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TRADEMARKS—Continued

Similar.

As applied to cleaning products, “Mister Stain" so resembles "Mr.
Clean” that confusion is likely. Procter & Gamble Co. v. Conway, 865.

“Margelo" so resembles "Mar-Gold" that confusion is likely. Fricks'
Foods v. The Mar-Gold Corp., 731.

"Whoppaburger” so resembles "Home of the Whopper" that confusion
is likely. Southern Enterprises v. Burger King of Florida, 826,

As applied to electroplating compositions, “Rhodium X-Less” so re-
sembles "Rhodex" that confusion is likely. Technic, Inc. v. Sel-Red
Corporation, 873.

Composite mark including “Jacquet Girard” so resembles "Girard"
and “Girard Perregaux," "Gerard" being prominent feature of each
mark, that their use on watches is likely to cause confusion. Jaquet-
Girard 8.4. v. Girard Perregaux & Cie., 8.A., 996.

"Proglas" for plastic, specifically synthetic injection molding mate
rials in pellet or granular form, so resembles “Oroglas" for synthetic
resinuous materials in the form of molding compounds that confusion

is likely. Rexall Drug & Chemical Co. v. Rohm & Haas Co., 1117.
Infringement.
In general.

Arbitrary mark is entitled to broad protection. Babbitt v. Van Heusen

Corp., 820.
Marks and names subject to ownership.
Descriptive.

In general.
Although medallion on trumpet serves as trademark for trumpet,
configuration of trumpet with medallion in a particular position thereon
also is registrable as trademark since configuration is unique and
functions to distinguish applicant's goods from those of others. In re
G. Leblanc Corp.,

Fact that common descriptive name has acquired a de facto secondary
meaning in the sense that some or even many people have come to
associate it with a particular producer is not in itself enough to show
that it has become entitled to registration as trademark. In re Chesa-

peake Corp. of Virginia, 838.
How determined.

Although a principal way of determining whether expression is merely
descriptive as applied to goods is to ascertain reaction of consumers to
whom it is directed, question may be decided subjectively. Roux Labo-
ratories v. Clairol, 1173.

TRADEMARKS—Continued

Misdescriptive or not descriptive.

Particular marks.

Mark may be merely descriptive and not registrable if it only describes
a characteristic of the goods; however, a legal distinction is drawn
between merely descriptive terms and terms that are only suggestive
of goods or their characteristics. In re Majestic Distilling Company,
Inc., 841.

"Charred Keg" is not merely descriptive as applied to bourbon whiskey.
In re Majestic Distilling Company, Ino., 841.

"Hair Color So Natural Only Her Hairdresser Knows For Sure" is
not so highly descriptive or generic as applied to hair coloring prepara-
tion that it is incapable of functioning as trademark or acquiring dis-
tinctiveness. Rouw Laboratories v. Clairol, 1173.

It cannot be said that “Superwaterfinish" is no more than a common
descriptive name for kraft paper nor is it so highly descriptive as to be
incapable of registration. In re Chesapeake Corp. of Virginia, 938.

"Impact” is not merely descriptive as applied to carbonless transfer
paper. Pacific Industries, Inc. v. Minnesota Mining & Mfg. Co., 1282.

Particular marks.

"Custom-Blended” has a merely descriptive significance as applied to
blended gasoline; mark has not acquired secondary meaning. In re
Sun Oil Co., 1147.

Secondary meaning.

To the extent that descriptive mark other than the generic or common
descriptive name of goods can and has become distinctive of goods in
commerce, i.e., has acquired a secondary meaning, it no longer is merely
descriptive of them. Rouw Laboratories v. Clairol, 1173.

Fact that common descriptive name has acquired a de facto secondary
meaning in the sense that some or even many people have come to associ-
ate it with a particular producer is not in itself enough to show that it has
become entitled to registration as trademark. In re Chesapeake Corp.
of Virginia, 838.

Slogans.

Fact that combination of words or a slogan is adopted and used by
manufacturer with intent that it identify its goods and distinguish
them from those of others does not necessarily mean that slogan ac-
complishes that purpose in reality. Roux Laboratories v. Clairol, 1173.

TRADEMARKS Continued

Opposition.
Damage to opposer.

In considering concept of "damage" from trademark registration as
it arises in opposition proceedings, the only possible solution is to decide
who has the superior right and hence the greater damage; the other
party must yield, even though it is not entirely without damage or
possibility thereof; 15 USC 1063 does not require proof of damage as
condition to sustaining opposition nor does it provide that anyone who
shows that he will be damaged by registration will necessarily succeed
in preventing registration; it is a matter of balancing rights and de-
termining whose are superior. American Novawood Corp. v. United
States Plywood Corp., 1276.

Damage cannot ensue to opposer from registration of slogan inasmuch
as slogan is not merely descriptive and its registration will not prevent
continued use by opposer in its advertising of descriptive phrases like
those it has used in the past. Roux Laboratories v. Clairol, 1173.

Failure to take testimony.

Having offered no testimony as to use of its mark, earliest use upon
which applicant can rely in opposition proceeding is application's filing

date. Procter & Gamble Co. v. Conway, 865.
Issues determined.

In trademark opposition, Board is obliged to consider which party
has superior rights and to consider all relevant facts bearing thereon;
because one decision the Board must make is same as would be made
by court of general jurisdiction in infringement suit does not mean
it is precluded from making it; it is not adjudicating infringement in
sense of imposing liability on opposer; all it decides is whether ap-
plicant is entitled to registration. American Novawood Corp. v. United

States Plywood Corp., 1276.
In general.

