*1 (Patents) 43C.C.P.A. CORPORATION, BURTON-DIXIE Appellant,
v. CORPORATION,
RESTONIC Appellee. Appeal
Patent No. 6185. States Court Customs
United Appeals. and Patent 20, 1956.
June Geppert,
Wilson & J. Ira Wilson Chicago, 111., Geppert, appel- F. Carl lant. Hill, Roy Hill, & W. Hill W. and John (Edwin Greigg,
Hill, Chicago, 111. E. Washington, C;, counsel), ap- D. pellee. Acting O’CONNELL, Before Chief
Judge, JOHNSON, WORLEY, Judges. retired, JACKSON, COLE and Judge. JOHNSON, opposition pro- This trade-mark is a ceeding, brought by Cor- Burton-Dixie poration, Ortho- of the trade-mаrk owner (or, apparently flex advertis- ing, Ortho-Flex), opposition registration of the mark Orthotonic applicant, Corporation. Ac- Restonic the cording stipulation, the marks are used substantially goods, mat- springs, which mar- and box tresses through the same channels of tradе keted purchasers classes and are same to the competition each other. sold tion filed been stonic’s 1932, the seq., March Opposer’s Act on October No. alleged August in under the 29, 1952, application continuous of 292,811, 1946, as of June 24, and Act Orthoflex, is serial 1950. The U.S.C.A. reрublished of first use since 1905, 1951. No. is 1931. March § *2 registra- renewed 617,211, 1051 et having under has Re- 29, mary mere tions, however; I am not convinced that tonic’ impression closely ports secondary “As above [*****] model, marks —i. the view and ‘Slumberon Ortho-Flex.’ to their use with the marks. created stated, style that e., оr ‘Restonic The by both marks are the commercial type them record they designa- is Ortho- sup- tied pri- in view but (Trade-mark) Inter- The Examiner of suggestive marks, nature of the basing opposition, the ferences sustained secondary marks, their use as their primarily that on his belief his decisiоn significance, sound and I do be- “Ortho,” appearing both term any lieve that is likelihood of there likely marks, marks to cause would be confusion, deception mistake or entirety mis- or be confused to in their purchasers.” ours.] [Italics applied purchasers when taken gоods. challenges Opposer the factual holding. of Pat- The Assistant Commissioner basis of this An examination commissioner, acting ents, testimony, re- for the the exhibits and while show being holding examiner, frequently versed that Orthoflex was used opinion “Slumberon,” both marks were sec- of the ondary mаrks, that shows that it was purchasers like- were sometimes used alone and sometimes with ly en- marks in their to remember the a mark other than “Slumberon.” doWe prefix, meager and tireties rather than not think that the evidence here that, there their is sufficient to establish that Orthoflex confusiоn, secondary However, mistake no likelihood of is indeed Opposer, deception question them. or between the more basic is such whether Corporation, appeals properly from Burton-Dixie use is concurrent considered at opposition proceeding. decision. inall an As sistant no Commissioner cited cases case, course, The basic issue holding, support appellee of her and sought regis- whether to be fit to do not seen so either. reg- tered, Orthotonic, so resembles the mark, Orthoflex, likely, impression, istеred “as to be first On it would seem goods appli- logical if that marks conclude cant, opposition concurrently to cause confusion or mistake in an were used * * purchasers primary marks, to deceive *.” Trade- with other that likelihood substantially Act Mark 15 U.S.C.A. § § of confusion would be di does, minished, opposition primary If it then must distinguish help goods. sustained. mark would However, the cases which have consid interesting presents ques- This case an question rejected ered the that rea opposer’s whether the fact that soning. Corp. In Hat of America v. John registered mark has been with oth- used Co., 485, 487, B. Stetson 223 F.2d 42 C.C. past may properly marks er be con- Patents, 1001, P.A., the involved marks on the sidered issue of con- likelihood Specifically, Bird,” “Railbird” in the and “Game fusion future. As- were and sistant Commissioner stated: Assistant Commissioner had held “ ‘ * * * par from marks of “It clear the record both apparently always parties the marks of the are secon- ties are in con dary marks, opposer’sprimary junction with the more familiar and bet being applicant’s (oppos ‘Slumberon’ and known trade-marks “Dobbs” ter being er’s) ‘Restoniс.’ (appli “Stetson” and device eliminating mon for thereby a manufacturer to use more
