Williams Oil-O-Matic Heating Corp. v. Westinghouse Electric & Mfg. Co. , 62 F.2d 378 ( 1932 )

LENROOT, Associate Judge

(dissenting).

I could readily concur in the conclusion reached by the majority in this ease were it not for the opinions of this court in the eases of California Packing Corp. v. Tillman & Bendel, 40 F.(2d) 108, 17 C. C. P. A. 1048; B. F. Goodrich Co. v. Clive E. Hockmeyer et al., 40 F.(2d) 99, 17 C. C. P. A. 1068; and Decker & Cohn, Inc., v. Liebovitz Sons, Inc., 46 F.(2d) 179, 18 C. C. P. A. 781, which eases are cited in the majority opinion in the case at bar in support of the language in said opinion reading as follows: “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 trademarks 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.’ ”

In the first two eases cited above, Judge Garrett and I specially concurred in the conclusion, but disagreed with the view of the majority that the words “same class” and “same descriptive properties,” as used in section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), should be given a limited or an extended meaning and application, according to whether or not the use of identieal or similar trade-marks would be likely to cause confusion or mistake in the minds of the public, or to deceive purchasers. The minority of the court in the case of California Packing Corp. v. Tillman & Bendel, supra, expressed the view that the confusion contemplated by the statute was the result of a deceptively similar mark being applied to goods of the same descriptive properties, but that actual confusion could not be the test of whether or not goods were of the same descriptive properties. The further view was expressed that if actual confusion was to be a test of whether goods had the same descriptive properties, then the phrase “same descriptive properties” had no meaning in the section.

In the third case above cited, I did not dissent from the views expressed in the opinion as to the construction of the phrase “same descriptive properties,” but accepted the same as the settled law declared by this court. As the majority opinion in the case at bar reiterates this construction of the words “same descriptive properties,” I accept it as the settled law; accordingly, whether the goods of the parties, to which the marks here involved are applied, are of the same descriptive properties, is dependent upon whether or not confusion is 'likely to result from the use of the trade-marks in issue upon the respective goods of the parties, under the law as interpreted by this court in the above-cited cases.

Applying this construction to the case at bar, it seems to me that, it. being shown that appellee used the trade-marks “Oil-O-Matie” and “Dist-O-Matie” upon electrically operated and thermostatically controlled liquid-fuel-buming devices, and the trade-mark “Ice-O-Matie” upon electrically operated domestic refrigerating units, prior to the adoption and use by appellee of its trade-mark “Adjust-O-Matie” as applied to adjustable and thermostatically controlled electric sad-irons, one desiring to purchase a sadiron, being familiar with the trade-marks “Oil-OMatie” and “Dist-O-Matie” upon electrically operated, thermostatically controlled fuelbuming devices, and the mark “Iee-O-Matic” upon electrically operated refrigerating units, would, upon seeing a sadiron bearing the trade-mark “Adjust-O-Matic,” naturally conclude that said sadiron was also manufactured by the same party that manufactured goods under the names “Oil-O-Matie,” “Dist-OMatic,” and “Iee-O-Matie.”

I would repeat that, were it not for the-construction given by this court to the words “same descriptive properties,” I would be of the opinion that the goods of the respective parties, upon which the marks are used, are not of the same descriptive properties, and would concur in the conclusion reached by the majority.

However, if the likelihood of confusion is to be the determining factor of whether goods are of the same descriptive properties, as is now the settled law of this court, then it follows, if I am correct in my belief that confusion would likely result from the use of the marks of the parties, that the goods do have the same descriptive properties. It therefore follows that, the goods possessing the same descriptive properties under the law as interpreted by this court, and there being likelihood of confusion as a result of the use of the marks, the opposition of appellant should be sustained.