simple and such as should have been obvious to those in the field. Yet this does not necessarily negative invention or patentability. Goodyear Tire & Rubber Co., Inc. et al. v. Ray-O-Vac Company, 321 U. S. 275; In re DeLancey, 34 C. C. P. A. (Patents) 849, 159 F. (2d) 737, 72 USPQ 477. Indeed, simplicity may even be some evidence of invention. Baldwin-Southwark Corporation v. Tinius Olsen Testing Mach. Co. et al., 88 F. (2d) 910. [3] Moreover, the conception of doing a thing, the result of which is new and useful, must be considered along with the actual steps of doing it in considering the presence or absence of patentability. In re DeLancey, supra.

In the light of the foregoing, we are of the opinion that the method of the appealed claims is patentable. Therefore, the decision of the Board of Appeals as to claims 1 to 8 inclusive is reversed.

JACKSON, Judge, sat during the argument in this case, but retired April 1, 1952, before the opinion was fully prepared. He was recalled in conformity with section 294 (c) (d), Title 28, U. S. C., to participate in the decision and did so.

665 O. G. 12; 39 CCPA 937; 195 F. (2d) 926; 93 USPQ 304

F. JACOBSON & SONS, INC. v. JAYBERN FABRICS, INC. (No. 5863) TRADE-MARKS

1. IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERAL-IDENTITY AND SIMILARITY-WORDS

Applicant's "Jaybern" applied to piece goods is similar to opposer's "Jayson" applied to various articles of clothing made of piece goods; both parties are located in same city and both operate in intrastate as well as interstate commerce; these facts, considered in their entirety, create doubt that use of "Jaybern" would not result in confusing purchasing public; doubt should be resolved in favor of opposer and against newcomer in field.

United States Court of Customs and Patent Appeals, April 8, 1952 APPEAL from Patent Office, Opposition No. 27,523

[Reversed.]

J. T. Basseches for appellant.

Morris Kirschstein for appellee.

[Oral argument March 3, 1952, by Mr. Basseches and Mr. Kirschstein]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

WORLEY, Judge, delivered the opinion of the court:

This is an appeal from the decision of the Commissioner of Patents, 87 USPQ 114, in a trade-mark opposition proceeding in which the

commissioner reversed the decision of the Examiner of Trade-Mark Interferences who had sustained the opposition of opposer.

It appears from the record that Jaybern Fabrics, Inc., hereinafter referred to as applicant, applied for registration under the Lanham Act (Trade-Mark Act of 1946) of the word "JAYBERN," serial No. 535,041, filed September 19, 1947, for use on "* Piece Goods Consisting of Wool, Cotton, Rayon and Mixtures Thereof." It alleged that the mark had been used on its goods since 1944.

* *

In its notice of opposition, F. Jacobson & Sons, Inc., hereinafter referred to as opposer, alleged use and ownership of four prior registrations, one of which consists of the word "JAYSON," registered August 5, 1941, for use on "MEN'S COLLARS AND CUFFS, MEN'S DRESS AND NEGLIGEE SHIRTS WITH ATTACHED COLLARS OR WITH MATCHED, DETACHED COLLARS, AND MEN'S PAJAMAS." The identical mark was likewise registered October 10, 1944, for use on "LADIES' SPORTSWEAR AND PLAY CLOTHES-NAMELY, TENNIS DRESSES, BADMINTON DRESSES, SLACKS, SHORTS, SPORTS DRESSES, SUNBACK DRESSES, BLOUSES, AND SPORTS SHIRTS— The August 5, 1941, registration of the word "JAYSON" as well as the October 10, 1944 registration was prior to the date of first use of its mark alleged by applicant, therefore, there is no question of first use herein.

Neither party took testimony but both parties submitted briefs before oral argument here.

In sustaining the notice of opposition, the Examiner of Trade-Mark Interferences stated:

The goods for which applicant seeks registration comprises piece goods adapted for use in the manufacture of articles of clothing of the kind sold by the opposer; and it has long been recognized that products in these two categories are so inseparably related in character that the sale thereof under the same or confusingly similar trade-marks would be likely to cause confusion or deception of purchasers. Ex parte Graymoor Fashions, Inc., 79 USPQ 423; The Enro Shirt Company v. Raytron Fabrics, Inc., 75 USPQ 362; and cases therein cited. The applicant in effect takes the position that, in the absence of evidence upon the point, it is improper here to assume that its piece goods are in fact adapted for use in making garments. The applicant's goods, however, for the purpose of this case must be regarded as including all goods reasonably falling within the scope of the broad description thereof contained in its application. General Foods Corp. v. Casein Co. of America, Inc., 515 O. G. 562, 108 F. (2) 261, C. C. P. A.; Remington Rand, Inc. v. Rex-O-Graph, Inc., 73 USPQ 118; Standard Oil Co. of N. J. v. Eddington Metal Specialty Co., 77 USPQ 399; Ex parte Graymoor Fashions, Inc., supra. And the piece goods so described obviously comprise fabrics customarily employed in making the identical items of wearing apparel sold by the opposer.

He further held that the marks themselves were too closely alike to enable their concurrent use upon the involved goods without reasonable likelihood of confusion or deception of purchasers.

In reversing the examiner, the Commissioner of Patents held that the involved goods were specifically different; that there was no evidence that the goods were sold to the same class of purchasers; that the marks themselves could not be confused; and that there was no evidence to show likelihood of confusion.

66* * *

The question before us is, of course, as was stated by the commissioner, whether the mark of the applicant so resembles a mark of the opposer as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive purchasers.”

[1] To us the words "JAYSON" and "JAYBERN" appear to be quite similar. It is to be noted that each consists of two syllables; that the first syllable in each mark is identical with the other; that the last letter in the last syllable of each is an "n"; and that both marks are written in script; moreover, it is to be noted that both corporations here involved are located in the city of New York, New York; and that both operate in intrastate as well as interstate commerce.

The above facts, considered in their entirety, create a doubt in our minds that the use of applicant's mark would not result in confusion on the part of the purchasing public. We feel that such doubt should be resolved in favor of the opposer and against the newcomer to the field. Skelly Oil Co. v. The Powerine Co., 24 C. C. P. A. (Patents) 790, 86 F. (2d) 752, 32 USPQ 51; G. H. Packwood Manufacturing Company v. The Cofax Corporation, 37 C. C. P. A. (Patents) 1195, 183 F. (2d) 196, 86 USPQ 410.

Under the facts herein, it is our opinion that the decision of the Commissioner of Patents should be, and it is hereby, reversed.

JOHNSON, Judge, dissents.

JACKSON, Judge, sat during the argument in this case but retired April 1, 1952, before the opinion was fully prepared. He was recalled in conformity with Section 294 (c) (d), Title 28 U. S. C. to participate in the decision and did so.

660 O. G. 807; 39 CCPA 939; 196 F. (2d) 532; 93 USPQ 436 THE ALLIGATOR COMPANY V. LARUS & BROTHER COMPANY, INC. (No. 5837)

TRADE-MARKS

1. MARKS AND NAMES SUBJECT TO OWNERSHIP-NAMES OF INDIVIDUALS, CORPORATIONS, ETC.

Third proviso of section 5 of 1905 Act had no relation to question of confusion in trade or unfair competition; hence, applications to register merely

241484-53—18

corporate names were rejectable without reference to question of confusion; 1946 Act has no such provision; question involved under 1946 Act is likelihood of confusion respecting origin of merchandise.

2. CLASS OF GOODS--HOW DETERMINED

Vital change between 1905 and 1946 Acts relates to "same descriptive properties," it not being necessary under section 2 (d) of 1946 Act to establish that goods of parties have same descriptive properties.

3. REGISTRATION-IN GENERAL

Section 2 (d) of 1946 Act provides more flexible test (than section 5 of 1905 Act) which will require refusal of registrations in cases where there is likelihood of confusion, mistake, or deception, even though goods fall into different categories, while presumably permitting registration in case of goods falling within same general class, but where it is apparent that confusion is unlikely; it is still necessary to establish likelihood of confusion.

4. IDENTITY AND SIMILARITY-HOW DETERMINED-DISSECTING Marks

When determining matter of resemblance, composite marks must be considered as entireties.

5. IDENTITY AND SIMILARITY-WORDS AND SYMBOLS

"Alligator" with caricature of alligator, with or without "Cigarettes," is not confusingly similar to "Alligator," with or without "Rainwear" and caricature of different alligator.

6. EVIDENCE OF CONFUSION

In determining likelihood of confusion between marks under 1946 Act, merchandise of parties must be considered.

7. CLASS OF GOODS-PARTICULAR CASES

Smoking tobacco, chewing tobacco, cigars, cigarettes, and snuff differ from raincoats.

8. OPPOSITION-IN GENERAL

Sections 44 (g) and (h) of 1946 Act do not apply to opposition filed by domestic corporation.

United States Court of Customs and Patent Appeals, March 31, 1952 APPEAL from Patent Office, T. M. Opposition No. 27,915

[Affirmed.]

Zabel and Gritzbaugh (Thomas L. Mead, Jr., Bayard Jones, and Max W. Zabel of counsel) for appellant.

A. Yates Dowell for appellee.

[Oral argument January 10, 1952, by Mr. Jones and Mr. Dowell]

Before GARRETT, Chief Judge, and JACKSON, O'CONNELL, JOHNSON, and WORLEY, Associate Judges

GARRETT, Chief Judge, delivered the opinion of the court:

This is an appeal from the decision of the Commissioner of Patents, speaking through Assistant Commissioner, Honorable Joe E. Daniels,

86 USPQ 332, affirming that of the Examiner of Trade-Mark Interferences dismissing appellant's notice of opposition to the application of appellee for a trade-mark registration on the Principal Register under the Trade-Mark Act of July 5, 1946, commonly known as the Lanham Act,1 and according appellee the right to register.

The mark which appellee seeks to register consists of the word "Alligator" in capital letters enclosed with an oval-shaped ring which rests upon a base that simulates alligator leather. At the top of the ring there is a caricature of an alligator standing upright on its hind legs with curved tail, the tip of which points toward the back of the body. In the right paw there is what is assumed to be a representation of a "walking stick," or cane, and the corresponding left member holds a representation of a cigarette. In front of the head, which is placed at practically a right angle to the body, three circles are shown which represent rings such as those frequently blown by smokers, particularly by cigarette smokers.

Appellee's application is for registration of the composite mark as a trade-mark "for tobacco and tobacco products, namely smoking tobacco, chewing tobacco, cigars, cigarettes, and snuff." November 12, 1946, was alleged as the date on which it was "first used in commerce which may be lawfully regulated by Congress." This is a date long subsequent to the time when appellant acquired ownership and registration of marks which it pleaded in its notice of opposition, as hereinafter stated.

With respect to the grounds of appellant's opposition, we quote the following statement from the decision of the Examiner of TradeMark Interferences:

The opposer's right of action is predicated upon general allegations of confusion in trade and unfair competition and more specifically (1) upon allegations of prior use by opposer of the word "Alligator" as a corporate name and trade name, as well as a trade-mark upon rainwear and sportswear, such as raincoats, topcoats and jackets and that the word "Alligator" has become strongly associated in the public mind with opposer's business and reputation; (2) allegations of ownership by opposer of the trade-mark Registrations Nos. 75,365, 251,201, 268,072, 346,241, 346,414 and 358,254, "which embody the word 'ALLIGATOR'"; (3) allegation of prior use by opposer of pictorial representations of an alligator, in connection with advertisements of its products; (4) allegation of prior use by opposer of a distinctive commercial signature "which appears on its advertisements and elsewhere" and which is characterized by "the use of shaded capital letters for the word 'ALLIGATOR' and by the use of script for the word describing the goods, the latter word appearing directly under the former" which commercial signature, petitioner alleges, applicant has copied; and (5) allegation of prior manufacture and sale by opposer of "other

1 The Act was formulated by the Committee on Patents of the House of Representatives of which Honorable Fritz Lanham of Texas was Chairman at the time of the passage of the bill by the Seventy-ninth Congress.