Petition for Writ of Certiorari — Fort Howard Paper Co. v. Kimberly-Clark Corp.

_ SUPREME COURT. U. & | ve and

eae : ‘ JUN 3

IN THE . JOHN F, DAVIS, cL

Supreme Court of the United States

October Term, 1968

FORT HOWARD PAPER COMPANY, a Corporation,

| See. ’ Opposer-Petitioner,

: vs.

KIMBERLY. CLARK CORPORATION, a Corpenntion

A pplicant-Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

: AND PATENT APPEALS

a’

ee ELLSWORTH M. JENNISON,

¢ Suite 1050, &

818-18th. Street, N. W., te

. Washington,. D. C. 20006,

Counsel acd Petitioner.

ArtHur L. Morsett, —

152 W. Wisconsin Avenue,

Milwaukee, Wisconsin 53203,

Of Counsel.

.

F ° BATAVIA TIMES, LAW PRINTERS, ‘

BATAVIA, N. Y.

| PAGE

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Jurisdiction .......... by tiandiande PPR Ne ar ER in 1

Quettlons Presented 5 ...555:sscqscvettevesscecess: 8

Statement of this Case ............ Riidietccnaiineaas 3

Reasons for Granting the Petition for Writ of Cer-

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Appendix ‘‘A’’—Opinion of the United States Court of —

Customs and Patent Appeals .................44-. 8

Appendix ‘‘B’’—Mandate of the United Statés Court ~~

_ of Customs and Patent Appeals .................. 13

Appendix ‘‘C’"—Opinion of the Trademark Trial _

_ Appeal Board of the United States Patent Office : 15

Appendix ‘‘D’’—Excerpts of Trademark Act, of 1946, :

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| Aurmaims CITED.

The Coca-Cola Company vs: Clay, 139 USPQ 308; 324

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The Magnavox Company vs. Multivox Corporation of |

America, 144 USPQ 501; 341 F. 24.139 ...4....... 6

United Drug vs. Restanns, 248 U. OP eee 4

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Supreme ourt of the United States ;

October Term, 1968 |

TN cde

FORT HOWARD PAPER: COMPANY, a corporation,

Opposer-Petitioner,

vs.

‘ KIMBERLY- CLARK CORPORATION, a . corporation,

Applioant- Respondent.

? PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

Petitioner prays that a writ of certiorari issue to review

the decision of the United States Court of Customs and

Patent Appeals entered in the above entitled Trade Mark

Opposition on March 14, 1968.

Opinions Below .-

The decision of the Trademark Trial and Appeal Board

." of the United States Patent Office is reported at 148 USPQ

607, and is reprinted in the. Appendix ‘‘C’’ hereto annexed

p. 15. The opinion of the United States Court of Customs

and Patent Appeals is reported at 157 USPQ 55, and is re-

' printed in the —_— ‘A’ hereto annexed p. 8.

_ Jurisdiction

The jurisdiction of this Court is invoked under 28-USC

Sec. 1256.

> i: mes - 2.

OF LO ES EA OIG ROI AIRY TEE RG iy MIL I CO ce 8 OM pe nig .

2

- Questions Presented

= ‘4 ‘Do the Federal ‘Trademark Statutes permit a party

to make use of an application for federal trademark reg- |

istration to reserve rights to a proposed trademark which —

is, in fact, not in legitimate commercial use at the time of

filing the trademark application? This. presents an im-

portant question of trademark law under the Lanham

Act which has never been decided by this Court.

2. Did the United States Court of Customs and Patent

Appeals approve a practice which is directly contrary to

the Federal Trademark Statutes when it held that a token

shipment, consisting of a few boxes of sanitary paper items, —

sent to a drug store by the legal department of Kimberly-

Clark Corporation, which was admittedly not followed by

- any commercial sales for eighteen. months, was a proper

‘‘use in commerce’”’ on which to base the filing of an appli-

' eation for United States trademark registration, when the

mark was not in commercial use at the time the affidavit.

_ attached to the trademark application was executed, which

affidavit. incorrectly stated that the ‘mark was “in use’”

on the date of filing?

3. Did the United States Court of Customs and Patent

Appeals decide a federal question contrary to the intent of

the Federal Trademark Statutes, as expressed. in the’ last

paragraph of Sec. 45, 15 USC 1127 (‘‘* * * to prevent

fraud and deception in such commerce by the use of * * *

colorable immitations of registrable marks’’) and when -

it held that, ‘‘Notwithstanding the apparent similarities .

between ‘So-Dri’ and ‘H1-Dri’ * * *” there was no likeli-

hood of confusion or mistake as to the source of goods sold

thereunder, the Court having previously concluded that

_ there was —w of goods’’? at

3

Statement of this Case

This is a trademark opposition case ‘which oftgtiated

‘in the United States Patent Office. Opposer-Petitioner, .

Fort Howard. Paper Company, brought the opposition

‘‘based on the admittedly long prior use as trademarks for

paper towels of ‘So-Dri’ * * *’? (Decision of CCPA, p. 1).

This use began in 1922, Opposer-Petitioner being the owner

of Trademark Registration No. 165,832, registered: March .

