The May Department Stores Company v. Kenya Corporation , 234 F.2d 870 ( 1956 )

O’CONNELL, Acting Chief Judge.

This is an appeal from the decision of the Commissioner of Patents acting through the Assistant Commissioner and affirming the decision of the Examiner of Interferences, 102 U.S.P.Q. 404, dismissing a petition by The May Department Stores Company, the appellant here, for cancellation of Trade-Mark Registration No. 548,445 granted to Kenya Corporation, the appellee, for the word “Aristo-sheen” as a trade-mark for rayon fabrics in the piece. The registration sought to be cancelled was granted September 18, 1951, on an application filed November 9, 1950.

No testimony was taken by either party, the petition for cancellation being based on appellant’s ownership of the following list of prior registrations:

“Aristocrat” Registration No. 375,-858 issued March 5, 1940, for draperies and upholstering fabrics made of silk, satin, rayon, wool, and mohair.

“Aristocrat Curtains” Registration No. 373,-547 issued December 12, 1939, for de luxe and imperial curtains.

“Baby Aristocrat” Registration No. 302,-538 issued April 25, 1933, for blankets.

“Baby Aristocrat” Registration No. 374,-178 issued January 2, '1940, for infants and children’s dresses, coats, and related garments.

“Durosheen” Registration No. 262,-704 issued October 22, 1929, renewed, for men’s dress and work shirts.

“Dovesheen” Registration No. 262,-705 issued October 22, 1929, renewed, for men’s dress and work shirts.

“Kasheen” Registration No. 405,-172 issued January 11, 1944, for dress shorts.

“Lonsheen” Registration No. 250,-317 issued December 4, 1928, renewed, for negligee shirts.

“Stasheen” Registration No. 252,-285 issued January 29, 1929, renewed, for dress and work shirts.

“Supersheen” Registration No. 269,-482 issued April 8, 1930, renewed, for men’s dress and work shirts.

Petitioner contended before the Examiner of Interferences that appellee’s mark “Aristosheen” is composed of two terms “Aristo” and “sheen,” which, separately, are present in various registered marks of the petitioner, and that the public, being familiar with the petitioner’s group or family of marks as hereinbefore described, would be likely to believe that goods bearing the mark “Aristosheen” originated with the petitioner. The Examiner of Interferences held, however, that in order to determine the question of likelihood of confusion the marks of a group must be separately considered, and that “Aristosheen” was not confusingly similar to any one of the petitioner’s cited or registered marks. He accordingly dismissed the petition for cancellation.

The Assistant Commissioner, after briefly reviewing the facts of the case, held: “Since respondent’s [appellee’s] registration, as well as petitioner’s is prima facie evidence of validity of the registration, ownership of the mark, and of respondent’s exclusive right to use the mark on rayon fabrics in the piece, petitioner had the burden of overcoming such evidence by competent proof. It did not discharge its burden.” The Assistant Commissioner accordingly affirmed the decision of the Examiner of Interferences.

The petitioner appealed to this court, assigning as errors in its reasons of appeal the holding of the Assistant Commissioner that the petitioner “had not sustained its burden by merely making of record its certificates of prior registrations of marks including ‘Aristocrat’ for substantially the same goods as respondent’s upon which the latter uses ‘Aristosheen’,” and the failure of the Assistant Commissioner to hold that “Aristosheen” as used by the Kenya Corporation is confusingly similar to the petitioner’s prior mark “Aristocrat.”

It is correctly pointed out in the appellant’s brief that this appeal involves two issues: first, whether the trade-mark “Aristosheen” as applied to rayon fabrics in the piece is confusingly similar to “Aristocrat” as applied to draperies and upholstery fabrics made from silk, satin, rayon, wool and mohair; and second, whether it is sufficient for the petitioner in a cancellation proceeding to make of record the prior registrations on which it relies in order to show, prima facie, its use of the registered marks on the goods described in the registrations.

Considering the second point first, it is noted that the Examiner of Interferences in his decision in the instant case, among other things, held:

“The petitioner’s ownership of its pleaded registrations is established by the Official copies thereof filed with the petition for cancellation, which [registrations] have a record date earlier than that of the respondent and which also constitute evidence of use of the marks for the goods disclosed therein since prior to that of the respondent. Bond Stores Inc. v. Karasick etc., 89 U.S.P.Q. [503]; The Du All Mfg. Co. v. Livingston, 78 U.S.P.Q. 49; Ely & Walker Dry Goods Company v. Sears, Roebuck & Company, 90 F.2d 257, 24 C.C.P.A., Patents, 1244.”

