products. Its sales run between forty and seventy-five million board feet of cork insulation per year. Cork board is a well known standard insulating material. Its good insulating properties have long been known to those familiar with the subject of thermo-insulation. Cork board is made from cork and cork is the outer bark of the cork oak tree which grows principally in Spain, Portugal, and Algeria. Cork, in the common understanding, is a vegetable substance. In manufacturing cork board the cork bark is granulated, sized, cleaned, pressed in molds and baked. The record shows that the petitioner, and its predecessors, have been manufacturers of cork articles since 1861 and of cork board since 1904, and that appellant and appellee, during a period of almost a quarter of a century, have been merchandising their products to the same class of customers with the full knowledge of each of the parties of the composition of each other's product and the trade terms used in describing the same.

Appellant bases its petition for cancellation of the trade-mark "Rock Cork" upon the proposition that the term is deceptive and misleading, and is misdescriptive of appellee's product inasmuch as its product contains no cork and is chiefly a mineral substance, and claims the right to petition for cancellation under section 13 of the Trade-Mark Act of February 20, 1905, for the reason that it is damaged by the alleged misconception brought about by the misdescriptive character of the term "Rock Cork" as applied to appellee's thermo-insulating material.

The Examiner of Interferences dismissed the petition and recommended that appellee's registration be not cancelled, which decision was affirmed by the Commissioner of Patents.

The Examiner of Interferences held that the record showed that from the very beginning it was the intention of the users of the "Rock Cork" trade-mark to inform purchasers of the properties of its material and also of its mineral origin, and that it was not intended to deceive, and that the term "Rock Cork" was not misdescriptive to the extent that the purchasers of this character of material would be misled into believing that appellee's merchandise consisted of cork, and among other things, said:

In the new use of such a word, or combination of words, information is imparted concerning one or more characteristics of the article designated thereby. Such for example are the notations "Steel Wool," "Dry Ice," "Ivory Soap," and "Gold Dust Washing Powder." In the last two instances, the marks are used to obtain the function of indicating origin of the goods: The word "Ivory" used on soap informs the purchasers of the soap that it has an appearance somewhat like ivory. Similarly, the use of the words "Gold Dust" on a washing powder of a golden color, tells purchasers something of this property. The record clearly shows that it was the intention of the respondent from the very beginning to so use the notation "Rock Cork" as to inform purchasers of some of the properties of the material and also its mineral origin. This is especially shown by the circulars which enables this function to be obtained from the notation "Rock Cork" * * The notation "Rock Cork" so used performs a function similar to that performed by the notations "Steel Wool" and "Dry Ice."

The Examiner called attention to the fact that purchasers of "Rock Cork" ordinarily were those who bought for the purpose of building it into other structures, and that they were a discriminating class of purchasers, and further, that the record, though long, was devoid of a single instance where a purchaser of registrant's product

had been led to believe that it contained cork. The Examiner furthermore pertinently said:

Improbable as it may seem, the Examiner realizes that there may be here and there an architect who may purchase the respondent's material and who may assume that it contains cork. It is also theoretically conceivable that here and there a person may exist who assumes that there is cream in cream of tartar; milk in the pharmaceutical substance known as milk of magnesia; that there are edible sponges in sponge cake; that the confection known as Eskimo Pie is pie that is either made by Eskimos or a formula obtained from Eskimos; and that there is soda in soda water. As to such persons, it is believed, however, that it is justifiable to apply the maxim Qui vult decipi decipiatur."

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We agree with the above quoted views expressed by the Examiner of Interferences and the views, on this phase of the case, which are well expressed in the decision of the Commissioner, which decision affirmed the decision of the Examiner of Interferences.

The Examiner of Interferences furthermore ruled that there was a distinction between a public and a private right of action in a case of this character and that the petitioner had no such private right as entitled it to claim that it was damaged within the meaning of the statute In view of our conclusions hereinafter reached, it is not necessary for us to pass upon the right of appellant to bring such action in event it was held that the mark "Rock Cork was deceptive and misleading.

Much testimony was taken by both parties, chiefly of witnesses who were in some way interested in or had been interested in the manufacture, sale or construction of refrigerating units of some kind. Most of appellant's witnesses testified that upon seeing the term "Rock Cork," they would assume that the material contained cork; a few of them said that they did assume that it contained cork, but no one of them testified that he had been influenced, in any degree, to purchase appellant's product, on account of his believing that it contained cork.

Appellant seems to proceed upon the theory that genuine cork is a material which, for a very long time, has been better and more favorably known as an insulating material than any other, and that appellee seeks by its alleged misleading trade-mark to palm off on the public, for genuine cork board, a cheaper and less efficient material. The witnesses differ as to which is the best insulating material. Some of the witnesses point out that cork has been proven to be more effective in its nonconducting properties and that the material which some of them style "asbestos cork" or a "mineral wool" product is, for other reasons, less desirable than genuine cork. Some of the testimony is to the effect, however, that appellee's mineral product is not so subject to decay as is genuine cork and has other properties which are desirable and which are not present in the genuine cork.