20, 1923, for ‘‘Sopr1’’, of Registration No. 651,196, register-

ed. September 3, 1957, for-‘‘Sopri’’, and of Registration

No. 651,198, registered. September 3, 1957, for ‘‘So-Dri’’. -

Applicant-Respondent, Kimberly-Clark Corporation, filed

an‘application to register ‘‘H1-Dri’’ as applied to absorb- }

ent paper tissue suitable for hygenic, cosmetic or clean- (,

ing purposes on January 15, 1963,-based upon an alleged ,

use in interstate commerce on December 27, 1962, consist- \

ing of a single shipment of $1.91 worth of goods toa drug

store in Illinois, which was admittedly not followed by any

legitimate commercial sale for eighteen months. When

the trademark application was executed on January 14,

1963, Applicant’s official swore to the truth of the state-

ment that the trademark ‘‘is now in use in such commerce’’.

The record shows that the trademark was not in com-:

‘mercial use in. commerce on January 14th, and that the

first commercial sale occurred some eighteen months later.

The United States Trademark Statutes, 15 USC 1051, See.

1, provide for registration by ‘‘the owner of a trademark

. used in commerce’? (emphasis ours) and requires.that appli-

cant, in his written. application, state ‘‘the date of appli-

eant’s first use of the’ mark in commerce”’ and also ‘‘that

the mark is in use in commerce’’ (emphasis ours) at the

tiie of filing the application. Even if the token shipment

bythe _ caparyne, which the Trademark Trial and

£.

Appeal Board stated in its decision ‘‘was deliberately

made for federal registration purposes’ is accepted as 2:

_ proper ‘‘use in commerce’’ under the Statute, there was

-admittedly no further use, following this $1.91 token ship-

ment, for eighteen months. Therefore, the trademark was

not ‘‘in use in commerce’’ at the time of executing the

. trademark application on January 14, 1963. Thus the

Court of Customs and Patent Appeals has. approved an.

exceedingly dangerous practice which is directly contrary

to both the intent and wording of the United States Trade-

mark Statutes. It is also in conflict with the dicta of this

Court in United Drug vs. Rectanus, 248 U. S. 90, which

states that the right to a particular mark grows out of its

use—not its mere adoption. This language is also directly

applicable to the 1946 Trademark Act.

The Court of Customs and Pafent Appeals recognized

‘‘the apparent similarities between ‘So-Dri’ in partic-

cular and ‘H1-Dri’’’ (decision p. 3) and held that there.

was ‘‘identity of goods’’ (decision p. 2), and that ‘‘ Appel-

lant’s opposition is based on the admittedly long prior

use* * *’’ (decision p. 1). With.these facts in mind any

holding that there. is no likelihood of confusion between

- “Hr-Dri’’? and ‘‘So-Dri’’ is directly. we to the

Federal Trademark Statutes.

Reasons for Granting the Petition for Writ of Certiorari

It is exceedingly important that the present Petitioner,

‘as well as the public in general, be protected against the

existence of ‘‘paper registrations’’ not based upon legiti- —

mate commercial use in commerce. By its decision in the .

present case, the Court of Customs and Patent Appeals

has placed its stamp of approval upon filing a trademark

application based upon a token shipment by the legal

5 : | -

department which was not followed by any legitimate acti-

vity for eighteen months. This leaves the door open for

parties to attempt to reserve trademark rights by way of

registrations not based on legitimate commercial usage.

This also leaves’ the doér ‘open for the owners of such

‘‘paper registrations’? to harass legitimate trademark

users who may later adopt trademarks based on legitimate

usage which are too close to said ‘‘paper registrations’’.

Such practice has in the past existed in certain Latin

American and South American céuntries, and legitimate

United States. manufacturers have been faced with prob-

lems when trying to enter such countries because of such -

registrations. .The decision of the Court of Customs and

Patent Appeals could also result in a highly objectionable —

cluttering of the trademark records with ‘‘naper registra-

tions’’ not based on legitimate commercial usage, taken out

either for the purpose of reserving a word for possible

future use or for some ulterior purpose—in either event

contrary to the provisions of the Statutes. It is submitted

that this presents an important question of Federal Law

in interpretation of the Lanham Trademark Act, which has

not, been, but should be, settled by this Court.

It is. also submitted that the decision of the Court of

Customs and Patent Appeals holding that there is no likeli-

hood of confusion between “Hi-Dri” and “So-Drr’, both

used on identical, casually purchased, inexpensive prod-

_uets, is in conflict with the provisions of the Federal Trade-

mark Statutes. These statutes provide in See. 2(d), 15

U. S: C. 1052, for refusal of registration where the mark

“consists of or comprises a mark which so resembles a

mark registered in the Patent Office or a trade name pre-

viously used in the United States by another and not aban-

doned, as to be likely, when applied to the goods of ap-

6

plicant, to cause confusion, or to cause mistake, or to de-

ceive * * *”, and the purpose of the Trademark Statutes, as

expressed in the last paragraph of Sec. 45, 15 U. S. C. 1127,

is “to prevent’ fraud and deception in such commerce by

the use of * * * colorable imitations of registrable marks.”

