(Proviso) (1) But (a) if the mark is identical with one already in existence and (b) if it is used on goods of the same descriptive properties (with the same meaning as "same class" in the general rule; synonym, related goods), it shall not be registered; (2) or (a) if the mark so nearly resembles another mark as to be likely to cause confusion and (b) if it is used on goods of the same descriptive properties, it shall not be registered.

In contrast, appellant's construction of the statute, spelled out, would read something like this:

That no mark by which the goods on which it appears may be distinguished from other goods of the same class (the test of the class being the likelihood of causing confusion) shall be refused registration;

Provided, That trade-marks which are identical with a known mark and used on merchandise of the same descriptive properties (the test of the last phrase being the likelihood of causing confusion), shall not be registered; And also provided, That trade-marks which so nearly resemble another mark, as to be likely to cause confusion (appellant may cancel the test here), and which are applied to goods of the same descriptive properties (again the test being the likelihood of causing confusion), shall not be registered.

If this be the meaning of the statute, it could have been written much more concisely: that no trade-mark shall be refused registration unless it is likely to cause confusion.

[1] Congress, however, chose to lay down more definite standards, and to make differentiations. Congress provided that if a trademark is identical with one in existence and if it is applied to related goods, it shall not be registered, and that if a trade-mark so nearly resembles one in existence as to be likely to cause confusion, and if it is applied to related goods, it shall not be registered.

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[2] Congress separated the "identical" marks from the "nearly resemble" ones. This was done by using sufficient language for standards in each instance and by dividing the two provisions with a comma followed by the conjunction "or." Then in the second part of the proviso, the part dealing with marks of close resemblance, Congress addressed the likely-to-cause confusion test to the similarity of the marks by using the adverbs "so" and "as" to introduce correlative clauses, to wit: "so nearly resemble as to be likely to

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We are not told by appellant whether in relating the confusion test to the descriptive properties he believes that it does not go to the close resemblance of the marks.

Although the Supreme Court in American Steel Foundries v. Robertson, 342 O. G. 711, 269 U. S. 372, was concerned with the next proviso which deals with appropriating corporate names for trade-marks, the Court expressed an historic rule of trade-mark law which affords background for the construction of this section. "The general doctrine is that equity not only will enjoin the appropriation and use of a trade mark or trade name where it is completely identical with the name of the corporation, but will enjoin such appropriation and use where the resemblance is so close as to be likely to produce confusion as to such identity, to the injury of the corporation to which the name belongs." P. 381.

The Judge of this court who applied the confusion criterion to determine if goods were of the same descriptive properties while saying he reasoned from effect to cause in California Packing Corp. v. Price-Booker Mfg. Co., 308 O. G. 451, 52 App. D. C. 259, 285 Fed. 993, saw the two steps two and one-half years earlier. "It is conceded that the goods are substantially identical. The only question, then, is as to whether or not the two marks are so similar as to be likely to produce confusion in the minds of purchasers with respect to the

cause confusion." That the confusion test goes to the similarity of the marks and not to the descriptive properties of the goods is borne out by the fact that the phrase "merchandise of the same descriptive properties" has already appeared in the first part of the proviso, and again in the general rule in the form of the synonym, “goods of the same class," and in neither case was there any descriptive definition test corresponding to "likely to cause confusion."

[3] The construction of the statute to us is clear, and being clear we choose not to be led astray by some of the case language which in all fairness must be said to support appellant. That language has often been to the effect that where "similar or identical" trade-marks are concerned the test of registration is the likelihood of causing confusion. The usual problems are whether the marks are confusingly similar on goods of the same descriptive properties or whether the goods are of the same descriptive properties where the marks are substantially identical. If it is fairly clear that the goods do not have the same descriptive properties and their marks are dissimilar, contested cases do not arise. Few cases, on the other hand, present a difficult question on both issues. As a result the adjudicating bodies have not been made acutely aware of the statutory differentiation between similar and identical marks when applied to goods of the same descriptive properties, nor have they, in applying the statute, been accustomed to discussing expressly, in the same case, the two distinct steps, i. e., (1) are the goods of the same descriptive properties, and if so, then, (2) either are the marks so similar as to be likely to cause confusion, or are the marks identical. When the Court

of Customs and Patent Appeals, so far as we know, first applied expressly the confusion test to determine whether the goods were of the same descriptive properties, there was a 3-2 division with the minority writing a vigorous specially concurring opinion."

origin of the goods upon which they are used."

Co., 278 O. G. 369, 50 App. D. C. 42, 267 Fed. 344.

