Williams Oil-O-Matic Heating Corp. v. Westinghouse Electric & Mfg. Co.

62 F.2d 378, 20 C.C.P.A. 775, 1932 CCPA LEXIS 280

• Court: Court of Customs and Patent Appeals
• Decided: December 27, 1932
• Docket: Patent Appeal 3018
• Status: Published

Opinions

HATFIELD, Associate Judge.

This is an appeal from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences dismissing the notice of opposition of appellant, and holding that appellee was entitled to the registration of the trade-mark “Adjust-O-Matie,” for use on adjustable and thermostatically controlled electric sadirons— flatirons. . •

In its notice of opposition, as amended, the Williams Oil-O-Matic Heating Corporation alleged ownership and registration of the trade-marks “Oil-O-Matie” and “Dist-0 Matie,” for use on electrically operated and thermostatically controlled liquid-fuel-buming devices. It averred that the mark of appellee was confusingly similar with each of those of appellant, and that, therefore, appellant would be damaged by the registration of appellee’s mark.

In its answer to the notice of opposition, appellee alleged that the goods of the respective parties were not of the same class; and denied that the marks were confusingly similar.

The ease was submitted upon an agreed statement of facts. It appears therefrom that appellant used its trade-marks “Oil-OMatie” and “Dist-O-Matic” on electrically operated liquid-fuel-burning devices, and the trade-mark “Iee-O-Matie” on electrically operated domestic refrigerating units, prior to the adoption and use by appellee of its trademark; that appellant’s fuel-burning devices and eleetrie refrigerating units are operated by electric motors, adapted to be connected to electric-light circuits, and are thermostatically controlled; that appellant has expended large sums of money in advertising its trade-marks and its goods; and that its goods are sold to the public through licensed dealers, some in hardware stores, electrical shops, department stores, and by utility companies, and some by dealers who deal only in appellant’s products.

Appellee’s sadirons—flatirons—are used in homes for ironing and pressing textile-fabric articles. They are adapted to be connect-ed to electric-light circuits and are adjustable and thermostatically controlled. They have-been extensively advertised, and are sold to the purchasing public through central-station stores, electrical dealers, and department and hardware stores.

Each of the Patent Office tribunals held that the goods of the parties did not possess the same descriptive properties, and that the marks were not confusingly similar.

Counsel for appellant contends, in substance, that, as the goods of the parties are articles of domestic utility and are operated by eonnesting them to the domestic electric-light circuit, and as the operation of each is controlled by a thermostat which may be adjusted to predetermine the starting and stopping of the involved devices, they are goods of the same class and possess the same descriptive properties. This view is challenged by counsel for appellee.

The language “same descriptive properties,” contained in the first proviso of section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), was intended by the Congress to relate to goods of the same general class, and was used synonymously with the term “class,” used in the first part of that section. The words “same class” and “same descriptive properties” should be given “a limited or an extended meaning and application, according to whether or not the use of identical or similar trade-marks would be likely to cause confusion or mistake in the mind of the publie or to deceive purchasers,” and, in that connection, “the use, appearance, and structure of the articles, the similarity or the lack of similarity of the packages or containers in which, the place or places where, and the people to whom, they were sold should be considered.” B. F. Goodrich Co. v. Clive E. Hockmeyer et al., 40 F.(2d) 99, 103, 17 C. C. P. A. 1068; Decker & Cohn, Inc., v. Liebovitz Sons, Inc., 46 F.(2d) 179, 18 C. C. P. A. 781; California Packing Corp. v. Tillman & Bendel, Inc., 40 F.(2d) 108, 17 C. C. P. A. 1048.

The goods of the parties are household utilities. They are adapted to be connected to the electric-light circuit, and are thermostatically controlled. They are not similar, however, in any other resi>ect. They differ greatly in cost, use, appearance, and structure, and, of course, are not competitive.

Were it not for the faet that they are thermostatically controlled, we dare say that no one would contend that sadirons possess the same descriptive properties as either fuel-burning devices or refrigerators.

In this connection, it may be observed that electric toasters, heating pads, waffle irons, table grills, or sandwich toasters, and possibly other articles of household utility, are electrically operated and thermostatically controlled. Is it possible that those articles and either fuel-burning devices or refrigerators possess the same descriptive properties merely because they are electrically operated and thermostatically controlled? Might it not with equal force be argued that all electrically operated devices belong to the same class for trade-mark purposes?

We are of opinion that the mere attachment of automatic temperature regulators does not so change the character of sadirons as to give them, within the principles heretofore referred to, the same descriptive properties as either electrically operated and thermostatically controlled refrigerators or fuel-burning devices, and that the Commissioner of Patents reached the right conclusion.

The decision is affirmed.

Affirmed.