Considering the fact that the Court of Customs and Patent

Appeals held that there was “identity of goods” (Decision,

‘p. 2), that “Appellant’s opposition is based on the ad-

mittedly long prior use * * *” (Decision, p. 1) and consider-

ing the Court’s recognition of “the apparent similarities be-

tween So-Dri in particular and H1-Dri”.(Decision, p. 3),

and considering the fact that petitioner has had a registra- _

tion since 1923, a finding that use by the newcomer of Hr-

Dat is likely to cause confusion or to cause mistake or to de--

ceive should naturally follow under any reasonable reading

of the Statutes. The decision of the Court of Customs and

Patent Appeals is also in direct conflict with other decisions

of the same Court involving two-syllable marks where the

last syllable is suggestive. In 1965 the Court of Customs

and Patent Appeals, in the case-of The Magnavox Company

vs. Multivox Corporation of America, 144 USPQ 501; 341

F. 2d 139, held that there was likelihood of confusion be-

- tween “Mutttvox” on electric organs and “Macnavox” on

radios, phonographs and television sets. This case in-

volved a substantial difference in goods, the goods were

expensive, and the common suffix “Vox” is at least sugges-

tive of a characteristic of the goods. It is, therefore, in-

conceivable that the same Court, three years later, could

hold “Hi-Dr” and “So-Dri” not likely to result in con-

fusion where they are both used on identical products of

an inexpensive nature, bought casually.

The present decision is also in conflict with the decision

of the Court of Customs and Patent Appeals in the case of

OT

Z ee

The Coca-Cola Company vs. Clay, 139 USPQ 308; 324 F. 2d

* 198, where the Court held that: there was a likelihood of con-

fusion between “Cup-O’-Cola” and “Coca-Cola”. The rea-

soning of the Court in the latter case was that “the semantic

differences which may exist * * * would we think be lost:

- on the average purchaser in the marketplace. Certainly .-

they would be outweighed by the phonetic and visual simil-

arities.” In this case the suffix “Cola” had a descriptive

connotation. If the reasoning of the Court in the above

two cases were applied to the present situation, where the

products are identical, inexpensive and bought casually,

there could be only one result, i.e. likelihood of confusion.

This Court should resolve the apparent conflict between

this decision and prior decisions of the Court of Customs

and Patent Appeals so that trademark users may have

proper and consistent guidance.

Conclusion

_ In view of the foregoing, a Writ of Certiorari* should

issue to review the judgment of the United States Court of

Customs and Patent Appeals in the above entitled ‘cause.

Respectfully submitted,

ELLSWORTH M. JENNISON,

Suite 1050,

818—18th Street, N. W.,

Washington, D.C. 20006,

Counsel for Petitioner.

ArtHur L. Morsety, ~

_ 152 W. Wisconsin Avenue;

- Milwaukee, Wisconsin 53903,

Of Counsel.

| : |

APPENDICES TO PETITION FOR WRIT

OF CERTIORARI

APPENDIX “A”

Opinion of the United States Court of Customs

and Patent Appeals

UNITED STATES COURT .OF CUSTOMS

AND PATENT APPEALS

Patent Appeal No. 7915.

ear Opposition No. 43,376.

FORT HOWARD PAPER CQMPANY,

. Appellant,

Vv.

KIMBERLY-CLARK CORPORATION,

, Appellee.

March 14, 1968

RICH, Judge.

This appeal is from a decision of the Patent Office Trade-

* mark Trial and Appeal Board, 148 USPQ 607, dismissing

appellant’s opposition to the registration by appellee of.

“Hi-Dri” on the Principal Register for “Absorbent Paper

Tissue Suitable for Hygienic, Cosmetic, or Cleaning Pur-

poses,” serial.No. 160,711, filed January 15, 1963, claimmg

first use December 27, 1962. :

“9

Appellant’s oppositon is based on the admittedly long

prior use as trademarks for paper towels of “So-Dri,”

principally relied on, its earlier-used-variant “Sodri,” and

“Shur-Dri.”” a |

_ Both parties took testimony, the witnesses for each side

being cross-examined by counsel for the other. _

The appeal presents two issues: (1) likelihood of cop-

fusion, ete., within the meaning of section 2(d) of the Lan- —

ham Act (15 USC 1052(d)) ;* (2) whether appellee made

bona fide commercial use of its mark so as to support right

to register.® | .

The essential facts shown by the testimony and exhibits

are adequately summarized in.the board’s published opin-

jon and we.see no need to repeat them. The highlights are

that opposer’s registered marks have been used extens?vely

on‘ paper towels designed and sold to automotive service

stations for cleaning windshields and the like. Applicant’s

goods include paper towels and there is, therefore, identity

of goods. ; f

A key factor in the board’s decision of no likelihood of

confusion is the descriptiveness of the term “dry” or “dri”

as applied to any kind of towel and the apparent common-

place use of that term as a syllable or part of trademarks

adopted and used by applicant-appellee and third -parties

1 Reg. No. 651,198, Sept. 3, 1957, for paper towels.

2 Reg. No. 165,832, Mar. 20, 1923, twice renewed, last renewal for paper

towels only, and No. 651,196, Sept. 3, 1957, for paper towels. .

3 Reg. No. 720,359, Aug. 22, 1961, for paper towels.

‘ 4 Appellant makes two issues out of this by separately stating them as

“confusing similarity’? of the marks and likelihood of confusion, mistake or:

deception. These are, however; inseparable aspects of a single issue, as we view

the matter.