cant’s), likelihood confused, goods, vary one mark mis on his purchasers emphasis believing placed on various into led or deceived *3 change used, way same the in which a mark is frоm the marked emanate hats so ** court, altogether. al or source; to This discontinue it *.” below, affirming though dis decision the The exhibits in this case show that tinctly not follow did that it indicated Ortho-Flex has been used in dif- several reasoning Commis of the Assistant the ways past, alone, ferent the sometimes usage the respect of the to sioner with marks, sometimes with other emphasized, sometimes Dobbs, because and with Stetson marks is no sometimes not. There oppo controversy presented in the the justification assuming such vari- that “Game proceedings was betwеen sition ation will not occur in Like- the future. alone.1 “Railbird” Bird” and wise, assuming we see no reason for that Ray Co., applicant Milton will continue to use Orthotonic Products v. In Weco Patents, C.C.P.A., 985, 987, with “Restonic.” The mark it seeks to 31 F.2d 143 register qualifica- is Orthotonic without we said: tion, not Restoniс Orthotonic. point, urges “Appellant other one ‘Vray’ is that its the effect to Another facet of the case which has with, connec- used in associated emphasized by appellee, been is the fact West’s’, with, ‘Dr. name the tion mattresses, etc., that the which have been given have been this should and that by bearing opposer sold Ortho-Flex the the with in connection consideration mark, springs contain constructed accord- of likelihood of the determination patents op- to certain owned the to re- obvious It is too cоnfusion. poser. argues Appellee that this quire that discussion extended identify Ortho-Flex has been used to the Appel- argument merit. is without patented spring construction, rather than regard would in this lant’s mattress, appears the and such to have change. [Citing subject to holding of Com- the Assistant cases.]” missioner, although it is not clear what weight gave holding. she logic to that In our cases becomes these behind opinion, however, argue which exhibits the case marks To that clear. “secondary” that such has will not show not been the exclusive marks been used еxample, necessary of mark. confused, Exhibit assume to “ * * is an advertisement which be so states continue to marks will that Mattress, assumption to be sure use an Ortho-Flex an Such future. in the ** among party only *and which justified had lists if each the ex- could be of legal right clusive features that mattress to use his no by aware, Sleep Thus, Ortho-Flex there “Patented Unit.” as we are So far itself. right appear would to use it that “Ortho-Flex” on the limitation such is no designate mark, been used not facts of this to under the at least a willing spring construction, support to but not be also the mаt- case. We containing right give ruling tresses such a broad construction. which would Furthermore, right applicant’s register limited but a answer to willing opposition states, “Applicant notice Neither are we to use * * * goods admits that Ortho-Flex and Ortho- assume parties descrip- hereto in associa- the same continue be used will tonic properties, namely marks. It is not uncom- tive mattresses other — Appeals appears case, see Deren and Patent a discussion this be more For 1. sympathetic protection Eighth berg, toward Year of “Thе Administra sec- ondary Lanham Trade-Mark the Office Act of has been tion of 1946,” of the more recent T.M.R. where it is in some cases.” 45 “ * * * stated, the Court of Customs * * test, subjective prior no- decisions are of *The springs bed or box alleged additionally little each case must be valuе since de- tice had particular cided of facts. identical, not de- on its own set goods which was were Manufacturing argument Any North Star Co. v. Wells answer. nied Corp., 204, C.C.P.A., goods Lamont Patents, F.2d parties are not is, Ortho-Flex —that “sleep not to units” and patented Applying foregoing lаw to the out goods application therefore —is present case, opinion we are stage. Rule Trade-Mark order at Ortho-Flex, Orthotonic and when viewed 8(d), Civ.Proc., rule Fed.Rules confusingly in their are not *4 28 U.S.C. they similar. Even if are not viewed in foregoing ques- Having disposed of the their but the similarities and question now come to the basic tions we compared, dissimilarities are we find that is con- mark Orthotonic whether the of fusingly prefixes identical, while the “Ortho” are Ortho-Flex. similar to the suffixes Tonic and Flex do not look alike, alike, sound or have the same mean devel have been Various rules ing. We feel that the dissimilarities are aiding oped purpose in de for the greater than the similarities and thus confusing similarity. It termination cause the marks on their be entireties to the marks course well settled that is of more different than alike. We come in their entireties. must be considered especially this conclusion since the word Inc., Co., Apollo v. Enro Shirt Shirt Co. “ortho” which is common to both marks 849; Patents, 469, C.C.P.A., 35 165 F.2d having accepted prefix is an ings such mean Corp. v. John B. Stetson of America Hat Co., supra. “straight,” “correct,” “reg may