Philadelphia Inquirer Co. v. Coe

133 F.2d 385, 77 U.S. App. D.C. 39, 55 U.S.P.Q. (BNA) 435, 1942 U.S. App. LEXIS 2510

• Court: Court of Appeals for the D.C. Circuit
• Decided: December 8, 1942
• Docket: No. 7944
• Status: Published

Opinions

VINSON, Associate Justice.

Appellant was plaintiff in the District Court in what is commonly known as a Section 4915 proceeding.¹ Previously, appellant had applied to the Patent Office for registration of the trade-mark “Everybody’s Weekly”, the name given to the magazine supplement section of the Philadelphia Inquirer’s Sunday newspaper.

Inasmuch as the construction of the applicable statutory provisions is the whole of this case, we set forth the pertinent language of the Act immediately in order that the four previous determinations in this case may be understood as recited:

“[That] no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark * * *

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“ (b) * * * Provided, That trademarks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered: * * *”²

The Patent Office examined appellant’s application and passed it for publication. Whereupon, King Features Syndicate, which releases “Everybody’s Pictorial Weekly”, filed opposition. The Examiner of Interferences in the Patent Office determined that applicant had its mark in use before the opposer, and the opposition was dismissed, from which action there was no appeal. The opposer, however, introduced evidence which showed that a British publication had used a similar mark prior to applicant. The British publication carried the title “Everybody’s — the popular Weekly”. On the inside pages was the heading “Everybody’s Weekly”. The Examiner held that the applicant was not entitled to register its mark because the goods to which it was applied possessed the same descriptive properties as the British article and the two marks bore such close resemblance as to be likely to cause confusion.

Upon appeal to the Commissioner of Patents the decision of the Examiner was affirmed, but upon somewhat different reasoning. The opinion of the Assistant Commissioner clearly held that the two articles were of the same descriptive properties, and while observing that there was actually little likelihood of confusion, he concluded that the statute barred registration.

After a rehearing, at which a decision of this Court was pressed,³ the Assistant Commissioner maintained his conclusion while clarifying his reasoning and holding. He held that not only were the marks applied to goods of the same descriptive properties but also that they were identical, and so the likelihood of confusion became irrelevant under the statute.

The District Court in a well reasoned opinion⁴ held that the goods were of the same descriptive properties and that the marks were identical. The Court further held that the likelihood-of-confusion test was immaterial because that test is addressed to the similarity of the marks and not to the descriptive properties of the merchandise.

Upon appeal to this Court, appellant concedes that the marks are identical. Its chief argument is that likelihood of confusion is one of the criteria in determining whether goods are of the same descriptive properties. Since it believes that there is no chance of confusion, then it concludes that its supplement must not be of the same class as the British publication, a conclusion contrary to the express holding in the four previous adjudications.

We believe that the statute bars appellant’s right to register. In making this holding we accept the reasoning of the District Court.

Appellant bases its argument upon the emphasis that the whole object of statutory and common law trade-mark law is to prevent confusion. With this all-important essence in mind, appellant rides roughshod over the nicer standards the statute creates. Appellant takes the likely-to-cause-confusion test at the end of the proviso and reads it all the way back through the Act. Appellant may have a good idea for trade-mark law. Nonetheless, the statute must be read and applied as written.

We outline the meaning that the statute has for us:

(General Rule) That no mark by which the goods on which it appears may be distinguished from other goods of the same class shall be refused registration;

(Proviso) (1) But (a) if the mark is identical with one already in existence and (b) if it is used on goods of the same descriptive properties (with the same meaning as “same class” in the general rule; synonym, related goods), it shall not be registered; (2) or (a) if the mark so nearly resembles another mark as to be likely to cause confusion and (b) if it is used on goods of the same descriptive properties, it shall not be registered.

In contrast, appellant’s construction of the statute, spelled out, would read something like this:

That no mark by which the goods on which it appears may be distinguished from other goods of the same class (the test of the class being the likelihood of causing confusion) shall be refused registration;

Provided, That trade-marks which are identical with a known mark and used on merchandise of the same descriptive properties (the test of the last phrase being the likelihood of causing confusion), shall not be registered; and also provided that trademarks which so nearly resemble another mark, as to be likely to cause confusion (appellant may cancel the test here),⁵ and which are applied to goods of the same descriptive properties (again the test being the likelihood of causing confusion), shall not be registered.

If this be the meaning of the statute, it could have been written much more concisely : that no trade-mark shall be refused registration unless it is likely to cause confusion.

Congress, however, chose to lay down more definite standards, and to make differentiations. Congress provided that if a trade-mark is identical with one in existence and if it is applied to related goods, it shall not be registered, and that if a trademark so nearly resembles one in existence as to be likely to cause confusion, and if it is applied to related goods, it shall not be registered.

