
    119 F (2d) 430
    Thomas Publishing Co. v. Harvey & Howe, Inc.
    (No. 4440)
    United States Court of Customs and Patent Appeals,
    May 5, 1941
    
      Lester L. Sargent for appellant.
    
      Erwin W. Roemer for appellee.
    [Oral argument February 5, 1941, by Mr. Sargent and Mr. Roemer]
    Before Garrett, Presiding Judge, and Bland, Hatfield, and Jackson, Associate Judges
    
    
      
      Lenkoot, Judge, did not participate in the consideration or decision of this case.
    
   JacKSON, Judge,

delivered tbe opinion of tbe court:

This is an appeal in a trade-mark opposition proceeding from a decision of tbe Commissioner of Patents affirming a decision of tbe Examiner of Interferences dismissing appellant’s notice of opposition to tbe registration of appellee’s composite trade-mark comprising tbe symbol “H & H” in tbe form of a monogram running completely through a disk-shaped solid background and tbe notation “What’s New in Home Economics” in slanted block letters extending through tbe lower portion of tbe disk, for use upon a periodical called “What’s New in Home Economics.” The decision of tbe commissioner also affirmed that of the examiner adjudging appellee to be entitled to the registration for which application was made.

Appellee stated in its application, filed May 14, 1937, that it had used its mark on its goods since September 15, 1936.

It appears that appellant is the owner of registration No. 332,611, issued February 18, 1936, on an application filed August 5, 1935, of the trade-mark comprising “Industrial Equipment News” in block letters and “What’s New” in relatively very small italicized letters directly beneath the other words. The mark was used on a periodical published by appellant.

Appellant is the owner of two other registrations as applied to periodicals containing the words “What’s New.” One of the registrations, No. 353,515, dated January 11, 1938, upon an application filed June 28, 1937, is similar in form to that of registration No. 332,611, except the words in block letters of the latter registration consist of the notation “Building Products.” The other registration, No. 369,707, dated August 1, 1939, upon an application filed March 9, 1939, consists of the words "What’s New” in large italics.

The sole issue in the case is whether the marks of the respective parties, by reason of containing the words “What’s New,” are confusingly similar within the scope of section 5 of the trade-mark act of February 20, 1905, as amended.

The appellant relied upon its registered marks Nos. 332,611 and 353,515. Both parties took testimony. The evidence of appellant disclosed that its periodical “Building Products — What’s New,” to which was applied the registered mark No. 353,515, was first published in April 1937, and the statement in that trade-mark registration alleged first use of the mark to have been May 4, 1937. Since those dates are later than the date of appellee’s use of its mark, registration No. 353,515 was not considered by the tribunals of the Patent Office.

Appellant filed a petition for reconsideration and rehearing by the commissioner, in which petition a copy of its registration No. 369,707, heretofore mentioned, was made a part. One of the reasons for reconsideration advanced was that in applying for registration of the mark “Building Products — What’s New,” appellant had merely extended the use of the words “What’s New” appearing in the earlier trade-mark “Industrial Equipment News — What’s New,” and that appellant had the right to so extend that portion of the mark to a second magazine and further that appellant had in fact made such an extension when it applied the expression “What’s New,” registration No. 369,707, to a third magazine. The commissioner denied the petition without opinion.

Among the reasons of appeal here, the decision of the commissioner, denying the petition as based on the aforementioned ground, is assigned as error. With, this reason of appeal we cannot agree. To hold with appellant would be in effect to lay down a principle that any insignificant words constituting part of a mark, regardless of prior trade-mark use as such, would be sufficient to warrant successful opposition to the registrability of another trade-mark utterly different, in every respect, save that it contains such words. Of course, as is stated in appellant’s brief, it is well established that one may extend his trade-mark to other goods of the same class. However, that was not done by appellant. A mere inspection of the earliest mark of appellant shows that it was not “What’s New.”

The evidence shows that the periodical of appellant under consideration bears as its title the registered trade-mark “Industrial Equipment News — What’s New.” It is a magazine in which appear news items and advertisements peculiar to industrial equipment, parts. and materials. It is distributed to key individuals in the field of industry, officials, department heads, superintendents and others in a managerial or executive capacity in manufacturing concerns.

