JACKSON, Judge.
On February 16, 1944, appellant filed its application, serial No. 474,264, to register its trade-mark “Alumatone,” as applied to “Ready Mixed Aluminum Paint, Primers and Oil Paints,” pursuant to the TradeMark Act of February 20, 1905, 33 Stat. 724, as amended. It was stated in the application that the trade-mark had been continuously used and applied to appellant’s goods in its business since August 1, 1939.
The application was examined and passed for publication in compliance with Section 6 of the act, and published in the Official Gazette of January 9, 1945.
Subsequent to the said publication, on February 6, 1945, appellee, engaged in the business of manufacturing paints, varnishes, enamels, lacquers, water-proofing produts, and kindred materials, filed a notice of opposition to the registration of appellant’s mark. The notice of opposition relates only to the confusion in trade clause of Section 5 of the act, as a statutory ground for barring the right of appellant to register its mark.
The notice of opposition was sustained and it was further adjudged by the Examiner of Interferences that appellant is not entitled to the registration sought. Upon appeal, the Commissioner of Patents affirmed the holding of the examiner, 76 U.S.P.Q. 266. From that decision this appeal was taken.
After the appeal had been duly perfected in this court and subsequent to the time when appellee could have elected further proceedings under the provisions of R.S. § 4915, 35 U.S.C. § 63, 35 U.S.C.A. § 63, it filed a civil action against appellant in the District Court of the United States for the Southern District of California, Central Division, entitled Vita-Var Corp. v. Alumatone Corp., charging infringement of its registered mark, here involved, and praying for injunctive relief and an accounting for profits and damages. Appellant, answering, filed a counterclaim for a declaratory judgment holding appellee’s registration to be invalid, or, if it were found to be valid, to be not infringed by appellant. It is said that most of the documentary evidence and exhibits appearing in the Patent Office proceedings herein were also placed in evidence at that trial.
The court, in its decision, 83 F.Supp. 214, ordered that the plaintiff take nothing by its complaint against the defendant; that the defendant take nothing by the counterclaim against the plaintiff; and that neither side recover costs.
The court in its decision on the evidence before it, concluded that there is dissimilarity in both sound and appearance of the marks of the parties; that both marks were coined words; and that no likelihood of confusion will arise from their concurrent use. The court noted that during the ten year period of concurrent use in the same territory no instances of confusion had been shown, nor was there any evidence of imitation of labels in any respect.
No appeal was taken by either party from the decision of the district court and, therefore, the judgment became final.
Appellant’s brief herein was filed September 30, 1949, and prior to the filing date of the brief for appellee, February 27, 1950, a stipulation was entered into between counsel for the parties dated November 15, 1949, addressed to this court wherein it was stipulated and agreed, upon consent of this court and the tribunals of the Patent Office, that the said decision rendered in the District Court of the United States be accepted as binding and that it be followed by this court and the Patent Office in their further rulings and decisions, [614]*614so that appellee’s opposition would be withdrawn and appellant’s trade-mark duly registered.
The tribunals of the Patent Office, of course, were without jurisdiction to consent to the stipulation for the reason that they had no power to do so after the notice of appeal by appellant was filed and it is obvious that this court cannot be bound in its judgment by the terms of any such stipulation.
Counsel for appellant, in their brief, while they rely on all of the alleged errors set forth in their reasons of appeal, further contend that the judgment of the District Court in California should result in the application of the rule of res judicata here, stating that “appellant’s right to use its trade-mark has been affirmed by a decision which is final and conclusive as between the parties.” That particular statement is correct. However, there is a clear difference between the right to use a trade-mark and the statutory right to register the same. This court, in the case of Van Camp Sea Food Co., Inc., v. Alexander B. Stewart Organizations, 50 F.2d 976, 978, 18 C.C.P.A., Patents, 1415, noted its jurisdiction and function with respect to those two different rights. It was stated that: “Under the statute our duties in reviewing decisions of the Commissioner of Patents in trade-mark cases are quite different from those of a District or Circuit Court of Appeals in actions such as have been hereinbefore referred to. We determine the correctness of the commissioner’s ruling on the registrability of the trademark. The District and Circuit Courts of Appeals, in the above cases, were not concerned with this question. Our jurisdiction involves the question of the right to register, while the jurisdiction in the cases above referred to involves the right to use. California Packing Corp. v. Tillman & Bendel, 40 F.2d 108, 17 C.C.P.A., Patents, 1048; B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 17 C.C.P.A., Patents, 1068.” (Italics quoted.)
In the case of Application of Isler, 152 F.2d 1002, 33 C.C.P.A., Patents, 791, we quoted from our decision in the case of In re Langsner, 139 F.2d 512, 31 C.C.P.A., Patents, 785, as follows:
“Under the statute our jurisdiction is limited in cases of this character to a review of ‘the evidence produced before the commissioner,’ and our revision must be ‘confined to the points set forth in the reasons of appeal’, Section 4914, R.S. (U.S. C., title 35, sec. 62 [35 U.S.C.A. § 62]).
“Obviously we may not, in deciding this case, consider facts affecting its merits occurring after appellant’s appeal was taken.”
