*1 1001 States, 168 Ct. (1965); United v. Smith

United v. 310 Ferguson Nichols Cl. 545 States, Dickson v. Cl. 160 denied, 310 F.2d F.2d (1962); (1962); United (1965); F.2d 861, 836, 158 Ct.Cl. 359 167 (1962); Harper 373 U.S. States, 166 Ct.Cl. v. United McAulay Rae v. (1964); 166 Ct.Cl. 272 States, v. 405, United Ct.Cl. Grubin v. United 159 Ct.Cl. United 938, 83 S.Ct. 161 Ct.Cl. 306 States, States, v. United Woodard States, (1964); United v. (1964); States, 159 Ct. 158 United 159 (1962), cert. 547 135 131 States, States, 333 166 Ct.Cl. v. Ct.Cl. Ct.Cl. 185 Bevins v. 1543, 10 (1963); (1964); (1962); United States, Patten 412 305 ^[55] The GILLETTE COFA PRODUCTS “42” United Rehearing Patent and Patent States Court June Denied COMPANY, Appellant, 20, LTD., Inc., Appellee. v. Appeals. 1968. No. 7948. Oct. of Customs 10, (1963); United Hoen v.

L.Ed.2d 693 Lipp (1962); States, v. 235 Ct.Cl. 157 States, 674, 157 Ct.Cl. 301 United 932, denied, (1962), 373 U.S. cert. 197 (1963); 1540, 691 L.Ed.2d 83 10 S.Ct. States, 172 157 Ct.Cl. v. United Salz States, (1962) ; Ct. 156 United Adams v. States, (1962); United Frith v. Cl. 289 Thompson (1962); v. 188 Ct.Cl. 156 (1962); States, Ct.Cl. 158 156 United States, Ct.Cl. 215 United 154 Ludzinski v.

(1961); Furlong States, 153 v. United (1961); United Watson v.

Ct.Cl. 557

States, (1961); Hend 152 Ct.Cl. 273 States, 150 437 Ct.Cl. v.

rick United States, (1960); 148 Ct. United v. Weiner States, (1960); Siegel United Cl. 445 v. (1960); Allin United v. 148 Ct.Cl. 420 (1959); States, 459 Brown Ct.Cl. 147 States, (1958); 143 605 United Ct.Cl. States, 367 142 Ct.Cl.

Bowman v. United States, (1958); 158 Friedman v. United (1958); 364,

F.Supp. San 141 239 Ct.Cl. 370, States, F.Supp. 153 Millan v. United Furlong (1957); v. United

139 Ct.Cl. 485 238, States, F.Supp. 843 138 Ct.Cl. States,

1957); Uhley F. v. United (1957) ; Supp. Grif 137 Ct.Cl. 275 States, 135 Ct.Cl. v. United

fith States, (1956); Thompson v. United (1956);

F.Supp. 134 Ct.Cl. States, F.Supp.

Loth v. United Lemly (1956); v. United

133 Ct.Cl.

States, F.Supp. Ct.Cl. 365 States,

(1950); Ct. Ancker v. United States, United Cook v.

Cl. 384

101 Ct.Cl. 782

1002 27, registration 1957, ust for of lotions, for EXECUTIVE after-shave

pre-shave lotions, cologne, and hair dressing (hair tonic). Appellee is the assignee of record of No. 414,190, 29, 1945, of The Lander Co., (hereinafter “Lander”), Inc. for Opposition hair tonic. appellant’s registration, is based on No. 400,896, April 6, 1943, for EXECU- safety opposer’s TIVE razors and argument predicated on the inclusion shaving cologne lotions in the and application. appellee The board found that was en- Mass., Boston, Patrick, Rowland V. 1945, titled to a date of use in Hatfield, Washington, C., Dos T. D. successor in business Lander. It also Mass., Boston, Winchester, Charles C. found use of EXECUTIVE on appellant. appellee’s goods, named, above in 1945 Sellers, Pasadena, Cal., D. William concurrently opposer’s with on use safe- Lane, Washington, C., Munson H. D. ty razors would cause confusion. appellee. board, therefore, ap- reasoned pellant damaged by could not be RICH, Acting Judge, Before Chief and opposi- and dismissed the SMITH, ALMOND and KIRKPATR tion. We reverse.

