Things to Know About Trade-Marks: A Manual of Trade-Mark Information

by J. Walter Thompson Company

This mark stands for quality in confectionery.

The complainant based his action for an injunction against the use by the defendant of the mark, "U—C—A" on the ground that its resemblance in sound to "Yusea" was sufficient to confuse buyers and divert trade from the complainant.

It was shown that "Yusea" is commonly pronounced "You see a"; that purchasers, in asking dealers for these mantles, called them "You See A" Mantles; and that the pronunciation of the name of defendant's mantles was the same as the name of complainant's products.

The defendant contended that there was no similarity in appearance in the two names; that the similarity in sound was only incidental; that there was no infringement, because the name "U—C—A" had been devised prior to the conception of "Yusea"; and that the registration of "U—C—A", allowed by the Patent Office, was proof of dissimilarity.

The Court sustained the contention of the Welsbach Light Company, and the use of "U—C—A" as a trade-mark for gas mantles was enjoined on the ground that it was an infringement of "Yusea."

Where there is a casual resemblance, not sufficiently marked to deceive a person of ordinary judgment, there is held to be no infringement.

A case in point was shown in the contention between the manufacturers of the well-known "3 in 1" Oil and the owners of a similar product called "Big Four". The "3 in 1" label bears a large figure "1" in red, enclosing the figure "3" and the word "in". The defendant's label was of different size, was printed partly in red and partly in black, and was headed "Big Four". The figure "4" in black was displayed prominently on a red background. No infringement.

A trade-mark may be held to infringe another trade-mark already established, even if it has no similarity in sound or to the eye, but if there is a close similarity in ideas.

This is exemplified by a case recently, before the Federal court for the Southern district of New York. The words "Beats-All" have been used for a number of years as a trade-mark for pencils. The owners of the "Beats-All" trade-mark applied for an injunction against the use of "Knox-All" as a trade-mark for pencils sold by a rival concern. The defendant contended that "Beats-All" was a descriptive term, indicating superiority, and, as such, it could not be protected as a trade-mark. The complainant proved that he had used the mark "Beats-All" for many years, and that, while it was originally descriptive, long usage had given it a secondary meaning. He also showed that he had registered this trade-mark under the ten years' clause. The court held that the registration of the mark under the ten years' clause removed it from the class of descriptive phrases—in other words, that registration under the ten years' clause was a prima facie evidence of validity. The defendant claimed, that in any case, "Knox-All" was so dissimilar to the ear and eye, there was no infringement of "Beats-All". This view was not sustained by the court, which held that a close similarity of ideas was sufficient to constitute infringement.