dissenting:
I dissent from the majority opinion for the following reasons. The majority states “DeWalt may very well have some enforceable common law trademark rights in ‘Power Shop’ by reason of its use and advertising of the term; but those rights, whatever they are, cannot be such as to enable it to require opposer to stop using the identical term in a descriptive manner.” The only exception that I take to this statement is the doubt cast as to whether DeW alt has established the fact that it has trademark rights in the words “Power Shop.” The record contains ample evidence to prove that DeWalt has identified its products by this mark and that it has become distinctive of applicant’s goods in commerce. This position is also substantiated by another statement in the maj ority opinion. After stating various ways that the words were used by DeW alt, it goes on to say “On the whole record, however, there seems to have been substantial use of the words as a trademark; or at least it is clear DeWalt attempted to make a trademark use of them.” Further, I assume the Patent Office believed that DeWalt has used the words as a trademark since it would have registered the mark if opposer had not intervened.
Let. us analyze the words “power shop.” According to Funk & Wagnalls New Standard Dictionary, 1988, shop means “1. A fixed place or building for the regular sale of commodities at retail; a store; as, a dry-goods shop; a butcher’s shop. 2. A room or building for making or repairing any article, or the carrying on of any artizan craft; sometimes including both sale and manufacture; as, a blacksmith’s shop; car-sAops.” As used in connection with power saws it is ■not descriptive but suggestive. A descriptive term in this connection would be “power tool” or something similar. As to applicant’s use of the term, there is no question but that it made a strenuous effort to use ■“Power Shop” as a trademark starting during the summer of 1949 and *921succeeded in doing so by its continued usage to identify its radial arm saw. It featured the mark extensively in newspaper, radio, television and display advertising. Its success in establishing “Power Shop” as a trademark is confirmed by the listings in three hardware trade publications 1 pertaining to this mark. These publications list the articles by brand names and under “P” “Power Shop” is identified as the name of the tool manufactured by DeW alt in the same manner as “Shop-smith” is shown as the power tool manufactured by Magna.
On the other hand, it is equally evident that Magna began to use “power shop” together with other words 2 in a descriptive manner in connection with its trademarked device in the spring or summer of 1949. Though the media of pamphlets, display advertising, magazines and newspapers, it described its “Shopsmith” in various ways using the words power shop or power work shop together with other words to do so. However, it never identified the source of its power tool by these words or endeavored in any way to make trademark usage of them to distinguish its device from those of others.
So, what do we have here? One company has successfully established a good trademark to identify its product while another has used the same words to describe its trademarked product for about the same length of time.
The question arises — What has Magna’s descriptive use of the words done to the words? Has this usage forever precluded them from being a trademark? I think not. This descriptive usage of these words by one company cannot deprive them from becoming a valid trademark to identify another’s product. There is no evidence that the public generally or, for that matter, the trade itself considered these words in the same category as zipper, aspirin or cellophane which became common designations for particular products, i.e., that they became the common designation for all power tools in the public mind. If such evidence was available, it would have been a simple matter for Magna to produce it.
Priority or descriptiveness of the wording cannot be the basis on which the issue here can be resolved. I believe this court must decide what the law is in a situation where two words have been used in different ways by two companies. One uses them as a trademark, the other, together with other words, to describe its trademarked article. The cases cited by the majority do not help solve the issue presented *922here. The opinions in all of the cases cited from this conrt are primarily based on the fact that the words involved were descriptive of the products. All but two were decided under the 1905 act which prohibited registration of descriptive words under any circumstances except under the ten-year provision. In the two involving the 1946 act, we found that the words were descriptive and there was no showing of secondary meaning so that registration could be granted under section 2(f).
In the Patent Office cases, the tribunal there found the words were either descriptive or that they did not identify the applicant’s goods or distinguish them from the goods of others.
Since DeWalt has established “Power Shop” as a valid trademark for its products, registration should not be denied under the Lanham Act because, after all, the Lanham Act primarily recognizes the common law rights inherent in a trademark.
The Lanham Act provides “No trademark by which the goods of the applicant may be distinguished from the goods of others shall ~be refused registration on the principal register * * * unless * * *” [emphasis mine], and none of the paragraphs that so prohibit registration are applicable to this situation.
I also agree that opposer should not be precluded from continuing to use the words in a descriptive manner to describe its trademarked product. Moreover, I see no serious legal problem to which opposer would be subjected if it continues to do just that. If, however, it endeavors to make trademark use of the words in the future, naturally it would be doing so at its peril.
At this point it is interesting to note section 33(b) of the Lanham Act and particularly paragraph 5 which read in part as follows :
Sec. 33(b). * * *
If tbe right to use the registered mark has become incontestable under section 15 hereof, the certificate shall be conclusive evidence of the registrant’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate subject to any conditions or limitations stated therein except when one of the following defenses or defects is established:
❖ ❖ & # * * *
(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the registrant’s prior use and has been continuously used by such party or those in privity with him from a date prior to the publication of the registered mark under subsection (a) or (c) of section 12 of this Act: Provided, however, That this defense or defect shall apply only for the area' in which such continuous prior use is proved.
*923Certainly if tRe Lanham Act recognizes a defense by one other than the registrant using the marie, it is reasonable to assume that one using the words descriptively, as here, would have at least the same quantum of defense.
The majority seems to predicate its conclusion on the possibility of applicant, if it is successful here, bringing an action against opposer to enjoin the latter’s descriptive use of the words. I do not believe that the possibility of applicant bringing such an action against op-poser represents the degree of damage contemplated by section 13 of the Lanham Act as a prerequisite to the successful conclusion of an opposition proceeding. This possibility exists wheneven a trademark is registered. As a matter of fact, without his trademark being-registered one can bring an action to endeavor to enjoin someone from using similar words as the applicant could very well have done in this situation. I do not believe this court will be successful in avoiding this ever-present possibility by denying registration of valid trademarks. Whether the plaintiff will be successful is another matter.
Section 13 provides that “Any person who believes that he would be damaged by the registration of a mark * * * may * * * file a verified notice of opposition * * * .” But the section does not state on what basis the opposer will be successful. It seems to me that even though one must allege that he would be damaged by the registration to maintain the action, there must be a finding that the mark in question is not entitled to registration under the act before the opposer can be successful. I find no cases and none have been cited which hold that under the 1946 act the mere allegation of damage is a basis for refusing registration of a mark otherwise registrable.
It comes down to this — one who has established a good trademark should be able to enjoy all the rights and privileges attached to such property, including registration under the Lanham Act, and, at the same time, another who at the time of such registration had been using the words as part of a phrase or sentence merely to describe its goods, already identified by a trademark of different words, should be free to do so without these concurrent uses of the words resulting-in legal complications for either party as long as the descriptive use has not made trademark usage by anyone impossible. I do not believe that Magna in this instance, by its usage, has stripped the words of trademark properties and, therefore, I do not believe that Magna can deprive DeWalt of its rights under the law any more than DeWalt can interfere with Magna in its descriptive usage of the words.
Two of these are the same publication, “Hardware Age,” although different Issues thereof (1953 and 1957).
“The complete power shop In one tool.” “For less than $200 — and with 8 square feet of floor space — you can have a power shop second to none in capacity, accuracy, and, flexibility. Its SHOPSMITH — ifive heavy-duty, extra-feature tools in one unit so beautifully engineered,, so ingeniously designed that you can convert from tool to tool in less than 60 seconds."