ICK,* Judges. view, board, in our erred in its appellee’s determination date of first Judge. RICH, use. We hold that is entitled appeal This is from a decision of the to a date of first use no earlier than 1957 Trademark Trial and Board1 dis- and we remand for the board to deter- missing opposition appellee’s an mine light likelihood of confusion in plication, 151,900 Aug- serial No. filed holding.2 our * Judge, Senior District Eastern District Pennsylvania, by designation. sitting (1950); Robert, Commentary 940-42 on Act, the Lanham Trademark U.S.C.A. 15 Consisting Waldstreicher, 265, Lefkowitz (1948); Robert, at 271-72 The New Shryoek, opinion Shryoek. Manual, 53-56, Trademark 194-202 Regis- Vandenburgh, Concurrent 2. We therefore do not Trademarks, reach the issue tration 29 JPOS 720 appellant urges which (1947). However, as central: wheth this court has done so er of confusion majority thought likelihood at the time of statutory when a opposition reg language is not sufficient to defeat unavoidable. See In re Conti- Appellant Baking istration. assures us that Co., 747, nental F.2d 55 CC question open gen is an one. (1968) ; Co., We are PA- In re Wilson Jones erally disparity ; reluctant to find between 670, (1964) 337 F.2d 52 CCPA 805 right register Commodities, a trademark Marg- Salem Inc. v. Miami right to use Co., it as such. See In re 729, arine 244 F.2d CCPA Co., (1957). National Products Distillers P. And we have decided other cases 941, (1962) 2d suggestive, least, and Dun unimportance 49 CCPA 854 at of the London, See, hill of g., Inc. v. Dunhill Tailored use. e. Contour Chair- Clothes, Lounge Englander Co. 324 F.2d (1961). generally Callmann, See Trade 51 CCPA 833 think We Right Right marks: The To Use vs. The another venture into this clouded Register: Case, To The Dunhill T. area should await firma factual basis. (1961); Derenberg, ambiguities M.R. The Third also note that in the opinion par- Year Lanham of Administration board’s seem to have led precisely Trademark Act of 40 T.M.R. with ties to deal this issue less Lander, by opposition begun, de- was our on which we base facts Klein, nunc assigned In 1956 Execu- with Mr. as follows. cision are right corporation of entire in EX- Toiletries, Ltd., to him its tive and, ECUTIVE, reciting that such had been Klein Paul began stockholder, to use time, intention of the in their sole tonic, previous Appellee thereupon *3 contract. on hair variants of EXECUTIVE3 cologne, application claim, Later its for lotion. amended to and after-shave lotion, president in year, after-shave of first use Klein date Mr. asked the that Mr, willing 1945. Klein filed he be an affidavit with of Lander whether “would Executive,” the in a trademark amendment which he averred that sell the name to only recently he had hair tonic learned of Lander's Lander had used on products use of on other since 1945 EXECUTIVE after-shave lotion at least and only tonic, goods, than hair the on as we had hair tonic and original Klein, year. show, shall in the how- involved as- of that only Mr. signment agreement. ever, Lander’s use of the knew of hair tonic. On November mark on opinion, In our no there was sub agreed a contract under Lander to finding stantial basis for the board’s EXECUTIVE, registration for which its appellee had an of effective date “together good the will of the busi- with use in 1945. the We will assume valid ness associated said with ity of the “sale” of Lander’s assigned trademark,” Klein, Paul was to pro good with its inclusion of will. forma personally, for a considera- substantial however, permit pro cannot, nunc the using promised stop tion. Lander to tunc “clarification” of sale make days. EXECUTIVE within 30 something not, prejudice it it was the Toiletries, thereupon Ltd., Executive appellant.5 began tonic, to use EXECUTIVE on hair knowledge Mr. Klein no lotion, Lander’s pre-shave lotion, after-shave and use of the mark on after-shave lotion cologne continued so until and to do its original agreement. the He merger time appellee Appellee into in 1958.4 “purchase” did not intend his to embrace since has used on EXECUTIVE the same And, used. so aside from goods. It filed the at bar pro nunc no agreement, tunc there is assigned in 1962. In Mr. Klein any on his evidence of different intention interest in and