COLE, Judge.
The appellee has sought to register “Ilotomatie” as a trade mark in connection with the sale of automatic gas water [156]*156heaters, establishing continuous use thereof since 1928. In opposition, the appellant has set forth his prior registrations, and antedating usage since 1920 of the mark, “Oil-O-Matic” as applied to liquid fuel burning devices and automatic electrically controlled and operated fuel heating systems.
It being stipulated that the products above mentioned possess the same descriptive properties, appellant contends that the respective marks are confusingly similar and thus, if used concurrently, likely to deceive or mislead prospective purchasers.1 The record discloses that the applicant was prior in time in the adoption and use of his “Hotomatic” mark on domestic water heaters (instantaneous and thermostatically controlled) and that the opposer, although a leader in the field of automatic heating equipment, did not market a device specifically designed for domestic heating of water until 1933, registering his mark therefor that same year. Appellant alleges, however, by a display of advertising circulars reproduced in the record, that the oil burning devices bearing its “Oil-O-Matic” mark, in trade prior to 1928, were designed for a dual purpose, i. e., to heat the home and also to provide hot water for use therein. In answer to that contention, the Examiner-in-Chief held that as the circulars were undated, they were of no avail and with this finding we are in accord.
The Examiner of Interferences sustained the position taken by the opposer, but on appeal the Examiner-in-Chief found sufficient dissimiliarity to exist so as to negative the possibility of confusion in trade. From that decision, the opposer has taken an appeal to this court.
The case was originally argued before us on November 10, 1952, and on January 14, 1953, we rendered our decision which affirmed the decision of the Examiner-in-Chief. Appellant filed a petition for rehearing within the statutory period, and the petition being granted, reargument was had thereon May 11, 1953.
As stated in the record, we are called upon to determine whether or not “Hoto-matic” bears such near resemblance to the perviously adopted mark, “Oil-O-Matic” as, when applied to applicant’s goods, will result or likely result in confusion, mistake or deception of purchasers.
It appears that the Examiner-in-Chief was largely influenced in his opinion by the decision of the Assistant Commissioner in the case of Eureka Williams Corporation v. Willoughby Machine & Tool Co., 86 U.S.P.Q. 170. That case, decided under the provisions of the Trade-Mark Act of 1905, involved the present appellant’s previously registered mark, “Oil-O-Matic” for oil burners, as opposed to registration of the applicant’s newly adopted mark, “Thermomatic.” The goods of the applicant consisted of thermostatically controlled, gas conversion burners for domestic, commercial, and industrial heating purposes, so that the respective goods were in the same general descriptive class. The Assistant Commissioner determined that the marks, when considered in their entirety, were dissimilar and that no likelihood of confusion as to the origin of the goods was apt to result.
On appeal here, we reversed that holding by a divided court. Eureka Williams Corporation v. Willoughby Machine and Tool Co., 194 F.2d 543, 39 C.C.P.A., Patents, 832.
Appellant relies on our decision in that case as authority for the proposition that the marks here in issue are also too nearly alike to allow their concurrent usage in trade. We do not regard our decision therein as decisive of the issues here. As we have stated many times in the past, the controlling value of cases previously de[157]*157cided in the field of trade-mark law is limited to the principles of such law and beyond that may not be extended, unless sufficient parallel in the factual basis is recognized. Manifestly, whether or not similarity between marks, if it exists, will result in confusion in trade is an intensely practical question to be determined only after a careful and independent analysis of the particular facts and circumstances involved in each case. Expressing it another way, holdings in current cases as to similarity are seldom influenced by, or based upon precedent. This principle has been iu effect throughout trade-mark jurisprudence an finds reaffirmance as late as Kanmak Textiles, Inc., v. Carnac, Inc., 189 F.2d 1006, 38 C.C.P.A., Patents, 1148; Kensington Steel Co. v. Nichols Engineering and Research Corporation, 188 F.2d 397, 38 C.C.P.A., Patents, 979.
While it is true that “Qmatic” or “Matic” is not to he considered as exclusively appropriated to appellant’s trademark use, it is also true that a prefix sought to be used in combination therewith must be sufficiently distinctive and employed in such association as will obviate the likelihood of confusion as to the origin of the goods. Particularly is such a principle applicable when the respective goods of the parties are identical or closely related. It must, however, be constantly borne in mind that a trade-mark is to be viewed as an entirety, and the general impression it makes upon the purchasing public as such, when measured in the light of another’s mark carefully appraised. In this respect, whether trade confusion will likely result from the concurrent trade usage of two or more marks alleged to be deceptively similar is largely a matter of individual judgment, and such factors as appearance, sound, and significance must be appropriately weighed.
