In that case, this court, after discussing and construing the provisions of said section 5, said:

It seems to us that where one elects to make a technical trade-mark use of his own name, that name, for that purpose, becomes dissevered, as it were, from its owner's personality, and when he seeks to register it under a statuatory enactment, it must be tested by precisely the same rules and principles which apply to all other technical trade-marks.

In view of our construction of said section 5, expressed in the Williams case, supra, it is unnecessary for us to consider whether the nickname "Babe" could be registered as a part of the name of George H. Ruth under said name-clause of section 5, for we are clear that, assuming that such nickname may be so registered as a part of the name, if no such name were otherwise registerable, the name "George H. Babe Ruth" is not registerable under the facts in this case because barred by the first proviso of said section 5.

6

That confusion is likely between appellee's mark, "Baby Ruth," and appellant's mark, "Ruth's Home Run, George H. 'Babe' Ruth," is apparent. It is clear from the testimony that the connection of George H. Ruth with appellant was for the purpose of capitalizing his nickname "Babe " Ruth, used upon candy. Assuming that he is a bona fide stockholder and officer of appellant company, the manner in which the mark was used, as shown by the labels, indicates that the words "Babe Ruth" constitute the part of the mark relied upon by appellant. Moreover, the testimony establishes actual confusion between the marks, and under the doctrine declared in Williams v. Williams, supra, we must hold that appellant's mark is not registerable.

We would emphasize the fact that the proceeding before us is statutory, and the question of whether appellant has the right to use said mark is not before us. We simply hold, for the reason hereinbefore stated, that appellant's mark is not registerable under the provisions of said section 5.

Appellant contends that, even though the two marks so closely resemble each other as to be likely to cause confusion in the mind of the public, appellee has not established facts from which damage may be inferred, and therefore the opposition should be dismissed.

[1] We have repeatedly held that, in a trade-mark opposition proceeding, any question may be disposed of relating to the proposed registration that might properly arise in an ex parte case. California Cyanide Co. v. American Cyanamid Co., 17 Č. C. P. A. (Patents) 1198, 40 F. (2d) 1003; 399 O. G. 212; Rose Nerenstone Bookman, Etc. v. The Oakland Chemical Co., 17 C. C. P. A. (Patents) 1213, 40 F. (2d) 1006, 399 O. G. 628.

[2] Upon the record before us, it is clear that appellant's mark is not registerable for the reasons hereinbefore stated, regardless of whether appellee would be damaged by the registration of appellant's mark. The statute itself forbids registration of a mark which so nearly resembles a registered mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.

There remains but one other question requiring comment. Appellant charges appellee with unclean hands in the adoption of its mark.

It is sufficient to say that this issue is not raised by appellant's answer to the notice of opposition, and even had it been so raised, the rule is well settled that the validity of appellee's registered trade-mark will not be considered in a proceeding of this character. Revere Sugar Refinery v. Joseph C. Salvato, 18 C. C. P. A. (Patents) 1121, 48 F. (2d) 400, 409 O. G. 562, and cases cited.

The decision of the Commissioner of Patents, adjudging that appellant is not entitled to the registration for which it has applied, is affirmed. Affirmed.

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

THE CELOTEX COMPANY V. MILLINGTON

No. 2,770. Decided June 1, 1931

413 O. G. 279; 49 F. (2d) 1053

1. TRADE-MARKS-OPPOSITION QUESTION TO BE DETERMINED.

Where an opposition is brought to the registration of a trade-mark the only question to be determined, in view of section 5 of the Trade-Mark Act, is whether the registration of the mark will be likely to cause confusion in the minds of the public and induce purchasers to mistake the product of the applicant for that of the opposer.

2. SAME-SAME-SAME.

In determining whether a mark sought to be registered is confusing by similar to a prior used mark the marks must be considered as a whole and not dissected since the buyer will not stop to dissect them and, if he is deceived he will be deceived by the mark as a whole and not by any particular part thereof.

3. SAME SIMILARITY-" FIR-TEX" AND "CELOTEX."

The term "Fir-Tex" used as a trade-mark for wood-fibre board Held not registrable as it is confusingly similar to the trade-mark "Celotex previously used by another manufacturer for substantially the same goods.

APPEAL from the Patent Office. Reversed.

Mr. Charles M. Thomas, Mr. Samuel E. Darby, jr., Mr. John S. Bradley, and Mr. William E. Seaver for The Celotex Company. Messrs. Cushman, Bryant & Darby, Mr. Arlon V. Cushman, Mr. Arthur L. Bryant, and Mr. John J. Darby for Millington.

