This appeal is from the decision of the Trademark Trial and Appeal Board,
Opposition was based on likelihood of confusion, mistake or deception with regard to the use of the following marks of appellee:
Appellant relied on its registrations of the following marks:
for “stove pipe, including еlbows, T joints, reducers, and flue thimbles; space heaters * * * ; ovens, heating drums, camp stoves, and rain caps, comprising chimney and stаck cowls;”
for solenoid valves;
for “receptacles — namely, pails, tubs, refuse cans and pails, trash burners, utility buckets and mail boxes.”
The board held that to the extent that appellant relied on its prior rights in its marks as a basis for attacking the validity of appellee’s registrations, the attack was improper in this opposition proceeding. The board also held that appellant’s prior use of its mark was not “otherwise relevant to the question of its present right to the registration thereof for pаdlocks,” citing Purex Corp. v. Maryland Paper Products Co.,
Appellee argues that the “expansion of business” doctrine is purely a defensive one, used only to prevent registration or use of a mark. Appellee states:
The “expansion of business” doctrine is believed to be inoperative for pus-poses [sic] of obtaining the right in gross to use a mark, or securing the right to registration in a situation where the result is likelihood of confusion.
Appellee cites Haggar Co. v. Hugger Corp.,
In Purex Co. v. Maryland Paper Products Co., supra, the applicant was attempting to register SWEETHEART for certain paрer products. Opposition was based on registration of SWEETHEART for toilet soap. Applicant relied on its three prior registrations of SWEETHEART for other paper and related products, and contended that since the opposer had not challenged thе applicant’s right to use the mark on the goods recited in those registrations, op-poser was guilty of laches. This court held that thе fact that the applicant had previously applied for registration of the mark on other products “does not per se place a duty upon opposer to take legal action on peril of losing its exclusive rights to its mark on toilet soaр and products related thereto.”
That was the extent of this court’s holding in Purex with regard to prior registrations by an applicant. It did not hold that an applicant’s prior registration or use of a mark could not be relevant to his present right to register, as the board’s opinion in the present case imрlies. Such a holding would be inconsistent with a long line of cases to the effect that, if an applicant had previously registered the same or a substantially identical mark for the same or substantially identical goods opposition cannot be sustained becаuse of a lack of possibility of damage to the opposer. See Joseph & Feiss Co. v. Sportempos, Inc.,
We agree with appellee that the “expansion of business” doctrine is purely a defensive doctrine. The policy underlying that doсtrine is that when a consumer who is familiar with a mark which has been established for a particular line of goods sees the same or a similar mark on goods which the supplier would logically expand his business to include, he would be likely to attribute those goods to that supрlier. There is no comparable consideration to be made in the case of an application where the applicant had previously registered or used the mark on different goods, for the statute deals only with a likelihood of confusion between the mark on the goods applied for and the opposer’s mark on his goods. There is no right to register one’s mark on an expanded line of gоods where the use of the mark covered by such registration would lead to a likelihood of confusion, mistake or deceptiоn. Key Chemicals, Inc. v. Kelite Chemicals Corp., supra, 59 CCPA at-,
Considering the obvious similarities between the marks, the nature of the goods to which they are applied and the channels of trade through which those goods travel, we have no difficulty in agreeing with the board that there would, be a likelihood of confusion within the meaning of section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). In reaching that conclusion we have given consideration to the case of Jenkins Bros. v. Newman Hender & Co.,
The decision of the board is affirmed.
Affirmed.
Notes
.
. Application Serial No. 272,381, filed May 25, 1967, alleging a date of first use of. October 19,1966.
. Registration No. 784,702, registered February 9, 1965, date of first use June, 1961, and registration No. 785,054, registered February 16, 1965, date of first use October, 1961, resрectively.
. Registration No. 506,852, registered February 22, 1949, date of first use February 1, 1924.
. Registratiou No. 604,778, registered April 19, 1955, date of first use May 4, 1951.
. Registration No. 717,362, registered June 27, 1961, date of first use April 14, 1960.
. Registration No. 593,530, registered August 10, 1954. The mark registered consists of the letters JB within a diamond, for use on various kinds of metal valves.