United States Court of Customs and Patent Appeals, November 2, 1959 On Motion to Dismiss Notice of Appeal and For Summary Reversal of Decision of Board of Patent Interferences. Interference No. 87,334 [Motion for Dismissal of Notice of Appeal granted.] [Motion for Summary Reversal of Decision of Board of Patent Interferences denied.] Richard P. Schulze for Wolfgang B. Klemperer. Robert W. Beach for Nathan C. Price. Before WORLEY, Chief Judge, and RICH, MARTIN and SMITH, Associate Judges PER CURIAM: This is a motion to dismiss a notice of appeal from a decision of the Board of Patent Interferences of the United States Patent Office. The appellant, Nathan C. Price, was awarded priority by the board of all the subject matter in issue in Interference No. 87,334, the award being based on a holding that the disclosure of Klemperer's application would not support the interference counts. The board overruled a contention by Price that Klemperer was estopped to contest the interference, and further held that if Klemperer's disclosure supported the counts he was entitled to judgment on the ground of res judicata as the result of an earlier interference. However, in view of the holding that Klemperer's disclosure did not support the counts, the board's rulings as to estoppel and res judicata did not affect its award of priority. The instant notice of appeal filed by Price, the winning party, assigns errors in the board's holdings as to estoppel and res judicata but, of course, does not allege error in the board's ultimate conclusion that Price was entitled to the award of priority. Title 35, Section 141, of the United States Code provides for an appeal to this court by "A party to an interference dissatisfied with the decision of the board of patent interferences on the question of priority ***." It is evident that Price is not dissatisfied with the decision of the board on priority. His dissatisfaction is merely with holdings of the board on other points not necessary to that decision. In opposing the motion to dismiss, Price argues that unless he is allowed to maintain his appeal he may be precluded from urging his contentions as to estoppel and res judicata in the event of an appeal by Klemperer. [1] It has been repeatedly held by this court, however, that all questions pertinent to the issue of priority of invention are before the court in considering an appeal from the Board of Patent Interferences and that it is not necessary for the successful party to an interference to file an appeal in order to preserve his right to argue any such question which has been decided adversely to him below. Lorenz K. Braren v. George Horner, 18 CCPA 1408, 49 F. 2d 984, 9 USPQ 497; Rollie B. Fageol v. Gabriel Midboe, 19 CCPA 1117, 56 F. 2d 867, 13 USPQ 30; Chittick v. Lyons, 26 CCPA 1382, 104 F. 2d 818, 42 USPQ 132; Driggs et al. v. Clark, 31 CCPA 856, 140 F. 2d 994, 60 USPQ 526; Draeger et al. v. Bradley, 33 CCPA 1136, 156 F. 2d 64, 70 USPQ 183; Botnen v. Dorman, 37 CCPA 813, 179 F.2d 249, 84 USPQ 270; St. Pierre v. Harvey, 43 CCPA 918, 233 F. 2d 337, 110 USPQ 47. The case of Field et al v. Knowles, 37 CCPA 1211, 183 F. 2d 593, 86 USPQ 373, relied on by Price, is not in point here since in that case priority as to count 1 was awarded to Field et al. and Knowles did not appeal. The court held that matters relating to count 1 were not before it on an appeal by Field from the decision awarding priority as to the remaining counts to Knowles. No such situation exists in the instant case since priority as to all counts was awarded to Price. Price also relies on Clark v. Camras, 40 CCPA 963, 204 F. 2d 273, 97 USPQ 434, in which Camras sought to raise the question of originality before this court although he had not urged it in the Patent Office. In refusing to consider that ground, the court said: We find nothing in the record to indicate that the question of derivation was raised before the board. Moreover, even if it were, the question of derivation substantially changes the nature of an interference proceeding, making the essential question one of originality rather than priority. Hence it would have been necessary for Camras to cross-appeal from an adverse ruling of the board on the allegation of derivation. The last-quoted sentence is dictum since there was no allegation of derivation before the board and hence no adverse ruling as to that matter. [2] However, so far as it may appear to indicate that it is