dissenting.
I disagree with the result reached by the majority in these cases. I would affirm the decision of the TTAB sustaining this opposition on the ground that Maremont has failed to prove use of LOAD-CARRIER as a trademark.
Section 45 of the Lanham Act, 15 USC 1127, defines “trademark” as including:
[A]ny word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or mez-chánt to identify Ms goods and distinguish them, from those manufactured or sold, by others. [Emphasis supplied.]
Where a combination of words fails to- indicate origin and distinguish the goods from those of others, it is not functioning as a trademark and is not registrable. Thus, a combination of words which “when applied to the goods of the applicant is merely descriptive,” Lanham Act § 2(e), 15 USC 1052(e), and “which has [not] become distinctive of the applicant’s goods in commerce,” Lanham Act § 2(f), 15 USC 1052(f), is not registrable as a trademark. See In re Thunderbird Products Corp., 56 CCPA 969, 406 F.2d 1389, 160 USPQ 730 (1969); J. Kohnstam, Ltd. v. Louis Mark & Co., 47 CCPA 1080, 280 F.2d 437, 126 USPQ 362 (1960). “Some descriptive words are incapable of registration under any circumstances even if they have acquired a ‘secondary meaning,’ temporarily, because they are the common names of things.” DeWalt, Inc. v. Magna Power Tool Corp., 48 CCPA 909, 919 n. 4, 289 F.2d 656, 662 n. 3, 129 USPQ 275, 281 n. 3 (1961). See also In re Sun Oil Co., 57 CCPA 1147, 1149, 426 F.2d 401, 403, 165 USPQ 718, 719 (1970) (Rich, J. concurring); Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 48 CCPA 1004, 1008, 290 F.2d 845, 847, 129 USPQ 411, 414 (1961).
On another level, a word may lose its distinctiveness.
*1161When the meaning of a mark that had previously served as an indication of origin changes so that its principal significance to purchasers is that of indicating the nature or class of goods and its function as an indication of origin is subservient thereto, it is no longer a mark but rather is a generic term.[1]
See King-Seely Thermos Co. v. Aladdin Industries, Inc., 321 F. 2d 577, 138 USPQ, 349 (2d Cir. 1963); DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75, 30 USPQ 332 (2d Cir. 1936).
Section 45, supra, imposes a condition precedent to the registration of a trademark which is closely tied to descriptiveness or generic connotation. To be a trademark, the word or combination of words must distinguish the applicant’s goods from those of others, and mere descriptiveness or generic connotation is antithetical to the requisite distinctiveness. The requirements of § 45 and § 2(e), “as this court said in In re Cooper, 45 CCPA 923, 254 F.2d 611, 117 USPQ 396 [(1958)], “ * * * are ‘complementary and opposite sides of the same coin to the extent that a mark which is “merely descriptive” of the goods to which the applicant has applied it is not being used by him as a trademark for those goods and hence, in that use, is not a trademark.'” In re Standard Oil Co., 47 CCPA 829, 831, 275 F.2d 945, 946, 125 USPQ 227, 229 (1960).
These same considerations apply, in my opinion, to a third level of nondistinctiveness which is what I think is the situation in the present cases. In my view, Maremont has used the combination of words LOAD-CARRIER in a descriptive or generic manner even if it might be said that LOAD-CARRIER neither is inherently merely descriptive of Maremont’s goods nor has become generic..; • -,
The § 45 definition of “use in commerce” provides:
For the purposes of this Act a mark shall be deemed to he used in commerce (a) on goods when it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto * * *. .
In the present cases we must turn to the samples supplied by Maremont as evidence of use of LOAD-CARRIER in commerce. As described' in-the majority opinion, those samples are pictures of the carton in which load-carriers are packaged. In my opinion, the term LOAD-CARRIER is there used in a descriptive or generic capacity to identify the class of goods within which the packaged product falls rather than to distinguish Maremont’s product from similar ones of others. See Clairol, Inc. v. Roux Distributing Co., 47 CCPA 1165, 280 F.2d 863, 126 USPQ 397 (1960); In re Cooper, supra. There is nothing of a generic character apart from LOAD-CARRIER on the carton to impart to the purchaser’s senses the notion that LOAD-CARRIER is *1162Gabriel’s (Maremont’s), as opposed to someone else’s, specific product of this type.
I cannot agree with the majority that capitalization of LOAD-CARRIER has any significance. “Gabriel” is not in capitals, yet I think that anyone viewing the carton would immediately recognize Gabriel as the manufacturer’s trade or house name. Where there is generic language and an arbitrary mark set off by capital letters, the emphasis created by capitalization might there be sufficient to create a distinctive mark. That is not the situation here.
I also disagree that the picture on the carton serves as a substitute for a generic description of the goods. The best that can be said of the picture is that it creates the impression that a load-carrier resembles a shock absorber in appearance and purpose. I still come away from the picture and the other words on the carton with the idea that a load-carrier is a different product than others, such as shock absorbers, and and that Gabriel has manufactured the load-carrier contained in the sample carton, but that other automobile accessory manufacturers would also produce load-carriers. Such an impression is in marked contrast to that which a trademark creates.
The overriding consideration when trademark use is at issue is whether or not the party asserting such use has used his words or symbols in a mamier which distinguishes his product from similar ones of others. I am of the opinion that Maremont has used the words LOAD-GARRIER in a purely descriptive or generic maimer on the goods in commerce and not in a manner which would accomplish the function of a trademark. This is dispositive of the appeals and renders unnecessary any consideration of Air Lift’s alternative arguments that LOAD-CARRIER is inherently merely descriptive, or if not merely descriptive db inition, it has become generic. I do agree that the contemporaneous use of LOAD-CARRIER and LOADLIFTER would not cause confusion, mistake or deception.
I would affirm the decision of the Trademark Trial and Appeal Board on the ground I have stated.
Vanclenburgh, Trademark Law and Procedure, 269 (2d Ed. 1968).