Opposer's short-lived attempt to constitute "novawood" as a generic
name cannot prevent applicant from using “Novawood” as trademark
in view of applicant's prior rights in "Novaply" for same goods. Ameri-

can Novawood Corp. v. United StatePlywood Corp., 1276.
Registration not attackable.

As long as registration relied upon by opposer in opposition proceeding
remains uncancelled, it is treated as valid and entitled to statutory
presumptions; in absence of counterclaim for cancellation under section
14 of Lanham Act, it is not open to applicant to prove abandonment
of opposer's registered mark. Cosmetically Yours, Inc. v. Clairol Inc.,
1071.

TRADEMARKS—Continued
Pleading and practice.

Opposer had fair notice of applicant's reliance upon another trade-
mark inasmuch as mark was of record in application file, was referred
to in applicant's motion to dismiss opposition, and testimony was
taken thereto without objection. American Novawood Corp. v. United

States Plywood Corp., 1276.
Prior adjudication.

In response to allegations made by opposer and issues joined by
parties, district court judicially determined, adversely to opposer, vital
issues (likelihood of confusion) raised by notice of opposition; opposition
is dismissed for res judicata, Midland Cooperatives v. Midland Interna-
tional Corp., 932.

If opposer has any defenses or rights which it could assert if sued
for trademark infringement, which it has not brought forward in opposi-
tion proceeding, it will still have them in event of infringement suit
and can oppose them to the merely prima facie rights applicant will
get from its registration. American Novawod Corp. v. United States

Plywood Corp., 1276.
Registration.
Effect.

Concurrent federal registrations do not, in and of themselves, create
any new right to use trademark or to assert rights based on ownership
of trademark itself; rights of trademark ownership, e.g., right to enjoin
another from use of mark, must be based upon actual use and can be
enforced only in areas of existing business influence (i.e., current use
or probability of expansion); Lanham Act did not alter this aspect of
prior law. In re Beatrice Foods Co.; In re Fairway Foods, Inc., 1302.

Rights appurtenant to ownership of federal trademark registration
may be considered supplemental to those recognized at common law,
stemming from ownership of trademark; federal registration gives proce-
dural rights, such as right to invoke jurisdiction of federal courts
and right to rely on evidentiary presumptions, but, more importantly,
the constructive notice provision of section 22 of Lanham Act takes
away from future users of the mark registered the defense of innocent
appropriation; owner of federal registration has security of knowing
that no one else may henceforth legitimately adopt his trade mark and
create rights in another area of country superior to his own; Congress
intended to grant nationwide protection to expanding businesses; con-
structive notice provision was promulgated with hope of cutting down
on the number of instances of concurrent use and uncertainty and
confusion attached thereto. In re Beatrice Foods Co.; In re Fairway
Foods, Inc., 1302.

Registration carries with it a presumption of exclusive right, not to
use of registered word, but to use of word in trademark sense, i.e., as
an indication of origin; others can continue to use word in nontrademark
sense. Pacific Industries, Inc v. Minnesota Mining & Mfg. Co., 1282.

WORDS AND PHRASES.

"Invention” in 35 USC 102, 103 does not mean "patentable invention."
In re Vogel, 920.

Purified natural product cannot be called "synthetic;" rather,
"synthetic” connotes an artificially compounded or built-up product.
In re Wakefield, 959.

"Priority” refers either (a) to the issue which exists in interference
proceedings, namely, which of two or more rival inventors attempting
to patent the same invention shall be deemed prior or first in law and
entitled to the patent or (b) preservation of an effective filing date
during a period such as the "convention” year as against acts which
would otherwise bar grant of a patent, for the protection of an applicant
against loss of right to a patent; this matter of "priority” was not
intended to modify long-standing provisions of statutes as to what shall
be deemed "prior art" under 35 USC 103. In re Hilmer, 985.

“Too broad” and “undue breadth” have no fixed meaning in patent
law, but mean different things to different people. In re Frilette, 991.

Cited cases point out that meaning of "invention" in double patenting
context is restricted; bases hold that 35 USC 101 prohibits granting
of two or more patents only where scope of protection defined by claims
is limited to identical subject matter; holding also applies to section
171; thus, if patent claims define a scope of protection which extends
over different subject matter than those of an application, and such
patent is not prior art within sense of section 102, then there is no
statutory bar to granting of patent on those claims; terminal disclaimer
would then be necessary to obviate double patenting rejection (which
would necessarily be predicated on case law) only when differences
are such as would make subject matter claimed in application a mere
obvious variation of what is claimed in patent taking prior art into
consideration. In re Geiger, 1073.

"Separate" does not proscribe all connection between parts. In re
Ruegg, 1137.

"Mental” is a vague term of indefinite meaning; whether step is
“mental" or "purely mental" is question to be determined on case-by-
case basis, considering all of the surrouding circumstances. In re
Musgrave, 1352.

Criteria for determining whether subject matter is “new” within
meaning of 35 USC 101 are no different than criteria for determining
whether that subject matter possesses the “novelty" expressed in the
title of section 102; "new" in section 101 is defined and is to be
construed in accordance with provisions of section 102; thus, that which
possesses statutory novelty under provisions of section 102 is also new
within intendment of section 101. In re Bergstrom, 1240.

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