its part appellee. In Lander.6 after parties preferred. is, in into manifest intent than we would have It appellee's position fact, the contract. this the board peal seem to intent is deter- of confusion at assume found no likelihood agree opposition. that ba- minative factor. We decide on time of the We cannot position. appellee’s board stated: sis. with that at “[TJhere present can be no doubt Oestreich, president 6. Mr. H. Charles might persons time well assume The Lander was cross-exam- of razors razor that manufacturers and point by Patrick, appel- ined on this Mr. market manufacture blades also and/or lant’s counsel. Exhibit 1 identifica- shaving in trend lotions because agreement original tion is the written Company years toward diversification recent Mr. between the Lander * * product lines assign- Klein. Exhibit A is the written registration. B is ment of the Exhibit EXECUTIVE, g., E. EXECU- 3. JUNIOR pro agreement. tunc the nunc by itself, EXECUTIVE, TIVE was 9-5. interjections Sellers, appel- of Mr. used. not counsel, lee’s are instructive as 4. Mr. seems have been sole stock- Klein testimony The cross- of the witness. appellee 1962. He holder of until 1961 or by Mr. Patrick is worth set- examination incorpora- its lias been since its ting forth: tion. words, this Exhibit In XQ30. other expresses applicable the entire no that the identification There is contention you any inquiry prescribes Klein? Paul other between than law appellee acquired any tonic, bargain Nor do we think did not them, did not rights pro and, virtue of the nunc tunc receive them at least until the nunc assignment agreement, to Mr. Klein. Mr. Klein convey could not subsequent conveyance any that, made no hold, therefore, them. We with re- rights thereby appellee. acquired7 Ap- spect lotion, appellee to after-shave pellee’s position, it, only we not take this: pred- entitled to claim Lander as its assignment conveyed the earlier from ecessor in interest. appellee Mr. Klein to all of Lander’s Appellant solely here relies on its previous rights EXECUTIVE, e., i. registration. Therefore, appellee’s nu rights which Klein Mr. did not know he objections appellant’s mérous evidence had and which did know as to its may use of EXECUTIVE be receiving. rejected We have disregarded. theory. Esso Standard Oil Co. Mr. Klein did not know that *4 rights Bigelow-Clark, any Inc., Lander had but those in hair object ing agreement being prior Mr. Sellers: the I to that as he had to that contrary to time. the evidence. agreement There Mr. has been a second Patrick: I think amI entitled to signed entered which know that into has been marked at as the time he Ex- A, B, supplements Exhibit hibit 8,1956, which it. whether the letter of November Opposer’s which is Exhibit XQ31. my question. I amend identification, expressed the entire un- agreement prior The entire made derstanding parties, of the and it seems the November 15th date of A. Exhibit question yes to me he can answer the object being Mr. Sellers: I to that as or no. contrary also, to the evidence because object Mr. Sellers: I to that to the supplemental agreement, the which is implies agree- extent that that the B, August 1,1963, Exhibit pro is dated nunc by ment of the is not evidenced 15, 1956, tunc November is which Exhibits A and B. original assignment. the date of the already sign He has stated that he did assignment supplement to the agreement correction, letter, the the says — it is effective as of the date of the Opposer’s which is Exhibit 1. original assignment. signed that, He said he but has he XQ32. question my I will amend signed assign- also stated that he the say prior your signing Exhibit A. supplemental agreement ment and you please repeat Mr. Sellers: Will comprise Exhibits A B. your question? you really asking is, What are him do XQ33. Opposer’s Does Exhibit agreements the which are Exhibits A agree- express identification the entire writing agreements and B reduce to you ment that had with Paul Klein as prior that he had to that time or did Industries, of Paul Klein Inc. agreement. have he some other you signed at the time Exhibit A? XQ34. you question? Will answer the object being Mr. Sellers: I to that as say A. I would that this letter was contrary to the obvious fact. proposed by [sic, Mock] Mark & Blum They agreement