MEAD JOHNSON & COMPANY, PETITIONER, VS. N. V. J. VAN DORP, LTD., ET AL., RESPONDENTS.

On June 2, 1956, N. V. J. Van Dorp, Ltd., a corporation organized
under the laws of Netherlands, located and doing business at Gouda,
Netherlands, filed an application for the registration of the trademark
“ALASKA and pictorial representation of a Boy’s Head within a
rectangular design (ALASKA disclaimed).” The trademark was published in
an issue, of the Official Gazette which was officially released on June
5, 1956.

Mead Johnson & Company, a corporation organized under the laws
of Indiana, U.S.A., being the owner of the trademark “ALACTA” used for
powdered half-skin milk, which was registered with the Patent Office on
June 12, 1951, filed an opposition on the ground that it will be
damaged by the said registration as the trademark “ALASKA” and
pictorial representation of a Boy’s Head within a rectangular design
(ALASKA disclaimed), used for milk, milk products, dairy products and
infant’s foods, is confusingly similar to its trademark “ALACTA”.

In answer to the opposition, the applicant alleged that its
trademark and product “ALASKA” are entirely different from oppositor’s
trademark and product “ALACTA”, since applicant’s product covers milk,
milk products, dairy products and infant’s foods which fall under Class
47, Foods and Ingredients of Foods, while oppositor’s products’, cover
pharmaceutical preparations for nutritional needs which fall under
Class 6, which refers to Medicines and Pharmaceutical Preparations.

After issues were joined, and after due hearing, the Director of the
Patent Office, on August 26, 1960, rendered decision dismissing the
opposition and holding that the trademark sought to be registered does
not sufficiently resemble oppositor’s mark “as to be likely when
applied to the goods of the parties to cause confusion or mistake or to
deceive purchasers” even if oppositor’s goods, half-skim powdered and
powdered whole milk and those of applicant’s condensed and evaporated
milk are similar as they have the same descriptive properties, both
goods, being milk products.

Hence, oppositor filed the present petition for review.

Petitioner contends that the Director of the Patent Office erred (1)
in holding that the mark which respondent seeks to register does not
resemble petitioner’s mark as to be likely when applied to the goods to
cause confusion or mistake or to deceive purchasers, and (2) in holding
that the trademark sought to be registered has become distinctive based
on its extensive sales.

Anent the first point, petitioner seems to dispute the finding of
the Director of the Patent Office by emphasizing the striking
similarities existing between the trademark “ALASKA” which is sought to
be registered and that of “ALACTA” which petitioner has long registered
for the protection of its products. Thus, it is argued, in appearance
and sound the trademarks “A L A S K A” and “ALACTA” are sufficiently
close. The three vowels are the same in both the public would pronounce
them short accenting on the second syllable. Both marks have the same
number of letters and the vowels are placed on the same position. The
general form and sound of the words are of marked similarity so as to
suggest the likelihood of confusion. While “ALACTA” and “ALASKA” differ
entirely in meaning, they are confusingly similar in appearance. The
three letter prefixes of both marks are identical. Both marks end with
the same letter “A”. The only difference, lies in the letters “CT” in
“ALACTA” and “SK” in “ALASKA”. And in support of its contention,
petitioner cites the case of Esso Standard Oil Company vs. Sun
Oil Company, et al., 46 TMR 444, wherein it was held that SUNVIS and
UNIVIS are quite different in sound and meaning but in their entireties
they are confusingly similar in appearance. Said the court:

“As already noted, it found on the basis of the
evidence before it that the two marks are quite different in sound and
meaning but that in their entireties the marks arc confusingly similar
in appearance, because of their having identical suffixes and three
letter prefixes with the same two letters UN in the same order.”

