TRADEMARKS-Continued
Class of goods.
In general.
Not similar.
"Vanapress" and "Vanopress" for shirts, cuffs, collars, pajamas, under-
wear, knit shirts, and slacks do not so resemble "Vano" for laundry
starch, clothing and household bleach, fabric fluffer, fabric finishes, and
ironing aids that confusion is likely. Babbitt v. Van Heusen Corp., 820.
Principle that use of same mark on tobacco and alcoholic beverage
products results in likelihood of confusion has been invoked only in
presence of special circumstances such as unfair competition or a
"famous" or "well known" mark; although confusion is likely where
widely known arbitrary mark is used for diversified products emanat-
ing from one source and a newcomer seeks to use mark on unrelated
goods, confusion is not likely where first user has not used mark on
diversified products but has used different marks for its closely-related
beverage products; given the industry practice, ordinary consumer
would not be conditioned to expect same mark to be used on such unre-
lated products as cigars and tequila; confusion is not likely. Sohenley
Distillers v. General Cigar Co., 1213.
Concurrent use proceedings.
Circumstances, short of actual use of trademark, may create rights
in a territory sufficient to warrant inclusion of that territory in a geo-
graphically restricted registration; requirement of section 2(d) of
Lanham Act may be less than actual use; thus, where party submits evi-
dence sufficient to prove a strong probability of future expansion of his
trade into an area, that area may be included in his geographically
restricted registration; moreover, Patent Office should determine con-
ditions with which marks are to be registered on basis of facts as they
exist at time when issue of registrability is under consideration; this
apparently means up to close of testimony period. In re Beatrice Foods
Co.; In re Fairway Foods, Inc., 1302.
Patent Office may consider agreements worked out by parties to con-
current use proceeding, but agreements do not bind Office; however, if
they are in good faith, there can be no better assurance of absence of
likelihood of confusion than parties' promises to avoid activity leading
to such likelihood; still, Office should not blindly adhere to parties'
agreements, but should critically appraise them; they should be given
effect when it is plain that they assure avoidance of confusion. In re
Beatrice Foods Co.; In re Fairway Foods, Inc., 1302.
In concurrent use proceedings in which neither party owns a registra-
tion for mark, starting point for any determination as to extent to which
registrations are to be territorially restricted should be conclusion that
prior user is prima facie entitled to registration covering entire United
States; such prior user, who applies for registration before registration
is granted to another party, is entitled to a registration having nation-
wide effect no less than if there were not concurrent user having regis-
trable rights; his rights and registration should be limited only to extent
TRADEMARKS-Continued
Concurrent use proceedings-Continued
In general-Continued
that any other subsequent user, who can establish existence of rights
earlier than prior user's application for registration, can also prove a
likelihood of confusion. In re Beatrice Foods Co.; In re Fairway Foods,
Inc., 1302.
Touchstone of section 2(d) of Lanham Act is requirement that there
be no likelihood of confusion as to source of goods resulting from con-
tinued concurrent use of trademark; once it is determined that both
parties are entitled to registration, extent to which registrations are
restricted territorially must also be governed by statutory standard of
likelihood of confusion. In re Beatrice Foods Co.; In re Fairway Foods,
Inc., 1302.
Requirements of section 2(d) of Lanham Act that parties be presently
entitled to concurrently use the mark in commerce is primarily juris-
dictional in nature; as with a single applicant, extent of such actual use
is irrelevant so long as it amounts to more than a mere token attempt
to conform with requirement of statute. In re Beatrice Foods Co.; In
re Fairway Foods, Inc., 1302.
Although leaving territory open in concurrent use proceeding would
increase possibility of confusion and litigation, Patent Office is not re-
quired to issue registrations covering whole of United States in all cir-
cumstances; applicants may always request territorially restricted regis-
trations; it may be that likelihood of confusion will be prevented only
when each party is granted a very limited territory with parts of United
States granted to no one. In re Beatrice Foods Co.; In re Fairway
Foods, Inc., 1302.
