dissenting.
I appreciate the detailed discussion in the majority opinion, but am not completely satisfied as to the correctness of the result reached therein. True, there is precedent, particularly in the In re Page Company decision, supporting the conclusion that the instant mark is not *932registrable, but it is also true that this court itself has provided support for the opposite view. For example, in Whitman Publishing Company v. McLoughlin Bros., Inc., 25 C. C. P. A. (Patents) 1298, 38 USPQ, 120, 97 F. 2d 608, this court quoted with approval the following language:
I can perceive no reason why a trade marie may not properly he applied to a hook, or to a complete collection of books, just as it may be applied to a serial publication, or to any other article of merchandise. * * *
* * * I think that trade mark ownership in a mark applied to books depends upon exactly the same considerations as those by which the question of ownership is determined with respect to marks applied to any other merchandise. I can find no justification, either in law or in reason, for applying a different rule. [Italics supplied.]
I readily concede the precise issue here was not present there, but the language is especially significant since it was approved after consideration of In re Page. That decision was handed down in 1917, long prior to enactment of the Lanham Act, by the Court of Appeals of the District of Columbia. I respect the views of that court as “Those of a co-ordinate appellate court having, perhaps, approximately the standing” of this court in patent and trademark matters, and as such “they are persuasive and entitled to deference, but are not authoritatively binding.”1 In my opinion, the Page case is irreconcilable with the quoted language of the Whitman decision. I prefer to follow the latter, not necessarily because it is one of our own decisions, but primarily because it is sound and consistent with the provisions of the Lanham Act.
I agree with the majority that “The sole' question raised by this appeal is whether an arbitrary, that is to say coined, term which is the title of a book, and the only designation the book has, is registrable as a trademark for books under the Trademark Act of 1946, also known as the Lanham Act.”
The only provisions of that act germane to the instant issue are:
Seo. 2. Trademarhs registrable on the principad register
No trademark by which the goods of the applicant may he distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it — [Italics supplied.]
♦ * * * * * *
(e) consists of a mark which, (1) when applied to the goods of the applicant is merely descriptive or deceptively misdeseriptive of them, ***;*** (15 U. S. 0.1052). [Italics supplied.]
It does not seem to me that a reasonable interpretation of the above language would prohibit registration of the instant mark. First, it *933is obvious, as the majority concedes, that the mark is an “arbitrary, that is to say coined, term * * As such it would seem to fully satisfy the first requirement of the Act with respect to its capability of distinguishing appellant’s goods from the goods of others. Second, how a mark can be considered “arbitrary” and at the esame time “merely descriptive” is something I am unable to reconcile with the express provisions of subsection (e). While it is quite true that a trademark which was originally arbitrary may eventually become descriptive, that is not the case here.
Our late colleague, Judge Cole, once observed that “Trademarks exist in a practical world * * *.”2 Broadly speaking, I think that statement captures the spirit of the Congressional intent as reflected in the report of the Senate Committee on Patents (Senate Report No. 1338, May 14, 1946) which accompanied the Lanham Act:
The purpose of this bill is to place all matters relating to trade-marks in one statute and to eliminate judicial obscurity, to simplify registration and to malee it stronger and more liberal, to dispense with mere technical prohibitions and arbitrary provisions, to malee procedure simple, * * *.
* s{s # * * # ❖
The purpose underlying any trade-mark statute is twofold. One is to protect the public so it may be confident that, in purchasing a product bearing a particular trade-marie which it favorably lenows, it will get the product which it asks for and wants to get. * * * [Italics supplied.]
If the test employed in rejecting the instant mark is a proper and valid standard, then it should be consistently applied. That such does not apepar to be the case is best illustrated by refence to but a few registered trademarks encountered daily, such as “Mercurochrome,” “Cocoa-Cola” (also registered as “Coke”), “Mentholatum,” “Pepto-Bismol,” “Bufferin,” “Anacin,” “Absorbin, Jr.,” and “7 Up.” Suppose, for example, a buyer wants a bottle of “7 Up.” Plow can he identify what he wants without calling for it by name — the only name it has and the only name he knows? What other name did it have at the time of registration? Would not the same also be true of a multitude of other popular marks? Then why should a different standard govern the instant mark? How can a purchaser identify “Teeny Big” without asking for it by name — the only name it has and the only name he knows ?
In addition to the above, counsel for appellant cites numerous names of games which have been registered, among which are “Parcheesi,” “Bingo,” “Indian Checkers,” “Galloping Dominos,” and “Monopoly.” It seems appropriate to wonder by what test those marks were passed *934for registration, and to inquire how they, any more than “Teeny Big,” can be identified by any other name.
It does not seem consistent to grant trademark protection for the titles of periodicals, comic strips, and books in series yet deny protection to the arbitrary title of a single book. For example, “The Saturday Evening Post” is a registered trademark, although obviously it is the name and the only name by which that periodical can be identified. There, as here, trademark registration does not cover the contents, but merely the title. The contents of the Post, if copyrighted, would enter the public domain upon expiration of the copyright protection; however, the trademark under which the contents were published would not be available to the public, but would remain with the publisher. Would that not also be true here ? In that connection, the following language in the majority opinion is interesting:
There is a compelling reason why the name or title of a book of the literary sort cannot be a trademark. The protection accorded the property right in a trademark is not limited in time and endures for as long as the trademark is used. A book, once published, is protected against copying only if it is the subject of a valid copyright registration and then only until the registration expires, so eventually all books fall into the public domain. The right to copy which the law contemplates includes the right to call the copy by the only name it has and the title cannot be withheld on any theory of trademark right therein.
I trust I do not do the majority an injustice in construing that language to indicate that they have been influenced, at least to some extent, as I think was also true in several of the cases cited below, by the provisions of the Copyright Act, an act over which this court has no jurisdiction.
It seems there is an underlying fear on the part of the majority that registration of the instant mark would provide fermanent protection of the contents of the book. However, I do not see that registration of the instant title would carry with it any greater degree of protection of the contents than is the case with respect to the title of a series of books or periodicals.
It is a matter of common knowledge that millions are spent in an effort to educate the public to ask for products by a particular name. I think Congress intended to encourage, not retard, those efforts when it enacted the Lanham Act. I not only fail to see that registration of the instant mark would result in any violence in the trademark world, but, on the contrary, feel that its registration would be clearly consistent with the provisions of that Act.
Watson v. Allen, App. D. C., April 3, 1958.
Burton-Dixie Corp. v. Restonio Corp. 43 C. C. P. A. (Patents) 950, 234 P. 2d 668, 110 USPQ 272.