dissenting:
I respectfully dissent from the conclusion reached by the majority and the reasoning upon which such conclusion is based.
In my opinion there is likelihood of confusion of origin in the use of the mark “RONRICOLA” by appellant upon its goods, in that purchasers of the same may conclude that RONRICOLA is the product of appellee. r.
Upon this point the majority opinion states:
* * * We are unable to discern any sound reason for such apprehension, in view of the distinctive differences between the goods and the marks, and in view of the widely known character of appellee’s product and business. It has not been suggested that appellee has any purpose or desire of expanding its business so as to include a product similar to that of appellant, nor is there anything in this record to indicate that appellant proposes to produce a product having the actual per se characteristics of Ooca-Oola, as was the case in the instances of the “Vera-Cola,” “DEXTRA-COLA,” and “King Kola” marks above recited.
I do not understand the relevancy of the above-quoted observations. It is not a question of whether appellee may expand its business by making a beverage identical with that made by appellant. The test is, would purchasers of the beverage RONRICOLA be likely to assume that appellee had expanded its business and that the product RONRICOLA was being made and sold by appellee. Whether ap-pellee ever makes such a beverage is wholly immaterial.
As was said in the case of Elgin American Mfg. Co. v. Elizabeth, Arden, Inc., 23 C. C. P. A. (Patents) 1168, 83 F. (2d) 687:
* * * The reai question confronting us is whether the goods of the respective parties are ’so related, commercially or otherwise, that, when marketed under the involved trade-marks, the purchasing public might reasonably conclude that they originated with the same concern.
That such confusion of origin is likely in the case at bar is, in my judgment, plainly evident by the facts of record in this case.
One of the registrations of the mark “Coca-Cola” relied upon by appellee is No. 47,189, dated October 31, 1905, which registration was issued under the 10-year clause of section 5 of the Act of February 20, 1905. In other words, the term “Coca-Cola” had acquired a *1151secondary meaning which, under the express provisions of said section 5, entitled it to registration. The provision reads as follows:
* * * And provided further, That nothing herein shall prevent the registration of any mark used hy the applicant or his predecessors, or hy those from whom title to the mark is derived, in commerce with foreign nations or among the several States or with Indian tribes which was in actual and exclusive use as a trade-mark of the applicant, or his predecessors from whom he derived title, for ten years next preceding February twentieth, nineteen hundred and five: * * *.
The effect of this registration made it wholly immaterial that “Coca” may be descriptive of a product made from coca leaves, or that “Cola” may be descriptive of a product of the cola nut.
In the case of Thaddeus Davids Co. v. Davids, 233 U. S. 461, 470, the court, in discussing the 10-year clause of said section 5, stated:
* * * Their exclusive use as trade-marks for the stated period was deemed in the judgment of Congress a sufficient assurance that they had acquired a secondary meaning as the designation of the origin or ownership of the merchandise to which they were affixed. And it was manifestly in this limited character only that they received statutory recognition, and, on registration, became entitled to protection under the act.
In view of the foregoing it seems plain that appellant had no right to appropriate one-half of appellee’s mart and use the same as a portion of its mark if, regarding the word “Cola” as not descriptive, there would be likelihood of confusion arising from such use. In other words, appellant had no right, in view of appellee’s registration, to use the word “Cola” as a part of a mark for the purpose of indicating origin of its goods.
In the case of Saxlehner v. Eisner & Mendelson Company, 119 U. S. 19, 33, the court said:
* * * It is not necessary to constitute an infringement that every word of a trade-mark should be appropriated. It is sufficient that enough be taken to deceive the public in the purchase of a protected article. * * *
The majority opinion states:
It will be observed that in each of the last three cases cited the syrup and drinks of the respective parties contesting with the Coea-Oola Company were nonalcoholic in character and were seemingly directly competitive with Coca-Cola. It can hardly be said that the product of appellant here is competitive with Coca-Cola. The “Cola” element of appellant’s “RONRICOLA” may he larger in volume, but unquestionably the product is purchased primarily because of its alcoholic content. When the marks are compared, each as a whole, they do not impress us as being similar in suggestiveness, appearance, or sound.