Procter & Gamble Co. v. Eney Shortening

See Morrison Co. v. Cudahy Packing Co., 284 O. G. 380, 50 App. D. C. 236, 270 Fed. 358. Compare Nulyne Laboratories v. Electro-Alkaline Co., 312 O. G. 399, 52 App. D. C. 265, 285 Fed. 999, and Vacuum Oil Co. v. Gargoyle Textile Corp., 307 O. G. 235, 52 App. D. C. 268, 285 Fed. 1002.

8 California Packing Corp. v. Price-Booker Mfg. Co., 308 O. G. 451, 52 App. D. C. 259, 285 Fed. 993. B. F. Goodrich Co. v. Hockmeyer, 394 O. G. 795, 40 F. (2d) 99 (C. C. P. A., Patents); California Packing Corp v. Tillman & Bendel, 394 O. G. 789, 40 F. (2d) 108 (C. C. P. A., Patents). The rule of these last two cases seems at first to be disapproved in Meredith Publishing Co. v. O. M. Scott & Sons Co., 482 O. G. 243, 88 F. (2d) 324, 326 (C. C. P. A., Patents): "It is true that in both the preceding cases, there were expressions which, taken by themselves, and without regard to the context and the general purport of the opinions, might have indicated that the existence of confusion was the test by which we should determine whether the goods were of the same descriptive properties. However, the cases should not be so read." Yet when the Meredith Publishing Co. case is considered as a whole, its general purport seems to be there is little likelihood of confusion so the goods are not of the same descriptive properties. Universal Paper Products Co. v. Bemis Bros. Bag Co., 526 O. G. 7, 116 F. (2d) 294 (C. C. P. A., Patents).

See concurring opinions in B. F. Goodrich Co. v. Hockmeyer, 394 O. G. 795, 40 F. (2d) 99, 104 (C. C. P. A., Patents), and California Packing Corp. v. Tillman & Bendel, 394 O. G. 789, 40 F. (2d) 108, 114 (C. C. P. A., Patents).

The facts of this case have shown us, we believe, the proper construction of the act, and with the statute properly construed, this case is of easy resolution. Appellant concedes that its mark is identical with that of the British publication. This concession is in conformity with the conclusions of the Assistant Commissioner and of the district court. This concession places appellant within the first part of the proviso. The only other factor for consideration, then, is whether the marks are applied to merchandise of the same descriptive properties.'

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[4] [5] There is general agreement that the meaning of this phrase is that of the phrase "goods of the same class," which appears in the opening general rule of the section. Whether goods are of the same class, or as it is sometimes stated, are the goods related,12 can often be decided by what might be called conference table consideration. At other times resort to the market place is necessary. Even then, if the test is framed in terms of confusion it is misleading, because that test is already in the statute in another connection, and because that is, to our minds, not precisely the issue. What is wanted to be known through this extrinsic evidence is whether the producers, the wholesalers, the retailers, and particularly the consumers, regard and treat the goods as though they were of the same class, and whether those purchasers will believe that the goods have the same origin so that they will reason that since X company makes good coffee, it probably makes good tea.13 In such instances custom comes to temper logic in making the categories of goods. When the problem is looked at this way, it is seen that it is really a matter of degree of relation rather than of the "same" class. This relativity of relation becomes all the more important in the day of many byproducts and nationally known goods.

[6] [7] In the present case it has been clear to the Examiner, to the Assistant Commissioner, to the district court, and now to us, that a magazine supplement section of a Sunday newspaper belongs to the same class for the purpose of trade-mark registration as a stapled, tabloid, weekly news-magazine. Just as extrinsic evidence would be cumulative when it was already clear that goods were not related, so here when the goods are so closely related, any amount of

"For a converse situation see In re B. Manischewitz Co., 1536 O. G. 499, 123 F. (2d) 641 (C. C. P. A., Patents).

Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 395 O. G. 10, 40 F. (2d) 106, 107 (C. C. P. A., Patents); Cross v. Williams Oil-O-Matic Heating Corporation, 410 O. G. 540, 48 F. (2d) 659, 660 (C. C. P. A., Patents); Williams Oil-O-Matic Heat, Corp. v. Westinghouse E. & M. Co., 430 O. G. 628, 62 F. (2d) 378, 379 (C. C. P. A., Patents). Nims, Unfair ComPetition and Trade-marks (3d ed. 1936), § 229 (b), p. 621.

"Nims, Unfair Competition and Trade-marks (3d ed. 1936), § 229, pp. 619-20. Elgin American Mfg. Co. v. Elizabeth Arden, Inc., 471 O. G. 483, 83 F. (2d) 687 (C. C. P. A., Patents).

"Elgin American Mfg. Co. v. Elizabeth Arden, Inc., 471 O. G. 483, 83 F. (2d) 687, 688 (C. C. P. A., Patents).

testimony that there was no "confusion" (of the source) in fact would not alter the conclusion that the goods are of the same descriptive properties. These goods, similar publications, are in the same class even under a very narrow and literal meaning."

