Food Specialty Co., Inc. v. Catz American Co., Inc. , 433 F.2d 817 ( 1970 )

RICH, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board (abstract 156 USPQ 715) denying appellant’s petition to cancel appellee’s Principal Register registration No. 720,077, of Aug. 15, 1961, of the trademark “HERE, KITTY!” for canned cat food. We reverse.

Appellant’s petition is predicated on its ownership of the trademark “Kitty” for cat food, registered on the Principal Register Aug. 9, 1960, Reg. No. 702,658. Appellant’s filing date, Jan. 30, 1956, antedates appellee’s date of first use, Aug. 19, 1959. Priority is therefore not an issue. The goods must legally be regarded as identical and the sole question for decision is likelihood of confusion, mistake, or deception. 15 U. S.C. § 1052(d).

The decision of the board herein was rendered Jan. 12, 1968, prior to our decision in Food Specialty Co. v. Standard Products Co., 406 F.2d 1397, 56 CCPA 1005 (Mar. 13, 1969). In that case we reversed the board and sustained an opposition by appellant here, based on the same registration relied on here, to registration of the trademark “Pretty Kitty” for cat food. Appellant deems that precedent controlling here. So do we.

In the “Pretty Kitty” case we rejected the argument that “Kitty” is merely descriptive and generic as applied to cat food while recognizing the obvious fact that it is “not entirely arbitrary,” as appellee contends. We held that confusion would nevertheless be likely to result from the concurrent use of “Kitty” and “Pretty Kitty” on cat food. We have nearly the same issue here regarding the likelihood of confusion between “Kitty” and “HERE, KITTY!” and we are of the same opinion : confusion or mistake would be likely.

The only new argument here, as compared with the prior case, is that this is a cancellation whereas the prior case was an opposition. We are unable to see that that difference is significant. Appellee cites certain dictum from the opinion in In re Myers, 201 F.2d 379, 40 CCPA 747 (1953), in support of its thesis that the situation in a cancellation is quite different from that in an opposition because, quoting from Myers, “The cancellation of one’s trade-mark may prove destructive to the business built about it.” Myers quoted no authority for that statement, which is not accurate. It is a registration which is can-celled, not a trademark. There is no way to cancel a trademark. Myers was otherwise in error, and we cannot accept its dictum. Furthermore, Myers was an ex parte appeal. Appellee took no testimony in this case and there is no evidence that it presently has any business under its registered mark.

It is interesting to note that the board cited its own prior decision in the “Pretty Kitty” case as a precedent for its decision herein. We reversed that precedent. In considering our prior “Pretty Kitty” decision to be “controlling” herein, we do so in the sense that the logic underlying the prior decision compels the decision here, not that the decision as to another mark is binding.

The decision of the board is reversed.

Reversed.