However, various rules have been developed for the purpose of aiding in the determination of the question of confusing similarity. It is well settled that the marks must be considered in their entireties, Apollo Shirt Co. v. Enro Shirt Co., Inc., 35 C.C.P.A. (Patents) 849, 165 F. (2d) 469, 76 USPQ 329; Valpo Co. v. Solis, Entrialgo y. Compania, 36 C.C.P.A. (Patents) 1160, 175 F. (2d) 457, 82 USPQ 182. But different features may be analyzed to determine whether the marks are confusingly similar, Hoffman-La Roche, Inc. v. Roch D. Kawerk, Etc., 32 C.C.P.A. (Patents) 954, 148 F. (2d) 557, 65 USPQ 218, and similarities and dissimilarities should both be considered, Younghusband v. Kurlash Co., Inc., 25 C.C.P.A. (Patents) 886, 94 F. (2d) 230, 36 USPQ 323.

It has also been held that the common portions of the marks cannot be disregarded, Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 32 C.C.P.A. (Patents) 827, 146 F. (2d) 1019, 64 USPQ 394, but a descriptive word, which has little trademark significance, will not be regarded as the dominant part of the mark, West Disinfecting Co. v. Lan-O-Sheen Co., 35 C.C.P.A. (Patents) 706, 163 F. (2d) 566, 75 USPQ 77.

[1] The question of similarity must be considered with respect to similarity of sound, appearance and meaning. Coty, Inc. v. Perfumes Habana, S.A., 38 CCPA 1180, 190 F. 2d 91, 90 USPQ 224.

The Assistant Commissioner stated categorically that the marks "neither look alike nor sound alike." [2] We do not think the issue may be so summarily determined. The question of similarity is ordinarily one of degree. The issue is whether the marks are confusingly similar, not whether they are identical. Coty, Inc. v. Perfumes Habana, S.A., supra.

We find that there is some similarity between the marks both in appearance and sound, possibly insufficient, when considered alone, to create confusion, but important in the overall assessment of the marks on the issue of confusing similarity. Each mark has three syllables with a hyphen separating the first from the second. Each has "Trop" and "ic" as two of its three syllables. The "ic" ending is common to both.

This brings us to consideration of similarity of meaning. The examiner observed that the marks "are to some extent similar in connotation, in that both are suggestive of the fact that the motor oils to which they are applied are intended for use in both hot and cold weather ***" The Assistant Commissioner stated that although the marks "suggest similar things they are so highly suggestive when applied to all-weather motor oils that the differences in sound and appearance are believed to be sufficient to avoid all reasonable probability of confusion, especially where, as here, opposer's mark, as used, is in the nature of a grade or type mark."

The marks "Trop-Artic" and "Frig-Tropic" are obviously identical in meaning, each connoting opposite extremes in temperature. While these extremes are, of course, inverted through a transposition of the

hyphenated terms, the marks embody identical suggestions of the properties intended to be attributed to the motor oils.

In Independent Nail & Pack. Co. v. Stronghold Screw Prod., 205 F.2d 921, 925, it was said:

Of course no one has a right to preempt a word which has been commonly used to designate and identify the product to which it is applied. However, a trademark may consist of a word or words suggestive of the character of the goods or the properties which the owner of the mark wishes the public to attribute to them, such as "Holeproof," Holeproof Hosiery Co. v. Wallach Bros., C.C., 172 F. 859, and be valid.

We do not agree that the marks are "so highly suggestive" as to warrant the conclusion reached by the Assistant Commissioner. They are certainly no more suggestive than the marks "Dear to Me" and "Endearing" as applied to perfumes and toilet articles. Cecile Gagnon Co. v. Vourjois, Inc., 42 CCPA 972, 223 F. 2d 731, 106 USPQ 203. There, registration of "Dear to Me" was refused on the ground of confusing similarity of meaning. The court agreed that the marks also had a "considerable similarity in sound," but went on to state:

Suffice it to say, that this court has recently held that marks substantially identical in meaning alone, but attached to identical goods, may result in the likelihood of confusion, despite the fact that such marks are wholly unlike both in sound and appearance. Hancock v. The American Steel & Wire Co. of New Jersey, Etc., 40 C.C.P.A. (Patents) 931, 203 F. (2d) 737, 97 USPQ 330.

