dissenting:
Upon the testimony presented, the Examiner of Trade-Mark Interferences sustained the opposition and refused registration of appellee’s mark. The Commissioner of Patents, however, not only overruled the action of the examiner, but also decided that the mark was owned by another party not involved in the proceedings and for that reason appellant would not be damaged by appellee’s registration of the mark. The commissioner dismissed the opposition, and therefore, in affirming his action, the majority decision of this Court confers upon appellee, a newcomer, the right to register a trade-mark which, according to the record, is identical with a known trade-mark owned and in use by another for at least twenty years and appropriated to merchandise of the same descriptive properties.
*1103It is true, as appellant contends, that whether the “20th Century” mark was owned by appellant, Revere Paint Company, or whether it was owned by George D. Wetherill & Company, which was not a party to the proceeding, the registration of the mark by appellee, the newcomer, is explicitly prohibited by Section 5 of the Trade-Mark Act of 1905, as amended, which, so far as pertinent, provides:
That trade-marks which are identical with a registered or lonown trade-marlc oioned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered: [Italics mine.]
Section 1 of the Trade-Mark Act, supra, provides that the owner of a trade-mark may obtain its registration by filing an application and complying with certain requirements therein specified. Section 2 of the Act provides:
That the application prescribed in the foregoing section, in order to create any right whatever in favor of the party filing it, must be accompanied by a written declaration verified by the applicant, or by a member of the firm or an officer of the corporation or association applying, to the effect that the applicant believes himself or the firm, corporation, or association in whose behalf he makes the application to be the owner of the trademark sought to be registered, and that no other person, firm, corporation, or association, to the best of the applicant’s knowledge and belief, has the right to use such trade-mark in the United States, either in the identical form of in such near resemblance thereto as might be calculated to deceive; * * * The verification required by this section may be made before any person within the United States authorized by law to administer oaths, * * *
The verification required by the statute and filed by appellee, 20th Century Chemical Company, for the registration of its mark, reads as follows:
State or New Jersey,
County of Camden, ss:
Robert M. Bagley, being duly sworn, deposes and says that he is the Vice-President of the corporation, the applicant named in the foregoing Statement; that he believes the foregoing statement is true; that he believes said corporation is the owner of the trade-mark sought to be registered; that no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use said trade-mark in the United States, either in the identical form or in any such near resemblance thereto as might be calculated to deceive; that said trade-mark is used by said corporation in commerce among the several states of the United States; that the description and drawing presented truly represent the trade-mark sought to be registered; and that the specimens show the trademark as actually used upon the goods.
Robert M. Bagley.
Subscribed and sworn to before me, a Notary Public, this 1st day of May 1940.
[seal]
Vincent P. Bresan,
Notary Public.
Notary Public of New Jersey. My Commission Expires Sept. 23, 1940.
*1104In answer to the opposition filed by appellant-, Revere Paint Company, against the registration of appellee’s mark, 20th Century Chemical Company alleged:
5. That applicant has been the owner of, and has continuously used, the trademark covered by its application Serial No. 432,802 since prior to any valid trademark use by opposer or its predecessors of its alleged trade-mark, * * *
It will be noted from the foregoing provisions of law that the written declaration submitted by an applicant for the registration of a trademark must be verified under oath. Therefore, under well established principles of law, false statements as to material matters contained in the. required declaration, or affidavit, are to be dealt with not only under the laws relative to perjury, but also under the laws relative to fraud and misrepresentation. In other words, an application for the registration of a trade-mark is affected with public interest and in order to create any right whatever in the party filing it, he must comply with the requirements of conscience and good faith and come before the tribunals of the Patent Office with clean hands. See, Precision Instrument Manufacturing Company et al. v Automotive Maintenance Machinery Company, 324 U. S., — , 65 USPQ 133.
Despite its averments under oath and its positive allegations of ownership of the involved mark, in the proceeding in the Patent Office; we find appellee contending as follows, according to the statement in the decision of the examiner:
Applicant [appellee] vigorously insists, however, that the opposer is a mere “dummy” corporation; that the business relating to these “20th Century” products has been conducted by George D. Wetherill & Co. Inc. entirely in its own behalf; and that the latter company rather than the opposer [appellant] is therefore the owner of the mark.
