(concurring).
I agree that the decision of the board should be reversed but on a different basis than that of the majority. The district court in its findings of fact found inter alia:
“27. Defendant’s purpose in using the word ‘DUNHILL’ in connection with its business at its store at 65 East 57th Street was with the intent and for the purpose of trading upon plaintiff’s reputation and goodwill.
“28. A substantial number of members of the public were confused, mistaken or deceived by defendant’s use in its business of the word ‘DUNHILL,’ whether alone or with other language, into the belief that defendant was plaintiff, or that defendant was a branch of or connected with plaintiff and that defendant’s goods were plaintiff’s goods.
“29. Defendant used the word ‘DUNHILL’ in its business at 65 East 57th Street with the purpose, *695intent and result that a substantial number of members of the purchasing public were confused, mistaken or deceived into the belief that defendant and its products were plaintiff and its products or that defendant was a part of or connected with plaintiff.” (Emphasis mine.)
and in its conclusions of law inter alia stated:
“10. -The pleadings of each of the parties in this civil action respectively claim that there is likelihood of confusion, mistake and deception of the public by the use of ‘DUN-HILL’by the other party; and since plaintiff has proven that members of the public have in fact been confused, mistaken and deceived by defendant’s use of ‘DUNHILL’ into the belief that defendant and its products are plaintiff and its products and that defendant is connected with plaintiff, defendant is guilty of trademark and trade name infringement and unfair competition with plaintiff.”
In view of these findings of fact and this conclusion of law and my own conviction that applicant’s use of “DUN-HILL TAILORS” on its goods is likely to result in purchaser confusion, there is a serious question whether applicant is entitled to registration under the Lanham Act. Section 2 of that Act provides:
“No trade-mark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it—
***-»**-
“(d) Consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion * * * or to deceive purchasers: Provided, That the Commissioner may register as concurrent registrations the same or similar marks to more than one registrant when they have become entitled to use such marks as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved and the Commissioner or a court on appeal determines that confusion or mistake or deceit of purchasers is not likely to result from the continued use of said marks under conditions and limitations as to the mode or place of use or the goods in connection with which such registrations may he granted which conditions and limitations shall be prescribed in the grant of the concurrent registrations thereof; and concurrent registrations may be similarly granted by the Commissioner with such conditions and limitations when a court has finally determined that more than one person is entitled to use the same or similar marks in commerce.” * * * (Emphasis mine.)
Although the majority opinion states that the board found that the District Court implied that confusion, mistake or deception of purchasers was unlikely, I find no such implication in the District Court decision. In fact, the plain words of the quoted findings of fact go far beyond the question of “likelihood of confusion, mistake or deception of purchasers” in stating:
“28. A substantial number of members of the public were confused, mistaken or deceived by defendant’s use in its business of the word ‘DUNHILL,’ whether alone or with other language, * * * ” (Emphasis mine).
There is no finding of fact or conclusion of law which states categorically that the use of “DUNHILL TAILORS” by applicant is not likely to cause purchaser confusion which seems to me would have been in order if the court so believed, in view of the findings of fact and conclusions of law which indicate the contrary to be true.
*696We have before us this question: Does the law authorize the concurrent registration of a trademark which is so similar to another and the goods so related that purchaser confusion is not only likely but, as a matter of fact does exist, on the basis of opposer’s long knowledge of and acquiescence in applicant’s use of the trademark? I do not think so.
Although this court cannot interfere with the use of this trademark by applicant, we do have the responsibility of determining its registrability under these circumstances. In making this decision it seems to me that we have a problem of deciding in this instance whether the public interest or certain equitable rights of applicant should prevail.
There is no question but that this court has concluded that the public interest is not only involved but must be protected in situations involving purchaser confusion. In Dubonnet Wine Corp. v. Ben-Burk, Inc., 121 F.2d 508, 511, 28 CCPA 1298, this court said:
“Appellee contends that since the registered mark ‘Dubonnet’ is owned by the opposer but is used by another it cannot be considered as a mark ‘owned and in use by another,’ under the confusion-in-trade clause of section 5 of the Trade-mark Act of 1905 as amended, * * * so as to bar registration of the mark ‘Bourbonet.’ We must not lose sight of the fact that the dominant purpose of the said clause is to protect the purchasing public from confusion and mistake. Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.2d 116, 17 C.C.P.A., Patents, 1034; California Packing Corp. v. Tillman & Bendel, Inc., 40 F.2d 108, 17 C.C.P.A., Patents, 1048; Skelly Oil Co. v. Powerine Co., 86 F.2d 752, 24 C.C.P.A., Patents, 790, ‘It [Congress] never intended that a trade-mark should be registered if its use was likely to cause confusion or mistake in the mind of the public or if purchasers were likely to be deceived by its use.’ Sun-Maid Raisin Growers of California v. American Grocer Co., supra. * * * ”
See also Lucky Heart Laboratories, Inc. v. Neumann, 154 F.2d 519, 521, 33 CCPA 1034, where it was stated:
“This court has held repeatedly that the primary purpose of that portion of the trade-mark law with which we are here concerned is to protect the public. See In re Laskin Brothers, Inc., 146 F.2d 308, 32 C.C.P.A., Patents, 820; Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 146 F.2d 1019, 32 C.C.P.A. 827. * * ”
Although these decisions relate to the provisions of the 1905 Act, I believe the same rationale is applicable in the consideration of the Lanham Act. Although we cannot prohibit the use of a mark, we can prohibit registration and all the rights and privileges that go with it. Whatever protection this affords the public, it is our duty to give under these circumstances.
I also believe that when the public interest is involved it takes precedence over the equitable rights of an individual insofar as the registration of a trademark is concerned. See Skookum Packers’ Association v. Pacific Northwest Canning Co., 45 F.2d 912, 18 CCPA 792 and Abell v. Beatrice Creamery Co., 79 F.2d 751, 23 CCPA 735.
Furthermore, it is not clear to me how equitable rights existing between two parties1 can justify the issuance of a registration in contravention of the express language of the statute.
For these reasons, I am of the opinion that the decision of the board should be reversed. However, I do not believe that applicant is entitled to registration even under the conditions suggested by the majority.
. Section 19 of the Lanham Act (15 U.S.C. § 1069, 15 U.S.C.A. § 1069).