Toro Co. v. Hardigg Industries, Inc.

MILLER, Judge,

concurring.

I agree with the result reached by the majority, but the decision should be based on collateral estoppel 1 rather than on res judicata. As I see it, this appeal involves a different cause than did the first appeal, because the description of goods in Hardigg’s application II is not the same as the description of goods in application I. The majority sees it differently.

In Hardigg’s application I, the goods were described as “plastic pads for absorbing and otherwise dissipating shock.” In its application II, the description is narrower— “plastic cushioning pads for bumpers and packaging applications.” Use of the goods for “bumpers” is included within the generic use of the goods “for absorbing and otherwise dissipating shocks.” The majority says that nothing in application II limits *792 use of Hardigg’s mark” in connection with sales of its pads for use on bumpers or for use in packaging applications.” By the same token, it could be said that nothing in application I limited Hardigg’s mark in connection with sales of its pads for use, in absorbing and otherwise dissipating shocks. That doesn’t render the descriptions the same. Where the majority errs is in failing to recognize that “plastic cushioning pads” in application II is narrower than “plastic pads” in application 1 2 and in ignoring the difference in stated uses of the goods between applications I and II. 3 It is true, as the majority says, that “bumpers” (application II) are shock absorbers and are encompassed by “plastic pads for absorbing and otherwise dissipating shocks” (application I); but other goods so “encompassed,” such as shoulder padding material in hunting coats, would not be covered by the narrower description in application II.

Appellants submitted a dictionary definition of “bumper” as “a device or attachment (as on a vehicle) for absorbing shock . .” Appellee has not disputed that a bumper is a shock absorbing device. Although the board did not make a finding on the point, this court can consider arguments presented both before the board and on appeal. See Snitzer v. Etzel, 465 F.2d 899, 903 , 59 CCPA 1242, 1246 (1972); Myers v. Feigelman, 455 F.2d 596, 604 , 59 CCPA 834, 844 (1972).

The first board opinion 4 found that “op-poser and applicant are both engaged in the sale under their respective marks of shock absorbing devices” and held that “contemporaneous use of these marks for the specified goods would be likely to cause confusion or mistake or to deceive.” We affirmed. 5 Thus, the issue of likelihood of confusion has been litigated between the parties and determined, in part, on the basis of a description of goods that included the description of goods before us on this appeal. The new description does not remove the “overlap” problem (see majority opinion note 9), because “bumpers” include appellant’s replacement “shock absorbing devices.” Therefore, collateral estoppel applies to preclude relitigation by appellee on this issue.

Although in this appeal the board based its decision regarding description of goods on the inapplicability of the doctrine of res judicata and applied collateral estoppel only with respect to priority of use and similarity of the marks, the decision of this court on the description-of-goods issue can be properly based on collateral estoppel. See The Seven-Up Co. v. Bubble Up Corp., 312 F.2d 472 , 50 CCPA 1012 (1963). This court’s function under 15 USC 1071 is to review decisions of the board — not merely its reasoning, and it is not limited to the specific legal theories advanced by the board. Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221 , 188 USPQ 485 (Cust. & Pat.App. 1976).

Appellant properly raised the defense of collateral estoppel and argued it both before the board and this court. The record supports a holding that appellee is collaterally estopped from relitigating the issue of likelihood of confusion, and I would reverse the decision of the board and remand accordingly. '

. I use the term in light of this court’s discussion in Midland Cooperatives, Inc. v. Midland Int’l Corp., 421 F.2d 754, 760 , 57 CCPA 932, 939 (1970).

. The majority says that “plastic cushioning pads” are not more narrow than the “corresponding” words, “plastic pads for absorbing and otherwise dissipating shocks,” But this misstates the “corresponding” words in application II, which are “plastic cushioning pads for bumpers and packaging applications.”

. See Commerce Drug Co. v. Kirkman Laboratories, Inc., 461 F.2d 833, 835 , 59 CCPA 1085, 1089 (1972), for an example of where this court has considered recitations of intended uses of goods described in trademark applications to be relevant in determining likelihood of confusion. The TTAB has also considered such uses in reviewing trademark applications. Mac-Fab Mfg., Inc. v. Mac-Fab Products, Inc., 179 USPQ 568 (1973); Rohm & Haas Co. v. Rohm & Hass G.m.B.H., 126 USPQ 197 (1960).

. 173 USPQ 813 (1972).

. Decision (only) published in 180 USPQ 403 (1974).