While the Isler and Langsner cases, supra, were ex parte in their character, nevertheless, in trade-mark opposition proceedings we are just as surely “confined to the points set forth in the reasons of appeal” as we are in other cases.
It appears to us that what was said in the case of Meuer et al. v. Schellenger, 104 F.2d 949, 26 C.C.P.A., Patents, 1430, is apposite here. “Since we are bound, in this jurisdiction, by the record as made before the tribunals of the Patent Office, we can give no consideration to the decision of the Circuit Court of Appeals above cited, made on a different record.”
Obviously, we may not, in deciding this case, consider facts affecting its merits in a different cause of action brought after this appeal had been perfected. Therefore, we hold that the contention of counsel for appellant that the doctrine of res judicata should be applied is improper and that appeals such as this are here to be decided on their merits, as they always have been by this court, upon the alleged errors appearing in the reasons of appeal based on the record in the Patent Office.
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JACKSON, Judge.
On February 16, 1944, appellant filed its application, serial No. 474,264, to register its trade-mark “Alumatone,” as applied to “Ready Mixed Aluminum Paint, Primers and Oil Paints,” pursuant to the TradeMark Act of February 20, 1905, 33 Stat. 724, as amended. It was stated in the application that the trade-mark had been continuously used and applied to appellant’s goods in its business since August 1, 1939.
The application was examined and passed for publication in compliance with Section 6 of the act, and published in the Official Gazette of January 9, 1945.
Subsequent to the said publication, on February 6, 1945, appellee, engaged in the business of manufacturing paints, varnishes, enamels, lacquers, water-proofing produts, and kindred materials, filed a notice of opposition to the registration of appellant’s mark. The notice of opposition relates only to the confusion in trade clause of Section 5 of the act, as a statutory ground for barring the right of appellant to register its mark.
The notice of opposition was sustained and it was further adjudged by the Examiner of Interferences that appellant is not entitled to the registration sought. Upon appeal, the Commissioner of Patents affirmed the holding of the examiner, 76 U.S.P.Q. 266. From that decision this appeal was taken.
After the appeal had been duly perfected in this court and subsequent to the time when appellee could have elected further proceedings under the provisions of R.S. § 4915, 35 U.S.C. § 63, 35 U.S.C.A. § 63, it filed a civil action against appellant in the District Court of the United States for the Southern District of California, Central Division, entitled Vita-Var Corp. v. Alumatone Corp., charging infringement of its registered mark, here involved, and praying for injunctive relief and an accounting for profits and damages. Appellant, answering, filed a counterclaim for a declaratory judgment holding appellee’s registration to be invalid, or, if it were found to be valid, to be not infringed by appellant. It is said that most of the documentary evidence and exhibits appearing in the Patent Office proceedings herein were also placed in evidence at that trial.
The court, in its decision, 83 F.Supp. 214, ordered that the plaintiff take nothing by its complaint against the defendant; that the defendant take nothing by the counterclaim against the plaintiff; and that neither side recover costs.
The court in its decision on the evidence before it, concluded that there is dissimilarity in both sound and appearance of the marks of the parties; that both marks were coined words; and that no likelihood of confusion will arise from their concurrent use. The court noted that during the ten year period of concurrent use in the same territory no instances of confusion had been shown, nor was there any evidence of imitation of labels in any respect.
No appeal was taken by either party from the decision of the district court and, therefore, the judgment became final.
Appellant’s brief herein was filed September 30, 1949, and prior to the filing date of the brief for appellee, February 27, 1950, a stipulation was entered into between counsel for the parties dated November 15, 1949, addressed to this court wherein it was stipulated and agreed, upon consent of this court and the tribunals of the Patent Office, that the said decision rendered in the District Court of the United States be accepted as binding and that it be followed by this court and the Patent Office in their further rulings and decisions, [614]*614so that appellee’s opposition would be withdrawn and appellant’s trade-mark duly registered.
The tribunals of the Patent Office, of course, were without jurisdiction to consent to the stipulation for the reason that they had no power to do so after the notice of appeal by appellant was filed and it is obvious that this court cannot be bound in its judgment by the terms of any such stipulation.
Counsel for appellant, in their brief, while they rely on all of the alleged errors set forth in their reasons of appeal, further contend that the judgment of the District Court in California should result in the application of the rule of res judicata here, stating that “appellant’s right to use its trade-mark has been affirmed by a decision which is final and conclusive as between the parties.” That particular statement is correct. However, there is a clear difference between the right to use a trade-mark and the statutory right to register the same. This court, in the case of Van Camp Sea Food Co., Inc., v. Alexander B. Stewart Organizations, 50 F.2d 976, 978, 18 C.C.P.A., Patents, 1415, noted its jurisdiction and function with respect to those two different rights. It was stated that: “Under the statute our duties in reviewing decisions of the Commissioner of Patents in trade-mark cases are quite different from those of a District or Circuit Court of Appeals in actions such as have been hereinbefore referred to. We determine the correctness of the commissioner’s ruling on the registrability of the trademark. The District and Circuit Courts of Appeals, in the above cases, were not concerned with this question. Our jurisdiction involves the question of the right to register, while the jurisdiction in the cases above referred to involves the right to use. California Packing Corp. v. Tillman & Bendel, 40 F.2d 108, 17 C.C.P.A., Patents, 1048; B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 17 C.C.P.A., Patents, 1068.” (Italics quoted.)