Hillyard Chemical Co. v. Vestal Laboratories, Inc., 41 CCPA 701, 703, 206 F. 2d 926, 99 USPQ 117, relied on by the examiner, is distinguishable on its facts. The marks there involved, "Shine-All" and "Briten-All," were highly suggestive of the nature of the goods to which they were applied-cleaning and polishing-but differed sufficiently in sound and appearance to avoid the likelihood of confusion.

[3] Measured by the criterion of likelihood of confusion, mistake or deception to purchasers, we are persuaded that an ordinary prospective purchaser of Phillips' all-weather motor oil, faced with a choice of cans bearing, as indicative of origin, only the respective marks "Trop-Artic" and "Frig-Tropic" would be likely to be confused or mistaken.

We conclude that the marks now before us, when viewed in their entireties, and in every aspect, are so similar as to be likely, when applied to identical goods, to cause confusion or mistake or to deceive purchasers. [4] If there were any doubt on the subject, that doubt would have to be resolved against the newcomer. Vanity Fair Mills, Inc. v. Pedigree Fabrics, Inc., 34 CCPA 1043, 161 F. 2d 226, 73 USPQ 438.

The decision of the Assistant Commissioner is accordingly reversed. MARTIN, J., did not participate in decision.

47 CCPA 952; 756 O.G. 811; 277 F. 2d 952; 125 USPQ 581

Decided May 3, 1960

DAGGETT & RAMSDELL, INC. v. I. POSNER, INC. (No. 6525)

TRADEMARKS

1. IDENTITY AND SIMILARITY-HOW DETERMINED PURCHASERS AND SELLING

METHODS

Present sales methods are not conclusive in opposition since neither party is restricted by its registration or application to a particular channel of trade. 2. APPEALS TO COURT-ISSUES DETERMINED TRADEMARK CASES

Only question before court is registrability of mark as shown on application; court is not concerned with any variations of mark; applicant's right to use portion of mark alone is for another forum to consider at another time. 3. IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERAL-IDENTITY AND SIMILARITY-HOW DETERMINED DOMINANT FEATURE

Menendez v. Holt, 128 U.S. 514, does not absolutely prohibit consideration of surname on issue of similarity; instead, courts state that it is proper to consider entire mark, including surname, but recognize that parts of mark may be more dominant than others in the sense that they are more likely to remain in public's mind and are, therefore, entitled to more weight in deciding likelihood of confusion; surname can be significant or co-equal portion of mark and must not always be totally disregarded in deciding question of confusing similarity.

4. IDENTITY AND SIMILARITY-HOW DETERMINED-PRIOR DECISIONS

In considering confusing similarity, each case must be decided on its own facts.

5. IDENTITY AND SIMILARITY-HOW DETERMINED-DISSECTING MARKS

In determining confusing similarity, mark must be considered in its entirety.

6. IDENTITY AND SIMILARITY-WORDS-NOT SIMILAR

Likelihood of confusion between "Posner's ebonaire" and "Debonair" is

remote.

7. APPEALS TO COURT-WEIGHT GIVEN DECISIONS BELOW

Court is reassured in its judgment by fact that it is in accord with unanimous decision of Trademark Trial and Appeal Board.

United States Court of Customs and Patent Appeals, May 3, 1960 APPEAL from Patent Office, Opposition No. 35,747

[Affirmed.]

Mead, Browne, Schuyler & Beveridge, William E. Schuyler, Jr., Andrew B. Beveridge (Francis C. Browne of counsel) for appellant.

Howard A. Rosenberg for appellee.

