dissenting.
Since it is conceded that the trade-marks are identical, the only question in the case is whether the appellant’s “merchandise,” i. e., its magazine supplement section of a Sunday newspaper, -is of the “same descriptive properties” as the British publication. The court rules, as I understand the majority opinion, that in deciding, this question of fact the trial court could not consider likelihood of confusion and the testimony of the trade with respect thereto, but properly limited itself — although trade testimony was received in evidence— to inspection of the items of merchandise and to inferences which the court, without the aid of such testimony, drew from such inspection. The ruling is based upon the fact that confusion is referred to only in that (second) part of the proviso which relates to trade-marks which resemble each other as distinguished from those which are identical.
Looking at the statute apart from judicial construction, it does not seem to me to require the conclusion which the court reaches. But if the words of the statute leave the point in doubt, the cases in my opinion resolve it. In California Packing Corporation v. Price-Booker Mfg. Co., 1923, 52 App.D.C. 259, 285 F. 993, the dispute, as here, was whether the goods of the respective parties “belong to the same class or have the same descriptive properties.” Price-Booker Company sought to register the trade-mark “Mission,” accompanied by a representation of a mission house, for application to flavoring extracts for foods, mustard, tomato catsup, relishes made of chopped and ground pickles packed in spices and vinegar, chow chow, salad dressing, and vinegar. The California Packing Corporation, which opposed the application, had applied the identical trade-mark to canned fruits, canned vegetables, foods, and *390ingredients of foods. The First Assistant Commissioner of Patents ruled that the goods did not belong to the same class because canned fruits and canned vegetables require a different manufacturing plant from that needed in the manufacture of pickles, the latter being packed and shipped in glass or wooden vessels, the former in air tight tins, and because pickles have no food value. On appeal the court rejected this test upon the ground that it related chiefly to features which ordinarily would be unknown to a prospective purchaser and would have no tendency to help him differentiate the goods of the one concern from those of the other. Stating that it must look for some other test for “the same descriptive properties,!’ the court said:
“... No interpretation of the phrase “the same descriptive properties,” which occurs in the same section, applicable to all cases alike, has ever been given, so far as we know. The courts have been content with deciding in each case as it arose either that the goods did or did not possess those qualities, without going further. We think the dominant purpose of the part of the section here involved is the prevention of confusion and deception. If the use of the later mark would be likely to produce either, the mark should be rejected. Whenever it appears that confusion might result, it is because the goods have the same descriptive properties. We reason from the effect to the cause. For instance, no one would be deceived into believing that a can of tobacco and a can of peas were put out by the same concern, simply because they bore similar trade-marks.
“Turning now to the goods of the parties to this litigation, we find that they are sold in the same stores, are put out in small containers, are used in connection with each other, and are associated in the public mind. We think that a person seeing the mark in question on a container of pickles would be likely to assume that they were produced, by the same concern as that which produced the canned fruits or vegetables bearing a similar mark. At least we are not clearly convinced that he would not be, and therefore we hold against the newcomer....” [Italics supplied] [52 App.D.C. at 261, 285 F. at 995]
I think the statement of the court that “We reason from the effect to the cause” means that the court thought it proper to have recourse to trade testimony- — because it could not, from mere inspection of the trade-marks and the goods, know of the effect; and the court could not, without recourse to trade testimony, have found that the goods were sold in the same stores, were put out in small containers, were used in connection with each other and were associated in the public mind; such facts could not have been determined from mere inspection of the marks and the goods. Moreover, reference to the record in the case discloses that trade testimony was introduced on the subject of likelihood of confusion. On the same day that the court-decided the California Packing Corporation case it also decided Application of B. F. Goodrich Co., 1923, 52 App.D.C. 261, 285 F. 995. There the word “Safety” had been refused registration by the Commissioner of Patents as a trade-mark for pneumatic tire casings made of rubber combined with fabric on the ground that the word had been previously registered for conducting hose composed of rubber and fabric. The Commissioner ruled that the latter goods were of the same descriptive properties as those on which the applicant used its mark. On appeal the court upheld this ruling on the ground that:
“... if the use of the marks by the contending parties would be likely to lead the public to believe that the goods to which they are applied were produced by the same person or concern, it must be so because the goods possess the same descriptive properties. California Packing Corp. v. Price-Booker Manufacturing Co., 52 App.D.C. 259, 285 F. 993." [Italics supplied] [52 App.D.C. at 262, 285 F. at 996]
In American Tobacco Co. v. Gordon, 1925, 56 App.D.C. 81, 10 F.2d 646, Gordon applied for the registration of the words “Pall Mall” for pipes, cigar and cigarette holders, pouches, tobacco bags, humidors and cigar and cigarette containers. The Americán Tobacco Company opposed because it had used the same words as a trade-mark for cigarettes. The court held that these two types of goods were of different descriptive properties, saying:
“We have ruled that two trade-marks may be said to be appropriated to merchandise of the same descriptive properties, in the statutory sense, when the general and essential characteristics of the goods are the same; that is, where there is such a sameness in the distinguishing characteristics as to be likely to result in confusion in the trade and deception of the public. Phoenix P. & V. Co. v. John T. Lewis & Bro., *39132 App.D.C. 285....” [Italics supplied] [56 App.D.C. at 82, 10 F.2d at 647]
In Phoenix Paint & Varnish Company v. John T. Lewis & Bros., 1908, 32 App.D.C. 285, the Phoenix Paint & Varnish Company applied to register the word “Phoenix” as a trade-mark for ready mixed paints and stains, Japans and varnishes. There was opposition by John T. Lewis & Bros, upon the ground of continuous prior use by it and its predecessors of the same mark on paint colors and paste paint. Again the question was whether the goods of the two parties were of the same descriptive properties. The court held that they were. It said:
"In construing the above provisions it must be borne in mind that the purpose of the act was to protect honest dealers and the public. It must also be borne in mind that courts have been very loath to permit one concern, however remotely its goods might be connected with those of another concern, to appropriate, through the instrumentality of a technical trademark, the reputation of the other firm.
