Air Products, Inc. v. Marquette Manufacturing Co., Inc.

RICH, Judge

(dissenting).

Opposer is the owner and undisputed prior user, by at least three years of the registered trademark “Redi-Arc” for “welding machines.”

Appellant sells four types of oxy-acetylene “cutting and welding outfits” under the trademark “REDI-SET.” These outfits include, inter alia, oxygen and acetylene regulators, a welding torch or torch handle with mixer, welding tips, goggles, hose, and instruction, information, and repair parts books.

Opposer manufactures and sells both “arc and gas welding equipment including welding machines, welding and cutting outfits, electrodes and welding supplies.” Opposer has sold its gas welding and cutting outfits under the trademarks “Aero-Jet,” “Star-Jet” and “Super-Jet.” Clifford M. Akins, vice president and director of opposer, stated by affidavit that the trademark “Redi-Arc” has been used on “are welding machines and torches” and that the mark “Redi-Fast” is being used by his company for battery chargers. The Notice of Opposition also asserts a possible future use by opposer of “ ‘RediJet’, as a trademark on welding and cutting outfits, as it expands its line of this type of welding equipment.”

In answering opposer’s interrogatories, appellant admitted that some welding operations can be satisfactorily performed through the use of either arc welding equipment or gas welding equipment. While not admitting that it is common in the trade for electrical welding machines and gas torches and welding and cutting outfits to be marketed through the same or partially the same channels, appellant did note that a “publication of the National Welding Supply Association * * * [discloses that] * * * 393 of 408 distributors [over 96 %] of welding equipment who are members of the association handle electric and gas welding equipment.”

The sole issue is whether appellant’s “REDI-SET,” as a whole, so resembles opposer’s registered mark “Redi-Arc” as to be likely, when applied to appellant’s goods, to cause confusion or mistake or to deceive purchasers.

In its decision sustaining the instant opposition, the board said:

“The term ‘REDI’ although suggesting that the products to which it is applied are available for instant use is not without trademark significance. Considering, therefore, that the marks ‘REDI-SET’ and ‘REDIARC’ are both composed of the term ‘REDI’ followed by the merely descriptive word ‘SET’ and ‘ARC’, it is concluded that the similarities between these marks are such that confusion, mistake or deception of purchasers is reasonably likely to occur.”

Considering the undisputed prior use of “Redi-Arc” by opposer, opposer’s manufacture and sale of both electric arc welders and gas welding outfits and the similar practices of others in the trade, I have no doubt that at least some people already familiar with the “Redi-Arc” line, upon seeing gas welding outfits for sale under the “REDI-SET” mark, are likely to conclude that there is a common source. They do not have to know what the source is. It is enough that they imagine it is the same source.

It is common for concerns to have a family of products with similar marks on them. Obviously the suffix “Arc” could not be used on a gas welding outfit and it *352 would seem normal to use the prefix “Redi-” with an appropriate suffix such as “Set.” The similarities between the two marks, considered as a whole, are too obvious for discussion. The majority opinion concedes similarity in appearance, that both are hyphenated, and both have identical prefixes and three-letter suffixes. The differences are not such as to make confusion unlikely. Neither are the differences in the goods. I cannot understand how it can be said that “the only similarity of the marks is found in a common prefix.”

Appellant strenuously argues that “Redi-” is descriptive and that “Arc” and “Set” are too, hence that opposer’s entire mark is descriptive, weak, and entitled to little protection. Not only are these arguments inconsistent with appellant’s strenuous efforts to register “REDISET,” but clearly “Redi-” is not descriptive, merely suggestive. “Redi-Arc,” being registered on the Principle Register, is presumably a good trademark, not descriptive, and it sufficiently resembles “REDI-SET,” in my judgment, to prevent registration of the latter on such closely similar goods under the.conditions prevailing in this trade.

As to the third-party registrations, in the Shoe Corporation case, cited by the majority, the word “Lazy” was discounted as an origin indicator in marks for shoes in view of its incorporation as the first word in five other registrations of marks for shoes. Of the 15 third-party registrations in footnote 2 of the majority opinion there is but one (524,179) remotely related to this case. It is for welding rods and is not a hyphenated mark. The others truly are for “various goods” ranging from corn poppers and frying griddles to vacuum cleaners and oil burners. I think that notwithstanding such uses — even assuming the marks are in use so as to condition the public mind, an assumption supported by no proof whatever — “REDI-” plus a three-letter suffix may have very great origin-indicating ability and significance in the welding field. I think citation to a dictionary showing that “ready” is a word of the English language and stating what it means would have more relevance here than the third-party registrations.

It seems to me apropos to quote here a paragraph from a very recent board opinion, Union Carbide Corp. v. Midwest Mower Corp., 132 USPQ 689 (1962), involving another “ready” mark, to wit, “EVEREADY.” The applicant, seeking to register “EVER-READY,” put over 100 third-party registrations into the record. Applying views previously expressed by this court, the board said (132 USPQ at 691):

“It has been argued that ‘EVERREADY’ is a weak mark. The term ‘EVEREADY’ or ‘EVER-READY’ does have a definite suggestive meaning and the record discloses innumerable registrations thereof for a wide variety of goods. If a trademark, however weak, is to retain any validity, its owner must be protected where the circumstances are such that a substantial likelihood of confusion would result by the use of identical marks. See: King-Kup Candies, Inc. v. King Candy Company, [ 288 F.2d 944 , 48 CCPA 948].” I would affirm.