(dissenting).
Appellant, a pioneer in the plastic industry of America, owns and has continuously used the registered trade-mark “Plaskon” since February 2, 1932, in connection with resinous and plastic material manufactured and sold by appellant to fabricators and distributors. They reproduced the plastic composition and resold it to the public in many diversified forms of merchandise, including printed fabrics, or decorative sheets, made out of polyester resins. 78 U.S.P.Q. 46.
Appellee is a fabricator and distributor of plastic goods, principally shower curtains made of film consisting of polyvinyl chloride resinous material. To that merchandise, and similar articles of the specie, appellee in the summer of 1945 created and ■appropriated the mark “Plastron,” which to all intents and purposes is identical in *113sound, meaning, and appearance with appellant’s mark “Plaskon.”
Appellant over an extended period of years has spent large sums of money in advertising the trade-mark “Plaskon” by direct appeals not only to the housekeepers and homeowners of the nation but also to the fabricators and distributors who resold appellant’s goods to the public. The amount spent for such advertising by appellant over the past five years approximated $80,000 a year, or $400,000. Appellee in its testimony has shown no expenditure for advertising. Appellant does all the advertising.
In fact, appellant’s averment in the notice of opposition has been explained by appellee, but not refuted, to the effect that the word “Plastron” published and illustrated in the Official Gazette of the Patent Office appears in rough script or brush stiokes identical in detail with the rough script or brush stroke letters used by appellant in advertising ' “Plaskon” long prior to the time appellee entered the field during the summer of 1945.
There is no question here of appellee’s right to manufacture and sell, ad infinitum, shower curtains and similar items made from plastic film; the question is what legal right does appellee have to appropriate and attach the appellant’s practically identical mark to those goods.
None of appellant’s presently produced materials have been used in the manufacture of shower curtains. Appellant has introduced evidence, however, to the effect that its most active competitor in the plastic and resin industry, Bakelite Corporation, uses polyvinyl chloride like appellee does to produce shower curtains which it advertises widely and sells to the public.
Appellant contends that the production of plastic film for use in shower curtains represents a natural and expected extension of the business of a general resin and plastic manufacturing company, such as appellant, and that appellant should not be hampered or embarrassed by the registration to appellee of a similar and substantially identical mark for concurrent use on shower curtains.
The same contention was advanced by appellant before the tribunals of the Patent Office where the adverse ruling was made that no “merely speculative future use of the opposer’s [appellant’s] mark on goods other than those to which it is now appropriated [can] add anything to its present rights therein,” citing Pratt & Lambert, Inc., v. Chapman & Rodgers, Inc., 136 F.2d 909, 30 C.C.P.A., Patents, 1228.
The decision in the Pratt & Lambert case was ably written by the late Judge Hatfield who therein approved the doctrine of the “legitimate expansion” of business to include the protected use of an existing trade-mark. There was no application of the doctrine in that case, however, because, as stated, “the goods of the parties [paints and insecticides] differ so widely in composition and use” and because the appellant proposed to branch out into an unrelated business for which the' appellant had no machinery or manufacturing processes for the making of insecticides.
The first appropriat'or of a trade-mark has the right to the use of the mark not only on the goods in which he deals but also on goods which he may afterwards produce or handle if they have the same essential qualities as those upon which he has been using the mark. Beck, Koller & Co., Inc. v. Bakelite Corp., 90 F.2d 349, 351, 24 C.C.P.A., Patents, 1290, 1293; Canton Culvert & Silo Company v. Consolidated Car-Heating Company, 44 App.D.C. 491.
Appellant in the case at bar has a research division with laboratories in which twenty scientists are employed, divided into six groups. Some of those groups aré constantly- at work on the improvement of existing commercial products and other groups are employed on products under development. New products are constantly being developed in the research laboratories and thereafter turned - over to the new products sales division for promotion.
Appellant already manufactures eight different types of plastic or resinous materials and it is obvious that an expansion of trade to include a ninth would be but a slight expansion and one most likely to .occur. Moreover, the plant, equipment, *114and personnel of appellant appear to be ready for the job. In other words, appellee, has no right to impede appellant in the use of its long and previously established mark in the natural expansion of appellant’s business. Pratt & Lambert, Inc., v. Chapman & Rodgers, Inc., supra; Gutta-Percha & Rubber Mfg. Co. v. Ajax Mfg. Co., 48 App.D.C., 230; L. E. Waterman Co. v. Gordon, 2 Cir., 72 F.2d 272.