GRAHAM, P. J.:

The appellee filed an application on June 2, 1928, for the registration of the mark "Fir-Tex," to be used in connection with the sale of wood-fibre board. The appellant, The Celotex Company, filed opposition thereto, basing such opposition upon its use and ownership of the trade-mark "Celotex," used on goods of the same descriptive properties. The Examiner of Interferences dismissed the opposition and granted registration, and this decision was affirmed, on appeal, by the Commissioner of Patents of the United States Patent Office.

Neither party took testimony in this case, but the opposer, by stipulation, offered in evidence the record made in opposition No.

8,716, in the matter of The Celotex Company v. Des Moines Saw Mill Co., etc.

The Commissioner of Patents held, and we think the testimony supports such holding, that the opposer began the manufacture of this material in 1921 or 1922, and ever since that time has been selling the same in largely increasing quantities; that for many years prior to the entrance of the applicant into the field, the opposer has been using the trade-mark "Celotex " in interstate commerce.

The Celotex Company procured the registration of its mark by certificate No. 187,332, on July 29, 1924. It appears from the testimony, and is fully set out in The Celotex Company v. Chicago Panelstone Co., patent appeal No. 2,887, [49 F. (2d) 1051, 18 C. C. P. A. (Patents) 1504] and The Celotex Company v. Bronston Bros. et al., patent appeal No. 2,886, [49 F. (2d) 1048, 18 C. C. P. A. (Patents) 1490] decided concurrently herewith, that the opposer has spent very large sums of money in advertising its aforesaid trademark and has built up a very large and profitable business in the goods bearing this trade-mark. The applicant is a newcomer in this field, so far as the record discloses.

The Commissioner of Patents, in deciding this matter, called attention to a number of trade-marks in which the syllable" tex" was used, and the use of which was prior to the use by the opposer of its mark"Celotex." These various marks were marks which had been adopted, and in some cases registered in the Patent Office, used in connection with the sale of oil cloth, bricks, wall paper, gasoline, etc. From this circumstance, the Commissioner concluded that the syllable "tex " had been used probably to such an extent as to preclude the opposer from any monopoly thereof, such as the Commissioner felt would arise from sustaining such an opposition as the one before us here.

[1] There is, in our opinion, but one question for determination here: The statute, section 5 of the Trade-Mark Act of February 20, 1905, which we have on many occasions quoted, provides, in substance, that a mark may not be registered which is identical with a registered or known trade-mark owned and in use by another, and which is appropriated to merchandise of the same descriptive properties, or which so nearly resembles a registered or known trade-mark appropriated to goods of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public. The only question for the tribunals of the Patent Office, and for this court, in this case, is the question as to whether the registration of the mark"Fir-Tex " will be likely to cause confusion in the minds of the public, and induce purchasers of wall board to mistake the product of the appellant for that of the opposer. If there is likely to be such confusion, then the mark ought not to be registered.

[2] In determining this matter, the marks must be considered as a whole and not dissected. Apex Elec. Mfg. Co. v. Landers et al., 17 C. C. P. A. (Patents) 1184, 41 F. (2d) 99, 398 O. G. 708; B. F. Goodrich Co. v. Hockmeyer et al., 17 C. C. P. A. (Patents) 1068, 40 F. (2d) 99, 394 O. G. 795. The buyer will not stop to dissect the marks. If he is deceived, he will be deceived by the mark as a whole, and not by any particular part of it.

Nor is it of any importance whether the mark of the opposer be subject to legal attack or not. The appellee can not defend itself by attempting to prove by other prior registrations that the opposer has no valid title to the mark which it uses. Sharp & Dohme v. Parke, Davis & Co., 17 C. C. P. A. (Patents) 842, 37 F. (2d) 960, 394 O. G. 545; Standard Oil Co. v. Epley, 17 C. C. P. A. (Patents) 1224, 40 F. (2d) 997, 398 O. G. 547; American Fruit Growers v. Michigan Fruit Growers, 17 C. C. P. A. (Patents) 906, 38 F. (2d) 696, 393 O. G. 789; MacEachen v. Tar Products Corp., 17 C. C. P. A. (Patents) 1264, 41 F. (2d) 295, 398 O. G. 542.

