "Vita." [Italics ours.]

There is other evidence in this case which fortifies appellant's contention that its product, skim milk which has been enriched with nonfat milk solids and vitamins A and D, is known by the trademark "SLIM" and as the product of Bellbrook. That trademark has been used by appellant to identify its product in the San Francisco area since 1949 and by its numerous licensees in many states for some time. Further, appellant has registered "SLIM" for this product in twentyseven states. It exerts control over its licensees by contracts having various restrictive provisions including the requirement that each franchise holder submit samples of his product to it monthly for analysis.

As a prerequisite to the prosecution of this action, section 24 requires that the petitioner believes "that he is or will be damaged by the registration of a mark on this register ***." This matter was considered by this court in the "VITA-SLIM" case and we agree with its holding in this connection wherein it was said, "Likelihood of confusion affords sufficient evidence of probable damage, even though the opposer may not have used its mark as a technical trademark. George H. Ruth Candy Co. v. The Curtiss Candy Co., 18 C.C.P.A. (Patents) 1471, 49 F. 2d 1033, 9 U.S. Pat. Q. 452; Virginia Dare Extract Co., Inc. v. Adah Mae Dare, 21 C.C.P.A. (Patents) 1086, 70 F. 2d 118, 21 U.S. Pat. Q. 334, and cases there cited."

[6] It appears that several of appellant's licensees operate in the vicinity of the place of business of appellee. There being no regional limitation upon the registration of appellee, it could expand its operations to cover many of the areas now being exploited by the licensees including appellant's own area of operation. Hence, if the marks are confusingly similar, it is probable that appellant would be damaged by the registration of "STA-SLIM.”

Therefore, the next question which we must resolve is whether "SLIM" and "STA-SLIM" are so similar as to be likely to create confusion. As has been stated, this court in the "VITA-SLIM" case found "SLIM" and "VITA-SLIM" to be so. It based its opinion on its finding that "Slim" forms the dominant part of appellee's mark 'Vita-Slim,' and the concurrent use of those two marks on identical goods would be likely to lead to confusion in trade." [7] Since here the goods are substantially identical and "SLIM" is the dominant part of "STA-SLIM," we arrive at the same conclusion, that is, the marks here would be likely to create confusion in the trade. Merely because "VITA" was held to be more or less descriptive of the product because it contained vitamins, and here "STA” in conjunction with "SLIM" is suggestive of the result the registrant hopes to lead others

to believe will be obtained by using the product, we see nothing in such a distinction which would make us alter our conclusion.

For the above reasons we are of the opinion that the petition for cancellation should have been sustained, and, accordingly, the decision of the Assistant Commissioner is reversed.

JOHNSON, J., did not participate in decision.

47 CCPA 767; 753 O.G. 298; 274 F. 2d 672; 124 USPQ 374

Decided January 19, 1960

IN RE RUBEN O. PETERSON (DECEASED) (THE OSBORN MANUFACTURING COMPANY, ASSIGNEE, SUBSTITUTED) (No. 6465)

PATENTS

1. APPEALS TO COURT-ISSUES DETERMINED EX PARTE CASES

Although Board in affirming examiner referred specifically only to one reference, examiner relied on and court considers three additional references. 2. EVIDENCE-JUDICIAL NOTICE

It is matter of common knowledge that brush elements may be attached to rotatable support.

United States Court of Customs and Patent Appeals, January 19, 1960 Appeal from Patent Office, Serial No. 236,755

[Reversed]

Almon S. Nelson, Oberlin & Limbach (John C. Oberlin, of counsel) for appellant.

Clarence W. Moore (S. Wm. Cochran of counsel) for the Commissioner of Patents.

[Oral argument November 9, 1959, by Mr. Oberlin and Mr. Cochran] Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and JOHNSON (retired), Associate Judges.

RICH, Judge, delivered the opinion of the court:

This appeal is from the decision of the Board of Appeals of the United States Patent Office affirming the examiner's rejection of claims 12, 17, 18, 26 and 27 of appellant's application entitled "Brush and Brush Materials." The board allowed twelve claims, seventeen claims being held withdrawn from consideration under Rule 142(b). The sole issue is whether the subject matter of the rejected claims is obvious in view of the prior art.

Appellant's specification is directed to brush material comprising brush bristles, filaments or wire strands bonded together by plastic to form a generally flat flexible band and discloses numerous embodiments employing the novel brush material in a completed brush. The said band may be a long continuous strip, rolled up to facilitate

handling, which, when used, is unrolled as it is cut into appropriate lengths. The plastic bonding may be continuous along the entire length of the strip or it may bond the bristles at spaced positions along the strip, depending on the kind of brush to be made. The nature of the applicant's invention may best be appreciated by quoting from the specification.