There can be no question that the mark of appellee, the newcomer, so nearly resembles the mark owned and in use by appellant in this case as to be likely to cause confusion and deceive purchasers. It is not the difference in the goods which causes the likelihood of confusion; it is .the lack of any difference in the marks by which the goods of one of the producers may be distinguished from the goods of the other. Skol Company, Inc. v. Olson, 151 F.2d 200, 33 C.C.P.A., Patents, 715; Williams v. Kern & Sons, 47 App.D.C. 441.
The decisions rendered in the case at bar have all held under the Trade-Mark Act of 1905 that there was no likelihood of confusion because the involved goods were not goods of the same descriptive properties.- The record discloses that the opposition proceeding here in issue was pending before the Patent Office undetermined, even by the Examiner of Interferences, during the effective period of the Trade-Mark Act of 1905.
The issue here involved was first determined by the examiner, and subsequently by all others, after the effective date of the Trade-Mark Act of 1946, 15 U.S.C.A. § 1051 et seq. That act not only repealed all previous acts ■ but also abolished the provision for “merchandise of the same descriptive properties” as a test for the likelihood of confusion. S. C. Johnson & Son, Inc., v. Johnson, 2 Cir., 175 F.2d 176.
'■ Where there is no need to consider whether the involved goods are goods of the same descriptive properties, this court in a proper case has held, for example, that the word “Esquire” previously appropriated as a trade-mark for use on a magazine could not be subsequently appropriated by a newcomer for use on a machine for molding hamburgers. Holly Molding Devices v. Esquire, Inc., 148 F.2d 355, 32 C.C.P.A., Patents, 935.
Points relied upon in the decisions which have been rendered in this case really have no legal significance. For example, those decisions have dramatized the fact that the smallest container in which appellant’s liquid resins were delivered to the fabricators was a 200-pound drum. The drums containing the composition delivered to appellee to be fabricated by appellee into shower curtains likewise might have been the same or larger size. Just what the size of a drum has to do in the determination of the question as to whether the respective compositions are goods of the same descriptive parties is hard to understand.
Furthermore, present marketing methods as to the distribution of appellant’s products are not - of controlling importance since modern trade practices are subject to change from day to day, and absence of actual confusion in trade is likewise of no importance in an opposition proceeding because the mandate of the statute is directed against the registration of a mark which is likely to cause confusion. Celanese Corporation of America v. E. I. Dupont De Nemours & Co., 154 F.2d 146, 33 C.C.P.A., Patents, 948.
The case last cited discloses that the Dupont Company produces a cellulose composition sold to fabricators and distributors for resale by them directly or indirectly to the public. In that situation, however, and under a marketing arrangement, the trademark “Dupont” is attached by the fabricator and distributor to the finished product which reaches the ultimate consumer. There is no reason in the case at bar why appellant could not likewise provide .for the attachment of its trade-márk “Plaskon” to articles, made from that composition.
Appellee has included more than 70 printed pages in the record disclosing numerous different marks registered to third parties. Such registrations are not of aid to one seeking a registration. Weyenberg Shoe Manufacturing Co. v. Hood Rubber Co., 49 F.2d 1046, 18 C.C.P.A., Patents, 1449.
*115The citation by the respective parties of numerous prior decisions of this and other courts is likewise of no avail. Such cases are of value only in so far as the principles of trade-mark law are stated and therein applied. Lactona, Inc., v. Lever Brothers Co., 144 F.2d 891, 32 C.C.P.A., Patents, 704.
It should be noted further that the Court of Customs and Patent Appeals has not considered itself bound by the prior judgments of other courts even in cases where the cited marks were identical, where the goods were identical, and where the ultimate facts in issue were identical. Van-Camp Sea Food Co., Inc., v. Alexander B. Stewart Organizations, 50 F.2d 976, 18 C.C. P.A., Patents, 1415; Ex parte Westgate Sea Products Co., 84 U.S.P.Q. 368.
For the reasons hereinbefore stated, the decision of the Commissioner of Patents should be reversed.