One thing stands out prominently, and that is that the whole picture presented by the record is not a case of the owner of cheap inferior goods attempting to palm off his goods as the goods of another or of attempting to represent that his goods have qualities which they do not possess. On the contrary, appellee's business is large and obviously, prosperous, and no reason is shown why it should trade upon the good will of others. There is no evidence in

the record of any misunderstanding in the minds of those who purchased "Rock Cork" from appellee and we do not think there is any reasonable likelihood of any such misunderstanding arising in the future.

Appellant has pointed out that the salesmen of Frigidaire which makes use of "Rock Cork" as its insulating material, have misrepresented, either ignorantly or designedly, that the "Rock Cork" used in Frigidaire insulation is, at least in part, composed of genuine cork. While it may be that this is a matter that might have some bearing in come cases, under certain statements of fact, we can not see how it can be controlling under a statement of facts such as is at bar. See American Washboard Co. v. Saginaw Mfg. Co., 103 Fed. 281. Appellee's exhibits disclose that in advertising its goods, it keeps prominently to the front the fact that its product is a mineral one. Much of its advertising is devoted to putting forth the rock character of its product, using such statements as "Originators of Rock Wool Products" and by associating a portion of the corporated name "Banner" and the word "Rock to produce the word "Banrock " and adding the word "Products." In fact, to us the use of the term "Rock Cork" suggests that the product has the qualities of rock and cork. It may not suggest all the properties of either but does suggest some of the properties of both and we think it does so without being offensively descriptive or misdescriptive.

In this view of the case we conclude that appellant has not been nor is it likely to be damaged within the meaning of section 13 of the Trade-Mark Act, supra, and that the decision of the Commissioner of Patents properly affirmed the action of the Examiner in dismis sing the petition for cancellation, and the decision of the Commissioner is affirmed. Affirmed.

[U. S. Court of Customs and Patent Appeals]

VAN CAMP SEA FOOD CO. INC. v. THE ALEXANDER B. STEWART ORGAN

IZATIONS

No. 2,708. Decided May 27, 1931

412 O. G. 274; 48 F. (2d) 950

TRADE-MARKS-SIMILARITY-" WHITE CHICKEN" AND "CHICKEN OF THE SEA." The term White Chicken used as a trade-mark for tuna fish Held confusingly similar to the term "Chicken of the Sea" used upon the same goods.

APPEAL from the Patent Office. Reversed.

Mr. Albert J. Fihe for Van Camp Sea Food Co. Inc.

Mr. James M. Naylor, Mr. Charles R. Allen, and Mr. Wm. S. Graham for The Alexander B. Stewart Organizations.

BLAND, J.:

This is an appeal from the decision of the Commissioner of Patents, affirming the action of the Examiner of Interferences, dismissing the opposition, and adjudging the applicant, appellee, entitled to the registration for which application had been made.

The applicant seeks to register the term "White Chicken," used upon canned tuna.

The opposer sets up a prior use of the term "Chicken of the Sea," as a trade-mark for tuna fish and shows ownership of registration No. 97,192, granted May 19, 1914, for the mark. According to the record, the Chicken of the Sea" trade-mark has been used by opposer and its predecessors since 1914, and opposer spends approximately $60,000 annually in advertising this brand of tuna. Its sales, amounting to approximately five million cans annually, are made in all parts of the United States, and in Hawaii and Canada.

Appellee has used the term "White Chicken" on its goods since October 14, 1926. The Commissioner held that the goods of the two parties were identical and that the only question involved for his decision was the question of confusion. He states:

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* In the ruling in the adjudicated case of Van Camp Sea Food Co., Ino., v. Westgate Sea Products Co., 28 F. (2d) 957, C. C. A. 9th Cir., it was finally determined that the notation Breast o'Chicken " was not confusingly similar to the opposer's mark "Chicken of the Sea." The court found that the word "chicken had been widely used in a descriptive sense in connection with various foods, including fish, and that the opposer was not entitled to claim exclusive rights to the use of this word alone. Since the mark of the applicant here, "White Chicken," is obviously no more similar to the opposer's mark than is the mark of the defendant in the adjudicated case, the finding of the court in that case is regarded as determinative of the question of similarity of the marks involved in the instant proceeding.