' 8 There is no question but that the mark was used, under conditions herein-

after explained, and appellant disavows any reliance on a theory of abandon-

ment. wigs ae

10 Ax

for towels of both paper and cloth. The.record shows use

_by what is now a division of applicant, Kimberly-Clark,

since 1911, of “Driwell” on paper towels, Reg. No. 522,321,

except for the period 1924-1934 when “Drytex” was used

instead. In the. 1941-1964 period some 2,000,000 cases of

‘‘Driwell’’ towels were sold. Kimberly-Clark also has a o

registration of “Kaydry,” No. 774,552, for disposable towels _

which the record shows to be paper towels. There are, in

addition, 25 third-party registrations of record of marks

containing “dry” or “dri,” 11 of them for paper towels and

14 for cloth towels: The paper towel marks are in several |

instances the subject of recent or renewed registrations,

indicating a probability. of recent or present use. |

_ Notwithstanding the apparent similarities between “So-

Dri” in particular and “Hi-Dri,” the board concluded there

would be no likelihood of confusion on the following basis:

Opposer’s marks ‘‘So-Dri’’ and ‘‘Shur-Dri’’ and -

applicant’s mark ‘‘Hi-Dri’’ obviously were: adopted

to suggest that the paper towels sold thereunder

possess superior drying qualities. It likewise appears

‘from the record that it has been a common practice

for producers of paper towels and of such competitive

products as cloth towels to adopt as trademarks for

their products designations comprising the word

‘‘Dry’’ or ‘‘Dri’’, having a similar suggestive connota-

tion, such as “Dri-N-Shine”, “Dri-Kleen”, “Dry-

Mor’’, §‘Sparkle-Dri’’, ‘‘Easi-Dri’’, ‘‘Dryfast’’, and

‘‘Wipemdri’’. Under such circumstances, the scope

of protection afforded opposer’s marks must necessarily

be narrow and manifestly cannot extend to preclude the

registration by others of similar but otherwise dis-

. tinguishable notations or trademarks: for towels.

[Cases cited.] * * * The fact, as urged by opposer,

that its marks and that of applicant are hyphenated -

marks and-the syllable ‘‘Dri’’ appears therein as a

prefix instead of a suffix as in the third-party registra-

tions is of no particular significance * * *. According-

ly, although the designations ‘‘So-Dri’’, ‘‘Shur-Dri’’,

PRE Rey my LA ey See eee) Oe prin ae - . oo vere ARRON IETS

11

and ‘‘Hi-Dri’’ may have similar meanings, the differ-

ences between them in both sound and appearances are

sufficient. in view of the nature of the marks, to. pre-

clude a likelihood of confusion or. mistake as to the

source of the goods sold thereunder.

We see no clear error in that conclusion or in the reason-

ing by which it was reached.

Compare Fort Howard Paper Co. v. Gulf States Paper

Corp., 54 CCPA 1375,'376 F. 2d 904, 153 USPQ 646, where

_ opposition to saiiiaaiton' al ‘*E-Z Naps’? by the owner of -

‘¢HAnpinap’’ and ‘‘Hanprnaps’’ was dismissed, the goods

of both-parties being paper napkins. ,

On the second issue, it is opposer’s contention that there

was no bona fide use of ‘‘Hi-Dri’’ in commerce adequate

_ to sppport a registration. Briefly, the facts are as follows.

Kimberly-Clark’s legal department made careful arrange-

ments for the interstate shipment and. sale on December

12, 1962, from its plant in Neenah, Wisconsin, to a drug-

eve in Waukegan, Illinois, of six boxes each of facial

tissues, table napkizis, toilet tissues and paper towels, all

boxed or wrapped in coverings bearing the ‘‘ Hi-Dri’’ trade-

mark printed thereon. No further sales were made until

July 1964, a period of eighteen months.’ Then sales under

the mark were madé as follows: July, 40 cases of toilet tis-

sue and 260 cases of facial tissue; October, 700 cases of toi-

let tissue, 530 cases of facial tissue, and 357 cases of towels ;

November, 350 cases of toilet tissue and 50 cases of napkins.

The total value of 1964 sales under the mark was $15,013.60.

Appellant argues that the first sale was not ‘‘bona fide,’’

that the mark was not actually in use at the time the appli-

cation was filed, some 18 days later, ang that the 1964 sales

were obviously stimulated by the opposition.

The board characterized this issue as an ‘‘ex parte’’

matter but considered it anyway, ‘‘in the interest of re-

Ni ie | ve 2 DOO ALIEN RY RLE ION NEPALI 2 Ae.

~ eee

considered it, we will consider it.°

12 |

moving any cloud that may be placed on applicant ’s activi-

ties in regard to its use of ‘Hi-Dri’ * * *.’’ Since the board

The board held, in effect, that applicant has.complied —

with the law, and that although the initial sale was de- -

liberately made expressly for federal registration pur-

poses, this fact ‘‘is not damning per se’’ where the record

shows there was an intent to continue to use the mark,

and that such use was in fact continued. The board re-

lied on the following cases: Montgomery Ward € Co. v. |

Sears, Roebuck & Co., 18 CCPA 1386, 49 F. 2d 842, 9 USPQ

524; California Spray-Chemical Corp. v. Ansbacher Siegle

‘Corp., 55 USPQ 298 (Comm’r); Western Stove -Co. v.

Geo. D. Roper Corp., 80 USPQ 393 (S. D. Cal. 1949); and.

