Bouejois, Inc. v. Cheatham Chemical Co.

DISSENTING OPINION'

Bland, Judge:

I must dissent from the opinion of the majority for two reasons.

First. The reasoning of the opinion leads to the conclusion that there would be less likelihood of confusion between “ Polly Peach-*1093tree” and the trade-marks of the opposer “Peaches,” “Peach Blow,” “ Peaches and Cream,” and “ Velvet of Peaches,” on account of the fact that “ Peaches ” is suggestive rather than “ fanciful.” The fact that the word “ Peach ” is suggestive, which the majority concedes in no way invalidates the trade-mark, would make the probability of confusion more likely since the predominant thought in “ Polly Peachtree ” obviously is “ Peach,” which is equally suggestive of the character of the goods in all the marks.

It is hardly logical to say that “ appellant’s marks are valid trademarks,” and at the same time sustain appellee’s right to register chiefly upon the theory, as I understand the situation, that opposer unfortunately selected trade-marks which are so suggestive as to make confusion easy.

The majority opinion says:

That appellant's marks are valid trade-marks we do not question., but it is also true that if one engaged in the production of perfumeries should manufacture a perfume made from peach blossoms, he would have the right to so label and describe it upon such goods, notwithstanding appellant’s trade-marks, provided he did so in such a way as to differentiate such description from the form of the marks used by appellant.

Just what is meant by this statement is difficult to say. If the writer intended to convey the impression that on account of the word “ Peach,” in appellant’s marks, being suggestive, the appellee would have the right to so label his peach perfumery and in doing so use the word “Peach” as a trade-mark, regardless of confusion that might result, it is clearly against numerous decisions by this court. If the statement does not mean that, it is useless and misleading. Of course he would have the right to “ describe ” his product by saying that it was made from peach blossoms, but that is far from saying that he would| have the right to use “ Peach Blossom ” as a trademark. We have repeatedly held that the right to register is to be distinguished from the right to use. National Biscuit Co. v. Sheridan, 18 C. C. P. A. (Patents), 44 F. (2d) 987; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 17 C. C. P. A. (Patents) 906, 38 F (2d) 696; California Packing Corp. v. Tillman & Bendel, Inc., 17 C. C. P. A. (Patents) 1048, 40 F (2d) 108. A trade-mark may not be registered if it. is probable that confusion will result between it and a valid registered mark. Since appellee concedes that appellant’s trade-marks are valid, the fact that they are suggestive should not lessen our vigilance in ascertaining the probability of confusion, since if they both suggest the same thing there is more probability of confusion that there would otherwise be.

Second. Irrespective of the above consideration, I think this record presents a state of facts from which no other reasonable conclusion can be deduced than that confusion to the public will result *1094from the registration and use of appellee’s trade-mark “ Polly Peach-tree.” For two or three generations, appellant’s “Peach brand” •trade-marks have been one of the leaders of toilet articles and have been popular with the toilet article purchasing public. It is natural to conclude that when a new trade-mark containing the word “ Peach,” used in connection with the sale of a toilet article, is placed on the market, the public will think it is another of the “Peach” family of appellant. The fact that appellant has four “ Peach ” trade-marks increases the likelihood of confusion. Many purchasers will be led to buy “ Polly Peachtree ” toilet water through an incorrect belief as to its origin.

Congress intended to encourage the registration of trade-marks only which would not lead to confusion. It had no right to remedy, and did not attempt to provide a remedy for, the confusion the public would necessarily have to suffer by virtue of rights and limitations which grew out of the use of trade-marks and irrespective of their registration.

Since I am convinced that confusion will result and disagree with the inferred reasons for arriving at the conclusion which the majority reached, I must dissent. The opposition should have been sustained.

Hatfield, J., concurs in the dissenting opinion.