The record shows that the Van Camp Sea Food Co., Inc., brought suit in the United States District Court for the Southern District of California against Westgate Sea Products Co., for infringement of its mark "Chicken of the Sea," and alleged that the defendant's infringing mark was "Breast o'Chicken." The district court dismissed the bill without hearing evidence. Appeal was taken to the Circuit Court of Appeals, 9th Circuit, which court held (Van Camp Sea Food Co., Inc., v. Westgate Sea Products Co., 28 F. (2d) 957). that the trial judge had the right to dismiss the bill without taking evidence. The circuit court of appeals stated, evidently inadvertently, that the Westgate Products Co. caused its "Breast o'Chicken" trade-mark to be registered. It is conceded that the term had not been registered. The court then held as follows:

Were the word "chicken," common to the two trade-marks, a purely fanciful term, and made equally prominent in both, we might have a case of sufficient doubt to warrant a hearing of evidence. But, as registered, the two combinations are similar neither in appearance nor in sound, and if, as appellant contends, it be conceded that “chicken" is the dominant word in its combination, it can not be said to have such prominence in that of the defendant. Moreover, "chicken," as used by the plaintiff, is not a purely fanciful term, but is measureably descriptive. True, in its primary or most popular meaning, it designates the young of the domestic hen, and less commonly, the young of wild birds, but it is sometimes used to denote living things of the sea as well as of the land. Its application has been so extended apparently because in a figurative sense it has come to signify something young and tender.

At page 336 of volume 2 of Murray's New English Dictionary of the Philological Society it is stated that, since early in the 1700's, "chicken" has been so used as denoting a young and inexperienced person, and in Farmer and Henley's Dictionary of Slang and Colloquial English it is said that "tender as chicken" dates back to the fourteenth century. In the Century Dictionary it is referred to as a name applied with qualifying adjectives to various fishes. In the same work chicken halibut is defined as a halibut weighing from ten to twenty pounds." And in the edition published as early as 1889 chicken lob

ster is said to be "an undersized lobster," too small to be legally marketable under the laws of some States. It will thus be seen that the term is not only more or less generally applied to sea life, but, when so used, it is understood to be descriptive of class or quality. We are not to be understood as necessarily holding that plaintiff's trade-mark is invalid; the combination as a whole may have validity. But, in view of the considerations just suggested, appellant can not, as in effect it seeks to do, abandon all but the word "chicken" and claim that as its trade-mark. Chicken," when applied to tuna, would, as when applied to halibut or lobster, denote young and tender meat, and hence would be descriptive of quality. That terms merely descriptive of quality can not be appropriated as trade-marks is too well settled to require citation of authorities. On the point that generally a registered trade-mark is to be considered as an entirety, see John Morrell & Co. v. Hauser Packing Co. (C. C. A.) 20 F. (2d) 713; Ostermoor & Co. v. Rose Spring & Mattress Co. 55 App. D. C. 307, 5 F. (2d) 268; Loughran v. Quaker City, Etc. (C. C. A.) 296 F. 822; Beckwith v. Commissioner of Patents, 252 U. S. 538, 40 C. Ct. 414, 64 L. Ed. 705.

The record shows that after the decision by the circuit court of appeals, supra, a suit by the Van Camp Sea Food Co. was begun against the appellee herein in the United States District Court for the Southern District of California, Central Division, and that in September, 1930, that court held in substance, among other things, that there was not sufficient similarity between the alleged trademarks to produce confusion and that the mark "White Chicken " did not infringe "Chicken of the Sea" and that the defendant had not committed acts of unfair competition against the plaintiff. It also held that the term "of the sea," when used on a fish product designated the place from which the product came and added nothing to the descriptive word "chicken," and that the legend "Chicken of the Sea" was, therefore, invalid when used as a trade-mark for

tuna.

Under the statute our duties in reviewing decisions of the Commissioner of Patents in trade-mark cases are quite different from those of a district or circuit court of appeals in actions such as have been hereinbefore referred to. We determine the correctness of the Commissioner's ruling on the registrability of the trade-mark. The district and circuit courts of appeals, in the above cases, were not concerned with this question. Our jurisdiction involves the question of the right to register, while the jurisdiction in the cases above referred to involves the right to use. California Packing Corp. v. Tillman & Bendel, 17 C. C. P. A. (Patents) 1048, 40 F. (2d) 108, 394 O. G. 789; B. F. Goodrich Co. v. Hockmeyer, 17 C. C. P. A. (Patents) 1068, 40 F. (2d) 99, 394 O. G. 795.

Section 5 of the Trade-Mark Act of February 20, 1905, provides definitely that a trade-mark shall not be registered if such mark is so similar to a mark owned and used by another, when used upon goods of the same descriptive properties, as to be likely to cause confusion. It also provides definitely that the mark shall not be registered if it consists merely in words which are descriptive of the goods with which it is used or of the character or quality of such goods.

While the decisions of the district court and the circuit court of appeals, supra, involved issues which differ from those at bar, it is true that in their decisions they made certain findings with which we are concerned. We do not understand that their decisions on the subject of the descriptive quality of the term "Chicken of the Sea" or their findings on the question of similarity between "Chicken of the Sea" and "Breast o'Chicken" in an infringement action, are