Elgin American Mfg. Co. v. Elizabeth Arden, Inc. , 83 F.2d 681 ( 1936 )

BLAND, Associate Judge.

This is an opposition proceeding in which the Elgin American Manufacturing Company, hereinafter referred to as Elgin American, is the opposer, and Elizabeth Arden, Inc., hereinafter referred to as Elizabeth Arden, is the applicant.

The applicant seeks to register a trademark consisting of the letters “EA.” The application, No. 337006, recites that the trade-mark has been used continuously since December, 1930, on bath salts, and since June, 1929, on rouge, sun-tan oil, talcum powder, and perfumes.

The opposer, Elgin American, in its notice of opposition, relies upon its trademark “EAM,” registered in 1917, and has alleged and shown, by stipulation, that prior to applicant’s use of its said trade-mark as aforesaid it had been used by it on and in connection with lockets, cigarette cases, vanity cases, card cases, match safes, and powder boxes, produced both from precious metals and from base metals and' various alloys of metals; rouge boxes, compact boxes, powder containers, make-up boxes, compacts for both loose and cake powder, cold cream containers, perfume containers, lipstick holders, eyebrow pencils, soap receptacles, and various toilet articles.

The two marks are here reproduced:

M-ark of Appellant. Elgin

American Manufacturing Co.

Mark of Appellee,

Elizabeth Aiden, Inc.

The stipulated record is very indefinite and confusing. The statement is made therein that Elgin American sells refills for its cases,' boxes, containers, holders, and pencils. No allegation as to when they were sold or what trade-mark, if any, was used upon them is found in the record. Other allegations are equally indefinite. The record shows that' appellant advertises that it sells refills for its rouge containers, and in the advertisements- the rouge is shown placed in the rouge containers. We agree with the appellee and with the findings of the tribunals below that, as the issues are here presented, appellant’s trade-mark must be regarded as having been used only on the goods above listed, in the penultimate paragraph, and that appellant’s cases and other articles were made from both precious and base metals and various alloys of metals.

The applicant’s stipulated facts contain the statement to the effect that its “EA” trade-mark is used on several kinds of containers, but the application at bar, No. 337006, does not so specify. So, the question here presented is whether the trademark “EA,” when used on rouge, sun-tan oil, talcum powdfer, perfumes and bath salts, so nearly resembles appellant’s “EAM” mark when used upon its goods above specified, which include powder boxes, rouge boxes, compact boxes, powder containers, perfume containers, and soap receptacles as to be likely to cause confusion within the meaning of the statute.

The Examiner of Interferences held that the opposer’s metal products are not. goods óf the same descriptive properties as the toilet preparations in connection with which applicant uses the mark here sought to be registered, and dismissed the opposition.

Upon appeal, the Commissioner of Pat« ents held that the marks involved lack of “deceptive similarity” and called attention to the plain printing of the mark “EAM” and the distinctive arrangement of the letters “EA.” He also held that the goods to which the parties applied their respective marks were of different descriptive properties, and affirmed the decision of the Examiner of Interferences in dismissing the opposition.

Elgin American appealed here from the decision of the Commissioner. In the decision of the Commissioner is the following: * * It would require a very distorted meaning of terms to say that a cake of soap belongs to the same general class as a metal soap box, or that an ounce of perfume has characteristics in common with its ornamental container. Once that be held it would necessarily follow that barrels and beer are of the same descriptive properties; likewise bottles and pickles, crates and eggs, bags and flour, etc. I have found no case that goes to that length, and in the absence of a binding judicial pronouncement to the contrary my own opinion is that no such meaning can properly be read into the language of the statute.”

We are not in agreement with the views of the Commissioner that appellant’s powder boxes, and powder of the character sold by appellee, are not goods of the same descriptive properties or that the perfume containers sold by appellant are not of the same descriptive properties as the perfume sold by the appellee. The rouge and powder boxes, it seems to us, are of the same descriptive properties as the contents of such boxes.