Congress separated the “identical” marks from the “nearly resemble” ones.⁶ This was done by using sufficient language for standards in each instance and by dividing the two provisions with a comma followed by the conjunction “or”. Then in the second part of the proviso, the part dealing with marks of close resemblance, Congress addressed the likely-to-cause-confusion test to the similarity of the marks⁷ by using the adverbs “so” and “as” to introduce correlative clauses, to wit: “so nearly resemble * * * as to be likely to cause confusion”. That the confusion test goes to the similarity of the marks and not to the descriptive properties of the goods is borne out by the fact that the phrase “merchandise of the same descriptive properties” has already appeared in the first part of the proviso, and again in the general rule in the form of the synonym, “goods of the same class”, and in neither case was there any descriptive definition test corresponding to “likely to cause confusion”.

The construction of the statute to us is clear, and being clear we choose not to be led astray by some of the case language which in all fairness must be said to support appellant.⁸ That language has often been to the effect that where “similar or identical” trade-marks are concerned the test of registration is the likelihood of causing confusion. The usual problems are whether the marks are confusingly similar on goods of the same descriptive properties or whether the goods are of the same descriptive properties where the marks are substantially identical. If it is fairly clear that the goods do not have the same descriptive properties and their marks are dissimilar, contested cases do not arise. New cases, on the other hand, present a difficult question on both issues. As a result the adjudicating bodies have not been made acutely aware of the statutory differentiation between similar and identical marks when applied to goods of the same descriptive properties, nor have they, in applying the statute, been accustomed to discussing expressly, in the same case, the two distinct steps, i.e., (1) are the goods of the same descriptive properties, and if so, then, (2) either are the marks so similar as to be likely to cause confusion, or are the marks identical. When the Court of Customs and Patent Appeals, so far as we know, first applied expressly the confusion test to determine whether the goods were of the same descriptive properties, there was a 3-2 division with the minority writing a vigorous specially concurring opinion.⁹

The facts of this case have shown us, we believe, the proper construction of the Act, and with the statute properly construed, this case is of easy resolution. Appellant concedes that its mark is identical with that of the British publication. This concession is in conformity with the conclusions of the Assistant Commissioner and of the District Court. This concession places appellant within the first part of the proviso. The only other factor for consideration, then, is whether the marks are applied to merchandise of the same descriptive properties.¹⁰

There is general agreement that the meaning of this phrase is that of the phrase, “goods of the same class”, which appears in the opening general rule of the section.¹¹ Whether goods are of the same class, or as it is sometimes stated, are the goods related,¹² can often be decided by what might be called conference table consideration. At other times resort to the market place is necessary. Even then, if the test is framed in terms of confusion it is misleading, because that test is already in the statute in another connection, and because that is, to our minds, not precisely the issue. What is wanted to be known through this extrinsic evidence is whether the producers, the wholesalers, the retailers, and particularly the consumers, regard and treat the goods as though they were of the same class, and whether those purchasers will believe that the goods have the same origin so that they will reason that since X company makes good coffee, it probably makes good tea.¹³ In such instances custom comes to temper logic in making the categories of goods. When the problem is looked at this way, it is seen that it is really a matter of degree of relation rather than of the “same” class. This relativity of relation becomes all the more important in the day of many by-products and nationally known goods.

In the present case it has been clear to the Examiner, to the Assistant Commissioner, to the District Court, and now to us, that a magazine supplement section of a Sunday newspaper belongs to the same class for the purpose of trade-mark registration as a stapled, tabloid, weekly news-magazine. Just as extrinsic evidence would be cumulative when it was already clear that goods were not related, so here when the goods are so closely related, any amount of testimony that there was no “confusion” (of the source) in fact would not alter the conclusion that the goods are of the same descriptive properties. These goods, similar publications, are in the same class even under a very narrow and literal meaning.¹⁴

Under a fresh statute some might doubt this conclusion. Where, however, this phrase, “the same descriptive properties”, has evolved¹⁵ so that coffee is classed with horse-radish, fish with tea, mouth washes with cold creams, there cannot be the slightest doubt that these two similar publications are merchandise of the same descriptive properties.

It is certain that if the statute does anything, it bars the registration of identical marks for goods definitely of the same class.

Affirmed.

1 R.S. § 4915, 35 U.S.C.A. § 63. See American Steel Foundries v. Robertson, 262 U.S. 209, 43 S.Ct 541, 67 L.Ed. 953.

2 15 U.S.C.A. § 85.