The import of appelle’s argument, orally and in its brief submitted in this appeal, is practically to the same effect, and therefore, under its own vigorous contentions both before the tribunals of the Patent Office and in this proceeding, appellee, 20th Century Chemical Company, is not the owner of the involved mark. It is my opinion that appellee has come into court with unclean hands arid therefore has no right whatever to the registration of the mark for which it applies.
If the Commissioner of Patents could not sustain appellant’s notice of opposition on the record in this case for the reason that such action would establish a dangerous precedent by the official sanction of a questionable business practice on the part of appellant, nevertheless the law provides for the correction of such matters in a plurality of remedies. None of these remedies, however, provides for the award of the right to register an involved trade-mark to a party who does not own the mark.
*1105Although appellant, Revere Paint Company, kept no records of its own and had no bank account, nevertheless the evidence shows that the merchandise was sold in definite volume under the mark “20th Century.” That dealers retailing the product found satisfaction in handling the goods over a period of years, is disclosed by the following undisputed testimony of the disinterested witness, Kurtz:
Q. 53. It is tlie lowest grade of paint that you handle?
A. Yes; it is the lowest grade as far as selling price but very good as to quality.
Q. 6. What brands of paint do you sell?
A. We sell Wetherill’s “20th Century” and sell some du Pont’s.
Q. 7. Approximately how long hare you been handling the “20th Century” line?
A. Since 1932; about April 1932.
Q. 8. And have you been handling it continuously since that time?
A. I have; yes.
Q. 9. Every year?
A. Every year, yes, sir; every month I have a bill of “20th Century” paint.
Q. 10. Do you carry it in stock?
A. I carry it in stock all the time.
Q'. 11. And you replenish your stock by replacing orders from time to time?
A. We replenish it.
Q. 12. You never had any difficulty in buying the paint, did you, in any way?
A. I always got it very promptly from the company.
Q. 13. You carry it, display it, on your shelves, do you?
A. Yes.
Assuming that appellant would not be damaged by appellee’s registration of the “20th Century” mark, nevertheless the evidence disploses that the' public has been purchasing and using the product with satisfaction over a period of years; and that it is likely to continue to do so, is obvious because of its low selling price, prompt service, and very good quality.
The primary purpose of the statutory prohibition provided for in Section 5 of the Trade-Mark Act is to safeguard the consumer by preventing the goods of one dealer from being palmed off on him by another dealer under an identical or similar mark. Accordingly, the Commissioner of Patents in refusing to register a prohibited mark acts as the guardian of the public interest, and not merely as an arbiter between two parties. For this reason it is the duty of the Commissioner of Patents in an opposition proceeding to determine of his own motion and irrespective of the contentions of the parties, whether or not an applicant’s mark is entitled to registration. See, Shering & Glatz, Inc. v. Sharp & Dohme, Inc., 32 C. C. P. A. (Patents) 327, 146 F. (2d) 1019, 64 USPQ, 394. It is my opinion that in rendering such a decision, it makes no difference whether the action of the Commissioner of Patents taken of his own motion is technically described as an ex *1106parte or an inter partes decision. The decision is made in the proceeding in which the issue is presented, and the prohibition of the statute is mandatory.
In the instant case, the majority decision holds “that appellant is not entitled to challenge here the action of the Commissioner of Patents in refusing to consider the evidence relative to the activities of the Wetherill Corporation ‘for possible grounds for ex parte refusal of registration’.” Neither party to this proceeding raised that point in any reason of appeal nor was it mentioned by either in oral argument or in the briefs submitted. The majority of the Court raised the point and decided it of its own motion.
As it is the duty of the Commissioner of Patents in safeguarding • the public interest to decide of his own motion in an opposition proceeding that a prohibited mark shall not be registered, it follows as a matter of law that in the instant case, this Court, having before it the depositions of the witnesses, the involved marks, the material exhibits, as well as the decisions of the tribunals of the Patent Office, likewise has the duty to decide of its own motion, regardless of the assigned reasons of appeal or the contentions of the parties, and in safeguarding the public interest, that the prohibited mark shall not be registered.
As the case now stands, the decision of the majority, in my opinion, sanctions the identical abuse that the mandate of the statute is designed to prevent.
For the reasons stated, the decision of the Commissioner of Patents, in so far asit fails to deny registration of appellee’s mark, should be reversed.