peal Board found that confusion was likely and accordingly sustained appellee's opposition to the registration of "PHENISTAN." Appellee-opposer, the owner of the "PHENERGAN" registration 2 is concededly the prior user.

The board correctly found that "PHENERGAN" is sold in various forms only on prescription, that since 1951 over 32 million dollars have been spent in advertising "PHENERGAN" products by various means, and that since that time over eleven million dollars worth of those preparations have been sold. "PHENISTAN" was also found to be dispensed only on prescription and to have been used continuously since September 1955, the date of first use alleged by appellantapplicant.

Over thirty registrations utilizing "PHEN" as a syllable for pharmaceutical and medicinal products and several pages taken from the 1957-1958 "American Druggist Blue Book" and the "1957 Drug Topics Red Book" listing marks and names embodying "PHEN" as a prefix thereof for medicinal preparations were considered by the board to be "irrelevant, since any possible meaning of 'PHEN' is immaterial if the marks as a whole are likely to cause confusion or mistake."

Its conclusion was that

The marks here involved are "PHENISTAN" and "PHENERGAN", and the resemblances therebetween in both sound and appearance are such that confusion or mistake would be reasonably likely to occur.

Appellant argues that because so many marks and generic names in the medicinal field utilize "PHEN" as a prefix or syllable thereof, as well as because so many of them have other marked similarities to "PHENERGAN," those who deal with the marks on the parties' prescription goods, skilled persons such as physicians, pharmacists and those working in medical institutions, are "conditioned" to distinguishing between marks of that nature and, therefore, the "PHENERGAN" mark must be considered weak and as such, must be accorded a scope of protection commensurate with that fact. There is nothing of record, it is said, to indicate that the skilled class of persons dealing with the goods or the channels of trade in which the products are sold is likely to change. For these reasons appellant urges us to find that likelihood of confusion is nonexistent.

Appellee argues that since the quantum of use of the marks and names incorporating "PHEN" as a syllable thereof has not been shown, conditioning of purchasers' minds to distinguish between such marks cannot be presumed. It is urged that "PHEN" is neither

2 Reg. No. 507,057, issued February 22, 1949, as amended February 12, 1957. The board, in its decision stated the Red Book date to be 1958. Since the only Red Book pages of record are those of 1957, it appears that the board considered those instead of the 1958 pages.

descriptive nor suggestive. Appellee points out that the goods, although not identical, are similar and that the marks, when considered in their entireties, look and sound so much alike that there exists the likelihood of confusion which is contemplated by Sec. 2(d). It further argues that the fact that there are other marks used on medicinal preparations similar to those at bar is no reason to add to the confusion which they might cause, especially when dealing with pharmaceuticals and medicinals where, if there is any reasonable likelihood of confusion, applicant's registration must be refused.

[1] Since the goods marketed under the "PHENISTAN" and "PHENERGAN" marks have at least some common therapeutic effects, for the purpose of resolving the issues herein the two products will be considered to be the same. At the time this controversy arose both drugs were dispensed only on prescription, which would indicate that the general public would be protected from purchaser confusion. Appellant contends that likelihood of confusion is remote because the marks would be used only by physicians, pharmacists, and other skilled personnel, who are discriminating. However, we cannot predicate our decision on the assumption that this method of selling will continue indefinitely, since it is conceivable, and in fact it is so admitted in a stipulation, that in the future one or both drugs may be sold over the counter in pharmacies.

[2] Coming now to the consideration of the words themselves, although the evidence introduced by appellant shows that the common prefix "PHEN" has been used in many trademarks registered for medicinal products as well as in many more marks listed in druggists' manuals, this court has held that if the words in issue, when considered in their entireties, are likely to cause confusion, the fact that they have common syllables or prefixes which are common in other marks in the field is not controlling. Meyer Chemical Co. v. Anahist Co., Inc. (Warner-Lambert Pharmaceutical Co., Assignee, substituted) 46 CCPA 784, 263 F. 2d 344, 120 USPQ 483; Sundure Paint Corporation v. Maas & Waldstein Co., 46 CCPA 926, 267 F. 2d 943, 122 USPQ 377.

