merchandise the same, registration is by the statute refused without extrinsic proof as to the likelihood of confusion; while in the second class, where the marks are similar but not identical, the registration is permitted, even though the merchandise is of the same class, unless the similarity of the marks is likely to cause confusion.
In the instant case the marks themselves are clearly identical, and if the merchandise to which they are respectively appropriated is of the "same descriptive properties", then, by the very terms of the statute, registration of the mark is not permissible. The determinative question therefore is whether the newspaper section of the Philadelphia Inquirer is an article of the "same descriptive properties" as the British magazine. I conclude that the two publications are of the same class, and, therefore, the Commissioner was right in refusing registration, and the complaint must be dismissed.
The principal contention of counsel for the plaintiff here is that the mark should be registered because the evidence affirmatively shows that confusion is not likely to result, even though the two publications are of the same descriptive properties, or the same class, in the ordinary sense of the words of the statute; or, as otherwise stated, that, to determine whether merchandise is of the same class, resort must be had to the extrinsic evidence of possible confusion, or its absence, even though the merchandise on inspection is obviously intrinsically of the same class. I do not think this is the proper construction of the statute. The test of confusion is expressly related to the similarily of the marks, and not to the determination of the descriptive properties of the merchandise. The latter is to be determined, like other questions of fact, on the whole of the relevant evidence. If the merchandise of itself is obviously of the same class, that fact cannot properly be disregarded merely because individual opinion testimony of witnesses tends to show that likelihood of confusion is non-existent. But of course where there is doubt whether the merchandise, intrinsically considered, is of the same class, resort may very properly be had to extrinsic evidence as to confusion, which may in any such given case be of controlling importance in view of the undoubted consideration that the primary purpose of the whole trade-mark law, as a part of the wider subject of unfair competition, is to prevent confusion of the public as to the origin of goods of competing vendors. American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S. Ct. 160, 70 L. Ed. 317; 63 C.J. Trade-Marks, p. 474, § 147; Affiliated Products, Inc., v. Crazy Water Co., Cust. & Pat.App., 104 F.2d 366, 367.
The contention that obvious intrinsic similarity of merchandise can be negatived by evidence showing absence of likelihood of confusion is given same color by certain language used in some of the earlier decisions of the Court specially experienced in trade-mark law by reason of the numerous cases presented to it on appeals from the Commissioner of Patents. In B.F. Goodrich Co. v. Hockmeyer, Cust. & Pat.App., 40 F.2d 99, 103, it was said:
"The words 'same class' and 'same descriptive properties' were intended to 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 public or to deceive purchasers."
As pointed out by Judge Lenroot in a special concurring opinion in the same case (40 F.2d at page 105) the seeming effect of this construction of the statute is that "the consideration of confusion is always necessary in order to determine class." But in the much later case of Meredith Pub. Co. v. O.M. Scott & Sons Co., Cust. & Pat. App., 88 F.2d 324, 326, presiding Judge Graham, after adverting to some expressed uncertainty as to the effect of former decisions of the court in relation to the subject matter, and after extensive review of the cases, corrected the misapprehension by saying:
"It is true that in both the preceding cases, there were expressions which, taken by themselves, and without regard to the context and the general purport of the opinions, might have indicated that the existence of confusion was the test by which we should determine whether the goods were of the same descriptive properties.However, the cases should not be so read. When we consider the degree of similarity of the trade-marks and goods involved in those cases, the state of the facts and the general conclusions arrived at by the court, it will be seen that the court was endeavoring to give to the words 'same descriptive properties' a reasonable application and meaning, in order to effectuate the purposes of the registration act, and did not have in mind the virtual elimination of the words from the statute."
It is quite impossible in an opinion of any ordinary length to review the multitudinous cases in the Court of Customs and Patent Appeals and in other courts in which the similarity of marks or merchandise have been considered in relation to trade-marks. Each case is necessarily ruled by its peculiar facts. But generally it may be deduced from many decisions of the Court of Customs and Patent Appeals that that court has given a very liberal interpretation to the phrase "merchandise of the same descriptive properties" for the purpose of effecting what is considered the dominant purpose of the Act, to prevent possible confusion, with the result that many identical or similar marks have been refused registration even when the respective articles were, intrinsically considered, quite different. Thus, under particular facts, canned fish and canned tea were held of the same descriptive properties ( Tetley & Co., Inc., v. Bay State Fishing Co., Cust. & Pat.App., 82 F.2d 299); and boots and shoes were held of the same class as leggings, knickerbockers and rompers ( B.F. Goodrich & Co. v. Hockmeyer, Cust. & Pat.App., 40 F.2d 99); and horse-radish, olive spread and similar relished were held of the same class as coffee and tea ( Cheek-Neal Coffee Co. et al. v. Hal Dick Mfg. Co., Cust. & Pat.App., 40 F.2d 106, 107); and a packaged pectin product for making jams and jellies was held of the same class as packaged dried skimmed milk. General Foods Corp. v. Casein Co., Cust & Pat.App., 108 F.2d 261. The liberality of these decisions, in order to prevent possible confusion, may be seen upon comparison with the Supreme Court cases of American Steel Foundries v. Robertson, Commissioner, 269 U.S. 372, 380, 46 S. Ct. 160, 70 L. Ed. 317, and Beech-Nut Packing Co. v. P. Lorillard Co., 273 U.S. 629, 47 S. Ct. 481, 71 L. Ed. 810; and also Wagner's Sons Co. v. Orange Snap Co., 5 Cir., 18 F.2d 554. Certainly the Court of Customs and Patent Appeals has generally applied a more liberal interpretation of the statutory phrase "merchandise of the same descriptive properties" than is necessary in this case to uphold the action of the Commissioner. No case has been called to my attention under comparable facts that would justify the conclusion that the respective publications in the instant case do not constitute merchandise of the "same descriptive properties".
It must also be remembered that the statute is necessarily of limited scope and effect in that it does not create or establish substantive property rights in trade-marks, which really depend upon the laws of the particular States ( American Steel Foundries v. Robertson, supra, 269 U.S. at page 381, 46 S. Ct. 160, 70 L. Ed. 317); and the effect of registration is not to create trade-mark rights theretofore non-existent, but only to give publicity to existing rights and claims and to facilitate remedies therefor. United States Printing & L. Co. v. Griggs, Cooper & Co., 297 U.S. 156, 49 S. Ct. 267, 73 L. Ed. 650; 63 C.J.Trade-marks, pp. 505, 506, s. 205. A trade-mark owner who seeks the benefit of the registration statute must obviously accept the conditions on which the permission for registration is given. As the applicable language of the statute refuses registration where the mark is identical with a prior mark on the same class of goods, the applicant for registration here has no just cause of complaint because his mark was denied registration. The Commissioner well summarized the matter when he finally said:
"It must be conceded that the likelihood of confusion is slight, but that fact does not remove the statutory bar against registration of 'trade-marks which are identical with a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties'; and no one would seriously argue that the two publications are not merchandise of the same descriptive properties within the meaning of the statute."
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