Bristol-Myers Company v. Pharmaco, Inc.

SMITH, Judge,

dissenting, with whom KIRKPATRICK, Judge, joins.

This dissent is based on my opinion that there is not such similarity between the marks “Bufferin” and “Buffagum” as to be likely to cause confusion or mistake or deception of purchasers. Similarity is found in the identical initial syllables of the marks. I agree with the Trademark Trial and Appeal Board that such similarity does not warrant sustaining the opposition where the marks are otherwise so different.

In addition to the differences in the names, the goods are specifically different. “Bufferin” is a medicinal tablet and “Buffagum” is a medicinal chewing gum. Opposer’s registration asserts use of its name “Bufferin” for “antacid asprin [sic].” The stipulation of fact herein further describes the product as a “preparation” which is “in the form of tablets containing aspirin and certain antacid ingredients.”

Applicant asserts use of its mark “Buffagum” for “a chewing gum containing analgesics and antacids.”1 The specimen label which applicant filed with its application describes “Buffagum” as being “for upset stomach, gas, heartburn— due to acid indigestion.” It is, according to this label “A stomach remedy in mint-*758flavored chewing gum, form, for increased effectiveness and ease of taking.”

We are, therefore, dealing not only with different names but also with different goods each of which is specifically employed by the user for a particular medicinal purpose. The use of aspirin for the relief of pain is so well known that I cannot conceive of a user or purchaser being so confused or mistaken or deceived that he would accept an antacid chewing gum “for upset stomach, gas and heartburn” instead of the desired aspirin tablet because of applicant’s use of its mark “Buffagum” on its medicinal chewing gum. Neither do I think the presence of the common syllable “Buff” in the two names would be likely to cause such user or purchaser to associate the source or origin of applicant’s goods with opposer.

In Libbey-Owens-Ford Glass Co. v. General Aluminum Window Co., Inc., 275 F.2d 947, 47 CCPA 833. I agreed with the majority in finding likelihood of confusion between the marks “Therm-O-Lite” and “Thermopane.” As pointed out in the majority opinion the word “lite,” is a corrupted form of the word light which has the dictionary meaning of “pane.” Thus, the names taken as wholes conveyed the same meaning, while here the names as wholes convey different meanings.

“Buffer” when applied to medicinal preparations is a descriptive term.2 Op-poser’s “buffered" aspirin suggests its name “Bufferin.” Applicant’s “buffered” antacid chewing gum likewise suggests its name “Buffagum.” 3

I think, therefore, on these facts that the rationale expressed by this court in May Department Stores Co. v. Kenya Corp., 234 F.2d 870, 872, 43 CCPA 940, is applicable here. There the names “Aristocrat” and “Aristosheen” were in issue. The court said:

“It is evident that the final syllables ‘crat’ and ‘sheen’ are entirely distinct in sound, meaning and appearance, and that the similarity between the marks under consideration is therefore confined to the ‘Aristo’ portion. That portion is the combining form of the Greek word ‘aristos,’ meaning ‘the best,’ and its inclusion in a mark is therefore generally suggestive of high quality.
“It is well settled that marks cannot be dissected for purposes of comparison, but must be considered in their entireties. Montgomery Ward & Co., Inc. v. Spiegel, Inc., 132 F.2d 144, 30 C.C.P.A., Patents, 721; [56 USPQ 185] Miles Laboratories, Inc. v. Foley & Co., 144 F.2d 888, 32 C.C.P.A., Patents, 714; [63 USPQ 64] Schering & Glatz v. Sharpe & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A., Patents, 827, [64 USPQ 394]. Nevertheless, it is proper to note that it has frequently been held that marks whose initial syllable or syllables are the same will not be regarded as confusingly similar if the syllable or syllables in question have a descriptive or suggestive connotation and the remaining portions of the marks are clearly distinct. Examples of such cases, with the marks involved, are as follows:
“Alumatone Corp. v. Vita-Var Corp., 183 F.2d 612, 37 C.C.P.A. Patents, 1151, [86 USPQ 359] (Alumatone and Alumikote); Kraft Walker Cheese Co., v. Kingsland, D.C., 75 F.Supp. 105, [75 USPQ 318] (Vegemite and Vegex); Miles Laboratories, Inc. v. Foley & Co., *759144 F.2d 888, 32 C.C.P.A. Patents, 714, [63 USPQ 64] (Vitamiles and Vitabuild); Solventol Chemical Products, Inc. v. Langfield, 6 Cir., 134 F.2d 899, [57 USPQ 210] (Solventol and Solvite); Steem-Electric Corp. v. Herzfeld-Phillipson Co., 7 Cir., 118 F.2d 122, [48 USPQ 93] (Steam-O-Matic and Steem-Electric); Vick Chemical Co. v. Kerfoot & Co., Ltd., 80 F.2d 73, 23 C.C.P.A. Patents, 752, [27 USPQ 393] (Vapex and Vaporub); Thomas Kerfoot & Co., Ltd., v. Louis K. Liggett Co., 1 Cir., 67 F.2d 214 (Vapure and Vapex).”