necessary for the winning party to an interference to file a crossappeal in order to be entitled to argue any matter relevant to the issue of priority of invention which has been raised by him before the board, and which has been decided adversely to him, the statement contained in the sentence in question is at variance with the established practice of this court as set forth in the decisions cited above, and is accordingly overruled. In the event of an appeal to this court by Klemperer from the decision of the board here involved, Price will be entitled to argue any matter ancillary to priority which has been raised before and passed upon by the board. Accordingly, no useful purpose can be served by the attempted appeal here under consideration. The motion to dismiss the notice of appeal is granted. Klemperer has also filed a "Motion for Summary Reversal of Decision of Board of Patent Interferences," based on the filing of Price's notice of appeal to this court. That motion is denied. 47 CCPA 732; 751 O.G. 526; 272 F. 2d 398; 124 USPQ 75 Decided December 2, 1959 CALIFORNIA STUCCO PRODUCTS OF NEW ENGLAND, INC. v. MAAS & WALDSTEIN Co. (No. 6429) TRADEMARKS 1. APPEALS TO COURT-RECORD Motion to strike exhibits from record is granted to extent that matters not introduced in evidence prior to close of testimony are not considered by court in reaching its decision. 2. CLASS OF GOODS-IN APPLICATIONS TO REGISTER-IDENTITY AND SIMILARITYHOW DETERMINED CONSIDERING GOODS Since likelihood of confusion must be determined on basis of goods covered in application, present composition of those goods, not disclosed in application, is not controlling. 3. IDENTITY AND SIMILARITY-HOW DETERMINED CONSIDERING OTHER MARKSMARKS AND NAMES SUBJECT TO OWNERSHIP-DESCRIPTIVE-HOW DETERMINED One third party registration ("Plexite") for paint product does not substantiate contention that prefixes "Plex" and "Plexi" are descriptive of any material in this field. IDEN 4. IDENTITY AND SIMILARITY-HOW DETERMINED-IN GENERAL-IDENTITY AND Although applicant's "Plexichrome" and "Plexicolor" and opposer's "Plextone" look and sound somewhat different, they stimulate almost identical mental associations; since record discloses extensive advertising of "Plextone" by opposer in connection with promotion of its product over five year period and also reveals large volume of sales during this period, and since substantial doubt is raised as to likelihood of public confusion, such factors require court to resolve doubt in favor of first user; oppositions are sustained. United States Court of Customs and Patent Appeals, December 2, 1959 APPEAL from Patent Office, Opposition Nos. 34,274 and 34,512 [Affirmed.] Porter, Chittick & Russell (Cedric W. Porter of counsel) for appellant. [Oral argument March 4, 1959, by Mr. Porter and Mr. Jordan B. Bierman; reargued November 10, 1959, by Mr. Porter and Mr. Jordan B. Bierman] Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and JOHNSON (retired), Associate Judges [original argument before WORLEY, Acting Chief Judge, and RICH, MARTIN, and JOHNSON (retired), Associate Judges] MARTIN, Judge, delivered the opinion of the court: This appeal is from a decision of the Commissioner of Patents, acting through the Assistant Commissioner, affirming the decision of the Examiner of Interferences sustaining the opposition by Maas & Waldstein Co., appellee here, to the applications for registration of "PLEXICHROME”1 for a "finish coating for asphalt and concrete surfaces," and for "PLEXICOLOR" 2 for "paint for masonry walls.” Opposer, whose earlier use is conceded, owns the trademark "PLEXTONE" for "industrial coating finishes for producing multiplecolored film coatings." The Assistant Commissioner found that the products identified by the marks in issue each "fall in the broad category of 'paint products' * * *" and reach the same prospective purchasers through the same trade channels. Upon considering the marks themselves, the Assistant Commissioner held that despite certain aural and visual differences, "they stimulate almost identical mental associations," and that confusion of prospective purchasers was therefore likely, when applied to the goods in question. Applicant urges that its coatings comprise aqueous dispersions of acrylic resins produced only in monotone colors whose chemical nature and use is "distinctly different" from the multi-colored enamel type of paint product bearing opposer's mark. It