Appeal from the District Court of the United States for the Eastern District of Illinois; Walter C. Lindley, Judge.
Before SPARKS, MAJOR, and TREANOR, Circuit Judges.
This is an appeal from an order granting an injunction and accounting in a trade-mark case. The plaintiff is a packer of meat and food products, while the defendants are dog food manufacturers.
Plaintiff, as early at 1899, registered the word Heart in association with the outline of a heart for cured meats. Afterwards, similar registrations were made for a wide variety of products including dairy, hog, stock, and poultry feeds of various kinds. On May 17, 1932, plaintiff filed an application in the United States Patent Office for the words "Red Heart" and the picture of a heart in connection with dog food which matured into Registration No. 308,670, dated December 12, 1933. Application for the words Red Heart alone was filed April 26, 1934, maturing in Registration No. 317,414, dated September 25, 1934. Plaintiff's first use of the trade-mark, Red Heart, on dog food was in April, 1932. The mark, at that time, consisted of the words Morrell's Red Reart Brand, displayed upon the representation of a Red Heart. Plaintiff's trade-mark for dog foods adopted in January, 1934, consists of the words Red Heart alone superimposed upon the representation of a Red Heart.
Defendants adopted the trade-mark Strongheart August 4, 1932. At that time they had established brands such as Doyle's Supreme, Rowdy, and Cal Chow. This trade-mark was used only in connection with the picture of Strongheart, the motion picture dog featured in several motion pictures from 1921 to 1926. The mark was in the form of a circle, with the pciture of the dog in the center and the word Strongheart appearing in a semicircular form above the picture of the dog. The latter mark was colored in gray in contrast to plaintiff's color of red.
Defendants under date of October 11, 1932, filed an application in the United States Patent Office for registration of the trade-mark Strongheart for dog and cat food, which mark was opposed by the plaintiff on December 14, 1932. The Examiner of Interferences held the word Heart was a dominant feature of both marks and that there was likelihood of confusion. Upon appeal this holding was affirmed by the Commissioner of Patents, and upon further appeal the Court of Customs and Patent Appeals, under date of March 29, 1937, affirmed the decision of the Commissioner of Patents. Doyle v. John Morrell & Company, 88 F.2d 721.
Plaintiff's bill pleads the decisions of the Patent Office tribunals, including that of the Court of Customs and Patent Appeals, and urges the position that the decision of that court is final and res adjudicata in the instant suit, and that as a result thereof, defendants are estopped to urge and present evidence in an attempt to show there is no likelihood of confusion in trade between the respective parties. The District Court sustained plaintiff's contention (John Morrell & Co. v. Doyle et al., 20 F.Supp. 110) and found as a conclusion of law: "Where the Patent Office is authorized by statute to decide certain issues and the parties submit the jurisdiction and the issues are decided, the findings become res adjudicata as to the issue of fact and law in a technical trade-mark infringement suit where the parties, the marks, and the goods are the same."
We must first dispose of the question as to whether this is a correct pronouncement of law. In thus determining, it is material, but perhaps not conclusive to ascertain whether the issue before the Court of Customs and Patent Appeals was the same as that here presented. There, as we under stand, the court was considering merely the words Red Heart and Strongheart unaccompanied by other features. The court on page 721 of 88 F.2d said: "As the issue comes to us, the only question to be determined is that of likelihood of confusion in trade by reason of the similarity of the marks. Upon this we think there is small room for doubt."
It seems apparent that the court did not consider the manner in which defendants' mark was used, but was dealing merely with the naked word Strongheart. Thus, on page 722, it is said: "These pictures, however, being no part of the marks, are not of particular importance in this statutory proceeding. We have simply compared the naked marks with each other, and from the comparison it seems to us unquestionable that there is likelihood of confusion in trade from their use upon identical goods."
The issue there was merely the right to register, while here is presented, as disclosed by plaintiff's bill, the right to the use of the word Strongheart in connection with the manufacturing and sale of dog foods from which it necessarily follows that it is the use which is complained of. No damages could be predicated upon the use of the word Strongheart without taking into consideration the manner and circumstances surrounding its use. The Court of Customs and Patent Appeals, as its opinion clearly indicates and as was incumbent upon it, in determining defendants' right to register, reached the conclusion that there was likelihood of confusion in trade by reason of the similarity of the marks. This was nothing more than an opinion, the accuracy of which only the future might reveal. It was not a determination of an existing or passed fact or event, but was of a speculative nature as to what was likely to subsequently occur. The issue here is not what may occur, but what has actually taken place. The bill is thus predicated, otherwise no cause of action is stated. We think the cases cited and relied upon by plaintiff and which seem to have been controlling in the mind of the District Judge, may generally be distinguished as cases where the Patent Office and the court of Appeals of the District of Columbia (now Court of Customs and Patent Appeals) were dealing with questions of fact rather than opinions speculative in nature. Typical of such cases is Morgan v. Daniels, 153 U.S. 120, 14 S. Ct. 772, 773, 38 L. Ed. 657, where the question before the Patent Office related to priority of invention. That issue was one of fact capable of precise determination. Even then, the Supreme Court only held "the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction." Even on this issue of fact the court was far from holding that a determination of such was res adjudicata.
Other cases cited by the District Court merely go to the extent of holding that the decision of the Patent Office upon a question of fact is entitled to great weight. Among these is that of Imperial Brass Manufacturing Company v. Hackney, 7 Cir., 75 F.2d 689, on page 691, where this court said: "But where the contested issue in the two proceedings (the interference and the infringement suit) is the same, and the disputed issue of fact is identical, why shouldn't the determination of the contest in the Patent Office assume well nigh dominating importance in the determination of the infringement suit?"
There are numerous authorities in support of defendants' contention that the proceedings or decisions by the Commissioner of Patents or the Court of Customs and Patent Appeals, as it is now known, is not final or res adjudicata. In Postum Cereal Company v. California Fig Nut Company, 272 U.S. 693, on page 698, 47 S. Ct. 284, 285, 71 L. Ed. 478, the court said: "The decision of the Court of Appeals udner section 9 of the act of 1905 [15 U.S.C.A. § 89] is not a judicial judgment. It is a mere administrative decision. It is merely an instruction to the Commissioner of Patents by a court which is made part of the machinery of the Patent Office for ...