On the other hand, respondent contends that it is not correct to say
that in passing on the question as to whether the two marks are similar
only the words “ALASKA” and “ALACTA” should be taken into account since
this would be a most arbitrary way of ascertaining whether similarity
exists between two marks. Rather, respondent contends, the two marks in
their entirety and the goods they cover should be considered and
carefully compared to determine whether petitioner’s opposition to the
registration is capricious or well-taken. In this connection,
respondent invokes the following rules of interpretation: (1)
appellant’s mark is to be compared with all of the oppositor’s marks in
determining the point of confusion;^[1]
(2) thelikelihood of confusion may be determined by a comparison of the
marks involved and a consideration of the goods to which they are
attached;^[2] and (3) the court
will view the marks with respect to the goods to which they are
applied, and from its own observation arrive at a conclusion as to the
likelihood of confusion.^[3]

It is true that between petitioner’s trademark “ALACTA” and
respondent’s “ALASKA” there are similarities in spelling, appearance
and sound for both are composed of six letters’ of three syllables each
and each syllable has the same vowel, but in determining if they are
confusingly similar a comparison of said words is not the only
determining factor. The two marks in their entirety as they appear in
the respective labels must also be considered in relation to the goods
to which they are attached. The discerning eye of the observer must
focus not only on the predominant words but also on the other features
appearing in both labels in order that he may draw his conclusion
whether one is confusingly similar to the other. Having this view in
mind, we believe that while there are similarities in the two marks
there are also differences or dissimilarities which are glaring and
striking to the eye as the former. Thus we find the following
dissimilarities in the two marks:vee

                                                 

(a)	The sizes of the containers of the goods of petitioner differ from those of respondent. The goods of petitioner come in one-pound container while those of respondent come in three sizes, to wit: 14-ounce tin of full condensed full cream milk; 14 1/2-ounce tin of evaporated milk; and 6-ounce tin of evaporated milk.
(b)	The colors too differ. One of petitioner’s containers has one single background color, to wit: light blue; the other has two background colors, pink and white. The containers of respondent’s goods have two color bands,, yellowish white and red.
(c)	Petitioner’s mark “ALACTA” has only the first letter capitalized and is written in black. Respondent’s mark “ALASKA” has all the letters capitalized written in white except that of the condensed full creata milk which is in red.

Again, coming to the goods covered by the trademarks iii question, we also notice the following dissimilarities:

In the petitioner’s certificate of registration, it appears that the
same covers “Pharmaceutical Preparations which Supply Nutritional
Needs” which fall under Class 6 of the official classification as
“Medicines and Pharmaceutical Preparations”, thus indicating that
petitioner’s products are not foods or ingredients of foods but rather
medicinal and pharmaceutical preparations that are to be used as
prescribed by physicians. On the other hand, respondent’s goods cover
“milk, milk products, dairy products and infant’s foods” as set forth
in its application for regis- tration which fall under an entirely
different class, or under Class 47 which refers to “Foods and
Ingredients of Foods”, and for use of these products there is no need
or requirement of a medical prescription.

In view of the above dissimilarities, the Director of the Patent Office overruled petitioner’s opposition in the following wise:

“Considering the substantial differences in the
marks as displayed on the respective labels of tho parties and
considering the distinctiveness of the mark of applicant, acquired from
its extensive sales, it is concluded that the applicant’s mark does not
resemble opposer’s mark as to be likely when applied to the goods of
the parties to cause confusion or mistake or, to deceive purchasers.”

We have examined the two trademarks as they appear in the labels
attached to the containers which both petitioner and respondent display
for distribution and sale and we are impressed more by the
dissimilarities than by the similarities appearing therein in the same
manner as the Director of the Patent Office, and because of this
impression we are persuaded that said Director waa justified in
overruling petitioner’s opposition. Hence, we are not prepared to say
that said Director has erred in overruling said opposition.

Wherefore, the decision appealed from is affirmed, with costs against petitioner.

Bengzon, C. J., Padilla, Labrador, Concepcion, Reyes, J. B. L., Barrera, Paredes, Dizon, Regala, and Makalintal, JJ., concur.

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^[1] Architectural catalog Co. vs. F. W. Dodge Corp., 136 F. 2d 1008, 30 C.P.A. Patents, 1215.

^[2] Kroger Grocery & Baking Co. vs. Blue Earth Canning Co., Cust & Pat. Opp. 88, F. 2d 725.

^[3]37 C.J.S., 476.