Ostermoor & Co. v. Rose Spring & Mattress Co., 5 F.2d 268 (D.C. Cir. 1925)

*269 H. F. Riley, of Washington, D. C., and C. C. Cousins, of New York City, for appellant.

E. W. Bradford, of Washington, D. C., for appellee.

Before MARTIN, Chief Justice, and ROBB and VAN ORSDEL, Associate Justices.

ROBB, Associate Justice.

This is a trademark opposition proceeding, in which the tribunals of the Patent Office accorded the right of registration to the appellee of the following mark, in use since 1912:

For about 20 years appellant has used a composite mark, consisting of a label on which is a circle divided into quarters, two of the quarters containing representations of a mattress and bearing the legend

In the other two quarters are similar representations of a mattress with a half figure of a woman and the same legend. Since the filing of the opposition, the two marks first mentioned have been canceled, as purely descriptive. See Int. Bedding Co. v. Ostermoor & Co., 319 O. G. 235. The correctness of this decision is apparent from an ocular inspection of these marks. It well might be questioned whether the two other alleged marks, standing alone, are not subject to the same objection, for the dominating feature of each is a mattress, and the half figure of a woman is so subordinate and incidental as not to be sufficiently distinctive to overcome this objection. See McIlhenny's Son v. Trappey & Sons, 51 App. D. C. 273, 275, 277 F. 615.

In Weiss & Co. v. Stuart, Keith & Co. (Patent Appeal No. 1690) 4 F.(2d) 442, at present term, we reaffirmed a prior ruling in Planten v. Canton Pharmacy Co., 33 App. D. C. 268, to the effect that a party may not segregate his trade-mark, and, by registering each of its features separately, prevent the registration by another of any particular part of the mark as actually used, when such registration and use by another would cause no confusion in the trade or prejudice to the first user. That ruling is applicable here. Appellant's mark obviously should be considered in its entirety, for determination of the question whether concurrent use of the opposing marks would be likely to result in confusion, and, in determining that question, we must give due effect to the rule that the adoption of a suggestive mark by one trader will not preclude all other traders from employing another mark of equal suggestiveness, providing such other mark is not deceptively similar. Bartlett Co. v. Arbuckle Bros., 52 App. D. C. 267, 285 F. 1001.

Tested by this rule, we think it quite apparent that the Patent Office decision was correct. This is not an attempt by one party to register the dominating feature of an adversary's mark, as in Carmel Wine Co. v. Cal. Winery, 38 App. D. C. 1. The decision is affirmed.

Affirmed.