(concurring and dissenting).
I concur in the opinion vacating the district court judgment relating to the *1406secondary meaning of its mark “CONDITION.”
I dissent from that part of the opinion affirming the district court judgment denying injunctive relief to Clairol based on the lack of a likelihood of confusion. The result is to restore Red-ken’s mark “CURL AND CONDITION” to the secondary register.
The Board had accepted Clairol’s contentions and ordered cancellation of Red-ken’s mark. The district court overruled the Board on both the “secondary meaning” issue and the “confusion issue.” Our decision affirms the district court decision as to the “confusion issue.”
I think that the proposed opinion overlooks the district court’s failure to abide by the rule of Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 38 L.Ed. 657 (1894). Furthermore, assuming ar-guendo that the Morgan rule was properly applied, I do not see how the district court or this court can justifiably have a clear conviction of the Board’s error on the remaining issue of “confusion.”
We all agree that under Morgan the district court was bound to accept the Board’s findings of fact unless, on the basis of the evidence considered by the Board and any new evidence, the court was left with a clear conviction that the Board had erred. Judge Goodwin assumes that the district court followed this rule. (Opinion, p. 1405, lines 15-25). I think the district court did not.
I will admit the district court was apparently aware of the Morgan rule, for the case is cited at the outset of the court's opinion below.
Yet awareness of the rule and adherence to it are obviously separate things, as the district court, by misapplying the rule, amply illustrates. Dealing with the factual issue of confusion, the court stated that it was “not convinced that likelihood of confusion exists with respect to plaintiff’s [Redken’s] mark.” [Emphasis added] [As to “secondary meaning” the district court likewise stated it was “simply not convinced • • •”]
Thus the district court, whether through misunderstanding of Morgan or inadvertence, based its decision on its lack of conviction that the Board was right, not on a clear conviction that the Board was wrong. Although not clearly convinced that secondary meaning had been acquired or that likelihood of confusion existed, the district court may still have been without that clear conviction to the contrary which is necessary under Morgan. Accordingly, I would reverse the district court’s holding as to the lack of a likelihood of “confusion.”
Even assuming that the district court was clearly convinced of the Board’s error, I believe that such a conviction is unjustifiable and erroneous in light of the evidence in the record favorable to Clairol. I will concede that the evidence leaves some doubt on the factual issues and that the Board may have been wrong, but this very state of doubt makes it impossible justifiably to have a clear conviction.
Without rehashing the evidence here, I think it is fair to say that it is sufficiently two-sided and that the Board’s expertise in evaluating such matters should be permitted the benefit of the doubt.
I would reverse the district court’s judgment denying injunctive relief to Clairol on the “confusion” issue.