# Food Specialty Co., Inc. v. Catz American Co., Inc.

> Court of Customs and Patent Appeals · November 25, 1970 · 433 F.2d 817

URL: https://www.frixlaw.com/law-library/cases/9456185

## Case

- **Full name:** FOOD SPECIALTY CO., Inc., Appellant, v. CATZ AMERICAN CO., Inc., Appellee
- **Court:** Court of Customs and Patent Appeals
- **Decided:** November 25, 1970
- **Citations:** 433 F.2d 817; 58 C.C.P.A. 710
- **Precedential status:** Published
- **Opinion:** Dissent by Baldwin
- **Judges:** Rich, Almond, Baldwin, Lane, McManus, Northern, Iowa
- **Cited by:** 3 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/9456185

## Opinion text

BALDWIN, Judge
(dissenting).
I agree that the sole issue here is the question of likelihood of confusion under § 2(d) of the Lanham Act. I agree also that the legal tests and the logical inquiries to be used in resolving such a question cannot change depending on the type of proceeding in which the question arises. However, I think the majority opinion is clearly in error in holding that there is no significance in the fact that the proceeding before us is a cancellation proceeding.
The language used in the Myers opinion relied on by appellant is properly criticized by the majority. Nevertheless, I find the rationale behind that language to be correct. The difference between a cancellation proceeding and an opposition proceeding is significant. I feel that some consideration should be accorded this distinction, not in the legal standards to be applied — they are immutable — but in considering the evidence by which those standards are to be applied. In a cancellation proceeding we are dealing with the question of whether presently existing rights (those accruing from a federal registration) should be taken away. Appellee here stands to lose federal rights, significant rights, which loss may very well “prove destructive to the business” he has built around his trademark. 1 Whereas, in an opposition proceeding, the question involves a party’s right to a registration. At the very least, the burden of proof carried by one who would have rights cancelled should be greater than the burden of one who’s only purpose is to prevent a registration from issuing.
Assuming the existence of a greater burden of persuasion, I find that appellant did not satisfy that burden. Yet even aside from any additional burden arising from the fact that this is a cancellation proceeding, I think the board’s decision here was correct and should be affirmed. The word “Kitty” is not a strong trademark, evincive of a single definite source of goods. Conceding that it is no more than suggestive (in deference to the holding in the “Pretty Kitty” case), I still find that it is only suggestive of kittens or cats and not of any quality or action connected with such animals. Adding to the dominant term the connotation of a quality (e. g., “Pretty Kitty”) may not be sufficient to remove any likelihood of confusion. However, I submit that when appellee’s mark (Here, Kitty!), connoting a call to *820 the animal, is viewed with the inherent weakness of the dominant portion taken into consideration, the two marks are sufficiently different so as to preclude any likelihood that consumers would be led to believe that appellee’s cat food and appellant’s cat food came from the same source.
. The majority opinion notes that no evidence is before us that appellee presently has any business under its mark. Such remark is meaningless. Federal trademark rights, as well as common law rights, are based on actual trademark usage, and trademark use by its very nature connotes business usage. In an inter partes proceeding it has long been settled that the registration itself constitutes prima facie evidence of continuing trademark use. See Gillette Co. v. Kempel, 254 F.2d 402 , 45 CCPA 920 (1958). Appellee here was under no obligation to prove trademark use and its use of that trademark in an established business should not be questioned.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9456185. Public record. Not legal advice.