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Under a fresh statute some might doubt this conclusion. Where, however, this phrase, "the same descriptive properties," has evolved 15 so that coffee is classed with horseradish, fish with tea, mouth washes with cold creams, there cannot be the slightest doubt that these two similar publications are merchandise of the same descriptive properties.

[8] It is certain that if the statute does anything, it bars the registration of identical marks for goods definitely of the same class. Affirmed.

STEPHENS, A. J., (dissenting):

Since it is conceded that the trade-marks are identical, the only question in the case is whether the appellant's "merchandise,” i. e., its magazine supplement section of a Sunday newspaper, is of the "same descriptive properties" as the British publication. The court rules, as I understand the majority opinion, that in deciding this question of fact the trial court could not consider likelihood of confusion and the testimony of the trade with respect thereto, but properly limited itself-although trade testimony was received in evidence to inspection of the items of merchandise and to inferences which the court, without the aid of such testimony, drew from such inspection. The ruling is based upon the fact that confusion is referred to only in that (second) part of the proviso which relates to trade-marks which resemble each other as distinguished from those which are identical. Looking at the statute apart from judicial construction, it does not seem to me to require the conclusion which the court reaches. But if the words of the statute leave the point in doubt, the cases in my opinion resolve it. In California Packing Corporation v. Price-Booker Mfg. Co., 308 O. G. 451, 52 App. D. C. 259, 285 Fed. 993 (1923), the dispute, as here, was whether the goods of the respective parties "belong to the same class or have the same descriptive properties." PriceBooker Company sought to register the trade-mark "Mission," accompanied by a representation of a mission house, for application to flavoring extracts for foods, mustard, tomato catsup, relishes made of chopped and ground pickles packed in spices and vinegar, chowchow, salad dressing, and vinegar. The California Packing Corpora

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no one would seriously argue that the two publications are not merchandise of the same descriptive properties within the meaning of the statute." These words appear in opinion of the Assistant Commissioner, and the district court quoted them to conclude its opinion.

15 Forst Packing Co. v. C. W. Antrim & Sons, 529 O. G. 514, 118 F. (2d) 576 (C. C. P. A., Patents).

tion, which opposed the application, had applied the identical trademark to canned fruits, canned vegetables, foods, and ingredients of foods. The First Assistant Commissioner of Patents ruled that the goods did not belong to the same class because canned fruits and canned vegetables require a different manufacturing plant from that needed in the manufacture of pickles, the latter being packed and shipped in glass or wooden vessels, the former in air-tight tins, and because pickles have no food value. On appeal the court rejected this test upon the ground that it related chiefly to features which ordinarily would be unknown to a prospective purchaser and would have no tendency in helping him differentiate the goods of the one concern from those of the other. Stating that it must look for some other test for "the same descriptive properties," the court said:

No interpretation of the phrase "the same descriptive properties," which occurs in the same section, applicable to all cases alike, has ever been given, so far as we know. The courts have been content with deciding in each case as it arose either that the goods did or did not possess those qualities, without going further. We think the dominant purpose of the part of the section here involved is the prevention of confusion and deception. If the use of the låter mark would be likely to produce either, the mark should be rejected. Whenever it appears that confusion might result, it is because the goods have the same descriptive properties. We reason from the effect to the cause. For instance, no one would be deceived into believing that a can of tobacco and a can of peas were put out by the same concern, simply because they bore similar trade-marks.

Turning now to the goods of the parties to this litigation, we find that they are sold in the same stores, are put out in small containers, are used in connection with each other, and are associated in the public mind. We thing that a person seeing the mark in question on a container of pickles would be likely to assume that they were produced by the same concern as that which produced the canned fruits or vegetables bearing a similar mark. At least we are not clearly convinced that he would not be, and therefore we hold against the newcomer. [Italics supplied.] [52 App. D. C. at 261, 285 Fed. at 995.]

I think the statement of the court that "We reason from the effect to the cause" means that the court thought it proper to have recourse to trade testimony-Because it could not, from mere inspection of the trade-marks and the goods, know of the effect; and the court could not, without recourse to trade testimony, have found that the goods were sold in the same stores, were put out in small containers, were used in connection with each other and were associated in the public mind; such facts could not have been determined from mere inspection of the marks and the goods. Moreover, reference to the record in the case discloses that trade testimony was introduced on the subject of likelihood of confusion. On the same day that the court decided the California Packing Corporation case it also decided Application of B. F. Goodrich Co., 313 O. G. 663, 52 App. D. C. 261, 285 Fed. 995 (1923). There the word "Safety" had been refused registration by