
    254 F. 2d 158; 117 USPQ 295
    Sure-fit Products Co. v. Saltzson Drapery Co.
    (No. 6342)
    United States Court of Customs and Patent Appeals,
    April 11, 1958
    
      Leonard L. KaKsh for appellant.
    
      Leon Edelson for appellee.
    [Oral argument March 7,1958, by Mr. Kalish and Mr. Edelson]
    Before Johnson, Chief Judge, and O’Connell, Worley, Rich, and Jackson (retired), Associate Judges
   Johnson, Chief Judge,

delivered the opinion of the court:

This is an appeal in an opposition proceeding from the decision of the Assistant Commissioner of Patents, 110 USPQ 371, reversing the decision of the Examiner of Interferences which sustained the opposition and which held that applicant (appellee here) was not entitled to the registration sought.

.'No testimony was taken by either party, both having stipulated the relevant facts.

..Appellee is in the business of manufacturing, selling and distributing. draperies and since 1946 has been engaged in the business of .' manufacturing, selling and distributing ready-made slip covers for various articles of furniture, including studio couches and daveno beds.. Dn March 9, 1950, it. adopted as its trademark for said slip covers the term “Rite-Fit,” superimposed in script form upon the pictorial representation of an artist’s palette with two paint brushes disposed in the thumb hole. The word “Product,” in block letters smaller than the letters which form the term “Rite-Fit,” appears im-. mediately beneath the latter term. Appellee has disclaimed the words “Rite-Fit Product” apart from the mark as a whole. Its application for registration of this mark on the principal register under the Lanham Act is the one opposed in this proceeding.

•Opposer (appellant'here), has-used the term “Sure-Fit” as its-trademark on and iñ connection with the sale of its ready-made slip covers since January 1926. Appellant was the owner of two registrations granted to it on the “Süre-Fit” mark. The term “Sure-Fit” in the 1950-registration, which is the only one which need be-discussed here, is printed in a script similar to the script of appellee’s “Rite-Fit” mark.

• According to the stipulation, appellant has “extensively advertised, in periodicals having national circulation and in other advertising media,” its “Sure-Fit” mark.

The documentary evidence submitted by appellant consists primarily of instruction folders and leaflets for fitting the slip covers on furniture. Several of its exhibits refer to the fact that its mark has been advertised in such publications as “Better Homes and Gardens,” “Life,” “Collier’s,” “House & Garden,” and “The New York Times.” No advertising specimens were introduced by appellee, though the stipulation indicates that its mark has been advertised.

Also in evidence are eleven third-party registrations containing the word or suffix “Fit,” which registrations were introduced by appellee.

. Appellee has conceded, for purposes of this proceeding, that, despite its disclaimer of the words “Rite-Fit Product” apart, from the mark as a whole, the term “Rite-Fit” constitutes the dominant part of its mark. Furthermore, the parties have stipulated that their respective goods are identical'ánd are sold in competition and that the sole question in issue in this proceeding is that of confusing similarity of the terms “Sure-Fit” and “Rite-Fit.”

' The Assistant Commissioner, in dismissing the opposition, attached little trademark significance to the word “Fit” in each, of the'parties’ marks, which she described as “in common usage by o'pposer and others in describing slip covers,” and concluded that, except for this weak* common feature, the marks do not look or sound'alike.

- We are of the opinion that the decision of the Assistant Com-’ missioner is correct and that the opposition-must accordingly be dismissed.

In reaching our decision we have been most strongly influenced by the fact that the marks in issue, “Sure-Fit” and “Rite-Fit,” :are‘ the-weakest possible'type of mark. The word “Fit,”- aside from the' third-party registrations in evidence, is eminently suitable for use in' connection with goods such as ready-made slip covers, where proper fit is of the utm'ost importance. We need not consider third-party-registrations to recognize that the word is often used in connection-with the sale of such goods. The word is distinctly descriptive of- a characteristic of the merchandise in connection with which it isusedv Appellant’s use of such phrases in its advertising material as “for! perfect, lasting fit,” “for triple-sure fit,” “smooth, custom-like fit,”“k super-/2¿ feature,” “fits chairs of this type,” “to make smooth^ triple-sure,” “insures.proper fit” and “this cover fits separate-cushion Cogs-wells,” is indicative of this fact. :

The prefixes “Rite” and “Sure,” when added to the suffix “Fit,”-do little, of course, to remove the terms from the descriptive category-. “Rite-Fit” is an obvious misspelling of “Right-Fit” and is clearly de-. scriptive of a function of the goods with which the words are used. " ‘

And though appellant has obtained a registration for this mark’ on the principal register as a secondary meaning mark, there is nothing in the record to indicate that this mark is not still in the category bf a weak mark.

