
    48 F. (2d) 963
    J. P. Heilbronn Co. v. Hammermill Paper Co.
    (No. 2720)
    
      United States Court of Customs and Patent Appeals,
    April 29, 1931
    
      Warren I. OuWerley for appellant.
    
      Morrell B. Olaa-h for appellee.
    [Oral argument April 10, 1931, by Mr. Cubberloy and Mr. Clark]
    Before Graham, Presiding Judge, and Bland, Hatfield,. Garrett, and Lenroot, Associate Judges
   Bland, Judge,

delivered the opinion of the court:

This appeal involves a petition for the cancellation of appellee’s trade-mark. The petition was dismissed by the examiner of interferences and his decision was affirmed by the Commissioner of Patents, and from the latter’s decision this appeal is taken.

The Plammermill Paper Co., of Erie, Pa., hereafter called Ham-mermill, on March 31, 1925, registered the trade-mark “ Luna ” for bond writing paper. The date of the first use of this trade-mark of the registrant in interstate commerce was in February, 1924, and ever since that date Plammermill has shipped large and increasing •quantities of bond writing paper bearing the trade-mark “ Luna Bond, Made in U. S. A.” into various States and into many different countries of the world.

In December, 1924, appellant, J. P. Pleilbronn Co-., hereafter known as Pleilbronn, placed upon the market in competition with Hammer-mill its own bond writing paper bearing the trade-mark Luna .Bond,” the words being printed in the same style as that of Hammer-mill and accompanied by a crescent or half-moon with the outline of a face in the hollow of the crescent.

The Oregon Pulp & Paper Co., of the State of Oregon, was the manufacturer of the paper for Heilbronn. When Hammermill objected to the said paper company manufacturing the paper, Heilbronn gave the paper company an indemnity bond and then proceeded to petition for cancellation.

Heilbronn’s first ground for^ cancellation is based upon the fact that prior to the use of the word “ Luna ” by Hammermill, appellant had used, upon other kinds of paper such as pads, wrappers, booklets, etc., a trade-mark which was described by the commissioner in his decision as:

* * * tlie representation of a crescent witliin the concave portion of which appears a representation of a man’s face, and a representation of a 5-pointed star inclosing the letter “ H ” appears lnmg or suspended from the upper horn or the moon crescent ⅜ * *.

Heilbronn’s position is that since that symbol includes the crescent and since it claims that Luna ” is the Spanish word for moon, the use of the Hammermill trade-mark “ Luna ” will lead to confusion and to the damage of Heilbronn; that since “ Luna ” means moon in Spanish, appellee’s mark “ Luna ” in Spanish countries will be confused by the paper purchasing public with appellant’s so-called crescent mark.

Appellant further contends that appellee has not shown “ clean hands ” as based upon facts which wall be briefly stated. American Paper Exports (Inc.), was the selling agency for Hammermill, and S. Allen Presby was the agent and customer of said American Paper Exports (Inc.), in the Philippine Islands. In 1924 when a shipment of Hammermill’s “ Luna ” goods, shipped by American Paper Exports (Inc.), arrived in the Philippines, Heilbronn brought suit against Presby and another, for injunction and damages, basing its suit on Heilbronn’s Philippine registered trademark, which mark consisted of the crescent and the star inclosing the letter “ H ” In settlement of the suit it was agreed that Presby would not import paper bearing the “ Luna ” trade-mark into the Philippines, and that the mark “ Luna ” or “ Luna Bond,” in the Philippines, was owned 'by Heilbronn.

This evidence was evidently offered on the theory that it amounted to an admission by Hammermill that by the use of its trade-mark' “ Luna,” it was infringing appellant’s mark. It is nowhere shown that the parties to the contract had any authority to contract with reference to appellee’s trade-mark rights and we regard it of no importance in the determination of the issues before us.

The record shows that appellee sold its goods in Cuba prior to any sale of the same being made in the Philippines and that the word “Luna” is the name of a party in Cuba who ordered some of appellee’s goods.

The word “ Luna,” both in the English and Spanish languages-, has reference to the moon. Appellant states that “ Luna ” means moon; that it means a moon goddess and that “ Lunar ” is defined as “ pertaining to or resembling the moon, orbed or crescent.”

Appellant argues that under a long line of decisions, which it cites, the use of a word has the same effect as the use of a picture, if the word means the same as the picture. One of the leading cases on this subject is In re Maclin-Zimmer-McGill Tobacco Co. (Inc.), 49 App. L. C. 181, Avhere it was held that the right to employ a symbol necessarily included the right to enrploy the word. Another case cited is G. Sindenlberg & Co. v. W. H. Childs & Son, 146 M. D. 345, 15 T. M. Rep. 237, where the word “ Capitol ” was refused registration bjr reason of the registered trade-mark consisting of a picture of the Capitol.

The difficulty with appellant’s contention in this regard is that his trade-mark does not consist of a moon. It does not purport to be the representation of a moon. A portion of it may be said to be a crescent or part of a moon with a grotesque face accompanied by a star hanging to the upper horn in which star is the letter “ H.” There is no evidence of consequence in the record that appellant ever used the word “ moon ” or the picture of a moon or the word “ Luna ” in connection with the sale of its goods prior to appellee’s use of the word “ Luna.” Conceding that appellant had the right to the exclusive use of the trade-mark used by it prior to the date of appellee’s use of its “ Luna ” mark, appellee had the right to register its mark, and appellant’s cancellation proceeding must fail if it is not likely that confusion will result from the concurrent use of both marks on goods of the same descriptive properties.

Appellant’s mark which was used prior to appellee’s use of its “ Lima ” mark, we think was used upon goods of the same descriptive properties as those of appellee, yet it is conceded that they were not exactly the same kind of goods. The marks being neither similar in "appearance nor sound, we do not believ'e there is now or was on the date appellee registered its mark any likelihood of confusion arising from the concurrent Aise of both marks. The record as a whole shows no actual confusion or circumstances and facts which would indicate likelihood of contusion. The right of appellee to use in connection with its mark a picture or a representation of a moon or any part of the same or to characterize its goods as moon goods either here or in Latin countries is not before us. Its registration is for the use of the word “ Luna ” on bond writing paper, and we are unable to see how appellant could be damaged in the use of its combination mark.

We agree with the decision of the Commissioner of Patents, and the same is affirmed-.  