(dissenting).
In substance, all the majority opinion says by way of explaining why it affirms is that it agrees with the reasoning of the board.1 2**I cannot find in the board’s opinion any rationalization of why it thought confusion would be likely. The opinion merely recites some of the stipulated facts 2 and then states the conclusion that confusion is likely. No doubt the board based its conclusion on the obvious similarities of the marks as a whole and its holding that the goods are “substantially the same.” It then cited In re Dobeckmun Co., 286 F.2d 187, 48 CCPA 810, which I consider no precedent for the result reached, even if we consider the goods to be identical in the sense of all being machine tools. Within that category, the goods are actually quite different. The true state of mind of the board seems to have been that it was in doubt about likelihood of confusion, out of which state it delivered itself by applying the old rule to resolve doubt in favor of the first user.
I believe that confusion is not likely and have no doubt to be resolved. The reasons for my conviction follow.
First, insufficient weight has been given to the facts as to the actual goods sold under the respective marks, to whom they are sold, the purposes for which they are bought, and the prices involved.
*459Appellant’s cross-slide assemblies cost $5,500 or so — as much as a luxury automobile — and are designed expressly for use with appellant’s $50,000 lathes. The record shows that they will not fit any other machine tool. Therefore, what is involved in the purchase of one of these BORMASTER cross-slide assemblies is ownership of a $50,000 tool and purchase of a $5,500 attachment for it. Such a purchase is not a casual transaction and unquestionably involves engineering specification of exactly what is wanted and of a specific known source, from which alone it can be had, and knowledgeable corporate purchasing-agent handling of the whole transaction. Appellee’s affidavit states as to purchasers:
In every ease, the sales are made to manufacturers who make use of machine tools and use them for manufacturing a finished product. These customers would be the same customers who would purchase lathe cross-slide assemblies and similar machine products.
These are thus capital goods involving large capital outlays, not consumer goods.
Opposer’s position, accepted below and by the majority, is that because it sells BORE-MATIC boring machines, the aforesaid purchasers are going to be confused as to the source of the $5,500 BOR-MASTER cross-slide attachments and think they come from the opposer. I cannot see the slightest possibility of such confusion for the following reasons:
1. The extreme care that goes into the purchase of a $5,500 attachment for a $50,000 machine with an attendant certainty of the source from which it is purchased.
2. The obvious differences in the marks: (a) the wholly different mental impressions generated by “MASTER” vs. “MATIC”, both used ad nauseaum in trademarks; (b) the different spellings of “BORE” and “BOR”; (c) the hyphenation vs. the non-hyphenation; and the very significant fact that the word “bore,” however spelled, is descriptive of the goods of both parties, indicating that they are machines or accessories for accomplishing boring operations in a factory, for which reason that portion of the marks would not be taken by anyone as an indication of origin.
3. The fact, not mentioned by the majority, that opposer-appellee appears to emphasize “MATIC” in its business by using at least a small family of marks including, in addition to BORE-MATIC, CENTRI-MATIC, GAGE-MATIC, and SIZE-MATIC. Why, then, should anyone take a “MASTER” mark as indicating origin in appellee? Because “BOR” is in the mark? Certainly not! I note again that this is a hyphenated family and that appellant’s mark is non-hyphenated.
4. If the $2,000,000 of advertising and $62,000,000 of sales by appellee have any significance in this case it is, in my opinion, that the purchasers, actual and potential, of appellee’s machines must by now be quite familiar with the BOREMATIC trademark so that they would be even less likely to think BORMAS-TER has any connection with appellee than if the sales and promotion had been smaller.
The Dobeckmun case is no real support for the board’s decision — or the majority’s — when its facts are considered. The marks there involved were DURAFILM, sought to be registered for packaging films, and the cited prior registration of DUROFOIL for foil laminated to paper or to transparent film for wrapping purposes. We felt that purchasers of the films and foils — who were industrial packagers — might well think DURAFILM and DUROFOIL were products “of a single producer,” trademarks on “companion products” of film and foil. I see no such possibility on the facts of the present case. The “rationale” we applied in Dobeckmun cannot be applied here.
The test we have to apply here is a statutory test as prescribed in section 2 (d) of the Lanham Act (15 U.S.C. § 1052 (d)). It is not enough that there are resemblances between the marks and similarities between, or even identity of, *460goods and priority in the opposer. The test of the statute is that applicant’s mark
* * * so resembles a mark registered in the Patent Office or a mark * * * 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 cause mistake, or to deceive: * * *. [My emphasis.]
We are thereby required to consider realistically all of the circumstances pertaining to the use of the applicant’s mark on the applicant’s goods vis á vis the op-poser’s marks and uses. I do not believe the board did so. In fact, its opinion indicates that it put aside one of the principal circumstances; the board said:
In so doing [concluding confusion was likely], we have given due consideration to applicant’s argument that these products are sold to discriminating purchasers but do not believe that where, as here, the products of the parties are substantially the same, such factor is of controlling significance. [My emphasis.]
It cited the Dobeckmun case for that proposition but that case does not support such a broad statement; all we did there was to decide that on all the circumstances there before us confusion was likely. The circumstances here are quite different. Even if the goods are identical, it remains necessary to consider all the other circumstances and they may be of controlling significance.
The majority opinion adds nothing new. It gives blanket approval to what the board said and the board’s application of the Dobeckmun case. I think both were in error. Like the board, the majority appears to have ended up in doubt.
Since I conclude on all the circumstances of record surrounding the sale of the respective goods under the marks involved that there is no room for doubt, I would reverse.
. The board opinion is published at 147 TJSPQ 533.
. It was stipulated by the parties that the testimony could be introduced in the form of affidavits. Each side then submitted the affidavit of a vice-president reciting facts about his own company’s business. There are no conflicts between the two affidavits. This is tantamount to stipulating facts.