In the case of Application of Isler, 152 F.2d 1002, 33 C.C.P.A., Patents, 791, we quoted from our decision in the case of In re Langsner, 139 F.2d 512, 31 C.C.P.A., Patents, 785, as follows:
“Under the statute our jurisdiction is limited in cases of this character to a review of ‘the evidence produced before the commissioner,’ and our revision must be ‘confined to the points set forth in the reasons of appeal’, Section 4914, R.S. (U.S. C., title 35, sec. 62 [35 U.S.C.A. § 62]).
“Obviously we may not, in deciding this case, consider facts affecting its merits occurring after appellant’s appeal was taken.”
While the Isler and Langsner cases, supra, were ex parte in their character, nevertheless, in trade-mark opposition proceedings we are just as surely “confined to the points set forth in the reasons of appeal” as we are in other cases.
It appears to us that what was said in the case of Meuer et al. v. Schellenger, 104 F.2d 949, 26 C.C.P.A., Patents, 1430, is apposite here. “Since we are bound, in this jurisdiction, by the record as made before the tribunals of the Patent Office, we can give no consideration to the decision of the Circuit Court of Appeals above cited, made on a different record.”
Obviously, we may not, in deciding this case, consider facts affecting its merits in a different cause of action brought after this appeal had been perfected. Therefore, we hold that the contention of counsel for appellant that the doctrine of res judicata should be applied is improper and that appeals such as this are here to be decided on their merits, as they always have been by this court, upon the alleged errors appearing in the reasons of appeal based on the record in the Patent Office.
Testimony was taken by both parties and a great number of paper exhibits, including folders, circular letters, catalogues, labels, invoices, and the like, were received in evidence. Briefs were filed and both parties were represented at the hearing before the Examiner of Interferences.
It appears that appellant employs its mark on several types of paint, including a ready-mixed, prepared aluminum paint which is dispensed in a single container ready for use by the consumer, and the [615]*615paint of appellee comprises coloring matter and a carrier or liquid portion thereof placed in separate containers which must be mixed before being used.
For the reason that the paint products of the parties to which their marks are applied are competitive, we are of opinion that they possess the same descriptive properties, as was held by the tribunals of the Patent Office.
We also agree, as was held below, that the respective prefixes “Aluma” and “Alumi,” while not words of speech, are clearly suggestive of the presence of aluminum in the paints sold by the parties, but those two expressions, in our opinion, constitute the only similarity in appearance and sound in the trade-marks. The marks, taken as a whole, do not look alike, nor sound alike, nor have they the same or similar meaning. Certainly, the last syllable “Tone” and “Kote” are clearly and distinctly different in appearance, in sound, and in any meaning that may be attached to such syllables.
We think we may take judicial notice of the widespread use of terms indicating or suggesting the presence of aluminum, such as “Aluma” and “Alumi.” Therefore, it necessarily follows that we must hold such and similar expressions to be in the public domain. Because, in our judgment, the last syllables of the marks of the parties are so distinctly different, as hereinbefore noted, and the marks considered as a whole differ in appearance, sound and meaning, it necessarily follows that we reverse the decision of the commissioner and hold that the mark of appellant is entitled to registration.
The commissioner, in his opinion, cited the case of Chatham Pharmacouticals, Inc., v. Reserve Research Co., 159 F.2d 869, 34 C.C.P.A.,Patents, 886, as being pertinent to its holding here. The issue in that case arose between the trade-marks “Aluminoid” and “Aloloid.” In affirming the decision of the tribunals of the Patent Office sustaining the opposition to the registration of the mark “Aluminoid,” we held that that mark was confusingly similar to the op-poser’s registered mark “Aloloid,” as applied to goods of the same descriptive properties.
While we have stated many times and reiterate here, that the citing of decisions in trade-mark cases is of little value in subsequent litigation, we would point out with respect to the respective marks in the Chatham case, supra, that their concurrent use on goods of the same descriptive properties would certainly and inevitably be likely to cause confusion in the minds of purchasers for the reason that the first syllable and the last syllable are identical, the only difference between the marks being in the sound and appearance of the second and third syllables of “Aluminoid” and the second syllable of “Aloloid.” Those marks not only look alike to one who is not particularly interested in scrutinizing them, but they sound alike and if any meaning is to be attached to them, it must be that the products of the parties to which the marks are applied comprise aluminum in some form or another. Therefore, we are not in accord with the decision of the commissioner in holding that the decision in the Chatham case, supra, is pertinent here.
A motion by appellee to correct diminution of the record was allowed subject to taxation of costs for the additional printed matter. For the reason that the only issue before us here is confusing similarity of the marks, as before set out, we find that the added material was not necessary nor did it aid us in our decision. The cost of the added material will, therefore, be taxed against appellee.
For the reasons hereinbefore set out the decision of the Commissioner of Patents is reversed.
Reversed.