[3] Besides having the identical prefix "PHEN," PHENERGAN" and "PHENISTAN" each have three syllables and end in "an." Although their second syllables and the first letters of their third syllables are different, we believe, when considering the two words in their entireties, that they are quite similar in sound and appearance. We are of the opinion under all of the circumstances of this case that appellant's mark so resembles that of appellee that when applied to appellant's goods it is likely to cause confusion or mistake or deceive purchasers. We therefore affirm the decision of the Trademark Trial and Appeal Board.

47 CCPA 1152; 759 O.G. 779; 280 F. 2d 158; 126 USPQ 390

Decided July 6, 1960

THE MURRAY CORPORATION OF AMERICA v. RED SPOT PAINT AND VarNISH CO., INC. (No. 6574)

TRADEMARKS

1. IDENTITY AND SIMILARITY-HOW DETERMINED-CONSIDERING OTHER MARKS While there is no evidence that marks listed in Trademark Directory were ever used, they constitute an indication that word and its phonetic equivalents have a suggestive significance as applied to goods and hence would be taken primarily as describing or suggesting some quality of goods rather than as pointing to their origin; likewise, third party registrations which incorporate word and its audio equivalents would have same significance.

2. IDENTITY AND SIMILARITY-HOW DETERMINED—APPEARANCE, MEANING OR SOUND IDENTITY AND SIMILARITY-HOW DETERMINED DISSECTING MARKS— IDENTITY AND SIMILARITY-WORDS-NOT SIMILAR-Marks and NAMES SUBJECT TO OWNERSHIP-DESCRIPTIVE-PARTICULAR MARKS

"Easy" being suggestive of paint, opposer is not entitled to preempt its use generally and certainly not in instant case just because applicant has joined "Easy" with a word ("tint") that connotes color and is descriptive of the paint; although applicant's "Easytint" embodies opposer's entire mark ("Easy"), when considering marks in their entireties, as court must, court is of opinion that likelihood of confusion does not exist.

3. IDENTITY AND SIMILARITY-HOW DETERMINED-ADDING TO OTHER'S MARK Cases which prohibit registration of mark which incorporates entire trademark of another involve marks which, when considered in their entireties, would cause confusion.

United States Court of Customs and Patent Appeals, July 6, 1960 APPEAL from Patent Office, Opposition No. 35,527

[Affirmed.]

James H. Littlepage, Francis P. Keiper (Helen F. Keiper of counsel) for appellant.

Herbert J. Jacobi (Samuel L. Davidson of counsel) for appellee.

[Oral argument May 5, 1960, by Mrs. Keiper and Mr. Davidson]

Before WORLEY, Chief Judge, and RICH, MARTIN, and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK.1

MARTIN, Judge, delivered the opinion of the court:

The Murray Corporation of America, owner of registration No. 602,641, registered March 1, 1955, for "EASY" for use on "Touch-up

1 United States Senior District Judge for the Eastern District of Pennsyllvania, designated to participate in place of Judge O'Connell, pursuant to provisions of Section 294 (d), Title 28, United States Code.

Filed August 31, 1953, alleging first use to be July 20, 1953.

Enamel supplied in self-spraying containers for application to domestic laundry and other appliances," has opposed the registration of "EASYTINT" for "White paint particularly constructed to be mixed with various colors as desired." The "EASYTINT" application was filed on March 22, 1955, and alleges March 12, 1955, to be the date of first use of that mark in commerce. Appellant is unquestionably the first user. The sole question presented for our consideration is whether "EASYTINT" so resembles "EASY," as to be likely, when applied to appellee's goods, to cause confusion or mistake or to deceive purchasers (Lanham Act, Section 2(d)).

Appellant's touch-up enamel is designed specifically to be used in repairing blemishes in the enamel finishes of domestic appliances of its manufacture. At the time testimony was taken it was produced only in white, although it was argued by appellant that it will also be made in colors for colored appliances which are becoming more popular. Appellant's enamel is sold principally to dealers handling its household appliances. However, there is evidence that these dealers may be hardware companies where other items besides "EASY" appliances, such as paints, are sold.

The "EASYTINT" mark is used in connection with quart and gallon containers of white and gray base paints of several different textures adapted to have colorants added to them whereby hundreds of different colors of the various textures may be produced at the retail outlet from a limited stock of the bases. "EASYTINT" is sold through paint stores, lumberyards, department stores, furniture stores, hardware stores and general stores to the general consuming public. Although appellee manufactures and sells a large variety of paint products, including some in aerosol containers, "EASYTINT” is not now marketed in aerosol cans.