features But different ular,” and therefore should not be con analyzed to determine whether the be portion sidered the dominant of the confusingly similar, Hoff marks are descriptive marks since it is somewhat Kawerk, Roche, F.2d Inc. v. 148 mann-La the merchandise to which the mаrks are C.C.P.A., Patents, 954, 557, and sim 32 applied in the sense that it connotes a should both and dissimilarities ilarities desirable characteristic of the merchan Younghusband considered, v. Kurlash be dise under consideration. We therefore 230, C.C.P.A., Co., Inc., 25 Pat 94 F.2d conclude that the marks in their entire- ents, hеld 886. It has also been sufficiently ties neither look nor sound portions of the marks cannot common alike, they meaning do nor have the same Schering Glatz, disregarded, & Inc. v. concluding as to warrant our so Inc., Dohme, Sharp 146 F.2d 32 & goods they used similar would be Patents, 827, C.C.P.A., descriptive but a likely in cause confusion the trade. signifi word, trademark which has little foregoing For the reasons the decision regarded cance, domi will as the not appealed from is affirmed. part Disinfect of the West nant Co., Affirmed. 163 v. Lan-O-Sheen F.2d Co. Patents, C.C.P.A., 35 JACKSON, Judge, retired, recalled to well settled that the test It is also participate. opposition pro in an this court ceeding likelihood of in confusion WORLEY, Judge, concurs the con- purchasing public of the as to minds clusion. goods. origin Milk of the Nestle’s the Products, Co., Importing v. Baker Inc. O’CONNELL, Judge, C.C.P.A., Patents, present Inc., 37 F.2d at argument Laboratories, case, but, v. Inc. this Standard because Co., illness, participate 167 F.2d did & Gamble not Procter the deci- Patents, 1146. a C.C.P.A., Since this is sion. COLE, Judge (dissenting). which is “orthodox.” How- ever, prefix widely recognized agreement ma- I While am in referring use in its branches legal jority’s statements of the arts, g., orthopedies, medical e. orthodon- those principles, I do not believe testimony tia. There is this case correctly applied to principles in the 1940’s there was considerable facts of case. by mattress word manufacturers of the majority has come to states that it “orthopedic” products, to describe their the confusingly the marks are conclusion until, instigation at the of the Federal “especially” similar Commission, industry adopted Trade descrip- prefix is “somewhat “ortho” prohibiting trade in- rules merchandisе, and therefore tive” “Ortho,” discriminate word. dominant should not be mattresses, prefix as a to trademark admitting portion of marks. Even likely, my opinion, would be more assumption improbable the somewhat suggest connotation, medical public purchasing has a sufficient “reg- “straight,” describe mattress knowledge interpret of Greek roots to *5 ular,” or I “correct.” think that “ortho” indicating mattress in “ortho” infrequent its rather “straight,” “regular,” or “cor- question is speech, common and its medical connota- rect,” majority faced still used, likely so would problem. prеfix “ortho” If the half purchaser forcibly strike more than mattresses, descriptive” of is “somewhat longer suffix, either and would stick abundantly descriptive the suffix“flex” is his mind. mattresses, less rea- and there is even connection, interesting In this it portion of son to consider it the dominant adopt аpplicant how came its note respect same is true with The mark. When trade rules give If suffix would to the “tonic.” it bedding, manufacturing, whole- any impression purchaser other distributing industry, promulgated sale appellee’s name mere assonance with 1950, prohibited of “ortho- “Restоnic,” seems to that it should it me bedding products, pedic” applicant on descriptive least as at using (who “orthopedic” had its on Depending pronuncia- “ortho.” tion, mattresses) obliged was to discontinue re- it to indicate the would seem Thereupon appli- use of the word. juvenating qualities “tonic” or sought registration for cant sound) mattress, (with long vowel prefix The fact here. that the gave . had or “tone.” that the mattress “ortho” was whole carried into the world, practical in a Trademarks exist sought to be to indicate seems lexicographers. If we in a not world weight given considerable it away from the dic- direct our attention average applicant. pur- I think the com- facts of tionaries and consider the give weight. it the same chaser affairs, I conclusion is
mercial think the my opinion, prefix inescapable dominant In “ortho” “ortho” is the portion portion marks involved herein. the dominant the two Although many as a whole marks are words the dictionaries and considered begin prefix confusion, mistake, may likely with the “ortho” or de- cause ordinary purchasers. frequently ception too decision speech. more common words should One the Commissioner be reversed.