Maternally Yours, Inc. v. Your Maternity Shop, Inc., 110

USPQ 462 (2d Cir. 1956). .Appellant attempts, unsuccess-

. fully we think, to distinguish these cases. Appellee’s testi-

mony was that it normally takes it about three years after

adoption and first use of a new mark to take the necessary

steps leading to national distribution of a product under

it, during which time marketing and advertising tests and

preparation for production and sale are progressing. An

_ eighteen-month hiatus in sales, absent. any indication of

‘an intent not to proceed, does not seem to us unreasonable.

We think it appropriate that appellee should proceed with

caution to try out its right to registration of ‘‘Hi-Dri,’’ as

it is doing in this proceeding, before plunging into the

market with more extensive sales than it did. We agree

with the ‘board’s decision that appellee complied with the

law.

~€ We do not know why an opposer ‘should be precluded from raising this

reason for denying registration in an inter partes proceeding. See Roger &

Gallet v. Janmarie, Inc., 44 CCPA.787, 263 F. 2d 350, 120 USPQ 484, on the

delay of final disposition which may result from the characterization of rulings

as “ex parte.” Here both parties are arguing the question and neither ques-

tions our right to pass upon it. ; ’

13

| For the foregoing reasons, the decision dismissing the

opposition i is affirmed. : ee

AFFIRMED

WORLEY, C: J., did not participate.

APPENDIX “B”

Mandate of the United States Court of Customs

- and Patent Appeals

UNITED STATES COURT OF CUSTOMS

AND PATENT APPEALS

OctToBER Trrm, 1967

March 14, 1968

FORT HOWARD PAPER COMPANY,

“Appellant,

v.

KIMBERLY-CLARK CORPORATION,

Appellee.

Patent Appeal No. 7915.

| ae Subject Matter: Trademark for absorbent. paper tissue

suitable for hygienic, cosmetic or cleaning __e

4 Onpesition No. 43,376,

Said appeal having heretofore been ‘wees on to be

heard before the court and -due consideration having been

a had, it i is— ,

14 ;

- Orperep that the decision’ ‘of the Trademark Trial and

Appeal Board be, and.the same is hereby, affirmed. ;

I, Gzorce E. Hurcninson, Clerk of the United States

Court of Customs and Patent Appeals, do hereby certify

that the above judgment and the attached opinion are true

and correct copies of the judgment and opinion ‘of said

United States Court of Customs and Patent Appeals filed —

the 14th day of March, A. D. 1968, in the above-entitled

appeal, as the same remairfupon the. files and records of

said court. -- , e

WITNEss my hand and the seal of this court this 19th day

of April, A. D. 1968. ,

Bigned) GEORGE E. HUTCHINSON,

>» Clerk.

“oe

gi) te oo

| APPENDIX “C”

Opinion of the Trademark Trjal and Appeal Board

of the United States Patent Office

+

- Hearing: : | | VLH |

~ October 5, 1965 : ’ Paper No. 28 |

U. 8S. DEPARTMENT OF COMMERCE :

Patent OFFICE

‘Trademark Trial and Appeal Board _

FORT HOWARD PAPER COMPANY,

| ie ct, es 3

KIMBERLY-CLARK CORPORATION.

Opposition No. 43,376, to application Serial No. 160,711,

filed January 15, 1963.

Morsell & Morsell and Paul J. Schierl for Fort Howard .

_ Paper Company.

Paul J. Glaister and Florence E. Miller and Hume,

‘Groen, Clement & Hume for Kimberly-Clark Corporation.

, Before Waldstreicher, Lefkowitz, and Shryock, Members.

( 3 ' Opinion by Lefkowitz, Member:

ie ; An application has been filed by Kimberly-Clark Corpo-

‘ ration to register ‘‘Hi-Dri’’ as a trademark for absorbent.

-paper tissue suitable for hygienic, cosmetic or cleaning

purposes. Use of the mark since December 27, 1962 has

been alleged. ©

0 ed OO

16

Registration has been opposed by Fort Howard Paper

Company, which alleges that applicant’s mark ‘‘Hi-Drt’’

so resembles ‘‘So-Dri’’, “ ‘‘Soprr’’, and ‘‘SHur-Dri’’®

previously used and registered by opposer for absorbent

paper tissue suitable for hygienic or cleaning purposes and,

in particular, paper towels, as to be likely, when applied to

applicant’ s goods to cause confusion or mistake or to de-

ceive.

Both parties have taken eieaiia

According to its record, opposer is engaged in the manu-

facture and sale of a general line of sanitary paper prod-

ucts, which include toilet tissue, paper towels, paper nap-

kins, and printed specialties, the bulk of which is designed

for and directed to industrial and commercial use. . Op-

poser’ has sold paper towels designed and merchandised

especially for use in service stations to wipe and clean

windshields and other portions of automobiles under the

marks ‘‘So-Dri’’ and ‘‘Suur-Dri’’ since 1956 or the spring

of 1957 and 1960, respectively. Prior to. 1956 or there-

about, opposer ‘used the trademark ‘‘Sopri’’ to identify a

general purpose hand towel sold with or without a dispen-

ser for use in washrooms in factories, restaurants, schools,

and like commercial and institutional establishments. Op-

poser’s windshield wiper towels are marketed throughout

the continental United States and possibly also in Hawaii

through wholesale paper merchants, janitorial supply

houses, wholesale automobile supply merchants, and insti-

tutional wholesalers who ordinarily also handle paper

products of other producers. The marks. ‘‘So-Dri’’ and

‘‘Suur-Dri’’ have been applied to labels and wrappers

(1) Reg. No. 651,198, issued Sept. 3, 1957.

