dissenting,
In addition to what I have said in dissenting in West Disinfecting Company v. Lan-O-Sheen Company (Patent Appeal No. 5284), handed down concurrently herewith, which case involves the trademarks “Lustersheen” and “Lan.o.Sheen”, I wish to point out that in the instant case there is an issue not presented in the other case and, as far as I know, never presented to any court before.
The record shows that the trade-mark of the Standard Oil Company of New Jersey, “KUTWELL”, has been used since 1916 on a tremendous volume of cutting oil and other oils and greases and that each year there is an enormous increase in the volume of goods sold under the “KUTWELL” mark. It is stipulated in the record as follows:
(8) The term Kutwell lias been so widely used by opposer and is so well known in the trade, that the same has acquired a “secondary” meaning, indicating origin in opposer of the goods so marked.
The mark, though descriptive and not registrable under the TradeMark Act of 1905, is entitled to protection, and one of the ways to protect it is to oppose the registration of a similar mark where confusion might result, because registration implies the exclusive right to use.
In matters with which we are here concerned, the goods are identical-cutting oil. The “KUTKON” and “KUTWELL” are so similar in sound and appearance and meaning that confusion would be inevitable if a large business was done under the “KUTKON” mark is clearly obvious. If I am wrong on the question of the similarity of the marksj practically every decision that we have ever written denying registration of similar marks was decided incorrectly.
The majority arrive at the conclusion that “KUTKON” is registrable on the specious reasoning pointed out in the case handed down concurrently herewith, hereinbefore referred to.
The majority have not considered the issue as to whether or not one with a good mark with a secondary meaning has the right to successfully oppose the registration of a similar mark where con*1123fusion would be likely to result. It is true the majority bold that there is such dissimilarity as to obviate the likelihood of confusion, but it is clear that the result is arrived at by considering the descriptive character of appellant’s mark when that matter is unimportant under the stipulated facts.
The Assistant Commissioner held that opposer’s mark, though nonregistrable, entitled him to oppose but that, owing to its descriptive character, he was of the opinion that there would be no confusion. I know of no authority whicli supports that conclusion, particularly where it is conceded that the descriptive mark has acquired a secondary meaning. If the mark is a good mark and has a secondary meaning and in sound, appearance, and meaning is so similar to the mark opposed as to be likely to promote confusion, the fact that the mark is nonregistrable does not make a particle of difference.
There is no authority for permitting the registration of a similar mark over an opposition based upon a descriptive mark which has a secondary meaning, and it must be remembered that it is stipulated that it has a secondary meaning and has been used for thirty-one years in a large volume of business. Unquestionably the “KUT-WELL” mark, having acquired a secondary meaning, can be protected in the equity courts and I have not the slightest doubt that the appellee can be enjoined from using its “KUTKON” mark. If this is true, it seems clear that it should not be registered. -
It would be purposeless here to cite the many, many cases in which we have refused registration for marks where there was a far greater difference between them than prevails here, and if this decision becomes a precedent it will be unfortunate for the owners of valuable marks which have acquired a secondary meaning.
When it is conceded that the descriptive term “KUTWELL” has acquired a. secondary meaning, all reasoning with reference to its descriptive character is out of place.
Of course, under the facts of the case as presented in the instant record, in equity a district court probably can order the mark “KUT-KON” cancelled from the register after enjoining its use. It certainly can do so after July 5,1947, when the Lanharn Act becomes effective.
It seems futile, in vieiw of the doctrine that doubts should be resolved against the newcomer, to permit the registration of this mark which is so similar to the mark “KUTWELL” and is used upon identical goods.