dissenting.
The majority hold that “Lan.o.Sheen” may be registered over the opposition based upon “Lustersheen” for goods of the same descriptive properties.
The result is brought about by a species of fallacious reasoning which I have objected to ever since it first appeared in the decisions of this court.
It was, in substance, said early, and I need not cite the authorities, that we should determine the dominant feature of a mark and compare that feature with the dominant feature of an opposed mark in determining the question of similarity and that in doing so we must ignore'that portion of the mark which is descriptive because that portion could not aid in indicating origin.
It is proper to point out the dominant portion of a mark where it is a composite mark like the mark “Air Chief” in Firestone Tire & Rubber Co. v. Montgomery Ward & Co., Inc., 32 C. C. P. A. 1074, 150 F. (2d) 439, 66 USPQ 111, where a word is surrounded by certain characters, because the goods will be known by a certain name. In the instant case the goods will be known as “Lustersheen.”
While at times it is entirely proper and helpful to dissect a composite mark for the purpose of ascertaining the similarity or likelihood of confusion, it is an unwarranted thing to do in cases involving a single-word or a compound-word mark, as is done in the case a/t bar, even though a portion of it is descriptive. It violates the rule against dissecting marks and it leads to incongruous results. This does not mean that in deciding the question of similarity or the likelihood of confusion we may not consider the nature of the different portions of a single-word or compound-word mark and give one portion of the *711mark more weight than another, but when we have done so we must look to both marks in their entirety.
I pointed out in various dissenting and concurring opinions that often the portions' of a word mark were all descriptive and under the holdings of the court there could be no dominant portion and therefore there would be no room for the application of the rule. A good example is “Coca-Cola.” Both words are good English words and both are descriptive, yet the mark is a good one.
In the instant case the court, pursuing the fallacious reasoning which has brought us to a final climax of holding that “Lustersheen” and. “Lan.o.Sheen” are not similar, holds that “sheen” is descriptive in both marks and must be ignored and that there is no confusing similarity between “Lan.o.” and “Luster.” I maintain that this is dissecting the marks in such a way as to do away completely with the consideration of marks as a whole. If I understand the decision correctly, it holds that “sheen” is descriptive. It does not say anything about “luster” being descriptive, but “luster” and “sheen” are synonyms. If “sheen” is descriptive, so is “luster,” therefore there can be no dominant portion of the mark “Lustersheen” with which to compare “Lan.o.Sheen.”
But assuming that “sheen” is descriptive and that “Lan.o.” and “Luster” are not, it seems too obvious for extended contention that since both prefixes begin with “L” and both have the word “sheen” it follows that confusion will be more than likely to result.
I do not believe that “Lustersheen” is descriptive of the goods. One would not say “luster cloth” or “sheen cloth” in referring to cloth cleaned by the products of the respective parties. It suggests to me that the owners of the mark “Lustersheen” wish to call attention to the fact that the appearance of the cloth is to be noted to see if it is sheeny or lustrous. But indubitably the adding of the words “luster” and “sheen” together and making a single trade-mark of the two words ' does not make the whole mark descriptive. The mark seems to me to be quite arbitrary.
Over the radio in advertising the respective products, it would be difficult for one to distinguish between ‘Lan.o.Sheen” and “Luster-sheen.”
The majority opinion properly points out that the registered mark (and “Lustersheen” is a registered mark) cannot be attacked on the ground that it is merely descriptive, citing Revere Sugar Refinery v. Joseph G. Salvato, 18 C. C. P. A. (Patents) 1121, 48 F. (2d) 400, 8 USPQ 547. Notwithstanding this fact, the holding here can be nothing more than a holding that each portion of the mark of appellant is descriptive and therefore the whole mark is descriptive and consequently invalid. The fact that the majority arrive at this con-*712elusion under the guise of comparing different portions of the mark rather than the mark as a whole does not change the situation.
On this phase of the case, I have been unable to harmonize the unanimous holding of the court in National NuGrape Company v. Judge & Dolph, Ltd., 33 C. C. P. A. (Patents) 1032, 154 F. (2d) 521, 69 USPQ 388, with the holding in the instant case. I quote a portion of the syllabus:
“So-” above disclaimed “Grape” is confusingly similar to “NuGrape” above disclaimed “A Flavor You Can’t Forget”; descriptive word cannot constitute dominant part of mark, so descriptive “Grape” by itself cannot indicate origin, but prefixes, “So-" and “Nu,” while' unlike in sound, meaning and appearance, considering marks as whole, are confusingly similar. [Italics mine.]
Both portions of “So-Grape” are descriptive, and “So-” and “Nu”are so different that if the rule applied in the instant case had been applied in that case we would have.had to hold that there was no likelihood of confusion, but we held to the contrary. We did so when we examined the trade-marks as a whole, after saying that “So-” and “Nu”' are unlike in sound, meaning and appearance.
I again want to point out that the majority could not find the dominant portion of “Lustersheen” to compare with the dominant portion of “Lan.o.Sheen” because this court, in recent years, over my objections, has quite often held that a descriptive term cannot be the dominant portion of a mark. So now we have a case where an alleged dominant portion, “Lan.o.”, is compared with a trade-mark that has no dominant portion because, as before stated, if “sheen” is descriptive “luster” is also, since they are synonyms.
The holding that the term “Lan.o.” is the dominant feature of the mark, to my way of thinking, is erroneous. Who will ever remember the appellee’s goods because of the term “Lan.o.”? They will be remembered because they are called “Lan.o.Sheen” and it is erroneous to dissect the marks in the manner of the majority and bring about a conclusion wholly unwarranted under the Trade-Mark Act of 1905.
In the case of Standard Oil Company of New Jersey v. The Alden Speare's Sons Co., (Patent Appeal No. 5295), handed down concurrently herewith, the mark “KUTKON” is a composite mark — an arrow extends entirely across the printed word — and it was properly held by the tribunals below that the word “KUTKON” was the dominant portion of the mark. But this court did not hold that “kon” was the dominant portion of the mark, which it does as respects “Lan.o.” in the instant case by implying, if not saying, that “Luster” is the dominant portion of the mark with which to compare “Lan.o.”
In any event, when questions of this kind occur, we should follow the rule of resolving doubts against the newcomer.