Merker Counter Company, Inc. v. Central Counter Company

310 F.2d 746, 50 C.C.P.A. 768

• Court: Court of Customs and Patent Appeals
• Decided: December 12, 1962
• Docket: Patent Appeal 6840
• Status: Published

Opinions

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board (130 USPQ 44) granting a petition to cancel Reg. No. 626,272 of May 1, 1956, of the trademark “Mel-O-Top” for shoe counters, issued to Merker Counter Company, Inc., the appellant.

The petitioner, Central Counter Company, a Missouri corporation, based its petition on its ownership of Reg. No. 330,089, of November 19, 1935 (renewed November 19, 1955), of the trademark “MELOFLEX” for counters for shoes.

During its initial time for taking testimony petitioner took none and introduced no evidence other than its aforesaid registration. After the expiration of that testimony period, respondent filed, pursuant to Rule 2.132(b) of the Trademark Rules of Practice, a motion for judgment dismissing the petition “on the ground that upon the law and the facts petitioner has shown no right to relief.” Simultaneously respondent filed a notice under Rule 2.123(c) that it would rely on eleven third-party registrations and two pending applications of record in the Patent Office.

Petitioner filed a memorandum opposing the granting of the motion to dismiss, respondent replied thereto, and, after due consideration thereof, the board denied the motion, reset testimony periods for respondent and for petitioner’s rebuttal, and stated that it had concluded that the “case should continue to final hearing for a full consideration of the merits in connection with arguments of the parties and any evidence respondent may elect to introduce in addition to” the aforesaid third-party registrations and applications, citing En-do Products, Inc. v. Strong, Cobb and Company, Inc., 110 USPQ 100.

Thereafter respondent took the testimony of three of its officers, submitted its case, and the board, for reasons stated in a well-considered opinion, rendered the decision granting the petition to cancel from which this appeal was taken.

The board found that the goods of the parties are identical in kind; that shoe counters are stiffeners made of fiber board or plastic. As the record shows, and as is common knowledge, a shoe counter, to quote Webster’s New Collegiate Dictionary, 2d Ed., is “A stiffener * * * to give form to a boot or shoe upper around the heel.” As to the marks, the gist of the board’s view is in the following excerpts from its opinion:

“As far as this record shows, only petitioner and respondent have adopted and used ‘Meló’ as parts of marks for shoe counters. Considering the marks, it is concluded that respondent’s mark ‘Melo-O-Top’ so resembles petitioner’s mark ‘MELOFLEX’, being applied to goods identical in kind, as to be likely to cause confusion or mistake or deception of purchasers.

“ * * * even a discriminating purchaser might well assume that ‘Mel-O-Top’ and ‘MELOFLEX’ were trademarks on companion products of a single producer.”

After careful consideration of the entire record and of appellant’s brief and oral arguments (appellee neither filed a brief nor appeared at the hearing), we are unable to find error in the board’s decision or in its supporting reasoning.

Error alleged with respect to the motion.

Appellant’s final assignment of error reads:

“8. And finally, the Board erred in failing to grant respondent’s Motion for Judgment Under Rule 2.132 (b) filed on or about January 21, 1960.”

Several pages of its brief are devoted to this alleged error which, although it involves merely a procedural point, we are urged to decide because of its supposed importance to Patent Office practice in trademark cases. Appellant appears to be of the belief that the board denied the motion simply because appellant submitted its notice that third-party registrations would be relied on. Whether the board denied the motion for that reason we do not say. It is clear that the board stated other and more cogent reasons for denying the motion.

Rule 2.132(b) gives the board discretionary powers to grant or deny motions for judgment thereunder. We think the facts of this case make it clear that the board did not abuse its discretion in acting as it did. Accordingly, we do not think that its action on appellant’s motion should be disturbed.

The decision of the board granting the petition to cancel appellant’s registration is affirmed.

Affirmed.