[1] We are of the opinion that the tribunals below fell into error in holding that the marks, when viewed as a whole, were confusingly similar. It is true, as pointed out by the opposer, that it is settled law that in determining the question of likelihood of confusion the [2] marks must be viewed as a whole. So far as we know, the law has never been otherwise certainly not since the Supreme Court in the case of Beckwith v. Commissioner of Patents, 252 U. S. 538, said:

The commercial impression of a trade-mark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety

This fact, however, is no justification for a refusal to consider the similarity of certain portions of the marks and separating them for the purpose of such consideration. Marks may contain descriptive or geographical terms which, by themselves, anyone has the right to use, and their extensive common use is sometimes persuasive of the conclusion that such similar descriptive or geographical portions of a mark would not be looked to as indicating the origin of the goods. The correct rule has been stated by this court many times. We must look to the mark as a whole, regardless of descriptive portions, and determine whether or not the use of the whole mark in the same field in which the mark of another is used would be likely to cause confusion.

While the facts in the case of Younghusband v. Kurlash Co., Inc., 25 C. C. P. A. (Patents) 886, 94 F. (2d) 230, 36 USPQ 323, in which the marks "STARLASH" and "KURLASH" were involved, differed from those at bar, we there said:

It is familiar doctrine that, in determining the question of confusing similarity of marks, they must be considered as a whole, but it does not follow that portions of marks which are similar must be given equal weight with portions of marks which are dissimilar.

*

We believe that purchasers would pay little attention to the last syllable of the marks as bearing upon the origin of the goods, but, seeing the marks as a whole, the mind would fasten upon the syllable "Kur" in appellee's mark and "Star" in appellant's mark, and the last syllable in each mark would be given little attention other than with respect to its descriptive character.

In Miles Laboratories, Inc. v. The Pepsodent Co., 26 C. C. P. A. (Patents) 1272, 104 F. (2d) 205, 41 USPQ 738, where the marks "PEPSO-SELTZER" and "ALKA-SELTZER" were involved, this court, in holding that the term "Seltzer" was descriptive, pointed out that any other conclusion than that at which we arrived would "result in appellant having practically a monopoly of the word 'Seltzer' in a trade-mark."

To the same effect was our holding in Miles Laboratories, Inc. v. United Drug Co., 27 C. C. P. A. (Patents) 1273, 112 F. (2d) 814, 46

USPQ 59, where the marks "REX-SELTZER" and "ALKA-SELTZER" were involved. We there said:

if the term "Rex" in appellee's mark is sufficiently dissimilar from the term "Alka" in appellant's mark so that, when considered in their entireties, the marks of the parties are not confusingly similar, appellee is entitled to have its mark registered.

See also Yeasties Products, Inc. v. General Mills, Inc., 22 C. C. P. A. (Patents) 1215, 77 F. (2d) 523, 25 USPQ 393.

The case of Hall v. Pennzoil Co., Etc., 29 C. C. P. A. (Patents) 933, 126 F. (2d) 506, 53 USPQ 61, seems to be closely in point on the nice question here presented. In that case we had before us the marks "PENNPAYZ" and "PENNZOIL." We held that there was no likelihood of confusion and called attention to the fact that there was "little resemblance either in meaning or sound except in the syllable 'PENN'

*" We also said that "the syllables 'PAYZ' and 'ZOIL' are so different in appearance and meaning that we think, as applied to oils and greases, purchasers would not likely be deceived in the origin of the goods * *" and we pointed out the generally recognized purpose in applying the term "Penn" to lubricants. There, neither party was entitled to a monopoly of the term "Penn"; so here, neither party is entitled to a monopoly of the term "of the Sea."

In so concluding, we do not mean to characterize the term as an improper portion of a trade-mark. It is generally recognized that most canned fish comes from the sea. The public should be free to use the term "of the Sea" in handling sea food. In doing so, however, one is not privileged to adopt a mark containing the said term, which mark as a whole is so confusingly similar to a mark owned and previously used by another as to mislead the public.

