(dissenting).
The application to register “Pow-R-Matic” for appellee’s use in the sale of automatically operated oil burners was filed and pending in the Patent Office prior to July 5, 1947. The opposition proceedings were contested there subsequent to that date and determined May 8, 1951, 89 USPQ 334. The appeal taken here was from that decision and the conclusion of the majority is clearly erroneous either under the standards of conduct prescribed by the Act of 1905 or the Lanham Act of 1946. 15 U.S.C.A. § 1052 et seq. Steele v. Bulova Watch Co., 344 U.S. 280, 287, 73 S.Ct. 252, Eureka Williams Corp. v. Willoughby Machine Tool Co., 194 F.2d 543, 39 C.C.P.A., Patents, 832; Safeway Stores v. Dunnell, 9 Cir., 172 F.2d 649; Miles Shoes, Inc., v. R. H. Macy & Co., Inc., 2 Cir., 199 F.2d 602; Junior Guild Frocks, Inc., v. Page & Dixon Drug Co. Inc., 79 USPQ 41.
Judge Hatfield in delivering the opinion here for a unanimous court in the recent “Kwixtart” trade-mark case for electric storage batteries observed that the test for descriptiveness under the Act of 1905 is the same prohibitory test provided for by the Act of 1946. Andrew J. McPartland, Inc., v. Montgomery Ward & Co., Inc., 164 F.2d 603, 35 C.C.P.A., Patents, 802, certiorari denied, 333 U.S. 875, 68 S.Ct. 904, 92 L.Ed. 1151. See also the progress report by Derenberg entitled “The Third Year of Administration of the Lanham Trade-Mark Act of 1946,” 86 USPQ, No. 10, Part II, 1-24, at page 3.
Judge Hatfield in the concurring opinion of this court in the case of Bon Ami Co. v. McKesson & Robbins, Inc., 93 F.2d 915, 916, 25 C.C.P.A., Patents, 826, previously and sharply had admonished against the piracy of registered trade-marks made valuable and outstanding by extensive advertising and long continuous use:
“If all that a newcomer in the field need do in order to avoid the charge of confusing similarity is to select a word descriptive of his goods and combine it with a word which is the dominant feature of a registered trade-mark so that the borrowed word becomes the dominant feature of his mark, the registered trade-mark, made valuable and outstanding by extensive advertising and use, soon becomes of little value, and, of course, each of the subsequent imitating trade-marks (and there would *766be many) is of value only to the extent that its users are trading on the good will of the owner of the original registered trade-mark.”
Substantial proof of the judicial wisdom of Judge Hatfield’s observation and his prophetic vision in denying the applicant’s registration in the cited case is found in these proceedings on appeal where it appears as a matter of record that within a period of less than one year, appellant has thrice sought to curb a band of newcomers from using an imitating trade-mark for the obvious purpose of trading on its good will and reputation. Eureka Williams Corp. v. Willoughby Machine & Tool Co., involving “Thermomatic” and “Oil-O-Matic,” 194 F.2d 543, 39 C.C.P.A., Patents, 832; Eureka Williams Corp. v. McCorquodale, involving “Hotomatic” and “Oil-O-Matic,” Appeal No. 5917, decided January 14, 1953,* and the case at bar.
Why the newcomers in those three cases, with the literature and the fanciful coinage of words of the whole world at their disposal, should have chosen a mark blatantly imitative of the mark long employed on a worldwide basis by appellant, instead of adopting some other distinctive means of its own to identify their goods, is hard to understand. The only basis for such action of course was the deliberate purpose to obtain a definite advantage from the high standing in the trade which appellant’s products have developed and enjoyed for generations.
This is particularly true in the case at bar where appellee has appropriated the dominant features of appellant’s marks, their hyphenated style, their form of capitalization, and their syllabication, thereby producing a device designed to trap the unwary and uninformed through the false suggestion of a connection with appellant’s renowned enterprises and products.