[Oral argument February 9, 1960, by Mr. Browne and Mr. Rosenberg] Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge FRANCIS L. VAN DUSEN.1

VAN DUSEN, Judge, delivered the opinion of the court:

On March 17, 1955, I. Posner, Inc. (hereinafter "Posner") filed an application for the registration of the following mark for a "Pressing Cream for the Hair":

3

The description of the goods in the application was later amended to read, "A hair treatment kit consisting of a pressing cream, a cosmetic scalp cream and a cream curl." 2 Use of the mark since January 1954 was alleged. The registration was opposed by Daggett & Ramsdell, Inc. (hereinafter "D & R"), as owner of the registered trademark, "Debonair," for "After shaving Lotions, Hair Tonics and Perfumes, Cologne, Deodorants and Talcum," asserting that Posner's proposed mark so resembles its own registered mark as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers. The Trademark Trial and Appeal Board unanimously decided on December 17, 1958, that "Considering the differences between both the marks and goods involved, it is concluded that confusion in trade would not be likely." Accordingly, the opposition was dismissed and this appeal was taken pursuant to Section 21 of the Lanham Act.

Posner has urged upon this court that its product is so substantially different in its composition and use from those of the opposer that no confusion as to origin could possibly arise in the mind of the public, no matter how similar the marks may be. Posner asserts that its product is designed for use by Negro women to remove kinks from their hair and must be used in connection with a heavy comb and a hot

1 United States District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 292 (d), Title 28, United States Code.

The appropriateness of the use of the word "kit" has been questioned by the Trademark Trial and Appeal Board (R−63, fn. 2).

Reg. No. 538,612, issued February 27, 1951. There is also evidence that "Debonair" was used on a "Hair Cream Lotion" and a "Dandruff Control Hair Dressing" (R-53). 415 U.S.C. 1052(d).

curling iron. It was admitted at oral argument, however, that its creams are not sold exclusively in kits with the necessary equipment for application. Therefore, one would have to read the directions in order to discover that the heavy comb and curling iron were necessary. Furthermore, Posner's Cosmetic Scalp Cream does not require this unique equipment for application. Also, neither trademark indicates that the goods on which it appears are for use by members of one sex rather than the other. Under these circumstances, it does not appear to this court that Posner's goods are so different from D & R's Cream Hair Lotion that confusion is improbable for this reason alone.

The applicant also argues that confusion is improbable, irrespective of similarity of marks, because its product is sold exclusively through stores while D & R's products are only sold door-to-door by the Fuller Brush Company. [1] Neither party is restricted by its registration or application to a particular channel of trade, however. Under these circumstances, the present sales methods are not conclusive in this type of proceeding. This was pointed out in In re Fleet-Wing Corporation, 38 CCPA 1039, 188 F. 2d 476, 89 USPQ 369, where it was stated:

5

The emphasis placed by appellant on the environment of sales is not appropriate because the application for registration does not limit sales in any particular manner or to any particular stores or stations and it is well established that sales methods are subject to change at any time.

Thus, it is clear that the final resolution of this dispute hinges on whether or not the marks in question differ sufficiently so that, when applied to the parties' products, it is not likely that purchasers will be confused. D & R asserts that it is improper to give any weight to the addition of the surname "Posner's" to the fanciful mark "ebonaire" in determining the question of confusing similarity to its own mark, "Debonair," citing Menendez v. Holt, 128 U.S. 514 (1888). [3] This decision has not been construed as absolutely prohibiting consideration of a surname on the issue of similarity. Instead, the courts state that it is proper to consider the entire mark, including the surname, but recognize that parts of a mark may be more dominant than others in the sense that they are more likely to remain in the public's mind and are, therefore, entitled to more weight in deciding the likelihood of confusion. This clearly represents the approach taken

5 Posner's contention, which is not supported by the record (R-16, 20-22), that Fuller does not sell in Negro neighborhoods is subject to this same infirmity.

[2] The only question presently before this court is the registrability of the mark "Posner's ebonaire" as shown on the application (R-9). We are not concerned with any variations on that mark. Posner's right to use "Ebonaire" alone, as it has done on its labels (R-5), is for another forum to consider at another time. See Benjamin D. Smith v. Tobacco By-Products & Chemical Corp., 44 CCPA 880, 243, F. 2d 188, 190, 113 USPQ 339.