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In re E. I. Du Pont de Nemours & Co.

United States Court of Customs and Patent Appeals

May 3, 1973

Patent Appeal No. 8866


 [***565]   [*1359]  MARKEY, Chief Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board, 166 USPQ 351  [***566]  (1970), affirming a refusal to register DuPont's mark RALLY for a combination polishing, glazing and cleaning agent for use on automobiles 1 on the basis of likelihood of confusion under section 2(d) of the Lanham Act with Horizon's registered mark RALLY for an all-purpose detergent. 2 We reverse.

The application now before us was originally filed by Horizon. DuPont had earlier filed for registration of RALLY for a combination wax and cleaning agent for automobiles. 3 That application was refused in view of Horizon's registration. DuPont appealed and the board affirmed. 4 

While its appeal was pending, DuPont purchased Horizon's mark for the automobile product, the present application and the good will of that business. Because Horizon retained RALLY for all-purpose detergent,  [**2]  an agreement designed to avoid conflict was entered into on the same day. Boundaries of use of the marks were established, permitting the sale of products "incidentally usable" in the other party's market but prohibiting any promotion as "especially suited for use in such market." DuPont's realm was the "automotive aftermarket." Horizon's encompassed the "commercial building or household market."

The examiner, aware of the assignment and agreement, nonetheless refused registration, citing Horizon's registration and describing the issue as "ruled upon" in the board's earlier decision. The board affirmed, holding:

It is our opinion that despite any agreement between the parties the public interest cannot be ignored, and when the goods of the parties are as  [*1360]  closely related as those here involved, their sale under the identical mark "RALLY" would be likely to result in confusion, mistake, or deception. cf. In re Avedis Zildjian Co., 157 USPQ 517 (CCPA, 1968); and In re Continental Baking Company, 156 USPQ 514 (CCPA, 1968). * * * The mere fact that registrant may have precluded itself from selling an automobile cleaner under the mark "RALLY" does not overcome the likelihood [**3]  of confusion as set forth in Section 2(d) of the Trademark Statute.


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476 F.2d 1357 *; 1973 CCPA LEXIS 363 **; 177 U.S.P.Q. (BNA) 563 ***


Prior History:   [**1]  Serial No. 307,711.


registration, register, public interest, likelihood of confusion, right to use, trademark, products, marks, parties, marketplace, cleaning

Business & Corporate Compliance, Registration Procedures, Federal Registration, Principal Register, Patent Law, Jurisdiction & Review, Subject Matter Jurisdiction, Appeals, Trademark Law, Likelihood of Confusion, Consumer Confusion, General Overview, Trademark Cancellation & Establishment, Types of Commercial Transactions, Sales of Goods, Similarity of Marks, Appearance, Meaning & Sound, Civil Procedure, Defenses, Demurrers & Objections, Affirmative Defenses, Laches, Defenses, Inequitable Conduct, Ownership, Conveyances, Statutory Bars, Abandonment & Forfeiture Bar, Abandonment