The Commissioner stated that if it were held that perfumes and soaps were of the same descriptive properties as- perfume containers and metal soap boxes, it would necessarily follow that barrels and beer were of the same descriptive properties. We do not .mean to hold that every container is of the same descriptive properties as its contents. We would think, however, that considerable confusion might result from the manufacture of beer kegs selling them under the trade-mark “Budweiser” while the beer itself was also sold as “Budweiser” beer by another. If the trade-mark "EAM” were placed on an ornamental perfume bottle, could there be any doubt that purchasers might assume that the bottle and the perfume had a common origin, or that the bottle contained an “EAM” perfume? [2,3] The Trade-Mark Registration Act (15 U.S.C.A. § 81 et seq.) was designed to prevent confusion. The businesses of the parties hereto, obviously, either overlap or in their natural growth and extension will do so. If appellant does not sell refills for its compacts under its trade-mark “EAM,” it certainly ought to have the right, being the owner of the mark, to do so without running afoul of confusion which would result from the registration of the mark of the appellee for the uses stated. Appellant’s mark, from its long and extensive use, wTe assume, is a well-known mark. One of the most oft-repeated statements found in court decisions relating to trademarks is that those who desire to distinguish their goods from the goods of another have a broad field from which to select a trade-mark for their wares. Equally well settled is the rule that doubts, if any, are resolved against the newcomer.

Our conclusion herein reached is amply supported by the decisions of this and other courts. In California Packing Corp. v. Tillman & Bendel, Inc., 40 F.(2d) 108, 17 C.C.P.A.(Patents) 1048; B. F. Goodrich Co. v. Clive E. Hockmeyer et al., 40 F.(2d) 99, 103, 17 C.C.P.A. (Patents) 1068, and in other cases, we have said that the term “merchandise of the same descriptive properties” in section 5 of the Trade-Mark Act of 1905, as amended (15 U.S.C.A. § 85), must be construed in the light of the term “goods of the same class” in the first part of the same section. In determining whether goods are of the same class or are of the same descriptive properties, we said in B. F. Goodrich Co. v. Clive E. Hockmeyer et al., supra: “And, of course, in this connection, the use, appearance, and structure of the articles, the similarity or the lack of similarity of the packages or containers in which, the place or places where, and the people to whom, they were sold should be considered.”

It is conceded in the case at bar that the goods of both parties go to the same class of purchasers and are sold from the same kind of store's. Unquestionably, an article and a container which is specially designed to hold the article bear a close relationship to each other and are associated together by purchasers.

The goods being of the same descriptive properties, it remains to be determined whether or not the marks so nearly resemble each other as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers. Appellee has adopted the first two letters of appellant’s mark, and the fact that they happen to be the initials of the first two words in the term “Elizabeth Arden, Inc.,” though mentioned by appellee, has not been suggested by any one as being a material consideration. «

In Crystal Corp., etc., v. Manhattan Chemical Mfg. Co., Inc., etc., 75 F.(2d) 506, 508, 22 C.C.P.A. (Patents) 1027, following other decisions, it was held that confusion was more likely to result from similarity in letter trade-marks than in other kinds. We there said: “We think it is well known that it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, words, or phrases. The difficulty of remembering such lettered marks makes confusion between such marks, when similar, more likely.”

There, we held that a “T. Z. L. B.” mark was confusingly similar to a “Z. B. T.” mark.

In A. F. Part, Inc., v. Sormani, 80 F.(2d) 78, 23 C.C.P.A.(Patents)--, it was held that “OMY” was confusingly similar to a mark consisting of the same letters in combination with three human heads.

In Helen Schy-Man-Ski & Sons v. S. S. S. Co., 73 F.(2d) 624, 22 C.C.P.A. (Patents) 701, “S.S.S.” was held confusingly similar to S'M'S.

In Guggenheim v. Cantrell & Cochrane, Limited, 56 App.D.C. 100, 10 F.(2d) 895, the Court of Appeals of the District of Columbia, in an infringement suit affirmed a decree of the lower court enjoining the further use of the trade-mark and name “G & G” upon ginger ale, upon the bill of a prior user of the trade-mark “C & C,” upon the same product.

It was held in Cluett, Peabody & Co., Inc., v. Samuel Hartogensis, 41 F.(2d) 94, 17 C.C.P.A. (Patents) 1166, that substantially identical marks used on collar buttons, on the one hand, and collars on the other, were used on goods of the same descriptive properties and that the newcomer’s mark should have been canceled.

In Noll v. Krembs, 73 F.(2d) 491, 22 C.C.P.A. (Patents) 722, a medicated textile used for the treatment of the hair. and scalp was held to be merchandise of the same descriptive properties as a preparation for coughs and colds.

I ' In Rotex Surgical Appliance Co. v. Kotex Co., 44 F.(2d) 879, 18 C.C.P.A. (Patents) 746, an antiseptic powder for women, on the one hand, and sanitary napkins, on the other, were.held to be goods of thf same descriptive properties.

