Firestone Tire & Rubber Co. v. Montgomery Ward & Co. , 150 F.2d 439 ( 1945 )

BLAND, Associate Judge.

From a decision of the Commissioner of Patents, 59' U.S.P.Q. 27, speaking through the First Assistant Commissioner, affirming that of the Examiner of Interferences, which sustained appellee’s notice of opposition to the registration of appellant’s trade-mark and adjudged that the applicant (appellant) was not entitled to the registration applied for, appellant has here appealed.

The goods of appellant (hereinafter referred to as Firestone) and those of appellee (hereinafter referred to as Montgomery Ward) upon which their respective marks are used are, in each instance, radios and radio supplies. The mark which Firestone seeks to register is a composite mark comprising the words “Air Chief”. Interposed between these two words is an illustration consisting of a winged figure designed with heroic impressiveness, standing on a globe. Above the head of the symbolic figure and parallel to its outstretched arms and wings is the word “Firestone”. To the left of the word “Air” are two stars.

Montgomery Ward’s registered mark, upon which it bases its opposition, consists of the word “Airline” beginning with a capital “A”, a portion of which extends in the form of a line under the other letters of the word. Across the word is a zig-zag symbol indicative of a flash of lightning. •

The record shows that Montgomery Ward’s use of its mark on its goods in interstate commerce long antedated the use of the “Air Chief” mark of Firestone; that since the adoption of its mark in 1922, Montgomery Ward has distributed many millions of catalogues and has spent many millions of dollars in advertising its “Airline” radio goods; that its mark is registered in many foreign countries; and that it has an extensive business in foreign markets for its “Airline” goods.

The record also shows that Firestone does a large business and that it is selling and advertising its “Air Chief” radio goods in the same market, at least in part, as that of Montgomery Ward.

In order that the precise issues presented may be fully understood, it is deemed advisable to reproduce here the two marks as they appear in the record.

The tribunals below concurred in holding that the marks in their entirety sufficiently resemble each other that confusion might be expected to result from their concurrent use on identical goods. Upon this basis the opposition was sustained and the registration denied.

We are in disagreement with the holding of the tribunals below. While it is a rule too well settled to require citation of authority that in determining the' likelihood of confusion between similar-marks, used upon similar or identical goods,. it is necessary to consider the marks in their entirety, it is equally well established that in determining this question it is proper to analyze the different features of the marks and consider their appearance, sound, and meaning.

It is obvious that the word “Air” in both marks might be regarded as having some suggestion relating to radio waves which pass through the air, and to that extent the marks are identical. Otherwise, however, they are almost wholly different. The word “Air” is said by Firestone to be descriptive, and Montgomery Ward contends that it is the dominant portion of the marks. Montgomery Ward states that while the prefix “air” in the two marks may suggest radios, it likewise suggests aviation; and that the suffixes of the marks suggest related activities, such as “Airlines and officials thereof”, and therefore do not dispel the likelihood of confusion when the marks are concurrently used upon radios and radio equipment.

Firestone urges as a consideration of importance in the decision of the instant issue that the goods of the respective parties — radios and radió supplies — are of that class of merchandise “which is purchased only after careful observation after trial as to tone and selectivity, and in many instances after comparison with competitive radios”. It is our view that this matter, while a consideration which often has persuasive influence, can have little if any bearing upon the decision of the present issue. It is not only well known that the so-called indiscriminate public purchases cheap radios and numerous inexpensive parts and supplies, but also recognized that such purchases ordinarily neither require nor receive any extended or serious investigation. It is true that no doubt some of the goods sold by the parties under their respective marks are purchased by discriminating purchasers, and in such instances there is never as much likelihood of confusion because the discriminating purchaser would ordinarily know what make of radio he wanted and other facts and circumstances concerning it, in which the casual purchaser would not be interested. However, it must be remembered that the goods of the parties are sold to the general public, which is comprised not only of critical buyers but also of those who buy without stopping to analyze. See Schering & Glatz, Inc., v. Sharp & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A.,Patents,-.

