G.R. No. 100098 December 29, 1995
Emerald Garment Manufacturing Corporation, petitioner, vs. Hon. Court of Appeals, Bureau of Patents, Trademarks and Technology Transfer and H.D. Lee Company, Inc., respondents.

FACTS

H.D. Lee Company, Inc., a U.S. corporation, filed a petition for cancellation of Emerald Garment’s trademark “STYLISTIC MR. LEE” registered in the Supplemental Register, alleging it was confusingly similar to its own prior registered “LEE” trademark for clothing. Subsequently, Lee also opposed Emerald’s application to register the same mark in the Principal Register. The Director of Patents consolidated the cases and ruled in favor of Lee, ordering the cancellation and denying registration. Applying the test of dominancy, the Director found “LEE” to be the dominant feature of Emerald’s mark, likely to cause public confusion.
Emerald Garment appealed to the Court of Appeals, which affirmed the Director of Patents’ decision. The appellate court held that the word “LEE” was the most prominent and distinctive feature in both marks. It noted that “STYLISTIC” was printed in small letters over the bold, dominant “LEE,” making the difference insubstantial. The court further reasoned that, given Lee’s family of marks like “LEE RIDERS,” the public could easily mistake “STYLISTIC MR. LEE” as another line from the same manufacturer.

ISSUE

Whether the trademark “STYLISTIC MR. LEE” is confusingly similar to the trademark “LEE” such that its registration should be denied and its existing registration cancelled.

RULING

The Supreme Court reversed the Court of Appeals and reinstated Emerald Garment’s trademark registration. The legal logic centered on the proper application of the test of confusing similarity. The Court clarified that the test of dominancy must be considered together with the holistic test, which examines the entirety of the marks as they appear in their labels. Isolating the word “LEE” was erroneous.
Examining the marks in their entirety, the Court found pronounced differences. Emerald’s mark was a composite: “STYLISTIC MR. LEE” was displayed in a single line with equal emphasis, using a different lettering style, and was accompanied by a distinct logo of a stylized silhouette of a man’s head. In contrast, Lee’s marks either used “LEE” alone or in combination with other words like “RIDERS” in a different configuration. For infringement or confusion to exist, the marks must be considered in their commercial context as they are encountered by ordinary purchasers. The Court held that an average buyer, exercising ordinary caution, would not be deceived into thinking that “STYLISTIC MR. LEE” garments originated from H.D. Lee Company. The dissimilarities in the overall presentation were sufficient to distinguish the sources of the goods.