The Gillette Company v. "42" Products Ltd., Inc., D.B.A. Executive Toiletries, Ltd.

Appellant Gillette appeals from the denial of its motion to dismiss the appellee’s three causes of action for lack of subject matter jurisdiction. Because the trial court was of the opinion that this denial involved controlling questions of law as to which there are substantial grounds for differences of opinion and that an immediate appeal from its order might materially advance the ultimate termination of this litigation, the case was certified for appeal to this Court pursuant to 28 U.S.C. § 1292 (b).

*1115 The present dispute began in 1962 when “42” filed an application to register the mark EXECUTIVE for aftershave lotion, pre-shave lotions, cologne and hair dressings. Gillette opposed this registration on several grounds, inter alia, its sale of razors, after-shave lotion, and men’s deodorants; its ownership of the mark EXECUTIVE as applied to razors and blades, and its own prior registration of the mark for safety razors. Its Notice of Opposition further alleged that the resemblance between the marks was likely to cause confusion and that “42” was not “entitled to said registration or to the use of the mark * * * for after-shave lotions, pre-shave lotions or cologne.”

The…

(dissenting).

“42” filed an application to register the trademark Executive. Gillette filed an opposition. The trial board found “42” was entitled to date of first use in 1945 as a successor in business to Lander. On appeal to the C.C.P.A., Gillette Company v. “42” Products, Ltd. (C.C.P.A. 1968), 396 F.2d 1001 , 55 C.C.P.A. 1347 reversed the decision of the board and held that “42” was entitled to a “date of first use no earlier than 1957” because the nunc pro tunc assignment by Lander was not intended to be an assignment of rights by the parties thereto and therefore “appellee (“42”) is not entitled to claim Lander as its predecessor in interest.”

The C.C.P.A. stated that the case was “remanded to the board for further proceedings consistent with this opinion.” The remand was for a limited purpose, “to determine likelihood of confusion in the light of our holding” that “appellee is entitled to a date óf prior use no earlier than 1957.”

*1120 After the first hearing and decision by the trial board, Gillette, the aggrieved party, had an election. It elected to go to C.C.P.A. by appeal rather than commence an independent action in the district court. When Gillette appealed, “42”…

435 F.2d 1114 The GILLETTE COMPANY, Appellant, v. "42" PRODUCTS LTD., Inc., d.b.a. Executive Toiletries, Ltd., Appellee. No. 25223. United States Court of Appeals, Ninth Circuit. December 14, 1970. Rehearing Denied February 11, 1971. Wm. W. Rymer (argued), Charles C. Winchester, Philip Colman, Maxwell Breslau, Boston, Mass.; Miketta, Glenny, Poms & Smith, Los Angeles, Cal., for appellant. W. D. Sellers (argued), of Sellers & Brace, Pasadena, Cal., for appellee. Before BARNES, MERRILL and CARTER, Circuit Judges. BARNES, Circuit Judge: 1 Appellant Gillette appeals from the denial of its motion to dismiss the appellee's three causes of action for lack of subject matter jurisdiction. Because the trial court was of the opinion that this denial involved controlling questions of law as to which there are substantial grounds for differences of opinion and that an immediate appeal from its order might materially advance the ultimate termination of this litigation, the case was certified for appeal to this Court pursuant to 28 U.S.C. § 1292 (b). 2 The present dispute began in 1962 when "42" filed an application to register the mark EXECUTIVE for aftershave lotion, pre-shave…