3 McGraw-Hill Pub. Co. v. American Aviation Associates, 73 App.D.C. 131, 117 F.2d 293. That was an infringement and unfair competition ease, not a registration case. Moreover’, the test of confusion. there went to the similarity of the marks. Here appellant concedes that the marks are not similar but identical, and attempts to employ the confusion test to determine whether the goods are of the same class.

4 38 F.Supp. 427.

5 We are not told by appellant whether in relating the confusion test to the descriptive properties he believes that it does not go to the close resemblance of the marks.

6 Although the Supreme Court in American Steel Foundries v. Robertson, 269 U.S. 372, 46 S.Ct. 160, 70 L.Ed. 317, was concerned with the next proviso which deals with appropriating corporate names for trade-marks, the Court expressed an historic rule of trade-mark law which affords background for the construction of this section. “The general doctrine is that equity not only will enjoin the appropriation and use of a trade-mark or trade-name, where it is completely identical with the name of the corporation, but will enjoin such appropriation and use where the resemblance is so close as to be likely to produce confusion as to such identity, to the injury of the corporation to which the name belongs.” Page 381 of 269 U.S. page 162 of 46 S.Ct., 70 L.Ed. 317.

7 The Judge of this Court who applied the confusion criterion to determine if goods were of the same descriptive properties while saying he reasoned from effect to cause in California Packing Corp. v. Price-Booker Mfg. Co., 52 App.D.C. 259, 285 F. 993, saw the two steps two and one-half years earlier. “It is conceded that the goods are substantially identical. The only question, then, is as to whether or not the two marks are so similar as to be likely to produce confusion in the minds of purchasers with respect to the origin of the goods upon which they are used.” Proctor & Gamble Co. v. Eney Shortening Co., 50 App.D.C. 42, 267 F. 344.

See Morrison Co. v. Cudahy Packing Co., 50 App.D.C. 236, 270 F. 358.

Compare Nulyne Laboratories v. Electro-Alkaline Co., 52 App.D.C. 265, 285 F. 999, and Vacuum Oil Co. v. Gargoyle Textile Corp., 52 App.D.C. 268, 285 F. 1002.

8 California Packing Corp. v. Price-Booker Mfg. Co., 52 App.D.C. 259, 285 F. 993. B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 17 C.C.P.A., Patents, 1068; California Packing Corp. v. Tillman & Bendel, 40 F.2d 108, 17 C.C.P.A., Patents, 1048. The rule of these last two cases seems at first to be disapproved in Meredith Publishing Co. v. O. M. Scott & Sons Co., 88 F.2d 324, 326, 24 C.C.P.A., Patents, 956: “It is true that in both the preceding cases, there were expressions which, taken by themselves, and without regard to the context and the general purport of the opinions, might have indicated that the existence of confusion was the test by whieh we should determine whether the goods were of the same descriptive properties. However, the cases should not be so read.” Yet when the Meredith Publishing Co. case is considered as a whole, its general purport seems to be there is little likelihood of confusion so the goods are not of the same descriptive properties. Universal Paper Products Co. v. Bemis Bros. Bag Co., 116 F.2d 294, 28 C.C.P.A., Patents, 848.

9 See concurring opinions in B. F. Goodrich Co. v. Hockmeyer, 40 F.2d 99, 104, 17 C.C.P.A., Patents, 1068, and California Packing Corp. v. Tillman & Bendel, 40 F.2d 108, 114, 17 C.C.P.A., Patents, 1048.

10 Bor a converse situation see In re B. Manischewitz Co., C.C.P.A., Patents, 123 F.2d 641.

11 Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F.2d 106, 107, 17 C.C.P.A., Patents, 1103; Cross v. Williams Oil-O-Matic Heating Corporation, 48 F.2d 659, 660, 18 C.C.P.A., Patents, 1192; Williams Oil-O-Matic Heat. Corp. v. Westinghouse E. & M. Co., 62 F.2d 378, 379, 20 C.C.P.A., Patents, 775; Nims, Unfair Competition and Trade-Marks (3d ed. 1936) § 229(b), p. 621.

12 Nims, Unfair Competition and Trade-Marks (3d ed. 1936) § 229, pp. 619-20. Elgin American Mfg. Co. v. Elizabeth Arden, Inc., 83 F.2d 687, 23 C.C.P.A., Patents, 1168.

13 Elgin American Mfg. Co. v. Elizabeth Arden, Inc., 83 F.2d 687, 688, 23 C.C.P.A., Patents, 1168.

14 “ . . .no one would seriously argue that the two publications are not merchandise of the same descriptive properties within the meaning of the statute.” These words appear in the opinion of the Assistant Commissioner, and the District Court quoted them to conclude its opinion.

15 Forst Packing Co. v. C. W. Antrim & Sons, 118 F.2d 576, 28 C.C.P.A., Patents, 1005.