Views of persons in advertising, newspaper, and magazine professions
are of relatively little assistance as direct evidence in determining
whether slogan serves as an indication of origin to purchasing public,
since it is not established to what extent those persons are members of
class who purchase involved goods. Roux Laboratories v. Clairol, 1173.
Continuous, exclusive, and distinctive use.
Although mere advertising or other evidence of supposed secondary
meaning cannot convert something unregistrable by reason of its being
the common descriptive name or generic name for goods-the antithesis
of a trademark-into registrable mark, this does not mean that exten-
sive advertising considered with other factors cannot be used to show a
developed distinctiveness in mark perhaps having originally some degree
of descriptive significance when applied to the goods but capable of dis-
tinguishing them from those of others. Roux Laboratories v. Clairol,
1173.
Amount and character of evidence, if any, required to establish that
word or phrase is a trademark or has become distinctive of goods depend
on facts of each case and particularly on nature of alleged mark.
Roux Laboratories v. Clairol, 1173.
There is no requirement of actual confusion in order to establish a
likelihood of confusion. Fricks' Foods v. The Mar-Gold Corp., 731.
It is not necessary to demonstrate actual confusion in trade in order
to establish a likelihood thereof. Southern Enterprises v. Burger King of
Florida, 826.
While ex parte surveys may be admissible evidence on question of
confusing similarity of marks, it is proper for Board to ascertain what
weight, if any, to accord such evidence; evidence that stated percentage
of retail dealers in relevant marketing areas served “Coca-Cola” when
asked for "Coco Loco" does not establish that purchasers were or would
be confused. Coca-Cola Co. v. Essential Products Co., 909.
Amount and characer of evidence, if any, required to establish that
word or phrase is a trademark or has become distinctive of goods depend
on facts of each case and particularly on nature of alleged mark. Roux
Laboratories v. Clairol, 1173.
Fraud and misrepresentation.
Naming of goods is critical to incontestable right acquired through
filing of affidavit under section 15; this is not question of maintaining
registration in force, which can be done by affidavit under section 8(a)
without naming any particular goods; it is a matter of acquiring a new
right with respect to goods specifically recited in affidavit; if goods are
named on which mark has not been used continuously for five consecu-
tive years, or is not currently in use, it amounts to attempt to acquire a
right as a result of a false statement; this cannot be characterized as
mere carelessness or misunderstanding of no importance; registration
cannot be relied on for any purpose in Patent Office or in court on appeal
therefrom. Duffy-Mott Co., Inc. v. Cumberland Packing Co., 1048.
Identity and similarity.
How determined.
In general.
15 USC 1052 (d) requires that court consider not only the marks but
the goods and the whole situation as it bears on their distribution in the
market; when this situation has been absorbed, court has to form a
judgment as to whether there is practical likelihood of such confusion
as would damage opposer or cancellation petitioner; court is not con-
cerned with mere theoretical possibilities of confusion or with de mini-
mis situations but with practicalities of commercial world, with which
trademark laws deal. Witco Chemical Co. v. Whitfield Chemical Co., 804.
Appearance, meaning or sound.
Aural and optical dissimilarity between marks is not necessarily con-
trolling on issue of likelihood of confusion since there may be confusion
if marks are likely to convey same idea, stimulate same mental reaction,
or have same meaning. Procter & Gamble Co. v. Conway, 865.
TRADEMARKS-Continued
Considering goods.
Principle that use of same mark on tobacco and alcoholic beverage
products results in likelihood of confusion has been invoked only in pres-
ence of special circumstances such as unfair competition or a "famous"
or "well known" mark; although confusion is likely where widely known
arbitrary mark is used for diversified products emanating from one
source and a newcomer seeks to use mark on unrelated goods, confusion
is not likely where first user has not used mark on diversified products
but has used different marks for its closely-related beverage products;
given the industry practice, ordinary consumer would not be conditioned
to expect same mark to be used on such unrelated products as cigars
and tequila; confusion is not likely. Schenley Distillers v. General Cigar
Co., 1213.
Marks must be considered as a whole in determining likelihood of con-
fusion. Witco Chemical Co. v. Whitfield Chemical Co., 804.
