#### NESTLE & ANGLO-SWISS CONDENSED MILK COMPANY *v.*WALTER BAKER & COMPANY, LIMITED.

*Trademarks ; Similarity*of Marks.

1. In a trademark case involving the question whether there is such a similarity between two marks as will cause confusion in trade, an ocular inspection of the marks constitutes the most satisfactory evidence. (Following *A. Leschen & Sons Rope Co.*v. *Broderick & R. Rope Co.*36 App. D. C. 451.)

2. A decision of the Commissioner of Patents sustaining an opposition to an application for the registration of a trademark for “cocoa with milk and chocolate with milk,” consisting of the words “Milkmaid Brand” and the picture of a milkmaid in Swiss costume, supporting a pail on her head and carrying another pail in her hand, on the ground of similarity to a previously registered mark, applied to “cocoa, chocolate, broma, and cocoa preparations, consisting of the picture of a waitress in Quaker or Puritan costume, carrying a tray supporting cups, was *reversed,*where it appeared that the applicant adopted its mark without any intention of simulating the other mark; that the opposer was not the originator of its mark, but copied it from another, and the extent to which the evidence to show confusion in trade went was that in some instances the opposer’s purchasers would ask for its goods as chocolate with the picture of a girl on it, or chocolate with a girl on it. Mr. Justice *Van Obsdel*dissenting. (Citing *Re Hopkins,*29 App. D. C. 118; *Walter Baker & Co.*v. *Harrison,*32 App. D. C. 272; and *Planten*v. *Canton Pharmacy Co.*33 *149App. D. C. 268; and distinguishing *American Stove Co.*v. *Detroit Stove Works,*31 App. D. C. 304; Wm. A. *Rogers*v. *International Silver Co.*34 App. D. C. 484; and A. *Leschen & Sons Rope Co.*v. *Broderick & B. Rope Co.*36 App. D. C. 451.)

No. 626.

Patent Appeals.

Submitted November *7,*1910.

Decided April *7,*1910.

Hearing on an appeal from a decision of the Commissioner of Patents sustaining an opposition to an application for the registration of a trademark.

*Reversed.*

The facts are stated in the opinion.

*Mr. James Hamilton*for the appellant.

*Mr. William Lowell Putnam, Mr. James L. Putnam,*and *Mr. H. A. Bodge*for the appellee..

Mr. Justice Robb

delivered the opinion of the Court:

This is an appeal from a decision of the Commissioner of Patents sustaining appellee’s opposition to the registration by appellant, the Nestle & Anglo-Swiss Condensed Milk Company, of a trademark for “cocoa with milk and chocolate with milk,” the mark consisting of the words “Milkmaid Brand” and the representation of a milkmaid in Swiss costume, supporting a pail on her head and carrying another pail in her hand. We reproduce the mark below.

*150Appellee’s mark, registered July Ith, 1905, and applied to “cocoa, chocolate, broma, and cocoa preparations,” consists, according to the statement in appellee’s application for registration, “of a picture of a girl or a woman taken from the picture known as-‘La Belle Chocolatiere,’ ” specifically, the representation .of a waitress in Quaker of Puritan costume carrying a tray supporting cups, as shown below.

Appellant has long been an extensive manufacturer of and dealer in milk preparations. In 1876 it registered in England, as a trademark for cocoa and milk and also for chocolate and milk, the mark which it here seeks to have registered, and in 1880 it obtained in Switzerland the registration of the same mark for coffee and milk, chocolate and milk, and cocoa and milk. In the application before ns, applicant makes oath that it has used its mark since 1870.

Appellee is not the originator of its mark. The identical mark was registered by J. G. Worth, May 28th, 1872, as a trademark for teas, coffees, and spices. A mark very similar to appellee’s was registered May 1st, 1887, to Davis, Sacker, & Perkins, as a trademark for coffee. The figure of a woman in various costumes has many times been registered as a trademark for similar goods.