entered into an to re- everything pertaining and that agreement writing agreement they duce approval was with the our previous had to that time. attorneys. trademark agreement merely written is XQ35. you 15,1956 Did on November written of the evidence that any agreement have with Paul Klein existed, you and if the Exhibit A have expressed other than one that being supplemented by B, Exhibit in the letter of November 1956? pro other, nunc tunc for the it is obvious you writing Mr. Sellers: Do in mean signing to the or oral? agreement they had an oral understand- XQ36. way. Either A. Whatever is writing. ing which was reduced to writing arrangements in is the we had. object question being I to that as con- stop Mr. Sellers: we for lunch? trary to the evidence. question. XQ34. 7. It seems answer the doubtful that the nunc Please assignment any A. Must I? transferred interest to Mr. being object Capitol Rak, Mr. I Klein. Tie Sellers: to it Inc. v. Tie Rack Stores, asking you really misleading USPQ (E.D.Ill.1966); are in that agree- Crystal, in that if the the witness effect Avon Shoe Co. v. David F.Supp. (S.D.N.X.1959). to writ- he entered into reduced ment concerning statutory Further, command ab- expressed in cancellation, likelihood of confusion is prospective counterclaim sence of a language: “No trade-mark applicant, open under our it is not decisions, an * * * registration refused shall be prove of a abandonment * * * * * * pro- so resembles opposition unless it an mark in * * * Chair-Lounge a mark a mark or ceeding. Co. v. Contour * * * (cid:127)x- * * therefore, previously supra. used Englander Co., We, * * * * * * likely argument as to be disregard appellee’s another ** Section periods to cause confusion pellant of non-use.8 has admitted (15 2(d) of 1946 the Trademark Act Appellee has to strike moved added.) (Emphasis 1052(d)). U.S.C. § discovery put depositions in evi certain prohib- is This means that during by appellant its rebuttal dence today if ited is a likelihood there prof- argues: period. Appellee “The confusion, question whether solely Opposer’s fered evidence related twenty years likely confusion was ten or prop- and was own use of EXECUTIVE ago is irrelevant. erly part case-in-chief.” a of its 2(d) speak priority Section not does deny proof of use of motion. While but rather of conditions extant part necessary an time the case-in-chief, opposer’s Esso Standard Office. before the Patent Chair-Lounge Co., Contour right supra, appellant Oil Englander Com- *5 proof to of use after introduce pany, 324 F.2d 51 CCPA 833. the issue non-use. raised hardly pause consider would to is reversed. decision board could if whether a mark be The case remanded board there had been likelihood of confusion proceedings further consistent with twenty years previously, which likelihood opinion. vanished Reversed remanded. registration. When the facts are re- versed, seems little there reason for adopt solely ALMOND, (concurring). Judge court different rule a neg- applicant the benefit of an who had issue, I would reach the avoided register like- his mark until a lected majority, the time for whether appeared. lihood of confusion determining possibility of likelihood I would this ease to remand the Trade- of confusion date of is the first use of sought mark Trial and Board to deter- be or opposition proceedings. mine the current likelihood confusion. date of the (3d 1940); Appellee testimony dence ed. cf. Wil §§ relies on the Co., appellant’s P. liam S. Merrell Co. v. Anacin officers And, during 2d were not razors made World War generally holding shortages. whatever the merits II because of mony metal testi- party apparently the testimonial “admission” based on what agent, employees of his we do not think de witness had learned from other appellant. urges Appellee as this in fensible a situation such us to hold appellant insistence there a simultaneous the “admission” of non- upon incompetency disregard explanatory its ref- context. but to use County Kings shortages. Trust It Cf. Waters erence metal seems to 1944). generally, (2d knowledge See F.2d 680 Cir. us that the lack of first-hand McCormick, part may Evidence § on the witness’ have vitiated (3d Wigmore, McCormick, ed. Evi- §§ his entire statement. Evidence 2588-2597 1940). (1954); Wigmore, Evi- dence §