concurring specially:
I concur in the opinion and judgment of Mr. Justice Van Orsdel on the ground of stare decisis. It seems to me that if *116the rule so often announced by this court either directly or inferentially is to be changed, it should be done by Congress, and not by the court. If, however, the question was one of first impression, I would join in the conclusion announced by Mr. Justice McCoy.
Mr. Justice McCoy, of the Supreme Court of the District of Columbia, who sat with the Court in the hearing and determination of the appeal in the place of Mr. Justice Robb, dissented:
The statute [33 Stat. at L. 724, chap. 592, Comp. Stat. 1916, § 9485] concerning the registration of trademarks provides among other things as follows :
“That the owner .of a trademark used in commerce * * * may obtain registration for such trademark by complying with the following requirements: [Here follow provisions in relation to the application for registration.]
“Sec. 2. That the application * * * must be accompanied by a written declaration * * * to the effect that the applicant believes himself * * * to be the owner of the trademark sought to be registered; * * * that such trademark is used in commerce * * *.
■ “That no mark by which the goods of the owner of the mark may be distinguished from other goods of the same class shall be refused registration as a trademark on account of the nature of such mark, unless such mark consists of or comprises immoral or scandalous matter. (Sec. 5a.)
. “Consists of or comprises the flag or coat of arms, or other insignia of the United States * * *
“Provided, That no mark which consists * * * merely in words or devices which are descriptive of the goods with which they are used or of the character or quality of such goods * * * shall be registered under the terms of this act.” (Sec. 5b.)
It has been decided by this court that a trademark which comprises words merely descriptive cannot be registered, but that is not what the statute says. I cannot see that the proviso in regard to the use of descriptive words needs to be construed, *117for the language is perfectly plain; but if I am wrong in this then the proper construction of it is made certain by other parts of the section; namely,, those where the statute reads "consists of or comprises(Italics mine.)
The Trademark Law is nothing but a registration act. Elgin Nat. Watch Co. v. Illinois Watch Case Co. 179 U. S. 665-672, 45 L. ed. 365, 377, 21 Sup. Ct. Rep. 270. In refusing registration to marks consisting merely in words or devices which are descriptive, the act codified the law found in the decisions, because a mark of that kind was not given protection in equity. Brown Chemical Co. v. Meyer, 139 U. S. 540-542, 35 L. ed. 247, 248, 11 Sup. Ct. Rep. 625. Nothing else was decided in Standard Paint Co. v. Trinidad Asphalt Mfg. Co. 220 U. S. 446, 55 L. ed. 536, 31 Sup. Ct. Rep, 456, cited in the present opinion of Hr. Justice Van Orsdel.
A so-called common-law trademark containing descriptive words is protected in equity. Singer Mfg. Co. v. June Mfg. Co. 163 U. S. 169, 41 L. ed. 118, 16 Sup. Ct. Rep. 1002; McLean v. Fleming, 96 U. S. 251, 256 and passim, 24 L. ed. 828, 832; Williams v. Mitchell, 45 C. C. A. 265, 106 Fed. 168—171; Leather Cloth Co. v. American Leather Cloth Co. (1865) 11 H. L. Cas. 523, 11 Eng. Reprint, 1435, 35 L. J. Ch. N. S. 53, 11 Jur. N. S. 513, 12 L. T. N. S. 742, 13 Week. Rep. 873; Seixo v. Provezende (1865) L. R. 1 Ch. 192, 12 Jur. N. S. 215, 14 L. T. N. S. 314, 14 Week. Rep. 357; Reddaway v. Banham [1896] A. C. 199, 65 L. J. Q. B. N. S. 381, 74 L. T. N. S. 289, 44 Week. Rep. 638, 25 Eng. Rul. Cas. 193; Montgomery v. Thompson [1891] A. C. 217, 60 L. J. Ch. N. S. 757, 64 L. T. N. S. 748, 55 J. P. 756; Raggelt v. Findlater (1873) L. R. 17 Eq. Cas. 29, 43 L. J. Ch. N. S. 64, 29 L. T. N. S. 448, 22 Week. Rep. 53; Russia Cement Co. v. Le Page, 147 Mass. 206, 211, 9 Am. St. Rep. 685, 17 N. E. 304.
In the brief for the Commissioner of Patents it is stated as follows: ‘‘The recent decisions of the courts, such as Nairn Linoleum Co. v. Ringwalt Linoleum Works; O. W. Thum Co. v. Dickinson, and others that have interpreted the statutes, have to some extent changed the practice in the Patent Office, which office is governed by the decisions of the courts.”
*118This is a respectful way of saying that the decisions of this court have revolutionized the practice in the Patent Office so far as concerns the matter here in question.
The decisions of this court in cases where registration has been refused to trademarks comprising descriptive words seem to be based upon some intention of Congress said to be expressed in the proviso, which reads as follows: “That trade-
marks which are identical with a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered.” [sec. 5.]
And in the present opinion of Mr. Justice Van Orsdel, he says:
“The statute not only prohibits the registration of marks which are descriptive, but of marks which would be likely to cause confusion in trade.”
So it does, provided that the'confusion likely to arise would ■come from the registration of a mark identical with a registered ■or known trademark, or so nearly resembling a registered or known trademark as to be likely to cause confusion. Counsel for the Commissioner of Patents does not contend that the mark here in question is identical with or resembles any registered or known trademark, and the Commissioner of Patents did not refuse registration on either of these grounds.
It is said that, in the matter of registration of trademarks, the Commissioner represents the public. So does any other public official, but he misrepresents the public if he acts in contravention of the statute. If Congress intended to make him a chancellor, it was also very careful to limit the scope of his powers.
I do not find any warrant in the statute for permitting an applicant to secure registration of a trademark after eliminating any part thereof. The statute is clearly against such practice, for it says, as already quoted, that it is “the owner *119of a trademark used in commerce” wbo is entitled to have it registered. lie can register only what he has used. Elgin Nat. Watch Co. v. Illinois Watch Case Co. supra, where the court said: “Trademarks are not defined by the act, which assumes
their existence and ownership, and provides for a verified declaration by applicants for registration that they have the exclusive right to the particular trademark sought to be registered.”
I dissent, though I would not do so had the previous decisions of this court established a rule of property.
A writ of certiorari from the Supreme Court of the United States was filed in this Court November 11, 1918.