In the case of Elgin American Mfg. Co. v. Elizabeth Arden, Inc., supra, the goods involved were in no sense competitive, the goods of appellant being soap receptacles, etc., and the goods of appellee being soap. We reversed the decision of the Commissioner of Pat-*1152exits and held that appellee’s mark should not be registered because of likelihood of confusion in origin.
In the case at bar it is established that appellant’s beverage and appellee’s beverage are sold over the same counter's to the same purchasers, and that they are frequently used together in making mixed drinks. The fact that appellee’s beverage is also sold in places where appellant’s beverage is not sold is immaterial.
It appears that the bottles of appellant’s goods first sold in interstate commei’ce, which sale is relied upon by appellant to qualify it to register its mark, contained, in addition to .the mark “RON-RICOLA,” the following:
A Bottled
CUBA LIBRE
Made With Genuine
RONRICO RUM AND COCA COLA
Contains 33%% By Volume Of
RONRICO RUM
At 86 Proof
One Quart — 14.5% Alcohol hy Vol.
Made and Bottled by PUERTO RICO DISTILLING CO.
At Arecibo, P. R.
It also appears that negotiations were carried on by appellant with the view of securing the cooperation of the Coca-Cola Co. in assisting the Ronrico Corporation, the selling agent of appellant, to obtain Coca-Cola sirup for the mixture with Ronrico rum and lime. This cooperation was rejected by appellee. In a letter from the sales-manager of the Ronrico Corporation to the attorneys for appellee it is stated :
Please be advised that as a result of our meeting with you, in Atlanta, several months ago, wherein we discussed the possibility ot the use of the-facsimile of your bottle as well as your trade-mark, in connection with the promotion of the drink known as “Cuba Libre,” we discontinued the use of the-Coca-Cola bottle and any mention, thereto, in connection with our promotional material.
It is well settled that the circumstances under which appellant adopted its mark may properly be considered in determining the question of confusing similarity. Corn Products Refining Co. v. Coca-Cola Company, 26 C. C. P. A. (Patents) 1181, 103 F. (2d) 385, and' cases therein cited.
It is clear to me that appellant had the trade-mark of appellee-in mind when it selected its mark, and that it deliberately selected the term “Cola” with the hope of profiting by the goodwill of appel-lee and its extensive advertising, amounting to more than $85,000,000.
It is appellant’s position before us, as stated in its brief, that:
* * * The proofs show, beyond a doubt, that each mark denoted origin of the-goods of the respective parties, and by no stretch of the imagination could *1153it be successfully concluded that RONRICOLA would even remotely suggest that the applicant’s Cuba Libre was “either manufactured” by opposer or “in some manner sponsored by opposer,” as contended by the Commissioner. * * *
And yet in the letter from tlie Ronrico Corporation to appellee’s attorneys we find the following:
****** ;¡;
Attached, please find a tear sheet from the October Issue of the “Hotel Industry.” You will note an interesting article in connection with the first Fall meeting of the I. B. A., which meeting was addressed by a well-known wine and liquor authority, Mr. G. Selmer Fougner.
This article leaves no doubt that the Carioca Rum Company is very closely associated with the Coca-Cola Company in the promotion of a drink known as the Carioca Cooler. The presence of Mr. Homer Thompson, of the New York Coca-Cola Bottling Company, at this meeting, is further indicative of the association.
Naturally, the writer is at quite a loss to understand your statement to him at the time of our meeting several months ago, at which you stated definitely that the Coca-Cola Company had no association whatsoever with the Carioca Rum Company and, as a matter of fact, had secured an injunction against these people for the use of the Coca-Cola name and facsimile of the bottle in their advertising.
Appellee’s attorneys, in replying to said letter, denied the association with the Carioca Rum Co. referred to in the letter, but attention is called to it here for the reason that, if appellant’s selling agent believed that appellee was interested in a beverage containing rum, it is altogether likely that purchasers of appellant’s goods bearing the mark “RONRICOLA” might believe that appellee was also interested in a beverage containing rum and Coca-Cola, and thus ascribe origin of appellant’s product to appellee.
Because I believe that the mark “RONRICOLA,” used upon appellant’s goods, would, by reason of the inclusion of the word “Cola” therein, lead purchasers of such goods to believe that their origin was in appellee, it is my judgment that the decision appealed from should be affirmed.
I am authorized to say that Judge Hatfield concurs in this dissent.