Rookwood Pottery Co. v. A. Wilhelm Co.

Mr. Justice Van Orsbel

delivered the opinion of the Court:

It will be observed that the prohibition is two-fold, — (1) where the marks used on merchandise of the same descriptive properties are the same, and (2) where the marks so used so nearly resemble each other as to be likely to confuse the public or deceive purchasers. In Walter Baker & Co. v. Harrison, 32 App. D. C. 272, the statute was construed as prohibiting the use of a marie when applied to goods of the same general class as those designated by a similar mark owned and in use by another. In this case, the parties are each using the same mark. The question is, whether the merchandise upon which the respective parties use this mark belong to the same general class. The mark is used by appellant upon pottery ware and by appellee on enamel paint. It is urged by counsel for appellee, and so held by the tribunals of the Patent Office, that there is no similarity between enamel paint, the product of appellee, and pottery, the product of appellant. On the other hand, it is urged by counsel for appellant that the question here is not the dissimilarity between paint and pottery ware, but the similarity between the enamel paint of appellee and the enamel used by appellant to produce the glazed finish on its pottery.

The contention of appellant would have force if it applied the trademark to the enamel used in producing the glazed finish on its ware, but it is applied to pottery. The statute limits the prohibition of the use of similar marks to their use on articles of merchandise of the same descriptive properties. In Walter Baker & Co. v. Harrison, supra, this court held: “Things may be said to possess the same descriptive properties when they can be applied to the same general use.” AVhile it is true that enamel is an element used in manufacturing the product of appellant, yet the completed article is of a nature manifestly different from the enamel used. They cannot be applied to the same general use. AVe have. no difficulty in *5 agreeing with the Commissioner of Patents that the paint of appellee and the pottery ware of ajipellant are not merchandise of the same descriptive properties.

It is urged that the mark cannot legally be registered by appellee, since it is the distinguishing part of the corporate name of appellant company. The use of a corporate name is forbidden by statute. Asbestone Co. v. Philip Carey Mfg. Co. 41 App. D. C. 507. This objection, however, is not set out in the notice of opposition, and, however mandatory the statute may be upon the Commissioner of Patents in determining the legal registrability of a trademark, it may be waived by an opposer. It was optional with appellant to oppose or not, and as to any matter not set out in the notice of opposition, it is as if no notice had been filed. The objection, therefore, is not available at this late stage in the proceedings.

It may be suggested that the criticism of counsel for appellee that appellant’s notice is subject to dismissal because it does not allege that confusion has actually occurred as a result of the use of the mark by the respective parties is without merit. The statute is prospective in that it forbids the registration of a mark which is likely to create confusion in the public mind, or is likely to deceive purchasers. It is not necessary that actual confusion be shown; the mere probability of confusion is sufficient. This appeal, however, is disposed of upon the ground alone that the merchandise of the respective parties on which the mark is used do not possess the same descriptive properties.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed.