dissenting,
with whom Lane, Judge, joins.I dissent for much the same reason I did in In re Avedis Zildjian Co., 55 CCPA 1126, 1129, 394 F. 2d 860, 863, 157 USPQ 517, 519 (1968) : I believe that the register should reflect the realities of the marketplace. Admittedly, the cases are not on all fours. In Zildjian the appellant 'appeared to have an undisputed, judicially sanctioned right to use the trademark which the Patent Office and the majority of this court denied it the right to register.1 Here there apparently has been no previous litigation between the owners of the respective marks, but it seems to me that 15 USC 1069 authorizes us to apply the same principles in passing on the right to register as would be applied by a court of general jurisdiction deciding an infringement case in passing on the right to use. In other words, this court (and the Patent Office in *1255the first instance) should, in effect, attempt to predict the outcome of a hypothetical infringement action between the owners of the respective marks, to the extent that this may be done via the application of Federal trademark law.2 Failure to do so leads to the incongruous result that a party may prevent the registration of a mark the use of which it cannot prevent, whether by reason of litigated judgment, Alfred Dunhill of London, Inc. v. Dunhill Tailored Clothes, Inc., 49 CCPA 730, 293 F. 2d 685, 130 USPQ 412 (1961), cert. den., 369 U.S. 864, 133 USPQ 702 (1962),3 consent decree, In re Avedis Zildjian Co., supra, private contract, In re National Distillers & Chemical Corp., 49 CCPA 854, 297 F. 2d 941, 132 USPQ 271 (1962), or, as here, acquiesence.
I am aware that the National Distillers case ivas overruled (by a vote of three to two) in In re Continental Baking Co., 55 CCPA 967, 390 F. 2d 747, 156 USPQ 514 (1968), and that the three-judge majority’s opinion in Zildjian, from which I dissented on the basis of my opinion for the maj ority in Dunhill, casts doubt on the continuing vitality of Dunhill. However, the majority opinion in Dunhill, my concurring opinion in National Distillers, my dissent in Zildjian, and my dissent in Continental Baking express my views on the question of conforming the register to the realities of the marketplace, and I continue to adhere to those views. I cannot understand what the majority thinks is accomplished by preventing or cancelling the registration of a mark which will continue in use. The lack of registration will have no effect on public confusion, one way or the other, but it will disadvantage the owner of the unregistered mark in asserting his substantive rights (which he still has, regardless of the lack of registration) against third parties, and it will detract from the usefulness of the register as a convenient means for determining what marks are actually in use without being in derrogation of anyone’s rights. The later result, at least, is contrary to the intent of the authors of the Trademark Act as I understand it to have been.
It would richly reward the doubter to read the comments of Melvin E. Jenney on the views of this court as they were at the inception of the Trademark Act of 1946, presented in “A Plea for Realism in TradeMark Of positions," 29 JPOS 668 (1947). The majority sentiments do not seem to have changed much. In interpreting the statute there still seems to be a dogged devotion to a stultifying literalism not conducive *1256to carrying out the legislative intent. As incentive to dig deeper, I quote some titilating passages :
A desirable condition would be that every one entitled to use a mark would also be entitled to register it. (P. 668.)
What possible “damage” can accrue to tbe opposer from registration of a competitor’s mark, if the competitor is free to use the mark in trade? (P. 670.)
It is the purpose of this paper to show that the views of the Court of Customs and Patent Appeals are not only out of step with the views of the other Federal courts, but are also out of step with practices in industry and trade. The criteria established by the CCPA are generally ignored, and in fact must be ignored, if people are to do business. (P. 670.)
The CCPA seems to have dug itself into a hole from which it has been unable or unwilling to climb out. It has contented itself with setting up standards that may look all right on paper, but are unattainable in any real world. (P. 681.) [Footnote 6 on same page: Let the proponents of a single court of special jurisdiction for patent appeals ponder on the future of the system if the chosen court insists on straitjacketing itself.]
The paucity of cases in which a successful opposition has been followed up is truly amazing. When one considers all of the oppositions that have been sustained by the Patent Office and by the CCPA and then sees how many of the defeated applicants continue to use their marks, apparently without molestation, he is led to wonder what the shooting was about. (P. 680.)
The question is, will the conditions be any different under the Act of 1946? Or will oppositions be treated in the same unreal manner? (P. 681.)
The only conclusion that can be reached is no conclusion at all. The court can go either way. * * * It is this writer’s opinion that the unsatisfactory operation of the Act of 1905 was due in no small measure to the rigid interpretation forced upon it by the Court of Customs and Patent Appeals. An equally rigid interpretation will likewise hobble the Act of 1946. (P. 683.)
The first decisions of the court under the new act will reveal whether or not registration is going to be allowed to operate in harmony with the realities of trade. [Theend.] (P.684.)
In my opinion, the facts in this case give rise to an estoppel against Johnson. I would therefore reverse.
1 say “appeared to have” because there was some question concerning appellant’s succession to the rights stemming from the consent decree. Both the majority and I accepted appellant’s contention that it had succeeded to those rights, but Judge Smith concurred in the majority’s decision solely on the ground that appellant had failed to establish that succession.
1 am aware that this approach presents difficulties where federal and state trademark law diverge, as is the case, for example, with respect to “dilution” of trademark rights. . . ,
Eor the sequel to our decision in Dunhill, see Contemporary Trademark Problems in Contested Patent Office Proceedings, Practicing Law Institute (1969), pages 169-177. After a good deal of further litigation, the parties apparently wound up with concurrent registrations accurately reflecting their actual rights to use.