AMERICAN TOBACCO CO., Inc., v. GORDON; GORDON v. AMERICAN TOBACCO CO., Inc.

AMERICAN TOBACCO CO., Inc., v. GORDON. GORDON v. AMERICAN TOBACCO CO., Inc. (Court of Appeals of District of Columbia. Submitted November 11, 1925. Decided December 7, 1925.) Nos. 1765, 1766. 1. Trade-marks and trade-names and unfair competition <§=>43 — When trade-marks are appropriated to merchandise of same descriptive qualities stated. Two trade-marks are appropriated to merchandise of same descriptive properties, within Trade-Mark Act 1905, § 5 (Comp. St. § 9490), when the general and essential characteristics are the same, or such sameness in distinguishing characteristics exists as is likely to result in confusion and deception of public. 2. Trade-marks andi trade-names and unfair competition <§=>43 — Registration of mark will not deprive opposer of any rights, and cases involving unfair competition not pertinent. Cases involving trade-mark infringement and unfair competition are not pertinent to statutory opposition proceeding, as the registration of a trade-mark does not deprive op-poser of any rights it may have in an unfair competition suit. 3. Trade-marks and trade-names and unfair competition @=>43 — Cigarette holders and like merchandise held not possessed of same “descriptive properties” as cigarettes, within Trade-Mark Act. Pipes, cigar and cigarette holders, pouches, tobacco bags, humidors, and cigar and cigarette containers held not possessed of same “descriptive properties” as cigarettes, within meaning of Trade-Mark Act 1905, § 5 (Comp. St. § 9490), so as to prevent registration. Appeal from Commissioner of Patents. Proceeding by Samuel Gordon for registration of trade-mark, opposed by tbe American Tobacco Company, Inc. Prom a decision of the Commissioner of Patents, bolding that goods of respective parties, except in one particular, did not possess tbe same descriptive properties, and granting registration, both parties appeal. Affirmed on appeal of opposer; reversed on appeal of applicant. T. J. Johnston, of New York City, for American Tobacco Co. E.. M. Kitebin, of Washington, D. C., for Gordon. Before MARTIN, Chief Justice, ROBB, Associate Justice, and SMITH, Judge of tbe United States Court of Customs Appeals. [MAJORITY — ROBB, Associate Justice.] ROBB, Associate Justice. Appeal from a decision of tbe Patent Office, in a trademark opposition proceeding, dismissing in part and sustaining in part tbe opposition to tbe registration by tbe party Gordon of tbe words “Pall Mall” as a trade-mark for pipes, cigar and cigarette holders, pouches, tobacco bags, humidors, and cigar and cigarette containers. Long prior to tbe adoption of this mark by Gordon, the American Tobacco Company bad adopted and very extensively used tbe mark on cigarettes, and contends that this use also bad extended to cigarette containers. Tbe Examiner ruled that cigarettes and tbe goods to which applicant’s mark is applied are goods of different descriptive properties, within tbe meaning of tbe Trade-Mark Act, and that opposeris use of tbe mark in connection with cigarette containers was not a trade-mark use. Tbe Assistant Commissioner agreed with tbe Examiner, except as to cigarette holders, with respect to which be sustained the opposition. The Trade-Mark Act of 1905 (33 Stat. 724, § 5 [Comp. St. § 9490]), prohibits tbe registration of trade-marks identical with or deceptively similar to a known trade-mark, “and appropriated to merchandise of tbe same descriptive properties.” Since tbe marks of tbe two parties in this case are identical, tbe only question here is whether these marks are applied to goods of tbe same descriptive properties, within.tbe meaning of tbe statute. We have ruled that two trade-marks may be said to be appropriated to merchandise of tbe same descriptive properties, in tbe statutory sense, when tbe general and essential characteristics of the goods are tbe same; that is, where there is such a sameness in tbe distinguishing characteristics as to be likely to result in confusion in tbe trade and deception of tbe public. Phœnix P. & V. Co. v. John T. Lewis & Bro., 32 App. D. C. 285. Under this interpretation, we have denied tbe right of registration where tbe goods of tbe respective parties have been capable of being applied to tbe same general use. Thus, in N. Wolf & Sons v. Lord & Taylor, 41 App. D. C. 514, we held that hosiery and knitted underwear were goods of tbe same descriptive properties, since their essential characteristics were similar and both were used as articles of clothing. And in Anglo-American Incand. L. Co. v. General Elec. Co., 43 App. D. C. 385, gas mantles and incandescent electric lamps were held to be capable of the same general use and of the same descriptive properties. We now are asked to go a step farther, and rule that goods capable of a conjoint use possess tbe same descriptive properties. In our view, however, tbe statute does not permit of such an interpretation. Whether tbe qualifying words, “goods of tbe same descriptive properties,” aptly express tbe legislative intent, is not for us to determine. Tbe statute must be taken as it is found, and, when so interpreted, we see no escape from tbe conclusion that cigarettes, pipes, and tobacco containers are goods of different descriptive properties. Several trade-mark infringement and unfair competition eases have been cited by tbe opposer; but, as we many times have suggested, such eases are not pertinent to a statutory proceeding like tbe present. Tbe registration of this mark will not deprive tbe opposer of any rights it may have in an unfair competition suit. We agree with tbe tribunals of tbe Patent Office that tbe use by tbe opposer of cigarette containers was not a trade-mark use, but we are unable to follow tbe Assistant Commissioner in bis ruling that cigarettes and cigarette holders are goods of the same descriptive properties. They are no more similar, in this sense, than tobacco and pipes would be. It results that tbe decision is affirmed as to appeal No. 1765, and reversed as to appeal No. 1766. Affirmed as to No. 1765. Reversed as to No. 1766.