Ultra-White Co. v. Johnson Chemical Industries, Inc. , 465 F.2d 891 ( 1972 )

Maletz, Judge.

This is an appeal by tbe Ultra-White Company (UÍtra-White) from a decision of the Trademark Trial and Appeal Board¹ granting the petitions of Johnson Chemical Industries, Inc. (Johnson) to cancel Registration No. 713,679 ² of the mark “Bright White” for “laundry whitener in liguid and powdered form” and Registration No. 816,822 ³ of the same mark for “chemical preparations for use as laundry whitener, textile preservative, textile softener and bacteriostat.”

Johnson’s petitions were predicated on asserted prior and continuous use since 1948 of the mark “Brightwhite” for its laundry neutralizing products. Johnson’s position was that the “Bright White” mark of Ultra-White so resembles its own mark previously used in the United States and not abandoned as to be likely, when applied to Ultra-White’s goods, “to cause confusion, or to cause mistake, or to deceive.” 15 USC 1052(d).

Briefly, the record shows that Johnson has used the marks “Bright-white” or “Brightwhite Sour” since 1948 for a laundry sour and whitener⁴ combination that it has advertised and sold to commercial laundries and distributors servicing the commercial laundry industry. In the period 1962-1967, its sales of that product approximated $50,000-$75,000 a year. The record further shows that Ultra-White has used the mark “Bright White” since about 1953 for a liquid or powder fabric whitener that it has sold directly or through jobbers to hospitals, hotels and other commercial laundries. From 1953 to 1960, Ultra-White’s yearly sales of its product ranged from $1,000 to $10,000, with sales increasing to about $45,000 in 1967. Further, it is clear from the record that both parties have advertised in the same trade journals to the same class of consumers; have at times marketed their respective products through some of the same jobbers; and were at the time of testimony selling in nearly all states.

Against this background, the board stated:

* * * [T]he goods of the parties comprise commercial laundry chemicals Raving laundry whitening properties, and the specific differences between such goods are considered to be negligible. Similarly, no material distinction can be drawn between the marks in view of the fact that the word “SOUR” in petitioner’s mark is but the descriptive name of the primary ingredient of petitioner’s product and is therefore devoid of trademark significance. * * *

In view of the foregoing we are clearly of the opinion that the contemporaneous use by the parties of the identical term “BRIGHTWHITE” or “BRIGHT WHITE” for the specified goods would be quite likely to cause confusion or mistake or to deceive.

Appellant insists, however, that the board erred in failing to recognize the alleged specific differences in the marks involved and the “substantial differences” between the products of the parties- We do not agree. In the first place, there can be no doubt that one of the principal ingredients of the merchandise of both parties is an optical brightening agent, and that both products are designed to be used in a rinse cycle-subsequent to the wash cycle in the commercial laundry. Furthermore,' appellant’s own documentary exhibits 3 and 13, which a witness testified had been in use for the past 10 years as a product label and ad“ vertising brochure, respectively, both relate that the product to which the mark “Bright White” is applied “may be used as a sour.⁵ In view of these considerations, it is difficult for us to see any practical “difference” between the marks or goods of the parties. Thus, we agree with the board’s conclusion that a purchaser familiar with appellee’s line of “Brightwhite” or “Brightwhite Sour” laundry neutralizing agent/whitener combination would, on encountering “Bright White” laundry whitener, be likely by reason of confusion or mistake to accept the latter in anticipation of getting the former, or be likely to confuse or mistake the origin of the goods. Ultra-White, it is to be added, maintains that the record is devoid of evidence of actual confusion or mistake⁶ on the part of purchasers. However, even a complete lack of such evidence would not preclude a finding of likelihood of confusion or mistake. In re Calgon Corp., 58 CCPA 830, 435 F. 2d 596, 168 USPQ 278 (1971); Salem Commodities, Inc. v. Miami Margarine Co., 44 CCPA 932, 244 F. 2d 729, 114 USPQ 124 (1957).

Appellant-Ultra-White’s principal argument seems to be that Johnson should be estopped from alleging that it will be damaged by the continued registrations of Ultra-White’s mark. As to this, the record indicates that Johnson became aware of Ultra-White’s use of “Bright White” in 1960. On December 7,1960, counsel for Johnson wrote Ultra-White’s president requesting that it “immediately stop” the use of that mark in light of Johnson’s previous use of its marks on substantially identical products. On April 7, 1961, Ultra-White advised Johnson that it would not discontinue use of “Bright White”. No further action was taken by Johnson until the filing in July and November 1967 of its cancellation petitions directed to the registrations granted in October 1966 and April 1961 on the Principal and Supplemental Registers. In view of the actual knowledge posssesed by Johnson since 1960 regarding Ultra-White’s use of the mark, Ultra-White contends the board erred in failing to consider “the classical elements of laches and estoppel which exist in this record.”

The board did not agree with appellant that it is appropriate to apply the equitable defenses set forth in 15 USO 1069 ⁷ under the present circumstances, nor do we. This is not a case wherein a likelihood of purchaser confusion or mistake is reasonably in doubt, and evidence of laches, estoppel or acquiescence may be considered as a factor in resolving that doubt. Compare In re National Distillers Products Co., 49 CCPA 854, 297 F. 2d 941, 132 USPQ 271 (1962). Rather, it appears to us that confusion or mistake here is not only likely but inevitable in light of the virtual identity of the parties’ marks and goods, as well as the similarity of trade channels, market areas and advertising media. In such a situation, notwithstanding the equities between the parties and the equitable principles of § 1069, the public interest expressed in § 1052 is the dominant consideration. See, e.g., Swank, Inc. v. Ravel Perfume Corp., 58 CCPA 948, 438 F. 2d 622, 168 USPQ 723 (1971); Chun King Corp. v. Genii Plant Line, Inc., 56 CCPA 740, 403 F. 2d 274, 159 USPQ 649 (1968); Cohen & Sons Co., Inc. v. Hearst Magazines, Inc., 42 CCPA 836, 220 F. 2d 763, 105 USPQ 269 (1955); see also In re Avedis Zildjian Co., 55 CCPA 1126, 394 F. 2d 860, 157 USPQ 517 (1968); In re Continental Baking Co., 55 CCPA 967, 390 F. 2d 747, 156 USPQ 514 (1968).

The decision of the board is affirmed.

BaldwiN, J., concurs in the result.

1 Abstraeted-at 162USPQ 63S (1969).'

2 Issued April 4, 1961 on the Supplemental Register, and asserting first use in commerce in April 1957.

3 Issued October IS, 1966 on the Principal Register, and asserting first use in commerce in April 1957.

4 The record shows that a “laundry sour” Is used by commercial laundries as a neutralizing agent to reduce alkalinity left in fabrics after washing, thus functioning to maintain or preserve the fabric’s original color and strength. A “whitener” is a fluorescent dye (optical brightening agent), the purpose of which is to whiten or brighten laundry without bleach.

5 On cross-examination, one of appellee’s witnesses testified that, among several products uitra-White calls “Bright White”, “one [does] have a sour in it.” As noted earlier, a “sour” functions to maintain or preserve fabric color and strength.

6 The record does contain testimony of Johnson’s president on cross-examination that the president of one of its distributors “called up and ashed if we were manufacturing the [‘Bright White’] product” of Ültra-White. Counsel for ultra-white had earlier objected to similar testimony elicited on direct examination as hearsay.

7 This section provides that:

In all inter partes proceedings equitable principles of laches, estoppel and acquiescence, where applicable, may be considered and applied.