dissenting.
Considering the whole record in this case, I do not see a reasonable likelihood of confusion, mistake, or deception under §2(d). The goods here are not over-the-counter items or in the category of “impulse” merchandise sold in supermarkets. Of course MYSOLINE and MYOCHOLINE flow through the same channels of trade but only through drug wholesalers, pharmacists, doctors, and medical personnel who are very knowledgeable about drugs, drug names, and uses and .more than usually careful in identifying them. It is not a case of different brands of the same merchandise.
One of appellee’s main arguments is the “serious consequences” which might flow from MYOCHOLINE being “mistakenly taken” *955by an epileptic wh.o is being treated with MYSOLINE, the background facts being that MYSOLINE is an anti-convulsant and MYO-CHOLINE is specifically contraindicated in patients with epilepsy. I think appellee’s argument is self-defeating because the very fact of the contraindication makes it highly improbable that an epileptic himself would .have access to both of these prescription drugs for self-administration, and I cannot imagine trained medical personnel of any kind substituting one for the other, especially when it is the fact that U.S. Food and Drug Administration regulations require prominent marking of the drugs with their generic names.
The other main theme in appellee’s argument, accepted by the board and the majority, is the so-called “greater care doctrine” applicable t» pharmaceuticals for human use. I consider this doctrine fallacious in proceedings in the Patent Office for the registration of marks — which, this proceeding is. Its application here involves consideration of irrelevancies. The majority approvingly adopted the board’s reiteration of this doctrine in the quoted portion of its opinion where it was said
The products of the parties are medicináis * * *. Under such circumstances,, it is necessary, for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals. [Citing two decisions of this court.]
I ask the majority and I ask the board how they think their decisions: are going to “avoid confusion or mistake in the dispensing of pharmaceuticals.” We are here involved in adjudicating a right to register a trademark in the Patent Office and do not have the slightest concern with dispensing pharmaceuticals or anything connected therewith, such as labeling, advertising, or the like.
What is this “greater care doctrine,” where did it come from, and what does it mean ? More particularly, what does it have to do with, the right to register in the Patent Office ? In this court it has cropped up infrequently and, it seems to me, largely as a result of non-thinking. Appellee is here attempting to slip it over once more — no doubt in good faith. The case principally relied on in its brief is a Third Circuit Court of Appeals opinion in a suit for unfair competition and for an injunction against the use of a mark in which an injunction was granted and an accounting denied, Morgenstern Chemical Co., Inc. v. G. D. Searle & Co., 253 F. 2d 390, 116 USPQ 480 (1958). It also relies on a recent Second Circuit Court of Appeals opinion in a suit for trademark infringement affirming the grant of a 'preliminary injunction, Syntex Laboratories, Inc. v. The Norwich Pharmacol Co., 437 F. 2d 566, 169 DSPQ 1 (1971). These suits were, of course, for the purpose of stopping the defendants from using trademarks and had nothing directly to do with right to register. On the contrary, this appeal is concerned *956only with right to register and has nothing to do — directly, at least— with right to use.
In the Morgenstern case the court said, properly (emphasis mine):
In the field of medical products, it is particularly important that great care he taken to prevent any possibility of confusion in the use of trade-marks. [Citing in a footnote three old cases in this court, only one of which supports the statement, and one in a District Court in Missouri in an injunction suit.] * * *.
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* * * In the field of medicinal remedies the courts may not speculate as to whether there is a probability of confusion between similar names. If there is .any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name he enjoined. [Citing in a footnote a 1915 D.C. N.Y. case.]
'That is, of course, sound law in injunction suits where the use of a mark can be stopped and confusion avoided in the future. To talk of avoiding confusion in this court by denying registration is nonsense because denying registration has little if any effect on use. The same is true of decisions in the Patent Office. I therefore cannot agree with the reasoning of the board, approved by the majority, wherein it supported its decision sustaining the opposition by saying, “it is necessary, ■for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.” (My emphasis.) Though it cited two of our •opinions in support, the board was erroneously importing into a registration proceeding considerations relevant only to an injunction suit. It has no power to “avoid confusion or mistake.” Denial of a registration does not have that effect. Nothing short of an injunction does.
The cases cited by the board were The Merritt Corp. v. Sterling Drug, Inc., 47 CCPA 937, 277 F. 2d 956, 125 USPQ 584 (1960), and Clifton v. Plough, Inc., 52 CCPA 1045, 341 F. 2d 934, 144 USPQ 599 (1965). In the Merritt case (SUPRARENIN v. SUPERIN), while the board, in portions of its opinion quoted by us, said “greater care ■should 'be taken in the use and registration of trademarks [for ethical •drugs] to assure that no harmful confusion results,” we did not approve that notion or say anything resembling it. In the Olifton case (NUJOL v. NUMOL), after noting that confusing the products could produce harmful effects, we unhappily said, “As stated by the board, it is .necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals.” (My emphasis.) Since I joined in that opinion, I now wish to make clear, as I hope I have above, that I do not think our rulings in cases of this kind have any significant influence on the avoiding of confusion. All we do here is perform our judicial function with xespect to the administration of a statute pertaining to registration of marks in the Patent Office, marks which of necessity have already been *957in use for many years before we render our decisions. In this case MYOCHOLINE has been in use since July 9, 1964, and its use apparently has had the approval of the Food and Drug Administration. Opposer-appellee objected to the use in May of 1965, and in November 1967 appellant’s president testified that his company had nevertheless continued to promote, sell, and advertise the product under that mark. 1 assume it has continued since. I do not expect the majority’s decision to stop it. The record does not show that appellee has taken any steps to do so.
Appellee appears to have enjoyed some six and a half years of uninterrupted use of the trademark MYOCHOLINE. The record fails to show any instance of actual confusion, and I think it is reasonable to infer that there has been none, else appellee would have made much of it. The marks differ substantially in appearance, spelling, sound,* and suggestiveness (if any). Therefore §2(d) does not compel refusal to register. Under the. circumstances I think it is preferable that the Principal Register should reflect the realities of the situation and record appellant’s ownership of MYOCHOLINE. The rights appellant would thereby acquire would aid it in inhibiting the adoption by others of marks similar to MYOCHOLINE the use of which might really cause confusion, mistake, or deception. I can see no public interest to be served by sustaining this opposition. I would reverse.
The foregoing remarks have caused the majority to add to its initial opinion and attempted refutation, the gist of which is that refusal to register MYOCHOLINE really will have a substantial deterrent effect on its use and will therefore “avoid” confusion or mistake, in both the marketplace and the sick room, which would otherwise be likely to take place. I am not persuaded of two things: (1) that confusion or mistake is reasonably likely and, assuming I am wrong in that, (2) that mere refusal to register will avoid confusion or mistake. In saying this I am talking about the products, not their source, because the arguments here have not taken the usual course of confusion as to the source of the goods.
I cannot help wondering what the Patent Office would have done, ex parte, by way of avoiding public confusion or mistake, if the application to register MYOCHOLINE had been filed by appellee, the owner of MYSOLINE.
Opposer’s mark would have to be pronounced MICE-OH-EEAN and appellant's mark MY-O-COAL-EEN, three syllables and four, respectively. I think we must assume that those who prescribe and dispense these drugs would necessarily acquire a familiarity with these marks tending to assure against confusion. The general public, due to familiarity, does not, for example, confuse aspirin and “Anacin" though, over all, they are more alike than the marks here involved.