Nulyne Laboratories v. Electro-Alkaline Co.

285 F. 999, 52 App. D.C. 265, 1923 U.S. App. LEXIS 2654

• Court: Court of Appeals for the D.C. Circuit
• Decided: January 2, 1923
• Docket: No. 1502
• Status: Published

Opinion

ROBB, Associate Justice.

Appeal from a decision of the Commissioner of Patents, in a trade-mark opposition case, in which the Office refused to register “Chlorox” for appellant as a trade-mark for tooth paste, on the ground of conflict with appellee’s previously registered mark “Cl'orox,” for use on “bleaching, cleansing, and antiseptic compounds.”

In February of 1915 the appellee, a corporation located at Oakland, Cal., registered the following mark and claimed use since Tuly 15, 1914:

According to the testimony of the president of appellee corporation, its preparation is put up in bottles, and the directions thereon “simply state what it is used for, as a germicidal disinfectant and antiseptic and a hleach.” This witness, testifying in August of 1920, stated that for “over two years” lie had used it as a “tooth wash.” The testimony of the other witnesses for appellee was substantially the same, except that its manager stated that its preparation was used “for laundry purposes, household, creameries, hospitals, swimming pools, purification of water, bathing suits.” This witness further stated that he had used it as a tooth wash “for probably four years, off and on,” but he admitted that it never had been sold for that purpose. It further appeared that just prior to the taking of the testimony appellee had considered putting up a tooth paste and mouth wash.

Appellant, a corporation located in the city of Jackson, in the state of Michigan, filed its application -in June of 1921 and alleged use since November of 1917.

We are convinced that, at the time of the adoption and use of the mark by appellant, in connection with the sale of tooth paste, appellee did not contémplate the preparation and sale of a tooth paste or mouth wash. We are further convinced, by the evidence offered for appellee, that its preparation was neither intended for nor capable of use as a tooth paste. It may be assumed that, in a sufficiently diluted form, it may be successfully used as an antiseptic or mouth wash.

This, therefore, is a case in which the goods of the parties are dissimilar and possess different qualities and characteristics. See Anglo-American Incandescent Light Co. v. General Electric Co., 43 App. D. C. 385 and Fishback Soap Co. v. Kleeno Mfg. Co., 44 App. D. C. 6. When appellant adopted its mark, the field was open. In other words, there is nothing to raise a doubt as to its good faith, and we therefore do not think appellee should be permitted, at this Inte day, to appropriate the business and good will thus established. This was the view of the Examiner of Interferences, who said:

“The mere fact that the goods of the opposer can be used as an essential ingredient of a tooth paste is deemed by the Examiner not to justify the conclusion that tooth paste and these goods possess the same descriptive properties.”

The decision appealed from is reversed.

Reversed.