In Kotex Co. v. Clarence M. McArthur, 45 F.(2d) 256, 18 C.C.P.A.(Patents) 787, we held that there was a likelihood of confusion of origin in the use of thp mark “Rotex” on vaginal syringes in view of the prior ownership and registration of the mark “Kotex” for sanitary napkins, the goods upon which the marks were used being of the same descriptive properties.

In Vick Chemical Co. v. Central City Chemical Co., 75 F.(2d) 517, 22 C.C.P.A. (Patents) 996, where the trade-marks “Lix” and “Vick’s” were involved, it was held that an insecticide, upon which “Lix” was used, was merchandise of the same descriptive properties as pharmaceutical preparations, namely, medicated salve, nose and throat drops, medicated cough drops, and liver pills, upon which the mark “Vick’s” was used.

In Malone v. Horowitz, 41 F.(2d) 414, 17 C.C.P.A. (Patents) 1252, we held that “Molo” and “Poro” were confusingly similar marks, “Molo” being applied to a mouthwash, breath purifier, throat gargle, and general antiseptic, and “Poro” being used on hair and toilet goods used in beauty culture, such as body deodorants, cold creams, vanishing creams, shampoos, temple growers, hair growers, etc., and that the marks were used by the parties on goods of the same descriptive properties.

In Eastman Photographic Materials Co. v. Kodak Cycle Co., 15 Reports Patent Cases 105, it was held by the English High Court of Justice, Chancery Division, in a much-cited decision, that confusion would result in the sale of bicycles under the term “Kodak” and the sale of cameras under the same name.

The Circuit Court of Appeals for the Third Circuit, in Wall v. Rolls-Royce of America, Inc., 4 F.(2d) 333, enjoined the use of the trade-mark “Rolls-Royce” on radio tubes on the ground that purchasers of the tubes might conclude that they originated with the well-known Rolls-Royce manufacturers of automobiles, aeroplanes, and parts thereof.

In L. E. Waterman Co. v. Gordon, 72 F.(2d) 272, the Circuit Court of Appeals for the Second Circuit held that a trademark protects the owner against not only its use upon the articles to which he has applied it, but upon such other goods as might naturally be supposed to come from him, and that the owner of the trade-mark “Waterman’s,” registered for fountain pens, mechanical pencils, and similar writing instruments, was entitled to enjoin another from selling razor blades under the name "Waterman.”

In Pro-phy-lac-tic Brush Co. v. Abraham & Straus (D.C.) 11 F.Supp. 660, 663, toothbrushes and tooth powder were held to be “so closely associated in the minds of the public that if they should bear the same name a consumer would be justified in concluding that they have the same origin.” The court further said: “Toothbrushes and tooth powder go together. They are sold together. The evidence in this very case alone indicates clearly that this close relation exists between the two.”

In Sun-Maid Raisin Growers of California v. American Grocer Company, 40 F.(2d) 116, 17 C.C.P.A.(Patents) 1034, flour, on the one hand, and raisins, syrup, and baking powder, on the other, were held to be goods of the same descriptive properties.

In Aunt Jemima Mills Co. v. Rigney & Co. (C.C.A.) 247 F. 407, L.R.A.1918C, 1039, it was held that pancakes and syrup, used with said pancakes, were goods of the same descriptive properties. See, also, Marcucci v. United Can Co., Inc. (D.C.) 278 F. 741.

The above-cited authorities would seem to make it clear that rouge boxes and rouge, face powder boxes and face powder, and perfume bottles and perfume, when sold as is above stated, are all goods of the same descriptive properties, and that confusion would likely result as to their origin if identical or similar trade-marks were used as appellee suggests.

Appellee relies on the case of American Tobacco Co., Inc., v. Gordon, 56 App.D.C. 81, 10 F.(2d) 646. There, the Court of Appeals of the District of Columbia held cigarettes and cigarette holders not to be goods of the same descriptive properties. It is stated by appellee that this decision has never been reversed. We discussed that case in California Packing Corp. v. Tillman & Bendel, supra. It is not in harmony with most of the decisions of that court, subsequently handed down, and it certainly is not in harmony with the decisions of this court.

It is our view that the goods are of the same descriptive properties, although there is a difference in them, and that the marks, although slightly different, bear sufficient similarity to each other, that confusion would result from their concurrent use on the goods of the respective parties.

See Elgin American Manufacturing Co. v. Elizabeth Arden, Inc., 83 F.(2d) 687, 23 C.C.P.A. (Patents) -, decided concurrently herewith.

The decision of the Commissioner of Patents is reversed.

Reversed.