“We think two trademarks may be said to be appropriated to merchandise of the same descriptive properties, in the sense meant by the statute, when the general and essential characteristics of the goods are the same. To rule that the goods must be identical would defeat the purpose of the statute and destroy the value of trademarks. The test is whether there is such a sameness in the distinguishing characteristics of the goods as to be likely to mislead the general public. If there is, only one mark should be registered____” [Italics supplied] [32 App.D.C. at 287]
In Anglo-American Incandescent Light Company v. General Electric Company, 1915, 43 App.D.C. 385, it was sought by the Anglo-American Company to register “Mazda” as a trade-mark for incandescent gas mantles. The General Electric Company opposed upon the ground that it had previously used the same word as a trademark for incandescent electric lamps. Again the question was whether the descriptive properties of -the items of merchandise were the same. It was held that they were upon the faith of the ruling in Phoenix Paint & Varnish Company v. John T. Lewis & Bros., supra, and American Stove Co. v. Detroit Stove Works, 1908, 31 App.D.C. 304. While it does not appear from the opinion that the testimony of the trade was actually consulted, the opinion does make clear that likelihood of confusion — to the injury of the one first to adopt a mark and to the general public — is the test.
Each of the foregoing cases involves identical trade-marks and therefore the first part of the proviso. But the court has also had before it the second part — relating to similar, as distinguished from identical, trade-marks. In G & J Tire Company v. G. J. G. Motor Car Company, 1913, 39 App.D.C. 508, it was sought by the latter company to register “G.J.G.” enclosed in a triangular border for use on automobiles. The G & J Tire Company, which had used the letters “G & J” upon rubber or elastic tires, also in a triangular border, opposed. In affirming, upon the ground that the descriptive properties of the goods were not the same, the Commissioner’s dismissal of the opposition the court said:
“The opposition is based chiefly upon the probability of the use of the marks creating confusion in trade. Before it can be held that the similarity of the marks will cause confusion in trade, it must appear that the marks are to be applied to goods of the same general class and of the same descriptive properties. Unless this be true, the mere similarity of the marks becomes immaterial. The law places no inhibition upon the use of the same mark by different persons, so long as the goods to which it is applied are so distinctive in class and quality as to forbid the probability of confusion in trade.” [Italics supplied] [39 App.D.C. at 511]
The court cited and quoted from Phoenix Paint & Varnish Company v. John T. Lewis & Bros., supra, to the effect that the “test is whether there is such a sameness in the distinguishing characteristics of the goods as to be likely to mislead the general public.” The case having arisen upon demurrer to the opposition the court did not have recourse to trade testimony concerning likelihood of confusion, but it adopted likelihood of confusion as the test for determination of the question whether or not the descriptive properties of goods are the same; there is nothing in the case to indicate that recourse to trade testimony might not be made in a case in which the court felt that the question could not be answered on the pleadings.
All of the cases above discussed arose under the same proviso of the statute as is involved in the instant case (Section 5 of the Act of February 20, 1905, 15 U.S.C.A. *392§ 85). It is true, as suggested by the majority, that in those cases the court did not make express reference to the different phrasing of the two parts of the proviso. But since the cases actually involved — in the case last mentioned the second part, and in each of the others the first — the proviso, they constitute, in my opinion, binding rulings as to the nature of the test, under each of the parts, for determining whether goods have the same descriptive properties.
