O'CONNELL, Judge, dissenting.

The court in the prevailing opinion of this case has enunciated the novel doctrine that compared with the Act of 1905, the Trade-Mark Act of 1946 provides a positive sanction for the complete, overnight appropriation of a long-established mark and well-known trade name previously used in the United States by another, and not abandoned, provided the appropriated mark or trade name under the Act of 1946 is applied by the applicant for registration to unrelated goods.

The case at bar thus reverses the field with respect to previous trade-mark decisions of this court, such as Radio Corp. of America v. Rayon Corp. of America [Radios and rayon fabrics], 31 C. C. P. A. (Patents) 808, 139 F. 2d 833, 60 USPQ 246; and Tidy-House Paper Products, Inc. v. Tidy House Products Co. [Unrelated household products, Appeal No. 5768], 38 C. C. P. A. (Patents) 1099, 1103, 189 F. 2d 280, 89 USPQ 599. If the decision of the majority in the instant case is sound, and a revolutionary result has been actually attained because of a change in the law of trade-marks, many of our previous and outstanding judgments must be reopened and reversed. The precise point here in issue was determined with a directly contradictory result, however, by the court in Safeway Stores, Inc. v. Dunnell, 9 Cir., 1949, 172 F. 2d 649, 80 USPQ 115, certiorari denied, 337 U. S. 907. The Circuit Court of Appeals there cited numerous cases of this and other federal courts establishing that a trade name had been denied registration to an applicant under the Act of 1905 for use on unrelated goods and that

The principle of these cases, decided under the Trade Mark Act of February 20, 1905, is now incorporated in the Lanham Act, 15 U. S. C. 1051 et seq., 15 U. S. C. A. § 1051 et seq., which became effective July 1947, after the judgment in the district court and prior to the taking of this appeal and, under section 47 (b), 60 Stat. 445, 15 U. S. C. A. § 1051 note, is here applicable. It prohibits registration as a trademark of a mark "which so resembles * a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive the purchasers * * *" 15 U. S. C. § 1052 (d), 15 U. S. C. A. § 1052 (d). Even though "Safeway" was not appellant's “name” within the literal language of the old statute, as we hold it is, it is plainly appellant's "trade name" within the express language of the Lanham Act.

The majority in defining its position in the instant case directly overlooked the specific provisions of the Act of 1946 by which the registrant of an unabandoned trade-mark is entitled to effective protection by the courts, and the tribunals of the Patent Office, against acts of unfair competition; 1 that the term "trade name" employed in

1

1 Cf. Daphne Robert, "The New Trade-Mark Manual," pages 165-180, 191–192. See also sections 44 (g), (h), and (i); Schechter Corp. v. United States, 295 U. S. 495, 532; Alfred Dunhill of London, Inc. v. Dunhill Shirt Shop, Inc., 3 F. Supp. 487; Ronson Art Metal Works, Inc. v. Fink, 73 USPQ 124, 126; Tecla Corp. v. Tecla, Ltd., 15 T. M. R. 494; Derenberg, "The Patent Office as Guardian of the Public Interest in Trade-Mark Proceed

the statute is thereby defined to include the name of a corporation engaged in trade or commerce and capable of suing and being sued in a court of law; 2 and that the omission from the new act of the prohibitory corporate name provision of the Act of 1905 was to permit the advantages of registration to marks which constituted the dominant portion of a corporate name which that corporation had acquired through prior use."

The record discloses that during the past forty years appellant has been the manufacturer of the "Alligator" brand of rainwear, also sportswear, ponchos, and miscellaneous items, such as tobacco pouches, aprons, and beauty caps; that the high quality of appellant's merchandise and the hundreds, even thousands, of distinguished merchants and dealers throughout the nation who have handled appellant's goods have given appellant's products a reputation for class and distinction; that appellant's nationwide advertisements in publications such as Life, Collier's and The Saturday Evening Post have been continued month after month, year in and year out; that appellant's dealers everywhere have likewise advertised appellant's goods very extensively in local newspapers and maintain elaborate window and floor displays which feature appellant's goods and the trade-mark "Alligator," which is also the name of the appellant corporation; and that appellant designed an original caricature and consistently used the same for several years prior to 1946 in a trade-mark sense to lend distinctiveness and animation to its wide variety of advertising.

Section 45 of the Act of 1946 provides that an owner's mark shall be protected if it is placed in any manner on the goods or on "the displays associated therewith." Appellant's mark, commercial signature, and caricature, actually used by appellant for years, are likewise entitled to protection at common law, apart from registration. Reproduction herewith of the words and caricature of applicant's mark, together with appellant's commercial signature and advertising layout, all of which is collated from the exhibits of record, disclose the precise extent of the applicant's appropriation. [See p. 949.]

One who pirates a trade-mark, like one who steals an invention or a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. The only significant difference between the contested matter here in issue is, as stated by the

ings," Vol. 14, Law and Contemporary Problems, pages 288, 305-306, Duke University School of Law, 31 Journal of the Patent Office Society, 647, 675.

2 Sec. 45.

Robert, "The New Trade-Mark Manual," pages 57-58, citing Cracker Jack Company v. Aspergren Co., 15 T. M. R. 427.