further contends that the prefix "PLEXI" is in wide use on acrylic resinous products and other paints, dyes and chemical products, as evidenced by several registrations to third parties introduced in evidence, and that therefore prospective purchasers would be less likely to be confused between trademarks comprising the common prefix "PLEX" or "PLEXI." Applicant further contends that the prefix "PLEX" is descriptive of the goods in controversy. This contention is based upon various dictionary definitions referring to that syllable as a combining form pertaining to a weaving or twining together, connoting complication or complexity, as in the complexity of color associated with opposer's multi-color product. Opposer has moved to strike from the record applicant's exhibits appended to its "Request for Reconsideration" of the decision of the Examiner of Interferences, and those exhibits attached to "Applicant's Reply" to the examiner's denial of such "Request ***." [1] The motion is herewith granted to the extent that those matters not introduced in evidence prior to the close of testimony have not been considered in reaching our decision herein, namely Exhibits O to W inclusive, and the matter submitted therewith. Regardless of the specific compositions of applicant's and opposer's products, we agree with the Assistant Commissioner that since they are used as finish coatings of various surfaces, they all come within the general category of paint products. In addition, there is nothing in appellant's applications which limits the marks set forth therein 1 Application Serial No. 655,954. * Application Serial No. 655,955. Registration No. 547,125. to "acrylic emulsion paints," though the accompanying specimens indicate the current marketing of a "plexiglass type dispersion" under each mark set forth. [2] Since the likelihood of confusion must be determined on the basis of the "goods covered in appellant's applications," Intercontinental Mfg. Co., Inc., v. Continental Motors Corp., 43 CCPA 841, 230 F. 2d 621, 109 USPQ 105, the present composition of those goods, not disclosed in the applications, is not controlling. Cf. Meyer Chemical Co. v. Anahist Co., Inc. (Warner-Lambert Pharmaceutical Co., Assignee, Substituted), 46 CCPA 784, 263 F. 2d 344, 120 USPQ 483. Furthermore, although the surfaces to which the products may be applied are identical in some instances and vary in others, all are so closely related that for the purpose of resolving the issues in this controversy, we find that no significant distinction exists. The opposer's witness testified that its products are sold through two channels of distribution; the first by company representatives who solicit business from manufacturers of furniture, television sets, caskets and similar articles; and the second, by franchised distributors who sell to building and painting contractors. The witness testified further that the opposer company does not sell directly to the "home user." However, the company does suggest a retail price which, we presume, is for the guidance of the distributor in the retail trade. With reference to the applicant, the stipulation of record states that "The applicant's coatings and finishes including the coating identified by the trademark 'PLEXICOLOR,' are sold through established paint dealers and distributors, and to paint contractors, institutions, commercial users and home owners directly as well." In view of this evidence we conclude that the products of both parties move generally in the same channels of trade. As to the words themselves, applicant contends that the prefixes "PLEX" and "PLEXI" are weak since marks containing those syllables are commonly registered in the paint and related trades. It has introduced a number of third party registrations in endeavoring to support this proposition. Only one, "PLEXITE," is registered for paint products. [3] We do not believe that this one registration for a paint product substantiates the contention that such prefixes are descriptive of any material in this field. [4] Considering the words "PLEXTONE," "PLEXICHROME" and "PLEXICOLOR" in their entireties, we agree with the conclusion of the Assistant Commissioner that the words "look and sound somewhat different but they stimulate almost identical mental associations" and, since the record discloses extensive advertising of PLEXTONE by the opposer in connection with the promotion of its product over a five year |