The Examiner of Interferences thereafter proceeded on the basis that the petitioner had established use of its marks prior to the respondent’s use of “Aristo-sheen,” and decided the case solely on the issue of lack of confusing similarity of the marks involved. His action in that respect was in accord with the decisions cited by him and with the decision of this court in Charles of the Ritz, Inc. v. Elizabeth Arden Sales Corp., 161 F.2d 234, 34 C.C.P.A., Patents, 1029.

The Assistant Commissioner entered a general affirmance of the decision of the Examiner of Interferences but did not specifically mention that portion of his decision' contained in the excerpt quoted above. The decision of the Assistant Commissioner, it will be observed, does not hold that the petitioner’s registrations are not prima facie evidence of pri- or use of the marks registered on the goods described in the registrations, but merely holds that, notwithstanding such evidence, the presumption of validity of the Kenya Corporation’s registration of the mark “Aristosheen” had not been overcome.

In view of the above, we assume that the decisions of the tribunals of the Patent Office were based primarily on the lack of confusing similarity between “Aristosheen” and the marks relied on by the petitioner; since such lack of confusing similarity was the basis of the decision of the Examiner of Interferences, which the Assistant Commissioner affirmed, and which had been challenged before her by appellant’s reasons of appeal. Appellant’s reasons of appeal in the proceeding here likewise challenge the adverse decisions of the Patent Office on the issue of confusing similarity.

In any event, we agree with the Examiner of Interferences that the petitioner’s registrations were sufficient to establish, prima facie, its prior use of the marks involved and that, in the absence of contradictory evidence by the respondent, no further proof of that matter by the petitioner was necessary.

It follows that the decision in this case turns solely on the question of confusing similarity of the marks since, as pointed out by the Examiner of Interferences, the goods to which the marks are applied are related products and of the same descriptive character. The appellant in its appeal brief and in its reasons of appeal relies here only on its mark “Aristocrat” and accordingly none of its other registered marks hereinbefore referred to need be further considered.

It is evident that the final syllables “crat” and “sheen” are entirely distinct in sound, meaning and appearance, and that the similarity between the marks under consideration is therefore confined to the “Aristo” portion. That portion is the combining form of the Greek word “aristos,” meaning “the best,” and its inclusion in a mark is therefore generally suggestive of high quality.

It is well settled that marks cannot be dissected for purposes of comparison, but must be considered in their entireties. Montgomery Ward & Co., Inc. v. Spiegel, Inc., 132 F.2d 144, 30 C.C.P.A., Patents, 721; Miles Laboratories, Inc. v. Foley & Co., 144 F.2d 888, 32 C.C.P.A., Patents, 714; Schering & Glatz v. Sharpe & Dohme, Inc., 146 F.2d 1019, 32 C.C. P.A., Patents, 827. Nevertheless, it is proper to note that it has frequently been held that marks whose initial syllable or syllables are the same will not be regarded as confusingly similar if the syllable or syllables in question have a descriptive or suggestive connotation and the remaining portions of the marks are clearly distinct. Examples of such cases, with the marks involved, are as follows:

Alumatone Corp. v. Vita-Var Corp., 183 F.2d 612, 37 C.C.P.A., Patents, 1151 (Alumatone and Alumikote); Kraft Walker Cheese Co. v. Kingsland, D.C., 75 F.Supp. 105 (Vegemite and Vegex); Miles Laboratories, Inc. v. Foley & Co., 144 F.2d 888, 32 C.C.P.A., Patents, 714 (Vitamiles and Vitabuild); Solventol Chemical Products, Inc. v. Langfield, 6 Cir., 134 F.2d 899 (Solventol and Solvite); Steem-Electric Corp. v. Herzfeld-Phillipson Co., 7 Cir., 118 F.2d 122 (Steam-O-Matic and Steem-Electric); Vick Chemical Co. v. Kerfoot & Co., Ltd., 80 F.2d 73, 23 C.C.P.A., Patents, 752 (Vapex and Vaporub); Thomas Kerfoot & Co., Ltd. v. Louis K. Liggett Co., 1 Cir., 67 F.2d 214 (Vapure and Vapex).

It is also to be noted that “Aristocrat” is a word in everyday use, whereas “Aris-tosheen” is obviously a coined mark.

Upon careful consideration of the involved marks as entireties, we are of the opinion that they are clearly distinguishable and that confusion would not be likely to result from their concurrent use on the goods to which they are applied by the respective parties.

The decision of the Assistant Commissioner is affirmed.

Affirmed.

JACKSON, Judge, retired, recalled to participate.