# General Baking Co. v. Commander-Larabee Corp. > Court of Customs and Patent Appeals · March 23, 1936 · 82 F.2d 427 URL: https://www.frixlaw.com/law-library/cases/6815424 ## Case - **Full name:** General Baking Co. v. Commander-Larabee Corp. - **Court:** Court of Customs and Patent Appeals - **Decided:** March 23, 1936 - **Citations:** 82 F.2d 427; 23 C.C.P.A. 973; 1936 CCPA LEXIS 62 - **Precedential status:** Published - **Opinion:** Opinion of the court by Graham - **Judges:** Bland, Garrett, Graham, Hatfield, Lenroot - **Cited by:** 1 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/6815424 ## Opinion text Graham, Presiding Judge, delivered the opinion of the court: The appellee, Commander-Larabee Corporation, filed an application in the United States Patent Office on April 9, 1932, for registration of a mark consisting of the word “Sunfed” printed in plain block letters, and in its application alleged that it had adopted “and used the trade-mark shown in the accompanying drawing for White Bread, Whole Wheat Bread, Macaroni, Spaghetti, Crackers, Pancake Flour, cereal Breakfast Food, Biscuit Flour and Cake Flour,” and that this trade-mark had been “continuously used and applied to said goods in applicant’s business since March 11, 1932.” General Bailing Company, appellant, filed notice of opposition to this application for registration on June 28, 1932, in which notice it *974 was alleged that the opposer believed it would.be damaged by said registration; that ever since March 16,1931, opposer had been incorporating vitamin-D in its bread, which, since 1915, had been known as Bond Bread, and that it believed that prior to March 16, 1931, no other person, corporation, firm, or association had ever made and sold in the United States, or elsewhere, a bread in which vitamin-D was incorporated; that opposer had created a very valuable good will and had spent large sums for advertising, by reason of which its bread had become known as “Sunshine Vitamin-D Bread”; that on or about March 16, 1931, the opposer had adopted as its trade-mark for said bread a “distinctive representation of the sun,” and certain wording-used in association therewith, to wit: “Licensed by the Wisconsin Alumni Research Foundation under Steenbock Pat. No. 1,680,818,” and the following statement: “This bread brings you the extra SUNSHINE VITAMIN-D you need”; that, on or about May 9, 1931, it also adopted as its trade-mark a certain other “distinctive representation of the sun” unassociated with any wording; that on or about December 15, 1931, the opposer also adopted as its trade-mark “a distinctive representation of the sun” and certain wording used in connection therewith, to wit: “SUNSHINE VITAMIN-D Bread,” and “Guaranteed to Contain Vitamin-D Sufficient for Normal Nutrition,” and “Licensed by the Wisconsin Alumni Research Foundation under Steenbock Pat. No. 1,680,818,” and applied this trade-mark and the “distinctive representation of the sun,” unassociated with any wording, thereafter. The notice of opposition also states, in paragraph 3 thereof, that the applicant, Commander-Larabee Corporation, represents that the flour known by the name “Sunfed” contains vitamin-D, and proposes to supply bakers purchasing its flour with advertising matter representing that bread made from the applicant’s flour has been impregnated with vitamin-D by a natural sunshine process; that it proposes to do so by featuring a mark printing such information within a representation of the sun on bread wrappers to be supplied to said bakers. Paragraph 4 of the notice of opposition is as follows: 4. Opposer is informed and believes: that applicant has never used the mark for which registration is sought upon white bread, whole wheat bread, or any kind of bread; that applicant is engaged in the business of making flour and selling the same to bakers and others desiring to purchase flour for making bread and other goods; that applicant has no connection with such purchasers of its flour other than that involved in the purchase and sale of the flour; that applicant has never engaged in the business of making or selling bread; that applicant is neither the.owner of the bread on which the mark sought to be registered herein is applied, nor an agent authorized to-sell or dispose of said bread. *975 The appellee-applicant answered the notice of opposition, denying that the representation of a sun in association with the wording used by the opposer, namely, “Licensed by the Wisconsin Alumni Kesearch Foundation under Steenbock Pat. No. 1,680,818,” and “This bread brings you the extra SUNSHINE VITAMIN-D you need,” constituted a trade-mark, and that the alleged “distinctive representation of the sun,” associated with any wording, constituted a trade-mark, and alleged that the said marks constituted merely a grade mark adopted for the sole purpose of indicating the grade, kind, style, or quality of the bread manufactured or sold by opposer under its trade-mark “Bond Bread.” The answer further admits that the applicant manufactures and sells flour under the trademark “Sunfed,” and that it proposes to supply bakers purchasing its said flour with advertising matter indicating that applicant’s flour had been activated with vitamin-D by a natural sunshine process. The answer further denies specifically each and every allegation contained in paragraph numbered 4 of the notice of opposition. By paragraph 10 of this answer the applicant alleges that it had used the mark “Sunfed” on flour sold to bakers, to be baked into bread for distribution to the public under the trade-mark “Sunfed,” and continues, “and applicant has carried out its said plan as a logical and natural expansion of its business and has manufactured bread, crackers, macaroni, spaghetti and other fiowr products from '■Sunfed'' flow" and sold the same under its trademark ‘Sunfed.’ ” (Italics ours.) Further answer is made as to matters which we will not find it necessary to allude to here. The issues received careful and repeated consideration by the tribunals of the Patent Office. The Examiner of Interferences found and held that the marks of both parties are used on wheat bread; that the notation “Sunshine Vitamin-D” performs a merely descriptive function, and is generally descriptive of the kind of bread manufactured by the opposer. The Examiner of Interferences was further of opinion that the General Baking Company was a licensee under the said Steenbock patent, and that other licensees under that patent might use the notation “Sunshine Vitamin-D” in description of bread made by them. Therefore, the Examiner of Interferences held that the opposer did not own the said mark within the meaning of the statutory language “owned and used by another” of the confusion-in-trade clause of section 5 of the Trademark act of February 20, 1905. He was further of the opinion that no confusion in trade would be likely by the concurrent use of the *976 notations “Sunshine Vitamin-D” and “Sunfed.” As to the contention of the opposer that applicant used its mark only on flour, and. that the trade-mark used inured only to bakers who might bake the-bread from such flour, the examiner remarked, “The examiner is. not persuaded that such use may not inure to the applicant.” The Commissioner of Patents, on appeal, affirmed the decision of the Examiner of Interferences. In doing so, the commissioner held that the Examiner of Interferences erred in finding that the use by General Baking Company of the notation “Sunshine Vitamin-D” had been merely descriptive of its goods, from which it had derived no-trade-mark ownership, and that because of this it could not successfully oppose the registration applied for. The commissioner was. of opinion that the validity of the opposer’s mark was not a proper subject of inquiry, and that the opposer was not required to establish a strictly trade-mark use; that all that was required of the opposer was the showing of such a use as would support a finding of probable damage from the registration. The commissioner was, however,, of the opinion that the marks of the respective parties were not. confusingly similar, although applied to identical goods. The commissioner had the following to say on this subject: * * sí overcome, by proof, the prima facie case of trade-mark use arising from the sworn application of the appellee. This sworn application was required by the law to be supported by labels which showed the trade-mark use by the appellee, and such labels appear in the record. *979 The appellant contends it has overcome such prima fade case by the testimony of the witness Frazier which has been hereinbefore quoted. This witness stated, in answer to the inquiry “Is Commander-Larabee Corporation engaged in the baking business?” “Not that I know of. Not commercial baking.” ■ It cannot be said that this is sufficient to overcome the prima fade case arising from the sworn application and the accompanying labels. While the witness Frazier was engaged in the baking business, with a large number of business connections, it does not follow that because he did not know of the appellee being engaged in the baking business, as a matter of fact it was not so engaged. A case in point is William, Wrigley, Jr. & Company v. Norris, 34 App. D. C. 138, 141, where it was said: * * * The sale of the spearmint gum by the Huff Company covered such a wide area that the testimony of a few witnesses that th'ey had never heard of such sales falls far short of overcoming' the case then made by the opposition. It follows that the decision of the Commissioner is right, and is therefore affirmed. We said in Montevallo Coal Mining Co. v. Little Gem Coal Co., 18 C. C. P. A. (Patents) 1195, 48 F. (2d) 411, that a pri/nia fade case was made from the applicant’s sworn application that its mark was used by it as required by the statute, and that when such prima fade case was rebutted, the burden was upon the applicant to establish by a preponderance of the evidence its exclusive use. The procedure in trade-mark opposition cases is quite fully developed by the Patent Office in The Rosenberg Co. v. Phillips-Jones Company, Inc., 1921 C. D. 81, 289 O. G. 411 . There the assistant commissioner, after citing several authorities, among which is William Wrigley, Jr. & Company v. Norris, supra, thus well stated the law: All this leads to the conclusion that the filing of a regular application for the registration of a trade-mark supported by an affidavit trader section % and accompanied by specimens of the mark as actually used should be taken as prima facie proof that the applicant was the owner of the mark on the date the application was filed, and that fact having been established the presumption must arise that th'e applicant continued to own the mark and to use it. It is argued by the appellee, and intimated by the Examiner of Interferences herein, that it is not essential that the owner of a trade-mark use the mark on goods produced or manufactured by itself, but that the mark may be properly used upon his goods in fact manufactured and produced by others. There is ample authority for this position. Menendez v. Holt, 128 U. S. 514, 520 ; Ralston Purina Co. v. Saniwax Paper Co. et al., 26 F. (2d) 941. But, without going into this point further, it is sufficient to say that the court *980 is of opinion tlie opposer has not overcome the friona facie case made by the applicant by its application and proofs submitted therewith. Many questions have been raised and discussed during this hearing which it is unnecessary to here pass upon. For instance, the right of the opposer to oppose was raised, and this question was decided aclvei’sely to the opposer by the Examiner of Interferences. The decision of the Examiner of Interferences was, however, reversed by the commissioner on this point, the commissioner holding that upon the record the opposer had shown such use of his mark as entitled him to oppose. In view of our conclusions, we find it unnecessary to pass upon this point. This leaves for decision, therefore, but one question, whether