(concurring).
I concur in the result reached by the majority but I do so for my own reasons, which I here set forth.
Although the Examiner of Interferences erroneously said in his opinion that “confusing similarity of marks” was the issue, he was not confused in fact. Later on in his opinion he said,
“It is noted that applicant argued that said decided case [Thymo-Borine v. Winthrop, 69 U.S.P.Q. 512] and the other cases listed by opposer * * * involved registrations, which is not the case here."
He then said:
“In principle, Examiner can see no distinction here as drawn by applicant; namely, between the situations involving registered marks and coined marks, on the one hand, and a generic term and a coined term on the other. In this regard, Examiner appears to be amply supported by the Thymo-B orine and Otard cases, supra.”
He concluded by saying:
“Summarizing, then, it is Examiner’s position that the generic term Cortieotrophin and the coined term *500Cortrophin are too close in sound, appearance and meaning to avoid confusion. It is concluded, therefore, that the contemporaneous use of the parties’ terms on their identical goods is likely to result in confusion.”
I set this forth because both the majority opinion and the Assistant Commissioner seem to underrate the perspicacity of the Examiner of Interferences and for the further reason that the examiner has put his finger on a point which seems never to have been adequately dealt with in the texts or cases and which I think needs analysis, viz. is there a distinction between the two situations to which the examiner referred? I wish to deal with this point because I think it has an important bearing on the problem of reaching the correct conclusion in a field where the law is rather confused.
The considerations which prevail where an applicant seeks to register a mark differing from but resembling a descriptive term are not quite the same as those involved where an applicant’s mark resembles another’s arbitrary trade-mark.
When the owner of an arbitrary trademark opposes the registration of a differing but similar mark he is trying to protect an exclusive right, possibly of great value to him, a right which brings trade to his door and in which no one else has any interest.
One who opposes the registration of a purely descriptive term which he is using or has the right to use in his business (which gives him the right to oppose) is merely trying to prevent the encroachment of a claim of exclusive ownership on his right, whieh he holds in common with others, to the free use of the language, including all accepted technological terminology, which is constantly evolving. Such a right is not his exclusive property. It belongs to him only as a member of the public. It is not a right which brings him any trade. It has no direct economic value to him. His right to freedom in the use of the language is simply the right to be free from claims of exclusive right by others and from harassment based on such claims which may burden him with litigation expense. See, for example, what happened in Battle Creek Food Co. v. American Pharmaceutical Co., Inc., D.C., 5 F.Supp. 959. For these reasons the statute proscribes the registration of “merely descriptive” terms (Sec. 2(e) ).
When we come to consider alleged marks which are not themselves purely descriptive terms, but which are marks which differ to a greater or lesser degree from such terms, as in the present case, it should be remembered that the issue of “confusing similarity” is not one, the decision of which involves such matters as palming off, dilution of trademarks, getting a free ride on another’s goodwill and like considerations with which we are concerned where two confusingly similar, non-deseriptive, arbitrary marks are involved. All we are really concerned with is the prevention of harassment by an attempted monopolistic withdrawal of terms from the public domain by means of a registration.
Because of this difference in the two situations, we should be careful not to apply rules appropriately developed with respect to the encroachment on privately owned arbitrary marks to the determination of the unrelated question of what degree of similarity to words in the public vocabulary renders them unregistrable as descriptive, unless such rules are clearly applicable.
In opposing the granting of a registration, all an opposer can do is try to convince the Patent Office, or the courts, that the granting of the registration would be contrary to the statute, which lays down the terms on which registration may be obtained. In this case, for example, the opposer must show that “Cortrophin” is “merely descriptive” and in my view the only issue before us is whether or not it is. The only word we have to compare it with, on this issue, is “corticotrophin,” the closest in sound and appeai'ance of the several descriptive *501terms used on the product for which applicant seeks registration of its mark.
Words in the language are used in two ways, written and spoken. Substantial identity in either appearance or sound between the alleged mark and the name of the product would clearly make the mark descriptive and hence unregistrable. I see no such substantial identity here. The two syllables “ti-co,” omitted in the mark, are adequate to differentiate it from the descriptive name both visually and aurally. The remaining question is whether they sufficiently differentiate, on either score, to escape the “merely descriptive” proscription of the statute, bearing in mind its purposes. I think they do.
To dispose of one question, I feel that the undoubted fact that “Cortrophin” is highly suggestive of the product corticotrophin, so that it would lead informed people to surmise that that is what it is, is immaterial on the issue of mere descriptiveness. As Judge Bland of this court said many years ago in one of the “Chicken of the Sea” cases, Van Camp Sea Food Co. v. Alexander B. Stewart Organizations, 50 F.2d 976, 18 C.C.P.A., Patents, 1415, 1420, ofttimes the best trademarks are highly suggestive. Next, I do not belive that the registration of “the contraction “Cortrophin,” produced by the omission from the product’s name of the prominent syllables “ti-co,” would in any way tend to withdraw a word from the language or, realistically, would be likely to give rise to any harassment. “Cortrophin” is not the descriptive name of anything. No attorney in his right mind would use its registration to threaten a user of the firmly established, previously used and officially recognized descriptive term corticotrophin. One argument the opposer has presented is that “Cortrophin” would be a suitable name for the product. This does not have the slightest persuasive effect, at least on me, that it is descriptive in any way. And finally, admitting that the difference produced by the omission of “tico” from the name is small, both visually and aurally, I can see no reason why, for the reasons stated above, a small difference is not enough of a departure from an established descriptive name to avoid any likelihood of damage to one basing his claim solely on the right to use the descriptive name. If “corticotrophin” were a valid trademark instead of a descriptive term, I would hold the other way without hesitation. I would do so because there are real and logical reasons for protecting the private property in a trademark with a wider moat or a higher fence than is required to be built around the publicly owned descriptive word, the name of the product. I observe a distinction in this respect in the statute itself which in Sec. 2(d) forbids registration of a mark which so resembles a mark or trade name previously used by another as to be likely, when applied to the same goods, “to cause confusion or mistake or to deceive purchasers,” whereas in Sec. 2(e) the proscription is against registering a “merely descriptive” mark without any such qualification as the above quoted clause in Sec. 2(d).
It is also well known that “strong” trademarks are given greater protection against encroachment than “weak” ones. Marks become progressively weaker as they approach the descriptive. When the point of absolute descriptiveness is reached, property right in the word vanishes completely and the only thing left for protection is the right of the public to the free use of the descriptive word or name itself. Hence its registration is prohibited, together with words which are substantially the same in either appearance or sound. Private interests are not involved and I see no reason for going further to protect the public interest.
For the foregoing reasons I would affirm.