Under these circumstances, we do not feel that appellant is entitled to the broad protection which it seeks. What appellant is in effect-asking us to-do is to allow it, at least insofar as registration's concerned, to preempt the field as far as the word “Fit”,is concerned. -We' cannot avoid this conclusion despite the fact that appellant stresses the fact that the prefixes “Rite” and “Sure” have the same number of letters and syllables. The fact of the matter is that “Rite” and “Sure”'do not look alike or sound alike, factors which we feel, at least in this case, militate against appellant’s position. Hillyard Chemical Co. v. Vestal Laboratories, Inc., 41 C. C. P. A. (Patents) 701, 206 F.2d 926; 99 USPQ 117, is peculiarly applicable to the instant case. In that case this court quoted with approval the following language of the examiner:

Aside from the question of laches, however, it is the opinion of the Examiner that the cancellation should be dismissed because of lack of confusing similarity between the notations “Shine-All” and “Briten-AU.” The notation-“Shine-All” manifestly is highly suggestive of the nature of the goods here involved, and while the notation “Briten-All” is similarly suggestive thereof, if differs substantially from “Shine-All” in both appearance and sound. The applicant having adopted a notation of such character as a trade-marlc for its goods may not prevent others from using similarly suggestive hut otherwise distinguishable notations as trade-marks for their goods. * * * [Emphasis added.]

It is unnecessary to cite thé numerous other cases of this court wherein the scope to be given to weak trademarks was discussed; It seems' both logical and obvious to us that where a party chooses a •trademark which is inherently weak, he will not enjoy the wide latitude of protection afforded the owners of strong trademarks. Where a party uses a weak mark, his competitors may come closer to his mark than would be. the case with a strong mark without violating his rights. The essence of all. we have said is that in the former case there is not . the possibility of confusion that exists in the latter case.

Appellant further argues that the two marks are similar in meaning and that similarity as to any one of three types of similarity, sound, meaning or appearance, may be sufficient to indicate likelihood óf confusion, citing Brown Shoe Company, Inc. v. Sons Shoe Company, 79 USPQ 306 (Commr. Pats.); Cluett, Peabody & Co., Inc. v. Denver M. Wright, 18 C. C. P. A. (Patents) 937, 46 F. 2d 711, 8 U. S. Pat. Q. 344. While we do not dispute the correctness of this rule, it must be emphasized that any one of the three factors may be sufficient to indicate likelihood of confusion, but does not necessarily do so. See Holiday Casuals v. M. Beckerman & Sons, Inc., 43 C. C. P. A. (Patents) 731, 228 F. 2d 224, 108 USPQ 140. Clearly, all three factors must be examined to reach a sound conclusion in a given case. Coty, Inc. v. Perfumes Habana, S. A., 38 C. C. P. A. (Patents) 1180, 190 F. 2d 91, 90 USPQ 224. Assuming arguendo that the marks “Rite-Fit” and “Sure- . Fit”, are similar in meaning, we are of the opinion that they are so distinct in sound and appearance as to overcome such similarity in .meaning.

..For the foregoing reasons, the decision of the Assistant Commissioner .is affirmed.

O’CoNNell, J., was present at the hearing of this appeal, but, because of illness, did not participate in the decision.

JacksoN, J., Retired, recalled to participate was present at the hearing of this appeal but did not participate in the decision. 
      
       Appellee has, agreed In Its brief that this word should be “divan,” “davenport” or “sofá,” since there is no such words as “daveno.”
     
      
      Reg. No. 521,780 issued March 7, 1950, as a secondary meaning mark; Reg. No. 281,507 issued March 17, 1931 under the Act of 1920, expired.
     
      
       Though the Assistant Commissioner dismissed the opposition, she nevertheless denied appellee registration of its mark, in light of its concession that “Rite-Fit” is the dominant part of its mark, on the ground that the dominant part had been disclaimed.. She gave appellee, leave to file either an amendment transferring the . application to'the supplemental register, or evidence establishing secondary meaning... This decision, being ex parte in its nature, is not before us oh this appeal.
     