"Where the competing marks are identical or are closely similar, the equitable principles defined by section 19 have been held not to be applicable inasmuch as the public interest is the dominant consideration."
How later courts described this case
- "Where the competing marks are identical or are closely similar, the equitable principles defined by section 19 have been held not to be applicable inasmuch as the public interest is the dominant consideration."
- equitable defenses are not applicable where the marks are closely similar, since protection of the public from confusion “is the dominant consideration”
Written by the judges who cited it.
The opinion
LANE, Judge (concurring).
I agree that there is no likelihood of confusion between “Green Jade” and “Jade East,” but I do not agree that appellant-opposer should be estopped by its consent to a judgment permitting use by appellee of the mark sought to be registered. Such consent and the judgment based thereon have nothing whatever, either in logic or practicality, to do with the question of exclusive rights in appel-lee which are obtained prima facie by a Federal registration. In deciding the estoppel question, which is wholly unnecessary to the disposition of this appeal, the majority opinion reaches a conclusion which will tend to discourage settlements and tend to encourage litigation in situations where the parties, but for this court’s decision, could agree to peaceful co-existence. In such situations the defendants might never apply for Federal registrations, and hence the issues involved in registering would never have to be fought out.
An estoppel holding gives conclusive weight to whatever evidentiary value is inherent in appellant’s consent to the District Court judgment. I would affirm solely on the ground of absence of likelihood of confusion.