(dissenting, with whom WORLEY, Chief Judge, joins).
The court, reversing the decision of the Commissioner, holds that the appellee’s mark “Therm-O-Lite” must be refused registration because it so resembles “Thermopane” (the appellant’s registered trademark) that it is likely, when applied to the goods of the appellee, to cause confusion or mistake or deception of purchasers as to source or origin. I am unable to agree. It seems to me that the marks themselves, considered in the light of well established principles, clearly negative the likelihood of such confusion and that the circumstances under which they are used do not disturb that conclusion.
Each of the two marks consists of two parts, “Thermo” in the one and “Therm-0” in the other being the first part of each combination. Not only are these syllables practically identical, but they have long been used as prefixes in describing or advertising countless articles of commerce. I agree with the majority *951that “thermo” is not strictly descriptive, and I also agree that it is suggestive. It carries various connotations depending on the goods with which it is used. When used with contrivances designed to protect against heat, cold or changes of temperature, it conveys the idea of insulation — due perhaps to the almost universally known use of “thermos” with insulated flasks, jugs, bottles, etc. It can hardly be argued that “thermo” as a prefix is not in the public domain.
In May Department Stores Co. v. Schloss Bros. & Co., Inc., 234 F.2d 879, 881, 43 C.C.P.A. 980, this court said, “It is well settled that combinations of letters which are descriptive of the goods or properties thereof will not be accorded as great weight in considering whether marks are confusingly similar, as words or combinations of letters which are purely arbitrary.” This rule has been consistently applied by this as well as other courts. See Hart Schaffner & Marx v. Empire Manufacturing Co., 197 F.2d 558, 39 C.C.P.A. 1042 (Dixie Leader and Dixie Weave); House of Worsted-Tex, Inc. v. Deering Milliken & Co., Inc., 233 F.2d 333, 43 C.C.P.A. 908 (Worsted-Tex and Worsterlon); May Department Stores Co. v. Schloss Bros. & Co., supra (Duro-Style and Durosheen); Sears, Roebuck & Co. v. Hofman, 258 F.2d 953, 46 C.C.P.A. 708 (Royal Purple and Royal Plumage); Flintkote Co. v. Tizer, D.C., 158 F.Supp. 699, affirmed at 3 Cir., 266 F.2d 849 (Flexachrome and Flextone). It applies fully to the present case. “Thermo” is quite as suggestive and just as nearly descriptive as “duro” or “flex” in the cases above cited.
Of course, in any issue of confusing similarity the entire marks must be considered, but every part of a mark need not be given the same weight, The Hygienic Products Co. v. Huntington Laboratories, Inc., 139 F.2d 508, 31 C.C.P.A. 773, and if one part of each of two trademarks is a descriptive, suggestive or commonly used term, likelihood of confusion will not be found to exist if the other parts are distinctive enough to avoid confusion. It seems to me that the majority has not taken into account the well established principle of the above cited decisions.
What the court said in Eastern Wine Corporation v. Winslow-Warren, Ltd., 2 Cir., 137 F.2d 955, 959, is applicable to the position of the opposer in this case. Holding that “Chateau Montay” did not infringe “Chateau Martin,” the court said, “Here the plaintiff chose to build its business around the use of a name ‘Chateau’ which was previously in common use in advertising wines. It took the risk that competitors, old and new, would also use that common name * * *. Plaintiff, therefore, could not and did not pre-empt every use of ‘Chateau’ when coupled with every other name beginning with the thirteenth letter of the alphabet, nor even with one so beginning and consisting of six letters.” The majority opinion makes the appositeness of these remarks clear by pointing out the appellant’s major objective as announced by it: “L-O-F finally asserts that its mark is famous, and that it is desirous of preventing the registration of any mark which would utilize ‘thermo’ in conjunction with glass and windows.”
I do not see how there could be any likelihood of confusion between the distinguishing parts of the two marks now before us — “lite” and “pane.” They do not sound alike and they do not look alike. As to having the same meaning: Similarity of meaning is only one factor to be taken into consideration on the question of likelihood of confusion, and it seems to me that, unless the meanings of the two words are to all intents identical, it should not be controlling, absent the remotest similarity of sound or appearance. Here the meanings of the two words, “lite” and “pane” are far from identical. Assuming that “lite” is equivalent to “light,” it appears from the dictionary definitions that while “light” may mean a glass window pane, it may just as well mean an opening in the wall of a building without any glass in it.
As to the use of the marks by the respective parties. The appellant is a glass manufacturer. It makes various flat *952glass products. So far as appears, it has never entered the field of structural frames or parts of windows other than the glass panes although, of course, there is always a possibility (though no showing of a probability) that it will do so. The appellee does not manufacture the glass which it uses. The products with which it proposes to use the mark are aluminum storm windows and storm doors. It is, of course, true that the products of the parties are to a certain extent competitive but certainly not so directly as the wines in the Eastern Wine Corporation case, supra, or the tiles in the Plintkote case, or the hosiery in the Sears, Roebuck case.
Even if there were a possibility of confusion of source, the Trademark Act, 15 U.S.C.A. § 1051 et seq. requires more than that. 'What is necessary to disqualify a mark for registration is a likelihood (decidedly more than a mere possibility) of such confusion and, in my judgment, the opposer has failed to show any such likelihood.
I would, therefore, affirm the decision of the Commissioner.