Chief Judge Garrett, delivering the opinion for a unanimous court in Cross v. Williams Oil-O-Matic Heating Corp., 48 F.2d 659, 18 C.C.P.A., Patents, 1192, which sustained appellant’s opposition on the ground that the newcomer’s mark “Coal-O-Matic” was confusingly similar to the previously registered “Oil-O-Matic” held that in such a case “the issue is not whether oil and coal are of the same descriptive properties, but whether the devices that feed them into the furnace are.”
The case at bar discloses that the word “Power” is descriptive not only of the dominant characteristic of appellant’s device but also of all such devices owned by appellee and others which feed oil into a furnace. The term falls squarely within the prohibitory provisions of the statute as hereinbefore described in the excerpt from the opinion of Judge Hatfield. See also Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 453, 31 S.Ct. 456, 55 L.Ed. 536.
The instant case is likewise on all fours with the principles laid down by the majority in Willoughby, supra, wherein Judges Johnson and Worley dissented without opinion. The decision in that case contains nothing not completely orthodox in accordance with established principles of trademark law, all of which were clearly- and effectively presented by eminent counsel. The court there defined the rule quoted and now approved by the majority here to the effect [194 F.2d 544]:
“This court has repeatedly held that because of the difference of facts in various cited cases, such cases are without controlling value here, except as to the principles of trade-mark law enunciated or exemplified therein. On the latter basis, however, this <md other federal courts have always had, and will continue to have, recourse to such citations.” [Italics supplied.]
The validity of the great mass of accepted trade-mark law as disclosed in decisional authority is a priceless heritage. In that respect and in the absence of intervening precedent or enactment, the past is prologue. The rule hereinbefore quoted and italicized has been relied upon for generations by the bench and bar. For the former, the -rule has served as á guiding light for the members of the judiciary in their deliberations; and for the members of the bar, the rule has served as a blue print upon which to rely in the advisory guidance of clients *767and as the basis of their position before the court in the presentation of argument.
We have on occasions not infrequently-held, however, that prior decisions of this and other courts in trade-mark litigation are of little value; and that decisions with respect to the question of the confusing similarity of trade-marks is largely a matter to be resolved on the personal opinion residing in and exercised by the judge or judges before whom the matter is submitted for decision. E. g. Kanmak Textiles, Inc., v. Carnac, Inc., 189 F.2d 1006, 38 C.C.P.A., Patents, 1148; Uuited-Carr Fastener Corp. v. Capewell Mfg. Co., 189 F.2d 1000, 38 C.C.P.A., Patents, 1153.
In other words, we have apparently shifted our position in trade-mark litigation from time to time from a logical to a psychological basis, with the result that in one instance we have overruled the previous judgment of our court where the marks and goods in a subsequent suit were identical with those of a previous case; and in a series of other cases we have authorized the registration of identical marks because, as noted, the goods of the newcomer were not precisely the same as those upon which widely-advertised and long established marks had been previously used. See cases cited in my dissenting opinion in Eureka Williams Corp. v. McCorquodale, supra.
The Supreme Court “for want of jurisdiction” denies petitions for the writ of certiorari to review judgments of this court in matters relating to patents and trademarks. McBride v. Teeple, 311 U.S. 649, 61 S.Ct. 8, 85 L.Ed. 415. Compare Beckwith v. Commissioner of Patents, 252 U.S. 538, 40 S.Ct. 414, 64 L.Ed. 705 and Baldwin Co. v. R. S. Howard Co., 256 U.S. 35, 41 S.Ct. 405, 65 L.Ed. 816. Accordingly, there is no higher court to determine whether our procedure in these matters is right or wrong.
It is my opinion, however, that there is no justification whatever for authorizing the registration of the applicant’s mark here in issue and thereby adding to the confusion already existing for the purchasing public with respect to the involved merchandise.
Opinion withdrawn. Subsetquent opinion filed June 3, 1953.