A number of third party registrations for paints, lacquers and enamels are of record in this case. Also in evidence is the "1953 Trade-Mark Directory," and a portion of its 1955 supplement issued by the Trade-Mark Bureau of the National Paint, Varnish and Lacquer Association, Inc. The Directory states "The Trade-Mark Bureau has on file all trade-marks listed with it by manufacturers in the

They are: "Celanese," Reg. No. 240, 109; "Easycoat," Reg. No. 262,659; "Eze-Ply," Reg. No. 317,085; "Easy Way," Reg. No. 325,642; "Kleen-Ezy," Reg. Nos. 335,304, 341,861; "E-Z Wipe," Reg. No. 360,824; "Strikeasy," Reg. No. 433,023; “Eaz-on," Reg. No. 576,586; "Eezel," Reg. No. 596,630; "So-E-Zy," Reg. No. 613,789.

Included in that Directory for paints, varnishes, lacquers and similar products are the following marks: EASY, EASYCOAT, EASYFLO, EASY FLOW, EASY-FLOW, EASYKOTE, EASYLAC, "EASY-ON-ENAMEL," EASY RUB, EASY SHINE, EASY WAY, EAZ-ON, E-Z, E-Z BRUSH, E-Z-C, E-Z-CLEEN, E-Z-COVER, E-Z-DO, E-Z-DUZ-IT, EZE-COTE, EZEE COAT, EZEE-KOTE, EZEFLOW, EZEKEP, EZE LUSTRE, EZENAMEL, EZE-PLY, EZETONE, E-Z FLO, E-Z-FLO, E-Z FLOW, E. Z. FREE-FLOWING, E-Z-LAC, E-Z-LUX, EZON, E-ZON, E-Z-WIPE, EZYFLO, EZY FLOW, EZY-ON, EZY-RUB, EZY-TONE, EZY-T-USE, EZY WORK.

paint industry as well as all marks pertaining to the industry that are registered in the United States Patent Office."

No reference to the third party marks was made by the Assistant Commissioner in her decision. It was her opinion that—

Considering the nature of and differences in the marks, the differences in goods, the differences in trade channels, and the differences in average purchasers, it is concluded that there is no likelihood of confusion. There is no opportunity for confusion of purchasers under the circumstances of this case.

Appellant points out that the parties' goods are of the same general class, paints, and argues that there is a substantial overlapping in the trade channels wherein those products are sold. Appellant further contends that purchasers are likely to think that "EASYTINT" paints are tinted products of its manufacture and that the addition of the descriptive word "tint" is insufficient to avoid likelihood of confusion. As to the third party registrations, appellant contends that they do not have the same connotation that "EASYTINT" does and that in any event there is no need to compound confusion by adding to the Principal Register another confusingly similar mark. With respect to the Trade-Mark Directory marks, appellant states that there is no indication that they have even been used as much as once.

Appellee argues that the goods of the parties are for specifically different purposes and that the trade channels in which they are sold are different, appellee's products being sold through various retail outlets while appellant's products, specifically designed to be used in repairing its own appliances, are sold principally through its appliance dealers. Even if the products were sold to the same stores, appellee continues, they would be sold in different departments or sections thereof since one is specifically a repair product. Appellee states that its mark is highly suggestive and that the sole similarity between it and "EASY" is in the word "easy" which is not arbitrary in the paint industry and consequently not entitled to extensive protection. The connotations of the two marks are said to be specifically different.

Appellant does not contend and we do not find that it has proven use of its "EASY" mark on paints other than those for which the mark was registered, i.e., "Touch-up Enamel supplied in self-spraying containers for application to domestic laundry and other appliances.” Although one of appellant's witnesses stated that a very small quantity of "EASY" enamel was sold in bulk, its "Buyer of Finished Parts" who has been in the purchasing department for over thirty years testified that he knew of no purchases of "EASY" touch-up enamel in other than spray or aerosol cans. This contradictory evidence is insufficient to show any extension in the use of the mark for touch-up enamels. Neither is there evidence which shows that appellant manu