[3] Now, with these principles in view, and dissecting the marks only for the purpose of determining the meanings, sounds, and appearances of the same in relation to the question of confusing similarity, it seems clear to us that the word "Gem" and the word "Chicken" are so utterly dissimilar in sound, meaning, and appearance as to insure against the likelihood of confusion when the two marks containing the term "of the Sea" are concurrently used. "Gem" has a wholly different significance from "Chicken." "Chicken" may suggest (we have held that "Chicken" is not descriptive, Van Camp Sea Food Co. v. A. B. Stewart Organizations, 18 C. C. P. A. (Patents) 1415, 50 F. (2d) 976, 9 USPQ 541) that the fish upon which the mark is used is young and tender or excellent in taste. When we think of "Gem," we think of a jewel-something of great price or rare beauty, or the term may suggest desirability. No one is likely to be confused in buying an "of the Sea" product by reason of any similarity when that term is associated with the dissimilar words "Gem" and "Chicken," respectively.

[4] While cases of this character, as we have often said, presenting as they do close questions with respect to whether or not there is a likelihood of confusion, are largely matters of opinion and not easy of decision by reference to other cases because of the differing factual situations, we think the following decisions support our conclusion here: Rosenberg Bros. & Co. v. Robert G. Horowitz, 17 C. C. P. A. (Patents) 641, 35 F. (2d) 784, 3 USPQ 239 holding "WASHINGTON PARK" and "FASHION PARK" not confusingly similar); Rosenberg Bros. & Co. v. The Simon Levin & Sons Co., 17 C. C. P. A. (Patents) 847, 37 F. (2d) 962, 4 USPQ 156 (holding "COLLEGE PARK” and "FASHION PARK" not deceptively similar); Bourjois, Inc. v. Cheatham Chemical Co., 18 C. C. P. A. (Patents) 1089, 47 F. (2d) 812, 8 USPQ 469 (holding "POLLY PEACHTREE" not deceptively similar to "PEACHES," "PEACH BLOW," "PEACHES AND CREAM," or "VELVET OF PEACHES"); L. Otzen & Co. v. J. K. Armsby Co., 49 App. D. C. 134, 261 Fed. 1014 (holding "BLOSSOM AND SUNSHINE" and "FROM THE LAND OF SUNSHINE" not confusingly similar); and Plough Chemical Co. v. Bullion, 55 App. D. C. 294, 5 F. (2d) 117 (holding "BLACK AND WHITE" not deceptively similar to "RED AND WHITE”).

Opposer relies in part upon the decision of this court in the case of Marshall Field & Co. v. R. H. Macy & Co., Inc., 28 C. C. P. A. (Patents) 807, 115 F. (2d) 921, 47 USPQ 438, in which we held the marks "CREPEGLO" and "CREPETEX" confusingly similar. We there said:

It is very clear to us that the words "CREPEGLO" and "CREPETEX” bear a marked resemblance to each other in sound, appearance and meaning. The first syllable of each is identical and the last syllable certainly suggests a characteristic of the goods.

The facts there were wholly different from the facts here, since there was a greater resemblance between the marks there than there is between the marks at bar.

[5] Opposer has devoted considerable space in its brief in contending that its mark is not descriptive and has cited a number of cases in support of such contention. As before stated, we have held that "Chicken" is not descriptive, and, since "CHICKEN OF THE SEA” is a registered mark, it comes to us with the presumption that it is a valid mark and therefore not descriptive.

[6] Applicant has devoted some space in its brief to a charge of "unclean hands" on the part of the opposer. In view of our conclusion, it is unnecessary for us to consider this question. We could not do so anyway, because applicant has assigned no reason of appeal covering this subject-matter.

The decision of the Commissioner of Patents is reversed.

565 O. G. 717; 31 C. C. P. A. 1034; 142 F. (2d) 75; 61 U. S. P. Q. 349

BOGOSLOWSKY v. HUSE (No. 4871)

1. PATENTS—INTERFERENCE-PRIORITY-CONCEALMENT OF INVENTION.

Mason v. Hepburn doctrine of concealment and suppression of invention does not apply where there was no actual reduction to practice but merely constructive reduction by filing application; every case applying doctrine has involved actual reduction; doctrine applies only where there has been actual reduction of invention requiring physical embodiment in structure and testing to demonstrate operability and utility or, in case of process, operation of process for like purpose.