In all methods of brush manufacture utilizing relatively short lengths of bristle material such as, for example, horsehair, tampico fiber, wire, Nylon and the like, a considerable problem is encountered in handling such bristle material as numerous light and easily displaced filaments both to secure a uniform and desired density, spacing, and orientation of fill and also adequate gripping of bristles and uniform bristle length in the finished brush before or without trimming.

A plurality of continuous strands or filaments, commonly wire of from about .005 to .016 inches in thickness, may be arranged in parallel uniformly closely spaced relationship and bonded together with a continuous plastic coating to form a continuous unitary strip 1 from which units of desired length may be cut *** Ordinarily, the several strands of wire will first have been passed through an appropriate adhesive to facilitate the later bonding of the plastic thereto and the plastic such as Nylon or a polyvinyl plastic will be intruded between the wires and about them as by passing the band of wires through a die of appropriate shape.

It will thus be seen that I have produced a novel brush element in the form of a brush strip from which the filaments or strands of brush material extend in thin flat units or fingers. Such fingers may be quite flexible transversely of the brush strip although, of course, considerably more rigid than the individual strands or filaments longitudinally of the strip. Where a softer brushing action is desired, the plastic may be removed from the end portions of the fingers

The association of the individual filaments into unitary bands or fingers by means of the thin plastic coating (ordinarily of a thickness ranging from approximately one-half the diameter of the individual filaments to equal to the diameter of such filaments) not only greatly facilitates the handling of such brush material and uniform distribution of the same in the brush back but also serves to protect such filaments and modify the brushing characteristics of the same.

The specification discloses, and claims have been allowed to, certain finished brushes utilizing lengths of plastic-embedded bristles, the broader claims having been rejected. Claim 17, as we view it, is the broadest claim on appeal and reads as follows:

17. A brush element comprising a support and brush material secured thereto and extending therefrom, said brush material comprising a plurality of individual thin generally flat flexible plastic fingers and bristle material embedded in such plastic and extending beyond the outer ends of said fingers. [Emphasis ours.]

It should be noted that the "material" which does the brushing is distinct from the "support."

Claims 12, 18, 26 and 27 include substantially the same emphasized limitations in the combinations to which they are directed. Claim 18 does not recite "flexible," but includes "a single row of bristles embedded in parallel side-by-side relationship." Claims 12, 26 and 27 are each drawn to "A rotary brush" and recite the support as being rotatable, with further limitations in claims 26 and 27 as to the orientation of the fingers with respect to the direction of rotation of the support.

The references relied on are:

Walls, 518,168, April 10, 1894

Saltiel, 864,922, September 3, 1903

Neuschaefer, 2,363,685, November 28, 1944

Swart, 2,648,084, August 11, 1953

The examiner finally rejected the claims on appeal "as unpatentable over Walls or Saltiel in view of Swart or Neuschaefer. No invention would be required to use the plastic coating of the last two on the flat strands of the first two." This is all that was said as to the limitations common to claims 12, 17, 18, 26 and 27.

In sustaining the rejection the board said:

We agree with the examiner that the brush elements of Neuschaefer are applicable as radial tuft elements of a rotary brush without invention. *** Such use does not add unobvious results thereto and gives a structure within the terms of these claims.

[1] Although the board in affirming the examiner as to the claims on appeal referred specifically only to Neuschaefer, the examiner relied on and we shall consider Walls, Saltiel and Swart in addition.

Walls shows a street sweeper having a rotary brushing unit comprising a drum-shaped support for circumferentially spaced rows of bristles. Each row contains a suitable number of "V-shaped" strips, the bottom thereof being used for retention of the strip on the drum. There is no indication of the type of material used in the "V-shaped" strips or the manner in which they are constructed.

Saltiel also deals with rotary brushes. The brushing elements are "bundles of wire, *** which are bent or looped and mounted on rings and the latter passed over a mandrel upon which they are pressed together." As the rings are pressed together, that portion of the wire bundle located between adjacent rings appears to be flattened out so that the bundles taper from root to tip. Near each end of a bundle, remote from the support, Saltiel illustrates in the drawing but does not identify or mention in the specification, what appear to be wire ties for keeping the wires in a bundle, perhaps during the fabrication, but he does not disclose whether they are wire or string. There is no indication that the bristles may be embedded in anything.