The court there, as I think it should here, found the involved marks distinguishable as entireties.

I think there also is persuasive similarity between the marks here and the marks “Duro-Style Fabrics” and “Durosheen” which were involved in May Department Stores Co. v. Schloss Bros. & Co. Inc., 234 F.2d 879, 881, 43 CCPA 980. There, the court said:

“It is obvious that the only similarity between the marks resides in the word ‘Duro’. That word suggests durability, and there are of record copies of registrations of over thirty trademarks for fabrics or wearing apparel which either consist solely of the word ‘duro,’ or contain it as a part of the mark. It is well settled that combinations of letters which are descriptive of the goods or properties thereof will not be accorded as great weight in considering whether marks are confusingly similar, as words or combinations of letters which are purely arbitrary. North Star Manufacturing Co. v. Wells Lamont Corporation, 193 F.2d 204, 39 C.C.P.A. Patents, 764, [92 USPQ 128]; West Disinfecting Company v. Lan-O-Sheen Company, 163 F.2d 566, 35 C.C.P.A. Patents, 706, [75 USPQ 77]; Rite-Rite Mfg. Co. v. Rite-Craft Company, 181 F.2d 226, 37 C.C.P.A. Patents, 963, [85 USPQ 268] ; Miles Laboratories, Inc. v. Pepsodent Co., 104 F.2d 205, 26 C.C.P.A. Patents, 1272, [41 USPQ 738]; and Franco-Italian Packing Corp. v. Van Camp Sea Food Co., Inc., 142 F.2d 274, 31 C.C.P.A. Patents, 1029, [61 USPQ 369].”

Since the names “Bufferin’’ and “Buffagum” taken as wholes are distinct in sound, meaning and appearance, and since the goods to which they are applied are specifically different, I do not think the similarity of the names predicated on the common use of the syllable “Buff” is a sufficient basis upon which to sustain the opposition.

Where the only similarity between the marks resides in the initial syllable “Buff,” I find my position well stated in the following:

“ * * * We recognize that in some situations the presence of a common first syllable in two marks may be sufficient to render the marks, as a whole, confusingly similar. As the Examiner has stated, this more frequently happens when the common syllable is at the beginning of each mark. However, there is certainly no general rule that all marks which begin with the same syllable are confusingly similar.
“We submit that in the present case the common syllable “Buff” has a suggestive significance in relation to the goods in that it implies that the product has been buffered against either an alkaline or acid condition. Because of this the syllable “Buff” appears in a number of marks registered in Class 6. In addition to the two registrations cited, it is present in Reg. No. 418,-640 “Buff-caps”, in Reg. No. 364,337 “Bufosal” and in Reg. No. 351,083 “Bufox”.
“Because of the presence of “Buff” or “Buf” in a number of trademarks and particularly because of the suggestive significance of the syllable, the public recognizes that it must look to more than this first syllable *760to identify a particular source. The mark as a whole must be considered and when this is done, there is no real similarity between applicant’s three-syllabled trademark ‘Bufferin’ and the registrant’s two-syllabled: trademarks ‘Bufflac’ and ‘Buffate’.4

For the foregoing reasons, I would affirm the Trademark Trial and Appeal: Board in dismissing the opposition.

. The specimen label filed with the application lists the medicinal ingredients in “Buffagum” but does not list any which are commonly recognized as “analgesics.”

. Hackh’s Chemical Dictionary, 3rd Edition (1944 ed.) defines “buffer” as, “any substance which, when added to a solution, resists any change in hydrogen ion concentration on addition of acid or alkali.”

. That “Buff” should be given little trademark significance also seems clear to me from the third party registrations for medicinal preparations which have not been considered in the majority opinion. These include such names as “Bufflac”; “Buffate”; “Bonobuff”; “Bufosal”; “Buffecillin”; “Buff-caps”; “BufOpto”; and “Bufos.”

. Quoted from page 2 of the October 5, 1948 response of opposer to the office action of July 2, 1948 rejecting opposer’s application Serial No. 542,436 filed November 26, 1947 which resulted in Registration No. 566,190 issued November 4, 1952 for the mark “Bufferin.”