(2) Reg. No. 165,832, issued Mar. 20, 1923, and twice ‘renewed, and Reg.

No. 651,196, issued Sept. 3, 1957.

: << ae Reg. No. 720,359, issued Aug. 22, 1961.

17

for the goods as well as to the containers therefor. Sales of

‘‘So-Dri’’ towels since 1960 have been in excess of one

hundred thousand dollars a year. ‘‘So-Dr1’’ towels have

been promoted by advertisements in the trade publications,

‘‘Jobber Topics’, ‘‘Super Service Station’’, and ‘‘Gaso-

line Retailer’, and through the distribution of posters,

catalog sheets, flyers, and mailing pieces. Opposer has,

since the introduction of windshield towels under the mark

‘‘So-Dri’’, expended approximately a hundred thousand

dollars for magazine advertising as well as additional thou-

sands of dollars for preparing and distributing promo-

tional material directed to this product. |

Applicant, like opposer, is a large manufacturer of paper

products, including a‘variety of absorbent paper. products

such as towels, tissue, toilet paper, and table napkins. The

first shipment of products. in the United States under the

mark “H1-Drr” was made on December 27, 1962 when six

boxes of “H1-Dav” facial tissué,:six boxes of “H1-Drr” table

napkins, six’ rolls of “H1-Drr” toilet tissue, and six rolls of

“H1-Dri” towels were shipped in interstate commerce to.

Osco Drug of Waukegan, Illinois. The labels and cartons’

bore the trademark “Hi-Dri”. The total shipment amounted ;

to one dollar and ninety-one cents. The subject applica-

tion was filed on January 15, 1963. Except possibly for

some sales in Canada in connection with the registration

of the mark in that: country, no further shipments of goods

under the mark “H1-Drr” were made by applicant until July

1964.“ The lapse of time between shipments, according

(4) Applicant’s witness has testified to alleged extensive use of the mark

“H1-Drr’ on paper products by its subsidiary in England and other foreign

countries. But, apart from the fact that such asserted use does net antedate

opposer’s use of its pleaded marks, it is well established that use of a mark in

commerce outside the jurisdiction of the Congress cannot establish or create

rights in a trademark which a party can properly assert in a proceeding of -

the charatter here involved. ‘

18

to. applicant’s testimony, was the normal lapse of time be-

tween the date on which a decision is reached to introduce

a new product and the date when such product is placed in

-national distribution. In the interval, applicant usually

-eonducts market tests, advertising tests, evaluations of the

product, determines the best advertising format, and other-

wise takes measures which it has found necessary prior to

the distribution of a product nationally. Applicant’s sales

of “H1-Drr” products amounted to a sum slightly in excess

of one thousand seven hundred dollars in July, 1964, a sum

in excess of ten thousand dollars in October, 1964, and

about thirty-one hundred dollars in November, 1964. Ap-

‘plicant’s line of “H1-Dri” paper products are sold eXelu-

sively through its industrial or commercial division |

throughout most of the United States directly to multiple

outlet users such as hotels, motels, airlines, factories, and

the like and through merchant wholesalers who handle a -

general line of paper goods, janitorial supply merchant

wholesalers, and similar wholesalers for resale to jobbers

‘who. in turn’sell to institutional and commercial users. Ad-

mittedly, ‘‘Hi-Dri’’ paper. products would be sold to filling

stations either directly if they are a part of a large chain or

through jobbers.

_ Applicant’s record also contains testimony and docu-

mentary evidence as to its use and registration of the trade-

mark “Kaypry” for paper products and use, over the years,

by one of its subsidiaries of the marks “Drytex” and

“DriweELu” for simliar goods. Considering, the substantial

and obvious differences between these marks and “H1-Dri”,

the mark for which registration is sought, the use and regis-

tration of these marks is immaterial and irrelevant to the

issue joined by the parties in this proceeding except to the

extent that they show that applicant and its subsidiary have

used other marks for paper goods comprising the term

nee i : 2 . ' .

. 19 -

“Dry” and its equivalent “Dri”. Apropos thereto, ap-

plicant has made-of record under the applicable rule copies

of twenty-five additional registrations issued to third per-

sons for marks comprising the term “Dry” or “Dri” for

paper and cloth towels. |

The primary question for determination herein is whether

or not a registration to applicant of “H1-Drr” for its paper

_ products is likely to cause confusion in trade in view of op-

poser’s ownership of and prior rights in the registered

trademarks “So-Drr’ or “Sopri” and “Sxur-Dri”. The

fact that these marks are used by the parties in conjunc-

tion with or in close proximity to their corporate names is >

not germane to the resolution of this question. See: Fran-

ces Denney v. Elizabeth Arden Sales Corporation, 120 US

. PQ 480 (CCPA, 1959) and Sealy, Incorporated v. Simmons ©

Company, 121 USPQ 456 (CCPA, 1959).

