Planters Nut & Chocolate Company v. Crown Nut Company, Inc.

KIRKPATRICK, Judge

(dissenting).

I think that the court’s decision in this case goes beyond the boundaries of the issue before it and of its function in respect thereto.

If the Lanham Act read “No trademark shall be refused registration unless its use by the applicant would be likely to cause confusion or mistake or to deceive purchasers,” or something of that sort, I could agree with the majority that “The only issue is likelihood of confusion, mistake or deception under section 2(d) of the Lanham Act,” but what the Act says is that no trademark shall be refused registration “unless it * * * so resembles a mark registered in the Patent Office * * * as to be likely * * * to cause confusion” etc. I see no justification for writing the requirement of resemblance between the marks out of the statute.

The likelihood of confusion which, under the statute, will defeat an application to register a mark must be a likelihood arising from its resemblance to an already registered one. If there is no resemblance between the two, and the mark is not otherwise disqualified, the right to register it is absolute, and it is perfectly immaterial that the opposer, by means of his advertising, has created a situation where use of the applicant’s mark would be likely to cause confusion or would impair the value of his *928 (the opposer’s) mark or the good will created by his advertising. Such considerations are proper where an issue of unfair competition is involved, but the issue here is the extent of a clearly defined statutory right — -namely, the right to register a trademark. No amount of advertising can stretch an opposer’s rights to a point where he can prevent the registration by others of marks which do not resemble his. 1

The two marks under consideration in this case simply do not resemble or come close to resembling one another, and no one could possibly mistake one for the other. The human being suggested by the opposer’s mark is a dude — - a spindly-legged creature, top hatted, spatted and monoeled, carrying a cane; that suggested by the applicant’s, a rather coarse-looking monarch, crowned, robed in ermine and carrying a mace. 2

The majority picks out a number of particulars in which it says that the marks are similar 3 but does not appear to be quite willing to say that taken as wholes they resemble one another. Except for the purely abstract concept of humanizing a vegetable product, every point in the majority’s catalog of similarities would be met completely by two drawings, one of Abraham Lincoln in frock coat and stovepipe hat, holding the Emancipation Proclamation in one hand and the other of Sitting Bull, with feather headdress, wielding a tomahawk. One would be hard put to it to find a resemblance there.

There being no physical resemblance between the marks, any finding that they resemble one another would have to be based upon the only thing which they have in common — namely, the idea of humanizing the product of the parties, in this case a peanut.

I cannot believe that this is what Congress intended when it spoke of one mark resembling another — certainly, at least, where the marks are representations of physical things. This is not an instance in which the competing trademarks are ordinary English words, in which case the similarity of the ideas embodied may be a consideration. Words frequently convey abstract ideas, and, since abstractions cannot be compared by eye and ear, resort to the meaning is sometimes helpful. Here the marks are pictures — line drawings — and all that is necessary is to look at them and, inasmuch as they are wholly unlike, neither the Patent Office nor the court need, or can, go further.

It seems to me that the majority is proceeding upon the assumption that it is the duty of the court in a trademark registration case to protect the value of an opposer’s extensively and expensively advertised trademark and good will rather than an applicant’s right under a plain statutory provision to register his mark. The majority goes to considerable length to stress the point that the value of the opposer’s trademark, built up by advertising expenditures, would be destroyed by use and registration of the applicant’s mark. To reach its conclusion, the majority must have based it upon a resemblance in the abstract idea stressed in the opposer’s advertising rather than in the competing marks. This, I think, is not in accord with the intent of the Trademark Law.

. In re Shakespeare Co., 289 F.2d 506, 508 , 48 C.C.P.A. 969 , the court, referring to its decision in In re Deister Concentrator Company, 289 F.2d 496 , 48 C.C.P.A. 952 , pointed out “the irrelevancy of attempts by advertising to create exclusive trademark rights in that which cannot be monopolized under the law.”

. The applicant well describes the two as a “tall and suave sophisticate” and a “stunted, midget-like gleeful king.”

. They are (with one exception to be considered later) as follows: Each

1. is a little man, based upon an unshelled peanut,

2. in a standing position,

3. with something on his head,

4. with human features on the shell of the peanut (although the features are as different as it is possible to make them),

5. holding something in one hand, the other being empty.