finding differences between MARQUES DEL MERITO and MERITO for the non-identical goods wine and rum were “sufficient to raise a doubt as to the likelihood of confusion, mistake or deception of purchasers arising from the common use of the word MERITO”
How later courts described this case
- finding differences between MARQUES DEL MERITO and MERITO for the non-identical goods wine and rum were “sufficient to raise a doubt as to the likelihood of confusion, mistake or deception of purchasers arising from the common use of the word MERITO”
- “The refusal of registration * * * does not serve to protect the public from confusion because refusal to register has almost no effect on trademark use, which use always precedes application to register, continues during the prosecution of the application, and usually goes on after registration is finally refused, unless something other than that refusal intervenes to stop such use.” [Emphasis in the original.]
- “statements made over the signature of counsel are not evidence of the facts averred”
Written by the judges who cited it.
The opinion
WORLEY, Chief Judge
(dissenting).
In denying appellant’s application for registration of “MERITO” the examiner stated:
“Section 2(d) of the 1946 act specifically precludes the registration of a mark which so resembles a mark registered in this Office by another, as to be likely, when applied to the goods, to cause confusion or mistake or to deceive purchasers. It is submitted that such likelihood exists in this case. Applicant’s mark ‘Mérito’ so resembles the registered mark ‘Marqués Del Mérito’ that the contemporaneous use of said mark upon closely related goods (see Ex parte American Wine Co., 90 USPQ 14 and 15; Fruit Industries Ltd. v. Continental Distilling Corp., 25 USPQ 177 , and; Dubonnet Wine Corp. v. Ben-Burk Inc. [ 121 F.2d 508 , 28 CCPA 1298] 50 USPQ 76 ) is likely to cause confusion, mistake or deception of purchasers. Further, it is of interest to note that the registrant-assignee apparently recognized the likelihood of consumer confusion in certain areas since the assignment specifically bars the instant applicant from exporting to or offering for sale its ‘Mérito’ rum in said areas.” [Emphasis supplied.]
In affirming, the board added:
“Although the applicant may possess rights as against registrant to use ‘MERITO’ for rum under the terms of the agreements between them, it does not necessarily follow therefrom that applicant is entitled to register said mark for such goods. See: In re Avedis Zildjian Co., 120 USPQ 493 (TT&A Bd., 1959). Section 2(d) of the Statute prohibits the registration of a mark which so resembles a previously registered mark, as to be likely, when applied to the goods, to cause confusion, mistake or deception of purchasers. [Emphasis supplied.]
“It seems clear that the resemblances .between ‘MERITO’ and ‘MARQUES DEL MERITO’ are such that as applied respectively to rum and wine, confusion or mistake of purchasers is quite likely to occur.”
I am unable to find any error in the above interpretation of the law or its *954 application to the facts here and would affirm.
While I agree with the majority that agreements between parties are relevant and entitled to consideration by the courts, 1 my objection to the original majority opinion stemmed from the extraordinary power it seemed to grant individuals to decide for themselves whether confusion of the public would or would not be likely. That responsibility finally rests with the courts and there is nothing in the Lanham Act or any judicial decision which would divest the courts of that obligation. 2
. See In re Fleet-Wing Corporation, 188 F.2d 476 , 38 CCPA 1039.
. See Skookum Packers Ass’n v. Pacific Northwest Canning Co., 45 F.2d 912 , 18 CCPA 792 (1930), In re Laskin Brothers, Inc., 146 F.2d 308 , 32 CCPA 820 (1944), and Schering & Glatz, Inc. v. Sharpe & Dohme, Inc., 146 F.2d 1019 , 32 CCPA 827 (1944).