*151Both sides took testimony. It is unnecessary to review appellant’s evidence, and we shall only briefly allude to that of appellee. No actual confusion has been shown. The nearest approach to it in the testimony adduced by appellee is that in some instances purchasers would ask for its goods as chocolate with the picture of a girl on it, or chocolate with a girl on it; but, as pointed out in the opinion of the Examiner of Interferences, whose decision was in favor of appellant, “the use of this expression by these purchasers does not negative or exclude the possibility that they had in their minds a definite conception or mental impression of the distinctive and fanciful features of opposer’s mark, such as would have enabled them to easily recognize the mark of applicant as substantially different therefrom; nor that this expression was not used by some, for instance by children and foreigners, merely because of a lack of command of the English language, or by others not so handicapped merely to avoid the trouble and loss of time involved in specifying in detail the fanciful and distinctive features of this mark. * * * That some of the witnesses who used this expression had a very clear and definite conception of these fanciful and arbitrary features appears from their testimony. Thus, for instance, the witness Laidy, a housewife, who states (Q. 9, *X*Q. 15) that she sends her child to the store Ho buy a package with the full length woman on it that has a Quaker costume,’ is able to give from memory a very accurate description of the distinctive features of opposer’s mark.”

After all, in a case of this kind, an ocular inspection of the marks constitutes the most satisfactory evidence.' *A. Leschen & Sons Rope Co.*v. *Broderick & B. Rope Co.*36 App. D. C. 451; *Layton Pure Food Co.*v. *Church & D. Co.*104 C. C. A. 464, 182 Fed. 24.

As above noted, appellee copied rather than originated, its mark. Indeed, if its contentions in *Walter Baker & Co.*v. *Harrison,*32 App. D. C. 212, and in the present case, should be accepted to their full extent, it would be a question whether it ever had any right at all to the mark. Certain it is that, *152not being the originator of the mark, it has no right to exclude everyone else from using the representation of a woman as a trademark upon similar goods *(Liggett & M. Tobacco Co.*v. *Finzer,*128 U. S. 182, 32 L. ed. 395, 9 Sup. Ct. Rep. 60), conceding, for the purpose of this case only, that it might have had that right had it been an originator instead of a copier. Assuming, therefore, that each of the parties to this proceeding has the right to the representation of a woman as a trademark, the only question before us, our jurisdiction being purely statutory, is whether the marks in issue are so nearly alike as to deceive purchasers, and therefore cause confusion in trade.

“Milkmaid Brand” is a constituent part of appellee’s mark and we must so consider it here. *Morgan Envelope Co.*v. *Walton,*82 Fed. 469; *Filley*v. *Passett,*44 Mo. 173, 100 Am. Dec. 275; *Re Hopkins,*29 App. D. C. 118; *Planten*v. *Canton Pharmacy Co.*33 App. D. C. 268. It logically follows, therefore, that the word “Milkmaid” in “Milkmaid Brand” is the alternative of the figure of the milkmaid beneath; in other words, “Milkmaid” and the pictorial representation mean the same to the public. The right to employ one necessarily includes the right to employ both. That no one would fail to recognize the mark in its entirety as the representation of a milkmaid, and hence associate -the goods to which it applies as the “Milkmaid Brand,” we think too apparent to require further discussion.

Mr. Justice Van Orsdel, delivering the opinion of the court in Walter *Baker & Co.*v. *Harrison,*32 App. D. C. 272, supra, in commenting upon the similarity between appellee’s mark and the other mark there involved, said: “The style of dress shown in each mark is the same, *being the style at once recognized as that of a Quaker lady.”*The description is apt, and to our minds controlling on the question of similarity in the present case. We are unable to find that anyone of average discernment would be likely to take one mark for the other,—-to confuse the “Quaker lady” with the “Swiss milkmaid.” It must be borne in mind that appellant adopted its mark in "good faith, and without any intention of simulating the mark *153of appellee. The suggestions, therefore, in *Americna Stove Co.*v. *Detroit Stove Works,*31 App. D. C. 304, and in *Wm. A. Rogers*v. *International Silver Co.*34 App. D. C. 484, do not here apply.

Appellee urges the applicability of the decision in Walter *Baker & Co.*v. *Puritan Pure Food Co.*139 Fed. 680, to this case. It is necessary only to say that there ivas much greater similarity between the marks in that case than between the marks in this. There the mark of the Puritan Food Company was the full length figure of a woman dressed in Puritan costume.

