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-Rex 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 S.A. v. Girard Perregaux & Cie., S.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.
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.
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.
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, Inc., 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. Roux 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.
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. Roux 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.
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.
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.
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.
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 States Plywood 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.
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.
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.
"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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