California Packing Corp. v. Price-Booker Mfg. Co.

SMYTH, Chief Justice.

This is an opposition proceeding. The appellee applied to the Commissioner of Patents for registration of the word “Mission,” accompanied by a representation of a mission housé as a trade-mark for flavoring extracts for foods, mustard, tomato cat-sup, relishes made of chopped and ground pickles packed in spices and vinegar, chow chow, salad dressing, and vinegar. The mark is affixed to the goods or the containers thereof. The apoellant uses substantially the same mark on canned fruits, canned vegetables, foods, and ingredients of foods, and the mark is applied to cans or glasses containing the goods. The appellee has used its mark since 1908, and the appellant established a date in the year 1892. Therefore the latter is entitled to priority. About this there seems to be no conflict.

The dispute relates to the question as to whether the goods of the respective parties belong to the same class or have the same descriptive properties. The Examiner of Interferences, feeling bound by a prior decision of the Office, ruled that the goods did not possess the same descriptive properties, and dismissed the opposition. On appeal the First Assistant Commissioner, recognizing that there was a conflict in the decisions of the Office with respect to whether or not canned fruits and canned vegetables had the same descriptive properties as pickles, took the view that they had not. In doing so he adopted the reasoning of the case which he followed. It' was to the effect that the goods did not belong to the same class, because canned fruits and canned vegetables require a different manufacturing plant from that needed in the manufacture of pickles; the latter are packed and shipped in glass or wooden vessels, while canned fruits and vegetables are shipped in air-tight tins; pickles have no food value, and are intended only as incitements to the appetite. But we do not think these considerations solve the problem. They relate chiefly to features which ordinarily would be unknown to the prospective purchaser, and which would have no tendency to help him in differentiating the goods of the one concern from those of the other. Therefore we must look for some other test.

In the first paragraph of section 5 of the act of 1905 (Comp. St § 9490) relating to trade-marks it is said that no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark, unless, etc. The exception is not material here. The paragraph implies that, if the mark would not distinguish the goods of its owner from other goods of the same class, it should be denied registration. No interpretation of the phrase “the same descriptive properties,” which occurs in the same section, applicable to all cases alike, has ever been given, so far as we know. The courts have been content with deciding in each case as it arose either that the goods did or did not possess those qualities, without going further. We think the dominant purpose of the part of the section here involved is the prevention of confusion and deception. If the use of the later mark would be likely to produce either, the mark should be rejected. Whenever it appears that confusion might result, it is because the goods have the same descriptive properties. We reason from the effect to the cause.. For instance, no one would be deceived into believing that a can of tobacco and a can of peas were put out by the same concern, simply because they bore similar trade-marks.

Turning now to the goods of the parties to this litigation, we find that they are sold in the same stores, are put out in small containers. are used in connection with each other, and are associated in the public mind. We think that a person seeing the mark irt question on a container of pickles would be likely to assume that they were produced by the same concern as that which produced the canned fruits or vegetables bearing a similar mark. At least we are not clearly comfnced that he would not be, and therefore we hold against the newcomer. William Waltke & Co. v. Geo. H. Schafer & Co., 49 App. D. C. 254, 263 Fed. 650.

The decision of the Commissioner is reversed.

Reversed.