the mark of the appellee, proposed to be registered, is so confusingly similar to the notation as applied' to appellant’s bread wrappers as to be likely to cause confusion as to origin. The mark proposed to be registered by the appellee consists of the word “Sunfed.” The various marks, as used by the appellant, are fully described by the commissioner in the portion of the decision which we have hereinbefore quoted, and little need be added to what the commissioner has therein stated. A copy of the wrapper which is used by the appellant to enclose the individual loaf of bread is before us. The surface of the wrapper is covered with a number of varying designs and marks. Principal among these is a label about 2% by 4yz inches in size. The printed matter of this label is enclosed by a border simulating the curvilinear design usually found on the margin of bonds, paper money, and the like, with a simulation of a seal wafer in the lower right-hand corner. This wafer is printed in red, while the border is in green.' Across the red wafer are the words “Bond Bread” in white. Within the border is certain language in the form of a bond or obligation. The obligor is represented as the General Baking Company. The goods upon which the bond purports to be issued are described as “Bond Bread Trade Mark Beg. U. S. Pat. Off.,” following which is a warranty by the General Baking Company of the purity and quality of the bread. The principal part of the reading matter consists of the words “Bond Bread,” which are printed in letters approximately y2 inch in height, the remainder of the printed matter being in small sized type. Other labels upon the wrapper consist of a rectangular figure surrounded by a similar border, and containing the words, in large type, “Bond Bread,” with a notation of the registration of the trade-mark. Interspersed between these labels are .simulations of the sun, which consist of a number of red rays extending outwardly from the circumference of a circle. The central portion of this circular part contains the following language: “This bread brings you the extra SUNSHINE VITAMIN-D you need,” with additional wording *981 around the periphery, “Licensed by the Wisconsin Alumni Research Foundation under Steenbock Pat. No. 1,680,818.” The background of the center of this design is yellow. There are also small alleged representations of the sun around the border, consisting of a yellow circular central portion with red rays radiating therefrom. It seems to us that the preponderating feature in these labels is the words “Bond Bread,” and that the notation that “This bread brings you the extra SUNSHINE YITAMIN-D you need” is merely incidental to the words “Bond Bread.” The use is not so much a trade-mark use as it is that of an advertisement or statement of the quality of the product. Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U. S. 537, 546 . We are of opinion that the purchaser would not be likely to become confused when desiring to purchase Bond Bread by the appearance of other bread which bore the label “Sunfed.” Millions of dollars have been spent by the opposer-appellant in advertising its label “Bond Bread.” Having become convinced in its business that it would add to the quality of its product by irradiating the bread with sunlight and thus producing vitamin-D therein, this method was adopted and used, and has apparently become very successful. The mark which the appellee seeks to register is the mark which it has disclosed in the drawing accompanying its application, and consists of the word “Sunfed.” While it is true that the labels which are offered with the application contain, in addition to the word “Sunfed” an illustration of red rays radiating outward from this word, as we take it, the probable confusion in this case must rest upon the representation as sought by the appellee by the possible registration of the word “Sunfed.” In re Standard Underground Cable Co., 27 App. D. C. 320. We agree with the tribunals below that no confusion in trade would likely arise, and are therefore of the opinion that the opposition was properly dismissed and that the tribunals of the Patent Office did not err in permitting registration of appellee’s mark. The commissioner held that the appellant had not put in issue by his pleading the failure of the appellee to show a trade-mark use of its mark. This was upon the theory that the allegation of the notice of opposition was stated only on information and belief. On this point, the commissioner relied upon the authorities collated in 49 Corpus Juris, 148. In view of our conclusions, hereinbefore given, we do not find it necessary here to decide that question, and the point is reserved for future consideration, when its decision becomes necessary. Finally, it is alleged as error that the commissioner did not reopen the case to permit the appellant to offer further testimony as to appellee’s alleged failure to make a trade-mark use of the mark *982 in question. Notice of opposition was filed June 28, 1932. Testimony was taken on behalf of appellant on February 20,1933. Thereafter the matter was considered by the Examiner of Interferences and Commissioner of Patents, and repeatedly argued by the solicitors for the appellant. It was not until October 20, 1934, after the commissioner had exhaustively examined the issues for a second time, that appellant petitioned for a reopening of the matter to take further testimony. As is well said by the commissioner: “Opposer had full opportunity at the proper time to take such testimony as it deemed material to its case, including that of applicant’s officers which it now seems to think desirable. There must be an end to litigation, even in the Patent Office.” The allowance of this reopening was a matter within the discretion of the commissioner. We find no abuse of this discretion in his refusal of the application. The decision of the Commissioner of Patents is affirmed. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/6815424. Public record. Not legal advice.