The view which I take of the statute, and which I think finds confirmation in the cases which I have discussed from this court is taken also in another circuit. In Yale Electric Corporation v. Robertson, 2 Cir., 1928, 26 F.2d 972, the word “Yale,” in an elipse surrounded by an irregular octagon, applied to electric flash-light torches and their batteries, was held not entitled to registration in view of prior use of the same word upon many types of hardware, especially locks and keys, but not upon electric flash-lights and batteries. Again the question was whether or not the goods had the same descriptive properties. The court (consisting of Circuit Judges Learned Hand, Swan, and Augustus N. Hand, in an opinion by Judge Learned Hand) in sustaining the trial judge’s dismissal of the bill to compel registration, held that they had, saying:
“There remains the question of registration, the goods not being of the ‘same descriptive properties’ in the colloquial sense. It would plainly be a fatuity to decree the registration of a mark whose use another could at once prevent. The act cannot mean that, being drafted with an eye to the common law in such matters. American Steel Foundries v. Robertson, 269 U.S. 372, 381, 46 S.Ct. 160, 70 L.Ed. 317. While we own that it does some violence to the language, it seems to us that the phrase should be taken as no more than a recognition that there may be enough disparity in character between the goods of the first and second users as to insure against confusion. That will indeed depend much upon trade conditions, but these are always the heart of. the matter in this subject. It is quite true that in Rosenberg Bros. & Co. v. Elliott, 3 Cir., 7 F.2d 962, the court felt bound to find that caps and suits had the same descriptive properties, quite independently of the confusion which had arisen. We cannot say that that is the case here, for the fact that flash-lights and locks are made of metal does not appear to us to give them the same descriptive properties, except as the trade has so classed them. But we regard what the trade thinks as the critical consideration, and we think the statute, meant to make it the test, despite the language used.” [Italics supplied] [26 F.2d at 974]
See also California Fruit Growers Exchange v. Windsor Beverages, 7 Cir., 1941, 118 F.2d 149, involving the phrase “substantially the same descriptive properties,” used in Section 16 of the Act of February 20, 1905, 15 U.S.C.A. § 96. Referring to both Sections 5 and 16 the court said:
“The language of the act was not intended to be more or less comprehensive than the term ‘same class’ used elsewhere in the Act, (15 U.S.C.A. § 85). The real test is whether the use of identical or similar trade-marks would be likely to cause confusion or mistake in the minds of the public, to deceive purchasers, — where the challenged goods are sold in the same stores or distributed in the same manner. Here confusion is bound to result. It was the congressional intent to prevent such confusion and resulting mistake or deceit. Though the merchandise of others may be dissimilar, if the trade-mark is the same or similar, and the merchandise such as reasonably may be attributed to plaintiffs, deceit results....” [Italics supplied] [118 F.2d at 152]
The court quoted from an opinion by Baker, District Judge, in Church & Dwight Co. v. Russ, C.C.D.Ind. 1900, 99 F. 276, 280, as follows:
“... Goods are in the same class whenever the use of a given trade-mark or symbol or [sic1] both would enable an unscrupulous dealer readily to palm off on the, unsuspecting purchaser the goods of the infringer. as the goods made by the owner of the trade-mark, or with his authority and consent....” [Italics supplied] [118 F.2d at 152]
The reference by the majority to Forst Packing Co. v. C. W. Antrim & Sons, 1941, 118 F.2d 576, 28 C.C.P.A., Patents, 1005, holding that “Mansion Brand” applied to beef, bacon, bologna, frankfurters, and meat loaves consisting of a mixture of beef and pork, cannot properly be registered in view of the prior use of the mark “Old Mansion” applied to coffee, spices, rice and *393kindred products, for the reason that these apparently diverse articles are of the same descriptive properties, and referring to rulings to the effect that fish and tea are of the same descriptive properties and that meat products, canned vegetables, canned fruits and other grocery products are of the same descriptive properties as sugar, to my mind buttresses the conclusion that recourse to trade testimony ought to be permitted for determination of the question whether or not items of merchandise have the same descriptive properties. How otherwise can it be learned whether or not such apparently dissimilar goods would be confused. Meredith Publishing Co. v. O. M. Scott & Sons Co., 1937, 88 F.2d 324, 24 C.C.P.A., Patents, 956, relied upon by the appellee, holds, as I read it, only that confusion is not the sole test for the sameness of descriptive properties but merely one of a number of factors which may be considered.
I find nothing in the statute or in the authorities which requires the conclusion that the court, in determining under the second proviso of Section 5 whether or not items of merchandise possess the same descriptive properties, must limit itself to visual inspection of the goods and inferences to be drawn from such inspection, and ignore likelihood of confusion and the testimony of the trade with respect thereto. I think this court has ruled that, in the light of the purpose of the trade-mark act— to protect honest dealers and the public— likelihood of confusion and what the trade thinks with' respect thereto is the critical consideration for determining whether or not the descriptive properties of items of merchandise are the same. I think therefore that the case should be remanded to the trial court for a further hearing wherein trade testimony as to the likelihood of confusion between the appellant’s magazine supplement and the British publication shall be given consideration.
In Church & Dwight Co. v. Russ the word “on” is used, not the word “or.”