(dissenting).
Appellee has offered no evidence and the record points clearly to appellee’s adoption of its mark with the knowledgé of appel*197lant’s rights and with the studied purpose to profit by the good name and the earned good will built up by appellant at great expense over a period of years.
It has been conceded that appellant is the owner and for years prior user of two registrations of “Nescafe,” dated January 17, 1939, and July 2, 1940. Those registrations were for use on coffee, coffee extracts, decaffeinated coffee preparations, and the like. Appellee’s application for the registration of “Hycafe” was filed June 30, 1945, alleging continuous prior use thereof for coffee extract since June 18, 1945. That use was for a period of twelve days.
The decision of the majority holds that considering the marks “Nescafe” and “Hycafe” in their entireties they are not similar and their concurrent use would not be likely to cause confusion. It is impossible to accept that conclusion. “Nescafe” and “Hycafe” consist of but one word, each having three short syllables, two of which are not only similar but identical.
It is not the word “cafe” that makes appellee’s mark objectionable. It is the lack of distinctiveness by which the diminutive “Hy” obscures any difference at all between the contested marks. In fact, it would seem that so far as appellee is concerned, whatever difference there is between appellee’s mark and that of appellant was wholly unintentional.
The owner of appellee’s mark is the Baker Company and not the Hygrade Company whose name is printed on the mark. In thus assembling “Hycafe” as a trade-mark for use on its goods, appellee, the junior party, has introduced a feature of duplicity whereby confusion is likely to result as to just which of the two companies named in the mark “Hycafe” is the actual vendor of the merchandise to which the mark is attached.
The mark “Hycafe” also bears the identical notation on its face that was previously and continuously used on labels and in the widely circulated advertising of appellant to the effect that the involved product was a powdered coffee extract with added dextrins, maltose, and dextrose.
“Hygrade” is a phonetic spelling of the descriptive adjective “high-grade,” which means of a grade rated as superior. It is also noted that “Hy” is susceptible to interpretation as an abbreviation for the hydrates with which the cafe is blended. In either event, “Hycafe” is merely descriptive of the character and quality of the goods to which the mark is attached.
Appellant took testimony for the purpose of showing that prior to appellee’s entry into the field in 1945, appellant had already spent approximately $1,250,000 in advertising its product through radio and other mediums of attracting the purchasing public, including numerous national magazines, such as Life, Look, Ladies Home Journal, McCall and such newspapers as the New York Daily News and the Philadelphia Enquirer; and that as a result of such advertising and the quality of its product, appellant built up good will in its trade-mark “Nescafe” having an enormous value on a national scale.
The record also discloses that in 1945 when the temporary period ended during which the Armed Forces had taken all of the product made by appellant, appellant launched another widely-circulated advertising campaign among grocers to revive its business by announcing to them with large and striking display that “Nescafe Is Here Again.” About that time appellee likewise launched its entry into the field with the use of the mark “Hycafe.” Appellee has submitted no testimony to the effect that it has spent anything in the marketing of its product.
The Circuit Court of Appeals has noted that at one time courts were remarkably generous in extending bpundaries of the monopolies created by registered marks but today the tendency is to be somewhat less generous. Eastern Wine Corporation v. Winslow-Warren, Ltd., Inc., 2 Cir., 137 F.2d 955. The Court of Customs and Patent Appeals has uniformly treated each case as subject to determination in accordance with the particular facts presented.
The history of this court discloses, however, that a newcomer seeking to register a mark of doubtful qualification, upon which no investment whatever has been shown in connection with its prior use, has not been *198afforded a refuge fo'r piracy here through registration as against the owner of a mark who has spent over a million dollars in its promotion.
The decision of the majority, in effect, 'has applied the rule of caveat emptor — let the buyer beware — to the sale of an every day household article. The fallacy of the decision is that “cafe” is descriptive and every one is free to use the term as a trademark without the necessity of also selecting an additional and differentiating term that will clearly distinguish the owner’s product from that of the appellant. Lactona, Inc., v. Lever Brothers Co., 144 F.2d 891, 32 C.C.P.A. Patents 704, 708.
The late Judge Hatfield in the case of Atlantic Seafood Packers v. Florida Fruit Canners, Inc., 166 F.2d 586, 589, 35 C.C.P.A. Patents 985, quoted the following generally accepted doctrine which is here applicable to the point in question: “A vast field of wo'rds, phrases, and symbols is open to one who wishes to select a trade-mark to distinguish his product from that of another. Unquestionably in our ever-increasing complex business life, the trend of modern judicial decisions in trade-mark matters is to show little patience with the newcomer who in adopting a mark gets into the border-line zone between an open field and one legally appropriated to another. As between a newcomer and one who by honest dealing has won favor with the public, doubts are always resolved against the former.”
The decision of the majority represents a departure from the application of the doctrine hereinbefore described. Suyely, the court by its decision does not intend to set up a new tower of Babel in the field of trade-mark law. However, the decision is susceptible to that interpretation and is bound to be hailed with delight throughout all hucksterdom.
Appellant has been a pioneer in the introduction and use of the mark “Nescafe” in the sale of powdered coffee or cafe, instantly soluble in a cup of hot water, which has proved a godsend to the maddening throngs who have to punch a time clock. The name has significance 'as a symbol of the product and not as á family name.
Upon the record, it is impossible to escape the conclusion that appellee’s adoption and peculiar use of “Hycafe” as a trade-mark was to serve the purpose of simulation and to draw to itself the reputation and good will of the appellant corporation.
In view of that conclusion, and in view of the doubt created by the sound and honest conviction expressed in the decision of the Examiner of Interferences holding that the involved marks are confusingly similar, the decision of the Commissioner of Patents should be reversed.