The periodical of appellee to which is applied its mark is a magazine bearing the title “What’s New in Home Economics.” The title is not in the form of the mark sought to be registered. In that form the mark seems to be quite small and it appears only on the editorial page of the publication. On that page there is also the subtitle “A National Magazine For Home Economists.” The magazine of appellee relates to home economics, and contains educational articles and advertisements relating thereto. It contains recipes for cooking, advertisements for such works as “Adventures in Good Eating,” “Art in Home and Clothing,” a cook book, and generally, as one of appellee’s witnesses stated, it “covers primarily food, food equipment, products, some textile and hygiene products.” Its distribution appears to be entirely in the field of home economics, to schools teaching domestic science or home economics, to editors, home service directors of utility companies, home demonstration agents, etc.

In commenting upon the goods of the parties, the Examiner, of Interferences stated in his decision as follows:

The publications sold by the parties possess a specifically different trade interest, and as above indicated are distributed or sold in the main to persons engaged in different professions or fields of business. The dissimilar notations “Home Economics” and “Industrial Equipment” contained in the respective marks are indicative of the nature of the contents of the publications and it is believed that the significance of these notations would largely govern the selection of a person interested in obtaining a publication relating to either class of matter. In this connection purchasers of publications such as those of the parties are more discriminating than those buying goods of the kinds sold, for example, in grocery stores and the like.
It seems to the examiner that the differences in the marks considerably predominate over the resemblances and are such that the marks may be used concurrently without reasonable likelihood of confusion, especially if the specific differences in the goods of the parties are also considered.

In affirming the decision of the examiner, the commissioner, after setting out the above-quoted discussion, said in his decision:

Considering the marks as entireties, I am constrained to agree with the examiner’s conclusion. The titles of the two publications so clearly identify their subject matter that I am unable to believe the common descriptive phrase “What’s New,” occurring as it does at the beginning of applicant’s mark and at the end of opposer’s, is of sufficient significance to render the marks confusingly similar.

Appellant contends that the goods of the parties possess the same descriptive properties in that both are trade or business magazines and that the tribunals below erred in failing to so find. Unquestionably the publication of appellant is a trade or business magazine. It may well be doubted that the magazine of appellee is strictly of that character. However, assuming, without holding, that the publica tions here are of the same general class, and in that respect might bo held to possess the same descriptive properties, it is clear that they are not of interest to the same class of readers; that then distribution is in widely separated fields of endeavor and they are not competitive in any respect.

It has been urged by appellant that confusion should be considered likely, for the alleged reason that business men might mistake the origin of one publication for the other in placing advertisements for the sale of then wares. In our opinion advertising is placed in any publication only after careful considerations. One who advertises his 'wares does so only when he has satisfied his judgment that his advertising reaches the class of purchasers most likely to be interested in procuring the thing advertised. Advertising of new advances in the industrial arts would not ordinarily be placed in a magazine intended solely to attract those whose principal interest is in the home-making science. Therefore even though it might be held that the goods of the respective parties belong to the same broad class in that they are both magazines, they are not, for the reasons set forth, identical and when the existing differences are considered in connection with the clear difference in the marks we can find no reason to disagree with the decision of the Commissioner of Patents. See Gorham Silk Hosiery Co., Inc. v. The Narrow Fabric Co., 26 C. C. P. A. (Patents) 980, 102 F. (2d) 407. In our opinion no likelihood of confusion will result from the concurrent use of the respective trade-marks of the parties.

Both the Examiner of Interferences and the Commissioner of Patents held that the second registration, No. 353,615, should'not be considered for the reason that the trade-mark there was not in use prior to tbe date of use by appellee of its trade-mark. Under tbe assumption tbat registration No. 353,515 should bave been considered by tbe Patent Office tribunals we bave considered tbe same, and we find tbat so far as tbe issues in this case are concerned tbe mark there registered is no different in character than tbat registered under No. 332,611.

Tbe decision of tbe Commissioner of Patents is affirmed.  