2. INTERFERENCE-REDUCTION TO PRACTICE.

Invention is not completed until reduced to practice.

3. APPEALS-BRIEFS-INTERFERENCE-EVIDENCE-IN GENERAL-REDUCTION TO

PRACTICE.

Applicant testified that he made golf balls according to method of counts, exhibited them to two witnesses, explained method to them, and tested balls in their presence and found balls satisfactory; witnesses testified but neither knew how balls were made except from applicant's statements to them; thus, there is no corroboration of applicant's testimony of method used; four balls claimed to have been made by method were introduced in evidence and one was cut open; applicant's appeal brief states that no balls made by any other method exhibit specific characteristics, but there is nothing in record supporting statement and Court may not accept statement of counsel which, if correct, should have been established by evidence; there being no corroboration of applicant's testimony as to method of making balls, testimony of two witnesses cannot be relied on for corroboration of applicant's testimony as to reduction to practice.

United States Court of Customs and Patent Appeals, April 4, 1944

[Affirmed.]

APPEAL FROM PATENT OFFICE, INTERFERENCE No. 78,369

Emery, Varney, Whittemore & Dix (Nichol M. Sandoe of counsel) for appellant.

Henry T. Hornidge for appellee.

[Oral argument March 6, 1944, by Mr. Sandoe and Mr. Hornidge]

Before BLAND, Acting Presiding Judge, and HATFIELD, LENROOT, and JACKSON, Associate Judges'

LENROOT, JUDGE, delivered the opinion of the court:

This is an appeal from a decision of the Board of Interference Examiners of the United States Patent Office in an interference proceeding awarding to appellee priority of invention of the subject matter of the six counts of the interference constituting the issue.

1 Garrett, P. J., did not participate in the consideration or decision of this case.

The interference is between an application of appellee filed on February 24, 1938, and an application of appellant filed on April 11,

1938.

Appellant being the junior party, the burden was upon him to establish priority of invention by a preponderance of evidence. Count 2 is illustrative of the subject matter involved and reads as follows:

2. In the manufacture of cores for playing balls, the method which comprises winding elastic thread under tension about and in direct contact with a sphere of frozen liquid, applying the thread with sufficient tension so that as the frozen liquid melts and is allowed to escape from the core the cavity thereby formed will be automatically filled with tensioned thread, and continuing the winding until a core of the desired diameter has been built up.

The involved invention is sufficiently described in said count. The board held that appellee had established a date of conception of the invention prior to the earliest date alleged in the preliminary statement of appellant; that neither of the parties had established actual reduction to practice of the invention, and that appellee, being the first to constructively reduce it to practice by the filing of his application, was entitled to the award of priority of invention. Appellant does not challenge the holdings of the board with respect to appellee's reduction to practice.

Upon this point counsel for appellant, in their brief, state:

The Board of Interference Examiners, after a searching analysis of the testimony on behalf of Huse, held that Huse has not established an actual reduction to practice prior to his filing date (Rec. p. 803). And since we see no error either in the reasoning of the Board or in the facts as found, we submit that this holding should be affirmed. Furthermore, in view of the extended discussion by the Board, to which we have nothing to add, we shall merely adopt the Board's discussion as a satisfactory statement of our position on this phase of the case.

Appellee before us does not challenge the finding of the board that he had not established actual reduction to practice of the invention.

Appellant urges reversal of the decision of the board upon two grounds, viz:

1. That appellee concealed and suppressed the invention, and that under the doctrine declared in Mason v. Hepburn, 13 App. D. C. 86, and many times approved by this court, appellee is estopped from claiming priority of invention, and

2. That the board erred in holdin gthat appellant had not established reduction to practice of the invention prior to appellee's constructive reduction to practice, and that it should have held that appellant reduced the invention to practice in November 1936.