
    394 F.2d 599; 157 USPQ 630
    Standard International Corporation, Assignee, by Merger of The Bon Ami Company v. American Sponge and Chamois Company, Inc.
    (No. 7949)
    United States Court of Customs and Patent Appeals,
    May 23, 1968
    
      Mason, Fenwick & Lawrence, Edward G-. Fenwick, Jr. for appellant.
    
      Alex Friedman (Blum Moscovita Friedman Blum & Kaplan, of counsel) for appellee.
    [Oral argument March 7, 1968 by Mr. Fenwick and Mr. Friedman]
    Before Rich, Acting Chief Judge, and Judges Smith, Almond, Kirkpatrick.
    
    
      
      Senior District Judge, Eastern District of Pennsylvania, sitting by designation.
    
   KerkpatRICK, Judge,

delivered the opinion of the court:

American Sponge and Chamois Company, Inc. seeks registration of “DUST ’IST GLOW” for a cleaning and polishing cloth, impregnated with a polish. Belying on prior use and registration on the Supplemental Begister of “DUST ’N WAX” for furniture polish, Standard International Corporation opposes, alleging that “DUST ’2ST GLOW” so resembles “DUST ’N WAX” as to be likely to cause confusion, or to cause mistake, or to deceive. The Trademark Trial and Appeal Board dismissed the opposition.

The board found, and appellee does not dispute, that' “the goods of the parties would readily be assumed to originate with a single source if sold under the same or similar marks.”

In concluding “there is no likelihood • of confusion, or mistake or deception,” the board stated:

The only similarity between the marks in issue resides in the parties’ use of "DUST ’N.” Opposer’s mark possesses an obvious descriptive connotation as applied to its furniture polish which waxes as one dusts. In this regard we note that opposer’s registration of “DUST ’N WAX” issued on the Supplemental Begister. Applicant’s mark, on the other hand, merely suggests that which op-poser’s mark says definitively. Moreover, the end portions of the marks are different. Opposer’s' mark is inherently weak and where a party uses a weak mark, his competitors may come closer to such mark without violating his rights.

In support of its view the board cited The Fleetwood Company v. Hazel Bishop, Inc., 352 F.2d 841, 147 USPQ 344 (CA. 7, 1965); Sure-Fit Products Co. v. Saltzson Drapery Co., 45 CCPA 856, 254 F.2d 158, 117 USPQ 295 (1958).

We agree that the opposer’s mark is inherently weak, but the “DUST ‘N” part of it is not entirely without a certain distinctiveness and although the end portions of the marks are entirely different words, “GLOW” is at least suggestive of the effect of using a wax polish upon furniture.

We do not agree with the conclusion reached by the board. It is true, as pronounced in the Fleetwood and Sure-Fit cases, that owners of inherently weak trademarks do not ordinarily enjoy the wide latitude of protection afforded owners of strong marks. However, a mark which is initially a weak one may, by reason of subsequent use and promotion, acquire such distinctiveness that it can function as a significant indication of a particular producer as source of the goods with which it is used. Clinton Detergent Co. v. The Procter & Gamble Co., 49 CCPA 1146, 302 F.2d 745, 133 USPQ 520 (1962), and Jenkins Publishing Co. v. Metalworking Publishing Co., 50 CCPA 1218, 315 F.2d 955, 137 USPQ 358 (1963). In the present case, we think the original weakness of appellant’s mark, which limited its registration to the Supplemental Register, is -offset significantly by.appellant’s subsequent expenditures for. próitíotion and the resulting sales. • ■ •

Thus, sales of “DUST ’N WAX” polish from' the period 1961 through the 'first nine months of 1964 exceeded $4;OOQ,OOQ and advertising expenses in connection with the mark during- the same period amounted to in excess of $2,000,000. The predominant portion of those sales and expenditures took place before May 27, 1963,-the date appellee filed its application.for registration and to which it is limited for first use because of absence of any proof of earlier use. See Kiekhaefer v. Willys-Overland Motors Inc., 43 CCPA 1013, 236 F.2d 423, 111 USPQ, 105 (1956). Recognizing that each case must be considered on its own facts, we are of the view that “DUST ’3ST WAX” has acquired such significance as an indication of the source of appellant’s polish that the use of “DUST ’N GLOW” for appellee’s polishing cloth is likely to cause confusion or mistake or to deceive. Under the circumstances, appellee has acted at his peril in adopting so- similar a mark for such closely related goods .and any doubt there might be must be resolved against him. Clinton Detergent Co. v. The Proctor & Gamble Co., supra; The United States Time Corp. v. Jacob Tennenbaum, 46 CCPA 895, 267 F.2d 327, 122 USPQ 15 (1959).

The decision of the board is reversed. 
      
       Result reported at 149 USPQ 902.
     
      
       Appellant’s evidence shows total sales of “DUST ’N WAX” polish for 1961, 1962 and first six months of 1963 to total over $2,790,000 and total promotional expenses to be over $1,490,000.
     