The appellee herein urges that “Hotomatic” is not confusingly similar to “Oil-O-Matic” and emphasizes the difference in sound, meaning, and connotation in the prefix portion of his mark when compared to that oí opposer. Furthermore, the appellee argues that there are specific differences of a substantial nature between the products of the parties which, coupled with the dissimilarity of the marks, negatives a likelihood of trade confusion. Considering the respective marks as a whole, and noting the type of goods to which each is affixed, we must conclude that the marks in issue are not confusingly similar.
What the law intends to prevent is “one person from passing off liis goods or his business as the goods or business of another.” American Steel Foundries v. Robertson, Commissioner, 269 U.S. 372, 46 S.Ct. 160, 70 L.Ed. 317. While the Trade Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., under which these proceedings were instituted, does not require as a condition precedent to a finding of confusing similarity, that the products of the parties possess the same descriptive properties, such a finding is manifestly a major factor in determining that issue.
Here, the goods are not identical hut are somewhat related and fall within the same general class of heating apparatus. That is all. The appellee, in his brief, after discussing the Willoughby case, supra, makes the following statement:
Free access — add to your briefcase to read the full text and ask questions with AI
COLE, Judge.
The appellee has sought to register “Ilotomatie” as a trade mark in connection with the sale of automatic gas water [156]*156heaters, establishing continuous use thereof since 1928. In opposition, the appellant has set forth his prior registrations, and antedating usage since 1920 of the mark, “Oil-O-Matic” as applied to liquid fuel burning devices and automatic electrically controlled and operated fuel heating systems.
It being stipulated that the products above mentioned possess the same descriptive properties, appellant contends that the respective marks are confusingly similar and thus, if used concurrently, likely to deceive or mislead prospective purchasers.1 The record discloses that the applicant was prior in time in the adoption and use of his “Hotomatic” mark on domestic water heaters (instantaneous and thermostatically controlled) and that the opposer, although a leader in the field of automatic heating equipment, did not market a device specifically designed for domestic heating of water until 1933, registering his mark therefor that same year. Appellant alleges, however, by a display of advertising circulars reproduced in the record, that the oil burning devices bearing its “Oil-O-Matic” mark, in trade prior to 1928, were designed for a dual purpose, i. e., to heat the home and also to provide hot water for use therein. In answer to that contention, the Examiner-in-Chief held that as the circulars were undated, they were of no avail and with this finding we are in accord.
The Examiner of Interferences sustained the position taken by the opposer, but on appeal the Examiner-in-Chief found sufficient dissimiliarity to exist so as to negative the possibility of confusion in trade. From that decision, the opposer has taken an appeal to this court.
The case was originally argued before us on November 10, 1952, and on January 14, 1953, we rendered our decision which affirmed the decision of the Examiner-in-Chief. Appellant filed a petition for rehearing within the statutory period, and the petition being granted, reargument was had thereon May 11, 1953.
As stated in the record, we are called upon to determine whether or not “Hoto-matic” bears such near resemblance to the perviously adopted mark, “Oil-O-Matic” as, when applied to applicant’s goods, will result or likely result in confusion, mistake or deception of purchasers.
It appears that the Examiner-in-Chief was largely influenced in his opinion by the decision of the Assistant Commissioner in the case of Eureka Williams Corporation v. Willoughby Machine & Tool Co., 86 U.S.P.Q. 170. That case, decided under the provisions of the Trade-Mark Act of 1905, involved the present appellant’s previously registered mark, “Oil-O-Matic” for oil burners, as opposed to registration of the applicant’s newly adopted mark, “Thermomatic.” The goods of the applicant consisted of thermostatically controlled, gas conversion burners for domestic, commercial, and industrial heating purposes, so that the respective goods were in the same general descriptive class. The Assistant Commissioner determined that the marks, when considered in their entirety, were dissimilar and that no likelihood of confusion as to the origin of the goods was apt to result.
On appeal here, we reversed that holding by a divided court. Eureka Williams Corporation v. Willoughby Machine and Tool Co., 194 F.2d 543, 39 C.C.P.A., Patents, 832.
Appellant relies on our decision in that case as authority for the proposition that the marks here in issue are also too nearly alike to allow their concurrent usage in trade. We do not regard our decision therein as decisive of the issues here. As we have stated many times in the past, the controlling value of cases previously de[157]*157cided in the field of trade-mark law is limited to the principles of such law and beyond that may not be extended, unless sufficient parallel in the factual basis is recognized. Manifestly, whether or not similarity between marks, if it exists, will result in confusion in trade is an intensely practical question to be determined only after a careful and independent analysis of the particular facts and circumstances involved in each case. Expressing it another way, holdings in current cases as to similarity are seldom influenced by, or based upon precedent. This principle has been iu effect throughout trade-mark jurisprudence an finds reaffirmance as late as Kanmak Textiles, Inc., v. Carnac, Inc., 189 F.2d 1006, 38 C.C.P.A., Patents, 1148; Kensington Steel Co. v. Nichols Engineering and Research Corporation, 188 F.2d 397, 38 C.C.P.A., Patents, 979.
While it is true that “Qmatic” or “Matic” is not to he considered as exclusively appropriated to appellant’s trademark use, it is also true that a prefix sought to be used in combination therewith must be sufficiently distinctive and employed in such association as will obviate the likelihood of confusion as to the origin of the goods. Particularly is such a principle applicable when the respective goods of the parties are identical or closely related. It must, however, be constantly borne in mind that a trade-mark is to be viewed as an entirety, and the general impression it makes upon the purchasing public as such, when measured in the light of another’s mark carefully appraised. In this respect, whether trade confusion will likely result from the concurrent trade usage of two or more marks alleged to be deceptively similar is largely a matter of individual judgment, and such factors as appearance, sound, and significance must be appropriately weighed.
The appellee herein urges that “Hotomatic” is not confusingly similar to “Oil-O-Matic” and emphasizes the difference in sound, meaning, and connotation in the prefix portion of his mark when compared to that oí opposer. Furthermore, the appellee argues that there are specific differences of a substantial nature between the products of the parties which, coupled with the dissimilarity of the marks, negatives a likelihood of trade confusion. Considering the respective marks as a whole, and noting the type of goods to which each is affixed, we must conclude that the marks in issue are not confusingly similar.
What the law intends to prevent is “one person from passing off liis goods or his business as the goods or business of another.” American Steel Foundries v. Robertson, Commissioner, 269 U.S. 372, 46 S.Ct. 160, 70 L.Ed. 317. While the Trade Mark Act of 1946, 15 U.S.C.A. § 1051 et seq., under which these proceedings were instituted, does not require as a condition precedent to a finding of confusing similarity, that the products of the parties possess the same descriptive properties, such a finding is manifestly a major factor in determining that issue.
Here, the goods are not identical hut are somewhat related and fall within the same general class of heating apparatus. That is all. The appellee, in his brief, after discussing the Willoughby case, supra, makes the following statement:
“In contrast, the appellee in the case now before the court adopted the mark Hotomatic in 1928 and applied it to a product having a function (domestic water heating) different from the function of the devices then marketed by appellant’s predecessor. It was not until several years later (January 13, 1933) that appellant entered the field of domestic water heating as shown by its registration 304,965. Unlike the ap-pellee in the Willoughby case, the ap-pellee here was not a newcomer in a field already occupied by the appellant but in fact was the first to use an Omatic mark in this particular field.
“The first point of distinction in facts thus is that in the present case the goods of the parties are subsl an-tially different, whereas in the Wil-loughby case the goods were closely similar and competitive with each other.”
With this statement, we agree.
We granted a rehearing in this case following release of the initial opinion be[158]*158cause appellant’s counsel was evidently under the impression that our comparison of the goods of the respective parties was to be construed and accepted as being in violation of the stipulation to which we have herein-before referred. In finding, the marks “Hotomatic” and “Oil-O-Matic” not confusingly similar, we have not ignored the stipulation in the record to. the effect that the goods involved possess the same descriptive properties. Such a stipulation, however, cannot foreclose the right of the reviewing court to point out and observe perfectly obvious differences, which actually exist, and which we feel were not intended to be overlooked because of a strict limitation that might be drawn from the language of such a stipulation.
Appellee’s product is an ordinary water heater, the like of which we have common knowledge, and is designed to consume gas as a fuel. Appellant’s product is a heating device for the home and, as the name implies, uses oil. The two are by no means alike in use and characteristics.
We find it quite easy to deny the opposi-ton plea herein, determining as we do that the mark “Hotomatic,” as applied to appel-lee’s goods, is not confusingly similar to appellant’s previously adopted mark, “Oil-O-Matic.”
The rehearing granted in this case, followed by further oral argument and a memorandum on behalf of the appellant, has been given every consideration. We have found no reason, however, to disturb the conclusion reached herein.
For the reasons hereinbefore stated, the decision appealed from is affirmed.
Affirmed.
At the’rehearing of this case, JACKSON, Judge, retired, was recalled to participate in place of GARRETT, Chief Judge.