## Facts

- A long-established hardware manufacturer used the mark “Yale” on locks and other hardware products sold through hardware-related channels.
- A separate company sold electric flashlights and batteries under the word mark “Yale” and sought federal registration for those goods.
- The hardware company opposed registration, alleging purchasers would believe the flashlights and batteries came from, or were affiliated with, the hardware company.
- The record contained multiple instances indicating purchasers did, or expected to, treat “Yale” flashlights as products of the hardware company.
- The administrative and trial-level proceedings ultimately turned on likelihood of confusion and the relatedness of the parties’ goods, rather than on any categorical bar to registering a proper name.
- The district court sustained the opposition and refused registration, treating the agency’s factual findings as controlling absent “altogether convincing” contrary proof.

## Issues

1. Whether flashlights and batteries and the opposer’s hardware products were sufficiently related to have “the same descriptive properties” such that registration should be refused based on likely confusion.
2. Whether a trademark owner may prevent use of its mark on goods it does not make when the use is likely to cause consumers to believe the goods originate with the trademark owner.
3. What level of deference applies to administrative findings on likelihood of confusion in an action reviewing the refusal of registration.

## Decision

- The Second Circuit affirmed the decree sustaining the opposition and denying registration.
- The court held the evidence supported a finding of likely confusion and that the applicant did not present “altogether convincing” contrary evidence sufficient to overcome the administrative finding.
- The court concluded the statutory “same descriptive properties” requirement was satisfied because the goods were close enough in market context and consumer perception to create confusion.
- The court held the opposer could object even though it did not manufacture flashlights or batteries, because the challenged use threatened to divert purchasers by trading on the opposer’s goodwill.
- The court modified the injunction by striking certain language to narrow its scope, while leaving the core relief intact.

## Legal Principles

- Unfair competition and trademark law principally forbid a seller from diverting customers by representing its goods as emanating from another source.
- Trademark protection is not limited to identical goods; it may extend to different but related goods when consumers are likely to assume common source or sponsorship.
- The statutory phrase “same descriptive properties” is applied functionally, focusing on likely consumer confusion in context rather than literal product identity.
- In reviewing trademark registration disputes, factual findings on confusion by the responsible administrative tribunal are accepted unless contrary evidence is “altogether convincing.”

## Conclusion

The court upheld refusal to register “Yale” for flashlights and batteries because substantial evidence showed buyers would likely attribute those goods to the established “Yale” hardware source, and it recognized that a trademark owner may stop confusing uses on related goods even outside its current product line.


Yale Elec. Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928)