(dissenting):
This case presents a novel question concerning the applicability of 15 U.S.C. § 1125(a) (1970). The majority applies principles of trademark and unfair competition law that were established to deal with circumstances significantly different from those we find here.
The essential facts are: Schering sold the bulk of its remaining inventory to Sutton (P.R.), released the manufacturer which supplied it with deodorant from an exclusive production contract, and formally abandoned the trademark “Sutton.” After the abandonment, Sutton (P.R.) and Lander both sold deodorant under the name “Sutton.” Sutton (P.R.) now claims that, because it was the first to sell deodorant under the “Sutton” name after Schering abandoned the trademark, it acquired a protectable interest in the designation “Sutton.”
The majority agrees with this argument stating: “As the first bona fide user of the abandoned Sutton mark, Sutton Cosmetics (P.R.) had acquired trademark rights in that mark. . ” In view of the fact that “Sutton” is a weak mark and is protect-able only if a secondary meaning has been established, the proposition underlying the majority decision is that the first user of an abandoned mark acquires, merely by virtue of that first use, the secondary meaning associated with that mark which the abandoning party created. Neither authority nor policy justifies this result.
The majority cites 3 Callmann, Unfair Competition, Trademarks, and Monopolies § 79.4 (3d Ed. 1969). The cases cited in Callmann to support the proposition relied upon by the majority involved: (1) situations in which there was no finding of abandonment at all, Foss v. Culbertson, 17 Wash.2d 610, 136 P.2d 711 (1943) (“University”); Holmes v. Border Brokerage Co., 51 Wash.2d 746, 321 P.2d 898 (1958); International Free & Accepted Modern Masons v. Most Worshipful Prince Hall Grand Lodge, Free & Accepted Masons of Kentucky, 318 S.W.2d 46 (Ky.1958); Riverbank Laboratories v. Hardwood Prods. Corp., 165 F.Supp. 747 (N.D.Ill.1958); (2) situations in which there was abandonment and subsequent appropriation of a “strong” trade name, Seattle Street Railway & Municipal Employees Relief Ass’n v. Amalgamated Ass’n of Street Electric Railway & Motor Coach Employees of America, 3 Wash.2d 520, 101 P.2d 338 (1940) (“Seattle Railway Employees’ Relief Association” and “Seattle Street Car Men’s Relief Association”); Yellow Cab Co. of Biloxi, Inc. v. Checker Taxicab Owners’ Ass’n, 233 Miss. 735, 103 So.2d 350 (1958) (“Checker Cab Company of Biloxi”); Norwich Pharmacal Co. v. Hoffman-La Roche, Inc., 180 F.Supp. 222 (D.N.J.1960) (“Treburon” abandoned; plaintiff adopted “Tricofuron”; defendant tried to adopt “Triburon”) ; (3) situations in which the appropriating user established a secondary *291meaning for his use of a weak mark, Mohawk Sales Co. v. Silvers, 65 N.Y.S. 2d 609 (Sup.Ct. Queens County 1946); Barbizon Corp. v. Hollub, 41 N.Y.S.2d 117 (Sup.Ct.N.Y.County 1943); Kaplan v. Marcus, 81 N.Y.S.2d 432 (Sup.Ct. Kings County 1948); Sarasohn v. Andrew Jergens Co., 45 N.Y.S.2d 888 (Sup.Ct.N.Y.County 1943). The only other cited case, McKesson & Robbins v. Charles H. Phillips Chemical Co., 53 F. 2d 342, modified, 53 F.2d 1011 (2d Cir. 1931), cert. denied, 285 U.S. 552, 52 S. Ct. 407, 76 L.Ed. 942 (1932), is authority for the opposite result from that reached by the majority. This court held, 53 F.2d at 345, that as one company had abandoned the weak mark “Milk of Magnesia,” six other companies that were selling the product under that designation were free to continue to do so. I have been able to find no authority for the proposition that the first user of an abandoned weak trademark automatically acquires the protection enjoyed by the former user who expended time and money establishing a secondary meaning for the mark.
Granting a corporation in the position of Sutton (P.R.) an “assured” market share by giving it the monopoly right to use the reputation and good will created by the extensive efforts of Sutton Cosmetics Inc. and Schering results in an unjustifiable limitation on competition. Moreover the position adopted by the majority contributes almost inevitably to misleading the consumers of the product. The majority relies heavily on the argument that Lander was attempting “to pass off its goods as the Sutton goods already on the market. . . .” That argument applies with equal force to a first user of any abandoned mark, and in this case to Sutton (P.R.). The purpose of the use is to lead consumers to believe that the item sold under the familiar name is the same item as that formerly produced by the abandoning company. But the consumer has no assurance that the item he purchases, because he associates the name with a particular trait or standard of quality, will in fact have that trait or standard.
Lander is not attempting to pass off its product as that manufactured by Sutton (P.R.). On the contrary, both Lander and Sutton (P.R.) are attempting to pass off their products as the product formerly produced by Schering. In these circumstances, and in view of the absence of controlling authority, there is no reason for allowing one competitor to appropriate the name and good will of a former manufacturer merely because it commenced its selling activities five months ahead of the other competitor.