Although marks must be considered in their entireties, this is not to
say that, in considering whether a mark as an entirety will be likely to
cause confusion, one cannot consider one feature of mark as being more
significant to that issue than are the other features. Martin v. Crown
Zellerbach Corp., 968.
Although marks must be considered in their entireties, this is not
to say that, in considering whether a mark as an entirety will be likely
to cause confusion, one cannot consider one feature of mark as being
more significant to that issue than are the other features. Martin v.
Crown Zellerbach Corp., 968.
Law requires all doubts as to likelihood of confusion to be resolved
against newcomer. Babbitt v. Van Heusen Corp., 820.
Doubt on issue of likelihood of confusion should be resolved against
newcomer. Procter & Gamble Co. v. Conway, 865.
Doubt as to likelihood of confusion should be resolved against new-
comer. Fricks' Foods v. The Mar-Gold Corp., 731.
Doubt as to actual confusion or as to likelihood of confusion must be
resolved in favor of prior user. Technic v. Sel-Rex Corp., 873.
Doubt as to actual confusion or as to likelihood of confusion must be
resolved in favor of prior user. Dere v. Institute for Scientific Informa-
tion, 875.
Doubt as to likelihood of confusion should be resolved in favor of prior
user. Rexall Drug & Chemical Co. v. Rohm & Haas Co., 1117.
Prior decisions on different marks used under different circumstances
are of little value in deciding a specific issue of likelihood of confusion.
Jaquet-Girard S.A. v. Girard Perregaux & Cie., S.A., 996.
TRADEMARKS-Continued
Purchasers and selling methods.
Lack of confusion does not necessarily follow from fact that buyers
are discriminating since likelihood of confusion as to source may be
as great or greater than likelihood of confusion as to specific character
of goods. Technic v. Sel-Rex Corp., 873.
Question of distinguishability is closely related to statutory issue of
likelihood of confusion; it is necessary to consider who is going to do
the distingushing. Witco Chemical Co. v. Whitfield Chemical Co., 804.
Symbols.
"CZ" and "E-Z" are not confusingly similar. Gulf States Paper Corp.
v. Crown Zellerbach Corp., 720.
"I.A.I." so resembles "ISI" that confusion is likely; it is more difficult
to remember a series of arbitrarily arranged letters than it is to remem-
ber figures, syllables, or phrases; such difficulty makes likelihood of
confusion between similar marks more probable; however, situation is
different where letters of mark are arranged so as to suggest well-known
company name or word. Dere v. Institute for Scientific Information, 875.
Confusion is likely where distinguishing features of composite marks
applied to like goods are, respectively, “B. B. B.” and “BB”. Manifat-
ture Lane Pettinate Angelo Borghi S.p.a. v. Patons, 1044.
Words.
"Vanapress" and "Vanopress" for shirts, cuffs, collars, pajamas, under-
wear, knit shirts, and slacks do not so resemble "Vano" for laundry
starch, clothing and household bleach, fabric fluffer, fabric finishes, and
ironing aids that confusion is likely. Babbitt v. Van Heusen Corp., 820.
"Witco" is readily distinguishable from "Whit Chem," "Whit-Kleen,”
and "Whitsol." Witco Chemical Co. v. Whitfield Chemical Co., 804.
"Slingers" for men's and boys' jeans does not so resemble "Singer"
for textile piece goods suitable for wearing apparel that confusion is
likely. Singer Co. v. Unishops, 905.
"Coco Loco" is not confusingly similar to "Coca-Cola." Coca-Cola v.
Essential Products Co., 909.
"Playboy of Miami," which has no dominant feature, does not so
resemble "Stetson Playboy," wherein "Stetson" is dominant, that con-
fusion is likely. Playboy of Miami v. John B. Stetson Co., 1124.
As applied to closely related goods, "Vitafoam" is not so similar to
"Vitalon" that confusion is likely. Barash Co., Inc. v. Vitafoam Ltd.,
1342.
"Friar John" for brandy does not so resemble "Long John" for
whiskey that confusion is likely. Long John Distilliers, LTD. v. Sazerac
Co., Inc., 1286.
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