Barclay v. Garter Medicine Co.

41 App. D.C. 240, 1913 U.S. App. LEXIS 2006

• Court: Court of Appeals for the D.C. Circuit
• Decided: December 1, 1913
• Docket: No. 853
• Status: Published

Opinion

Mr. Justice Robb

delivered the opinion of the Court:

We quite agree with appellants that there is a difference between the effect of a judgment as a bar or estoppel against the prosecution of a second action upon the same claim or demand, and its effect as an estoppel in an action between the same parties upon a different claim or cause of action. In the latter case, the demand in the prior action operates as an estoppel only as to those matters in issue or points controverted, upon the determination of which the finding or verdict was rendered. Cromwell v. Sac County, 94 U. S. 351, 24 L. ed. 195. The original proceeding before the Patent Office involved substantially the same marks now before us. Indeed, the matter subsequently eliminated from the applicants’ mark tended rather to accentuate than diminish the similarity between the two. Put the applicants were then asking registration as a technical trademark. Subsequently, the application was amended and registration under the ten-year clause was prayed. It was therefore a different proceeding, but it involved the same marks. Obviously, if the question of similarity was finally determined in the first proceeding, it was not open to readjudication in the second. It will be noted that applicants, in the original proceeding, filed a demurrer based in part upon the contention that the marks were dissimilar. This demurrer was overruled, and, the opposer having defaulted, judgment was rendered awarding priority of adoption and use “of the trademark in issue” to applicants. This decision became final. As pointed out in the prior decision of this court, the question of similarity was necessarily in issue in the original proceeding, for, in the absence of similarity, the opposer was without standing, and his petition would have been dismissed. Applicants were then quite willing to take a judgment of priority of adoption and use of “the trademark in issue.” The expression “the trademark in issue” was necessarily based upon a finding of similarity. Indeed, when the second opposition was filed, applicants then filed a plea of res judicata, and actually obtained a decision in their favor in that proceeding. Of course, this plea was based upon the theory that, the marks being similar, the finding of priority in the first proceeding was final. We ruled that a.n opposition might lie under the ten-year clause that would not lie under an application for registration as a technical trademark. Thereafter, however, we do not think the question of similarity was open. The sole question then was whether applicants had been the> exclusive users of the mark during the ten-year period, and, as the evidence was overwhelming against them on that point, the decision of the Commissioner was correct.

We fully agree with the Commissioner, however, that, both marks being applied to little liver pills, their concurrent use by the two parties “would be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.” Act of February 20, 1905 (S3 Stat. at L. 724, chap. 592, U. S. Comp. Stat. Supp. 1911, p. 1459). Applicants’ counsel have pointed out. that the color of applicants’ label is red, while the color of opposer’s label is yellow. But in the application for registration nothing is said about color. There is nothing in that application to prevent a closer simulation of the opposer’s mark, and, of course, in this proceeding, we must look to the application, and not to the mark as actually used. It might be very material in a suit for unfair competition whether applicants employed a label of a distinctive color,- but it is not material when we are passing upon an application for registration in which no mention of color is made.

Decision affirmed.