The decision of the Commissioner is reversed, and the clerk will certify this opinion as by law required. *Reversed.*

Mr. Justice Van Orsdel

dissenting:

I am unable to agree with the views expressed in the opinion of the majority of the court. The question presented is whether or not the marks are of such similarity as to be likely to create confusion in trade. A large number of witnesses, consisting of appellee’s advertising manager, several demonstrators of the goods sold by it, a number of grocers who handled the goods, and a number of consumers, were introduced by appellee company. The witnesses were examined as to the likelihood of these two marks creating confusion in trade. The evidence considered as a whole is to the effect that the goods of the appellee company are called for in the trade as the “chocolate with the woman on it” the “chocolate with the girl on it,” “chocolate with a girl,” “chocolate with a woman,” and similar expressions. This testimony, coming from a large number of witnesses, some of whom, at least must be regarded as disinterested, stands unimpeached. While the marks differ somewhat, they both represent the full length figure of a woman; and while the style of dress is somewhat different, I am of opinion, in the light of the evidence, that appellant’s mark comes within the inhibition of the statute. (33 Stat. at L. 725, chap. 592, U. S. Comp. Stat. Supp. 1907, p. 1010.) Neither is the probability of *154confusion reduced by the appellant’s use of the words “Milkmaid Brand,” since the goods upon which both marks are used are not only goods of the same descriptive qualities, but are identically the same quality of goods.

In *Walter Baker & Co.*v. *Puritan Pure Food Co.*189 Fed. 680, the court, considering the similarity between appellee’s mark in the present case and a full length figure of a woman dressed in Puritan costume standing beside a rock, said: “Complainant contends that the picture displayed by the defendant upon its standard cans and packages, in connection with its commodity, though of different color and differentiating accessories, is nevertheless a counterfeit of its previously adopted trademark. Evidence has been introduced to. show that complainant has constantly used its trademark or emblem since about 1875, and at enormous expense has thus advertised its product in the leading newspapers and periodicals published throughout the United States and Canada. As a natural result thereof, complainant’s appropriation not only attracted the attention of the public generally, but was the means of identification of its chocolates and cocoa by the consumer. That such chocolate and cocoa is frequently purchased and designated by the buyer as The cocoa with the picture of the woman or girl,” or The chocolate with the picture of the lady,’ is abundantly established by the evidence. * * * For the foregoing reasons, despite the differences in colors and direction, in which the figures face, I have reached the conclusion that defendant’s trademark adapted and used by it is in similitude of that of •complainant; that confusion is likely to arise, and the goods of defendant be purchased in the belief that they are those of complainant.”

The expressions by which the appellee’s mark is shown by the testimony to be known to the trade—“the cocoa with the picture of the lady on it,” or “the chocolate with the picture of the lady on it”—would apply equally to appellant’s mark. It is estimated by the tribunals of the Patent Office that the evidence in the record discloses that 20 per cent of the persons calling for appellee’s goods call for them by one *155or the other of the above titles, and a careful review of the evidence convinces me that this estimate is substantially correct. The rule stated by the court in the case of *Wayne County Preserving Co.*v. *Burt Olney Canning Co.*32 App. D. C. 279, would seem to apply with equal force to the present case. In that case the court said: “lust what degree of resemblance is necessary to bring about confusion in trade is incapable of exact definition. About all that can be said is that no person engaged in trade can adopt a trademark so resembling that of another trader, when applied to the same class of goods, as will mislead a purchaser in buying with ordinary caution. The rule announced by the Supreme Court in *McLean*v. Fleming, 96 U. S. 245, 24 L. ed. 828, is as follows: ‘Two trademarks are substantially the same in legal contemplation, if the resemblance is such as to deceive an ordinary purchaser giving such attention to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.’ ” See also *Gorham Mfg. Co.*v. White, 14 Wall. 511, 20 L. ed. 731.

The opinion of the majority of the court ignores largely the evidence upon which in my judgment the case turns, and rests the decision in appellant’s favor upon a theory of equity which has no bearing upon this case. The sole question for consideration is whether the mark sought to be registered by appellant is such as to cause confusion in trade with appellee’s mark. The equities surrounding appellant’s use of the mark are not to be here considered. It is not material that appellant used this mark extensively in foreign countries. Appellee has the prior right here, and, if appellant’s mark is such as to create confusion in trade, the opposition should be sustained.