4 Lucky Heart Laboratories, Inc. v. Morton G. Neumann, 33 C. C. P. A. (Patents) 1034, 154 F. 2d 519, 520, 69 USPQ 393; Yale Electric Corporation v. Robertson, 26 F. 2d 972.

examiner, that appellant's original caricature is not like that of appellee's "carrying a cane and a cigarette and blowing smoke rings." Against such burlesque, the examiner and the commissioner at the outset should have applied the equitable principle of estoppel; a new and specific obligation with which each of them, as well as the courts, have been endowed by the provisions of the Act of 1946 so as to avoid the injustices which resulted under the limitations of the Act of 1905.5 While the use of cigarettes may bring real or imaginary comfort to hosts of people, such use is regarded by hosts of others as an unsanitary, repugnant habit, dangerous not only to the health of the smoker, by reason of inherent tar and nicotine, but also to property and timberlands throughout the country by reason of fire. The rule that a judge is not to shut his eyes to what everybody of intelligence knows, the Circuit Court for the District of Columbia held, applies for obvious reasons with peculiar force to proceedings in the Patent Office. Re Excelsior Shoe Co., 40 App. D. C. 480, 481.

A number of cases of actual and inevitable confusion in trade were established here by the record but were ignored. It is common knowledge that emergency rainwear is sold adjacent to or from the same shelves as cigarettes and tobacco in chain stores such as United, Schulte, Whelan, and Peoples. Furthermore, no one exercising authority in the matter should reject the authorities hereinbefore cited by appellant whereby courts of competent jurisdiction have previously established that smoker's supplies on the one hand and clothing and sportswear on the other may have an almost identical relationship."

The majority correctly holds that use of the bewildering or "bugbear" term, "goods of the same descriptive properties," has been abolished by the Act of 1946. However, for the abolished term, and on the same basis, use of the new and unauthorized idea of "closely related" goods may not be substituted as the test for confusing similarity. The phraseology employed in the Trade-Mark Act of 1905, namely, "goods of the same descriptive properties," and "goods of the same class" have been heretofore judicially determined to be related goods within the purview of the statute. Philadelphia Inquirer Co. v. Coe, 133 F. 2d 385, 386, 389, certiorari denied, 318 U. S. 793. It would appear therefore that under the procedure established here

5 SEC. 19. In all inter partes proceedings, equitable principles of laches, estoppel, and acquiescence, where applicable, may be considered and applied. The provisions of this section shall also govern proceedings heretofore begun in the Patent Office and not finally determined. See also Robert, "The New Trade-Mark Manual," pages 220-221.

• Alfred Dunhill of London, Inc., v. Dunhill Shirt Shop, Inc., 3 F. Supp. 487; Ronson Art Metal Works, Inc. v. Fink, 73 USPQ 124. See also Safeway Stores, Inc. v. Dunnell, 172 F.2d 649.

Greyhound Corp. v. Robinson Houchin Corp., 89 USPQ 621; Robert, "The New TradeMark Manual," pages 58-59.

by the majority the court in reality adheres to the application of the provisions of the Act of 1905. Compare Muralo Co. v. National Lead Co., 36 App. D. C. 541, and The White Company v. Vita-Var Corporation, 37 C. C. P. A. (Patents) 1039, 182 F. 2d 217, 86 USPQ 84. Perhaps, as some crusader and certain government officials suggested in the halls of Congress during the hearings regarding the enactment of the Act of 1946, a company which has owned a trademark of world-wide reputation for forty or fifty years has had the mark long enough and should be required now to share it with others who don't have the money to advertise or market the same kind of goods under the same trade-mark. That concept was wholly rejected by Congress, however, and the new Act must now be enforced by the courts as the provisions thereof were written and incorporated into the law.

Appellant's mark is nowise descriptive of the goods with which it is used and under the law is a strong and fanciful mark entitled to broad protection. Sunbeam Furniture Corp. v. Sunbeam Corp., 191 F. 2d 141; Yale Electric Corporation v. Robertson, 26 F. 2d 972. However, appellant apparently must have recourse to the United States District Court in order to obtain relief. John Morrell & Co. v. Doyle et al., 97 F. 2d 232.

For the reasons hereinbefore stated, the decision of the Commissioner of Patents should be reversed.

660 O. G. 499; 39 CCPA 951; 196 F. (2d) 527; 93 USPQ 428 ALLEN V. BLAISDELL ET AL. (No. 5838)

PATENTS

1. INTERFERENCE-BURDEN OF PROOF

In interference between applicants, junior party has burden to establish priority by preponderance of evidence.

2. INTERFERENCE-EVIDENCE-IN GENERAL

No matter how honest and truthful interference party may be, he cannot prevail upon basis of his own oral testimony standing alone; rule requiring corroborating evidence is inviolable, and Patent Office and courts may not depart from it; corroborating evidence may be presented in different ways— in diaries, note books, written instruments of various kinds, or by purely oral testimony-but there must be such evidence and it must be convincing. 3. INTERFERENCE-REDUCTION TO PRACTICE ABANDONED EXPERIMENT

Applicant's installations of devices did not constitute abandoned experiments since devices worked successfully and discontinuance of installing additional devices was caused by applicant's inability to find manufacturer; applicant commenced manufacture as soon as he had so modified device that he could readily manufacture it.

• "Introduction," by Edward S. Rogers, page xi, Robert, "The New Trade-Mark Manual."