CELANESE CORPORATION OF AMERICA v. VANITY FAIR SILK MILLS

CELANESE CORPORATION OF AMERICA v. VANITY FAIR SILK MILLS. No. 2612. Court of Customs and Patent Appeals. Feb. 25, 1931. Baldwin & Wight, of Washington, D. C. (Frank A. Bo.wer, Isadore Seltzer, and Chas. W. Levinson, all of New York City, of counsel), for appellant., Mason, Fenwick & Lawrence, of Washington, D. C. (Edward T. Fenwick, Edward G. Fenwick, and Charles R. Fenwick, all of Washington} D. C., of counsel), for appellee. Before GRAHAM, Presiding Judge, and BLAND, ,HATFIELD, GARRETT, and LENROOT, Associate Judges. [MAJORITY — HATFIELD, Associate Judge.] HATFIELD, Associate Judge. This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents. It appears from the record that appellee filed an application for the registration of the trade-mark “Silkenese” for use on “Knitted, netted, and textile fabrics” composed of “Silk and Bemberg Fiber.” Thereafter, notice of opposition was filed by appellant, in which it was claimed that appellant was the owner of the trade-mark “Celanese”; that it had used its mark on its goods for many years prior to the use by appellee of its mark; that the goods of the parties possessed the same descriptive properties; that the involved marks were confusingly similar; and that appellant would be injured by the registration of appellee’s mark. It appearing from the testimony submitted by appellee that it had not used the trademark “Silkenese” on the goods set forth in its application for registration, counsel'for appellee, on the hearing before the Examiner of Interferences, stated that appellee did not intend to contest the opposition. Thereupon, the Examiner of Interferences sustained the opposition and held that ap-pellee was not entitled to register its trademark. Appellee appealed to the Commissioner of Patents, who, after stating the facts substantially as hereinbefore recited, dismissed the opposition on the ground that the involved trade-marks were not confusingly similar. He held, however, that, as appellee had not used the trade-mark “Silkenese” on the goods described in its application, it was-not entitled to have the mark registered. It is claimed by appellant that, the commissioner erred in dismissing the opposition. Although we do not mean, to be understood as holding that, in all eases of this character, the opposition should be sustained, nevertheless, in view of the fact that this proceeding was consolidated in the Patent Office with the ease of the Celanese Corporation of America v. Vanity Fair Silk Mills (Cust. & Pat. App.) 47 F.(2d) 373, involving the same parties, the same trade-marks, and goods of the same descriptive properties, and as the parties presented such evidence as-they desired relative to the issues raised by the notice of opposition and the answer thereto, including the similarity of their goods and' the involved trade-marks, we are of opinion that the parties were entitled to a decision on the merits of' the ease. Accordingly, on the-authority of our decision in the case of Celanese Corporation of America v. Vanity Fair Silk Mills, 47 F.(2d) 373, 18 C. C. P. A.-, the decision of the Commissioner of Patents is modified, being affirmed in so far as it holds that appellee is not entitled to have its. trade-mark registered, and in all other respects reversed. Modified.