Opposer has attempted to establish the likelihood of such

confusion by introducing in evidence testimony by two op-

erators of service stations in Green Bay, Wisconsin where

opposer is located to the effect that they utilize “So-Drr”

windshield towels in their businesses and that if they were

to encounter “Hi-Drr” towels, they would be likely to as- |

sume that they originate with the same producer. This

testimony amounts to nothing more than an expression of

opinion by the witnesses. And it is well settled that such

testimony is entitled to little, if any; probative value in de-

termining the question of likelihood of confusion. As stated ©

by the court in The Quaker Oats Company v. St. Joe Pro-

- cessing Company, Inc., 109 USPQ 390 (CCPA, 1956) at

page 391: ;

~ (5) Salem Commodities, Incorporated v. The Miami Margarine Company,

114 USPQ 124 (CCPA, 1957); American Cyanamid Company, v. Synthetic

Nitrogen_ Products Corp., 13 USPO 421 (CCPA, 1932) ; and Maize Industries

v. The aony Trust, 128 USPQ 19 (TT&A Bd., 1960).

_ 20

“a such testimony were adopted without considering

other aspects of the case, the effect would be to sub-

stitute the opinions of the witnesses for the ultimate

decision to be reached by the court and would there-

, fore be improper.’’ —

See also: Fort Howard Paper Company v. Gulf States

Paper Corporation, 146 USPQ 593 (TT&A Bd., 1965).

Turning now to the question that we must determine,

the goods of both parties comprise hand towels and close-

ly related paper products which are sold through various

types of non-inclusive distributors or wholesalers includ-

ing wholesale paper merchants and janitorial supply houses .

for resale to commercial, industrial, and institutional users.

Under these circumstances and considering that appli-

cant’s products, like, those of opposer, would be made

-available to service [station operators, the sale of. these

products under the same or similar marks will cause pur-

chasers to ascribe a common origin thereto.

It is opposer’s contention that the marks of the parties

and, in particular, ‘‘H1-Dr1’’ and ‘‘So-Dri’’, are confusing-

ly similar when considered in their entireties, ‘‘having

the same connotation, a similar appearance, and a simi- |

lar ring when spoken’’. Applicant argues, however, that —

each of the marks is highly suggestive of the excellent

drying qualities of the towel put out by each manufacturer,

and that other than this common theme or suggestion, the

marks are sufficiently different to obviate } amy likelihood

of confusion in trade.

Opposer’s marks “So-Dar’” and ‘‘Saur-Dri’’ ‘as appli-

cant’s mark ‘‘H1-Dr1’”’ obviously were adopted to suggest

that the paper towels sold thereunder possess superior

drying qualities. It likewise appears from the record

that it has been a common practice for producers of paper

21

towels and of such competitive products as cloth towels

to adopt as trademarks for their products designations

comprising the word ‘‘Dry’’ or ‘‘Dri’’, having a similar

suggestive connotation, such as ‘‘Dri-n-Suine’’, ‘‘Dnrr-

Kuren’’, ‘‘Dry-Mor’’, ‘‘Sparkue-Dri’’, ‘ Hast- Dai”’, Dry-

FAST”’, and ‘‘Wirempr1’”’. Under such circumstances, the

scope of protection afforded opposer’s marks must neces-

sarily be narrow and manifestly cannot extend to preclude

the registration by others of similar but otherwise dis-

tinguishable notations or trademarks for ‘towels. See:

Stephen L. Bartlett Company v. Arbuckle Brothers, 52

App. D. C. 267 (1923); Hillyard Chemical Company v.

Vestal Laboratories, Inc.; Vestal Laboratories, Inc. v.

Hillyard Chemical Company, 99 USPQ 117 (CCPA, 1943) ;

Milwaukee Nut Company v, Brewster Food Service, 125

USPQ 399 (CCPA, 1960); Sure-Fit Products Company

1, Saltzson Drapery Company, 117 USPQ 295 (CCPA,

1958); The Murray Corporation of America v. Red Spot

Paint and Varnish Co., Inc., 126 USPQ 390 (CCPA, 1960) ;

E. L. Bruce Company v. American Termicide Company,

" Ine.,-128 USPQ 341 (COPA, 1960) ; and Air Products, Inc.

-v. Marquette Manufacturing Co., Inc., 133 USPQ 192

'.(CCPA, 1962). The fact, as urged by opposer, that its

marks and that of applicant are hyphenated marks and

the syllable ‘‘Dri’’ appears therein as a prefix instead of

a suffix as in the third-party registrations is of no particu-

lar significance as evidenced by the decisions in Sure-Fit

Products Company v. Saltzson Drapery Company, supra

(Rirz-Fir and Svure-Fir); Hillyard Chemical Company

v. Vestal Laboratories, Inc., supra (Suinz-Auu and Briren-

Au); and Air Products, Inc. v. Marquette Manufacturing

Co., Inc., supra (Rept-Arc and Repi-Ser). -Accordingly,

although the designations ‘‘So-Dri’’, -‘‘SHur-Dri’’, and

‘‘Hi-Drr’’ may have similar meanings, the differences

22

between them in both sound and appearance are sufficient,

in view of the nature of the marks, to preélude a likelihood

of confusion or mistake as to the source of the goods sold

thereunder.

Opposer, in effect, has sla: the position that, apart

from the interpartes issues in this proceeding, applicant

should be refused registration ex parte because the first

shipment on which the application is based was merely a

token shipment made for the express purpose of registra-

tion, and hence does not constitute a bona fide use of the

mark in commerce; there were no further shipments by

applicant under the mark ‘‘H1-Dri’’ until July 1964; and

the subsequent shipments were so small for a company of

applicant’s size and so sporadic ‘‘as to have obviously been -

made for the. purposes of the present opposition rather

than as a part of bona fide commercial activity’’.

‘ While an opposer may not ordinarily be heard on an

ex parte quéstion, in the interest of removing any cloud

that may be placed on applicant’s activities in regard to

its use of ‘‘H1-Dri’’ in the United States, opposer’s alle-—

gations require that they be considered herein.

There is no question on the record presented but that

the first shipment of ‘‘H1-Dr1’’ was made by applicant

at the request of its legal department to establish a basis _

for the registration which it now seeks, and that the ship-

ment involved only a dollar and nixety-one cents worth of

paper products. The recipient of the shipment, however,

was a drug chain which apparently had no connection with

applicant; the goods were shipped under a commercial

type label, invoiced, and paid for in the usual manner for

small shipments; and there is nothing to suggest that

these goods were not offered for resale or that the ship-

ment was anything other than a bona fide sale. The fact

>

23

that a sale in commerce Was made expressly for registra-

tion purposes is not damming, per se, where circumstances

indicate an intent to continue such use. See: Maternally

Yours, Inc. v. Your Maternity Shop, Inc., 110 USPQ 462

(CA 2, 1956); Western Stove Company, Inc. v. Geo. D.

Roper Corporation et al., 80 USPQ, 393 (DC Calif., 1949) ;

Montgomery Ward & Co., Inc. v. Sears, Roebuck & Co., 9

USPQ 524 (CCPA, 1931); and California Spray-Chemical

Corporation v. Ansbacher Siegle Corporation, 55 USPQ

‘298 (Comr., 1942). Admittedly, there were no further

shipments in the United States. until July 1964; but. there

is uncontradicted testimony by applicant’s witness that,

during this interval, applicant was conducting marketing

tests and analyses which it deemed necessary prior ‘to

merchandising ‘‘H1-Dri’’ products on a national seale.

Certainly, the record does not support an intent to aban-

don the mark. during this period nor does the eighteen

month interim of sales inactivity establish a prima facie

case of abandonment as defined in Section 45 of the Statute ;

and while the sales of ‘‘H1-Dri’’ paper products after July

1964 may. not have been, of the magnitude normally associ-

ated with a manufacturer of applicant’s size, they never-

theless were shipments under the mark in. question and

serve to establish applicant’s intent to continue to use

and maintain whatever rights it may have acquired in

the mark ‘‘H1-Dri’’.

Decision:

The opposition is dismissed.

H. WALDSTREICHER,

S. LEFKOWITZ,

R. F. SHRYOCK,

‘Members, Trademark Trial and

| Appeal Board.

JAN 3 1966

a ?

« 24

APPENDIX “D”

Excerpts from Trademark Act of 1946, as Amended

Intent of Act. The intent of this Act is to regulate

commerce within the control of Congress by making action-

able the deceptive and misleading use of marks in such

commerce; to protect registered marks used in such com-

merce from interference by State, or territorial legislation ;

to protect persons engaged in such commerce against un-

fair competition;.to prevent fraud and deception in such

commerce by the use of reproductions, copies, counter-

feits, or colorable imitations of registered marks;. and to

provide rights and remedies stipulated by treaties and

conventions respecting trademarks, trade names, and un-

fair competition entered into between the United. States

and foreign nations (Amended Oct. 9, 1962, 76 Stat. 769).

Sec. 45 (15 U. S. C. 1127.) (Emphasis ours.)

‘The owner of a trademark used in commerce may regi-

ster his trademark under this Act on the: principal register

hereby established :

(a). ‘By filing in the Patent Office—

(1) a written application,.in such form as may be

prescribed by the Commissioner, verified by the ap-

plicant, or by a member of the firm or an officer of

the: corporation or association applying, specifying - °

applicant’s domicile and citizenship, the date of ap-

plicant’s first use of the mark, the date of applicant’s

first use of the mark in commeree, the goods in con-

nection with which the mark is used and the mode .

or manner in which the mark is used in connection ©

with such goods, and including a statement to the ef-

fect that the person making the verification believes

25

himself, or the firm; corporation, or association in

- whose behalf he makes the verification, to be the owner

of the mark sought to be registered, that the mark ts

im use im commerce, and that no other person, firm, —

corporation, or association, to the best of his know-

ledge and belief, has. the right to use such mark in

commerce either in the identical form‘ thereof or in

' such near resemblance thereto as to be likely, when

applied’ to the goods of ‘such other person, to cause

confusion, or to cause mistake, or to deceive. . . Sec.

1 (15 U..S. C. 1051). (Emphasis ours.)

No trademark by which the goods of the applicant may

be distinguished from the goods of others shall be refused

registration on the prisicipal register on account of its

nature unless it—

Se iss i | :

(b) ... | ;

(c) |

(d) consists of or comprises a mark which so seventies

a mark registered in the Patent Office or a mark or trade

name previously used in the United States by another and

not abandoned, as to be likely, when applied to the goods

of the applicant, to cause confusion or to cause mistake, or

to deceiwe . .. . Sec. 2 (15 U. S, C. 1052). (Emphasis

ours.) - |