On Petition for Rehearing
October 2,1944
Garrett, Presiding Judge:Following the delivery of the above decision on June 26,1944, appellant, in due time, filed a petition for rehearing which has received our careful consideration, in connection with a reexamination of the somewhat voluminous record, much of which relates to three oppositions decided below and not appealed to us. As originally stated by us, the testimony in the several cases is so intertwined that the court experienced much difficulty in determining just what parts of it were pertinent only to the instant case.
*713In its petition for rehearing appellant has apparently endeavored to segregate the testimony here pertinent, and that has proved helpful in our restudy of the issues.
The petition alleges as point I that we incorrectly found that the particular product here involved is manufactured to be added to gasoline used as fuel in internal combustion engines. As point II it is alleged that we were mistaken in finding that the goods of the Alox Corporation involved in the instant case are different from those involved in the other three cases, and as point III it is alleged that the court was mistaken in holding that there is no showing that appellee’s oxidized petroleum hydrocarbon masses in. paste to liquid form are ever introduced into or used in paints of any character.
It seems most logical to comment first upon point II.
The four applications of appellee which became involved in oppositions were all filed in the Patent Office on the same day, to wit, January 6, 1941. [3] It would seem to be a natural inference, even if nothing further appeared, that the goods in each case differed from those in the other cases; otherwise, separate registrations of the same mark — “Alox”—would appear to have been unnecessary. But more appears. The several applications were made a part of the record upon request of counsel for appellant. An examination of these as they were amended disclosed definite differences in both the designation of the respective products and in the uses of same. It is deemed unnecessary to enter into details as to such differences, but it may be said that in applications serial Nos. 439,423 and 439,424 specific reference is made to a paint use, or a use in the nature of paint, of certain of the goods named; that in application, serial No. 439,422, the product is described as “lubricating oils and greases, and penetrating lubricating oils”; and that in the case before us the designation reads “for oxidized petroleum hydrocarbon masses in paste to liquid form for general use in the industrial arts,” no reference being made to any paint use.
We think it obvious that the Examiner of Trade-Mark Interferences based his decisions in those'cases (in which he sustained the oppositions and from which no appeals were taken), primarily upon the fact that the applications involved therein specifically referred to the goods as in the nature of paints and stated that they were used as paints, and so, in his view, conflicted with the goods of appellant. In opposition No. 21,061, involving application serial No. 439,422, he dismissed the notice of opposition holding that the goods were not of the same descriptive properties as the goods of appellant and this holding was expressly approved by the commissioner, the decision of the latter refusing registration being ex parte, and on a different ground. We are not convinced from the evidence cited by appellant in his petition that we were mistaken as alleged in point II.
*714We turn to point I. If our expression “As we understand from the record, the particular product of appellee here involved is manufactured to be added to gasoline used as a fuel in internal combustion engines (such, for example, as those in automobiles),” be construed as limiting it to use in combustion engines, apparently the statement would be too narrow. It may be conceded that it is not so limited in use, but in whatever mechanism it may be used such use is for purposes of lubrication and the prevention of corrosion; not for purposes of abrasion and not for painting. It may be said, to be exact, that the evidence indicates that the “oxidized petroleum hydrocarbon masses in paste to liquid form” are not introduced in that form into gasoline, but are first mixed with light lubricating oils by the fuel processors to whom appellee sells the product, and the mixture is introduced. This fact, however, is not of any consequence here, nor does the fact that the product may have some uses in mechanisms other than internal combustion engines affect our conclusion.
With respect to the third point alleging that we were mistaken in holding that there is no showing that appellee’s product here involved is ever introduced into or used in paints of any character the petition cites certain testimony by Mr. A. W. Burwell, vice president and technical director of appellee. This testimony has been reexamined in the light of appellant’s contentions. The statement of this witness upon which appellant relies was made in answer to a question propounded in cross-examination which apparently referred to his course of business in relation to the product described in application No. Ji89,lpB3 and not the product described in application No. f39,J$5. The answer, therefore, is not pertinent to the instant case unless appellant’s theory that the product here involved is not different from that involved in application No. 439,423, be accepted which, in our opinion, may not properly be done. No other evidence has been cited, nor have we found any, which leads us to change our finding in this regard.
The petition for rehearing has been granted solely for the purpose of more fully expressing in writing our views upon the points raised therein. We fell assured that the conclusion originally reached was correct and the same is adhered to, thfe decision of the commissioner being again affirmed.