National NuGrape Co. v. Judge & Dolph, Ltd.

154 F.2d 521, 33 C.C.P.A. 1032, 69 U.S.P.Q. (BNA) 388, 1946 CCPA LEXIS 451

Opinion

Jackson, Judge,

delivered the opinion of the court:

Appellant sought cancellation of the registration of appellee’s trademark No. 395,289, dated May 19, 1942, for the mark “So-Grape” applied to nonalcoholic maltless beverages and concentrates, relying on its registered trade-mark “NuGrape,” No. 164,168, dated February 13, 1923, used on nonalcoholic maltless beverages and sirups and extracts therefor.

The case was submitted on stipulation of the parties.

The Examiner of Interferences dismissed the petition on the ground that he had not been persuaded that injury within the meaning of section 13 of the. Trade-Mark Act of 1905 had been established.

Upon appeal, the Commissioner of Patents affirmed the decision of the examiner, 62 USPQ 189, on the ground that the word “Grape” is descriptive of the goods of both parties and aside from that word no similarity existed between the marks as a whole in sound, appearance or meaning. The commissioner pointed out that the dominating feature of a trade-mark cannot be a descriptive word, so that purchasers would look to the prefixes “So-” and “Nu” as indicating origin of the respective goods. From that decision, this appeal was taken.

Appellee’s mark appears in two lines, the first syllable and the hyphen appearing above the word “Grape,” which is disclaimed. The mark of appellant is a compound word “NuGrape” in a kind of heavy script, underscored with a line which bears the legend “A FLAVOR YOU CAN’T FORGET.” The legend was disclaimed.

There is no question that the goods possess the same descriptive properties and that the word “Grape” as applied to the goods is descriptive. It is established law that a descriptive word cannot constitute the dominant part of a mark. AmericanBrewing Company, Inc. v. Delatour Beverage Corporation, Etc., 26 C. C. P. A. (Patents) 778, 100 F. (2d) 253, 40 USPQ 173. Clearly tire word “Grape” by itself cannot indicate origin in any particular source. The prefixes “So-” and “Nu,” while unlike in sound, meaning, if any, and appearance, as was held by the commissioner, we think, considering both marks as a whole, are confusingly similar and therefore their concurrent use is likely to deceive purchasers.

The decision of the Commissioner of Patents is reversed.