While it has been often said that rarely, if ever, are identical facts presented in different trade-mark registration cases, and while the rule of stare decisis is seldom applied in the decision of such cases, we think the facts in this case are so similar to the facts involved in Montgomery Ward & Co., Inc., v. Spiegel, Inc., 132 F.2d 144, 30 C.C.P.A.,Patents, 721, that that case should be regarded as practically controlling of decision of the issue here presented. In that case Spiegel, Inc., applied for the registration of the words “Air Castle” superimposed on a representation of a medieval castle, the words appearing on a ribbon-like scroll. The opposer there, Montgomery Ward & Company, opposed upon the basis of its registered mark “Airline”, which is the same registration that forms the basis of its opposition in the instant case. This court there held that the term “Airline”, according to Webster’s New International Dictionary (1932) meant “A straight line, as through the air; a bee line”, and that the term “Air Castle”, according to Spiegel’s contentions, which we did not disapprove, suggested a “sort of a dreamy idea” that one could “get enthused over”, such as the idea that “a man’s home is his castle”. We held, in substance, that “Air Castle” was different in meaning, sound, and appearance from the word “Airline” and that unless Montgomery Ward was to be given a monopoly of the use of the word “Air”, it was proper to permit registration of the “Air Castle” mark since there was no likelihood of confusion.

If we were correct in our holding in that case, we are certain that the commissioner fell into error in holding in the instant case that there was a likelihood of confusion from the concurrent use of the marks “Air Chief” and “Airline”.

In the 1939 edition of Webster’s New International Dictionary, an additional definition has been given for the word “Airline” over and above that shown in the 1932 edition. It is as follows: “* * * A. A system of transportation by aircraft, or the equipment with which the system operates. B. The company or business organization owning or operating such a system. C. The route covered.”

It was largely this latter state of facts that prompted Montgomery Ward to argue that there is likelihood of confusion, and that was largely the basis of the holding of the tribunals below. It is shown in the record that in its transactions relating to its Airline radios, Montgomery Ward frequently resorts to the use of airline transportation; and it is argued that by reason of this fact there is a probability of confusion.

The term “Air Chief” has no suggestion of a bee line, and certainly if it suggests anything relative to a radio it would be very indefinite and might suggest many other things. The outstretched wings of the heroic figure standing on the globe, said to represent Mercury, would at most only remotely, if at all, suggest matters relating to radios; whereas the term “Airline” suggests a straight line in the air— more precisely it points toward the transmission of radio waves through the air.

Viewing the marks as a whole and considering the word “Air”, in both marks, we must conclude, as we did in the Spiegel case, supra, where the terms “Air Castle” and “Airline” were involved, that there would be no likelihood of confusion resulting from the concurrent use of the marks on radios and radio equipment. The sound, appearance, and meaning of the words “Chief” and “line” are wholly different- — • so different as to lead one away from any thought springing from the commonly used word “Air”. The' portions of Firestone’s mark other than the dominant portion, “Air Chief” and those of Montgomery Ward’s mark other than “Airline” are so wholly different in their appearance, suggestions, and meaning as to prompt the conclusion that when the marks as a whole are considered, there would be no likelihood of confusion.

It is true that over the radio and in advertising literature, the goods of the respective parties will be referred to as “Air Chief” and “Airline” radios, and many prospective customers would be unaware of certain features of the respective marks. It is our view, however, that notwithstanding this fact, the terms “Air Chief” and “Airline”, considered alone, being the dominant portions of the two marks, are so vastly different in meaning, appearance, and sound as to insure against the probability of confusion.

It is proper to say here that it is not seen how Firestone could have used the term “Air” at all in a trade-mark more effectively to avoid the probability of confusion than by the use of the term “Chief” and the other portions of its composite mark. It is our view, therefore, that the commissioner arrived at the wrong conclusion. He should have dismissed the opposition and directed that the mark be registered. His decision is accordingly reversed.

Reversed.