We are convinced there would be confusion if the mark "Fir-Tex were registered. This conclusion is in harmony with other decisions which we have made in similar cases. Celanese Corp. v. Vanity Bowes, etc., 17 C. C. P. A. (Patents) 911, 38 F. (2d) 370, 407 O. G. 579; Baltimore Paint & Color Wks. v. Bennett Glass & Paint Co., 17 C. C. P. A. (Patents) 1269, 40 F. (2d) 1009, 401 O. G. 237; United States Gypsum Co. v. Plastoid Prod., 18 C. C. P. A. (Patents) 954, 46 F. (2d) 580, 407 O. G. 578; Malone v. Horowitz, 17 C. C. P. A. (Patents) 1252, 41 F. (2d) 414, 399 O. G. 416; Int. Postal Sup. Co. v. Pitney-Bowes, etc., 17 C. C. P. A. (Patents) 911, 38 F. (2d) 692, 396 O. G. 5; Bookman v. Oakland Chem. Co. 17 C. C. P. A. (Patents) 1213, 40 F. (2d) 1006, 399 O. G. 628; Int. Silver Co. v. American Silver Co., 17 C. C. P. A. (Patents) 871, 37 F. (2d) 622, 395 O. G. 339. [3] The question of whether confusion would or would not exist is, after all, one which appeals to the judgment of the court which is called upon to decide that matter. This may account for the wide divergence of views which is found in the decisions of the courts in such matters. The ascertainment of whether confusion will or will not exist, is far from being an exact science, and every case must be determined upon its own facts, under the principles of law frequently announced by this court.

We have had frequent occasion to remark that the Federal trademark registration acts were framed with at least two purposes in mind: First, that one who had built up a good will and established reputation in connection with the use of a trade-mark might be protected in the exclusive use thereof. Second, that the public might be protected against confusion. It is an unfortunate fact that when one has adopted some arbitrary trade-mark for his goods, and by patience and labor, or by superior salesmanship, or by the good quality of his goods, or by extensive and costly advertising, or by all of these, has established a profitable and valuable business, there are to be found many who flock to the feast, unbidden guests, and fatten themselves at the table which has been spread.

The argument is made that to sustain the opposition in this case is to give the appellant a monopoly of the use of the syllable tex” in any combination of letters or syllables with which it might be used. We do not so hold. There may be, and doubless are, many ways in which this syllable might be used in a trade-mark or trade name where it would not conflict and be confusing with the mark of the appellant. In such cases, no legal objection could be made to its being so used.

The decision of the Commissioner of Patents is reversed and an order will be entered sustaining the opposition.

Reversed.

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

THE CELOTEX COMPANY v. BRONSTON BROS. AND CO., INC.

No. 2,886. Decided June 1, 1931

413 O. G. 280; 49 F. (2d) 1048

66

TRADE-MARKS SIMILARITY— "FLAMETEX AND CELOTEX."

The term "Flametex" used as a trade-mark for wall board Held not registrable, as it is confusingly similar to the trade-mark "Celotex previously used by another manufacturer for the same goods.

APPEAL from the Patent Office. Reversed.

Mr. Charles M. Thomas, Mr. Samuel E. Darby, jr., Mr. John S. Bradley, and Mr. William E. Seaver for The Celotex Company. No appearance for Bronston Bros. and Co., Inc.

BLAND, J.:

This is an appeal from a decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences, dismissing the opposition and adjudging that the applicant was entitled to the registration of its trade-mark.

The trade-mark of opposer is "Celotex " and the trade-mark of the applicant is "Flametex." Both marks are applied to wall board. The Celotex Company was organized in 1920 and began the manufacture of wall board known as "Celotex" in 1921 and has increased its production from 18,000,000 square feet in 1922 to approximately 500,000,000 square feet in 1929. Seven thousand retail dealers in 82 countries, on the last-named date, were handling "Celotex." More than $3,500,000 have been expended in advertising "Celotex." Appellant claims that the word "Celotex " has become a "byword" for wall board and that the merchandise represented by it has an enviable reputation for its insulating and sound-absorbing properties. From 1921 to 1928 appellant states no other manufacturer of wall board made any effort to use any trade-mark on its product which involved the suffix "tex" or in any other way sought to simulate its trade-mark; that beginning with the year 1928 a great number of manufacturers of wall board, including applicant, adopted trademarks which appellant contends closely resemble "Celotex" and with the obvious purpose of trading upon the popularity of appellant's mark.

In applicant's answer to the notice of opposition of opposer is found the following:

Applicant avers that there is no similarity in sound of the two marks Flametex and Celotex, except in the last syllable tex. And in view of the numerous registrations in the same class of goods, of trade-marks ending with the suffix tex, to mention a few; Hytex, Unitex, Walltex, Maftex, Suntex, etc.. which proves that the opposer has not the exclusive right to the suffix tex.

The above-quoted suggestion evidently was given great weight by the Commissioner, since in his opinion we find the following:

A considerable number of trade-marks ending in this syllable "tex" previously registered for use upon the same class of goods have been noted in the answer, the inference being drawn that "tex" is either publici juris and not capable of exclusive appropriation by anyone, or that this syllable has be