(dissenting).
I think the decision of the Commissioner of Patents sustaining the decision of the Examiner of Interferences should be affirmed.
First, I agree with the Commissioner upon a point which the Examiner did not adjudicate; namely, the lack of deceptive similarity between the opposing marks. Since reproductions of the marks appear in the majority opinion and may be there seen, it is unnecessary here to describe them verbally, nor shall I dwell further upon this phase of the controversy.
Second, I am unable to concur in the holding that appellant’s metal containers are of the same descriptive properties, or even of the same class, as appellee’s rouge, sun-tan oil, talcum powder, perfumes and bath salts. It seems to me that a mere statement of what the goods of the respective parties are carries refutation of the idea that they are of the same descriptive properties.
The facts should be clearly understood. Upon the record in this case appellant’s mark “EAM” may be taken as indicating origin with it of the metal containers which it manufactures and sells, but it does not indicate origin with appellant of the substances which at times it may put into those containers either before the containers are sold or for use as “refills,” because it is not shown ever to have used the mark upon those substances. On the other hand, appellee’s mark “EA” indicates origin with it of the substances described but not of the containers in which such substances are packed.
I agree that the record in the case is, as stated in the majority opinion, “very indefinite and confusing.” It is greatly to be regretted that a decision, which I apprehend is to have far-reaching consequences as a precedent as well as affecting the rights of the immediate parties to the case, should have to be rendered upon such a record.
It may be added that, as pointed out in the decision of the Commissioner, the burden here rested upon the opposer (appellant) to show a state of facts justifying the opposition, and any doubt created by the record itself or by the absence from it of material evidence should be resolved against appellant.
Had appellant shown use of its mark on the substances with which its containers are filled or refilled, we should, of course, have an entirely different question, but no such showing was made, and the majority opinion does not so intimate. The majority decision rests squarely upon the finding that the containers and the substances which they contain are of the same descriptive properties.
To what ends the decision logically followed may lead in the administration of the Trade-Mark Registration Law I confess I am unable to foresee, and speculation concerning it is useless. I do not regard any of the authorities cited by the majority as being apposite, and I shall not attempt to review them in detail.
The case of B. F. Goodrich Co. v. Olive E. Hockmeyer et al., 40 F.(2d) 99, 17 C. C.P.A. (Patents) 1068, is cited, and from it is quoted a rule for guidance “In determining whether goods are of the same class or are of the same descriptive properties.” I repeat the quotation: “And, of course, in this connection, the use, appearance, and structure of the articles, the similarity or the lack of similarity of the packages or containers in which, the place or places where, and the people to whom, they were sold should be considered.”
Accepting the rule as sound, it does not seem to me to be applicable in the case at bar. Certainly, rouge, sun-tan oil, talcum powder, perfume, and bath salts can*686not be said to have the same use, appearance, or structure as metal receptacles in which they may be contained, and I am not able to see how a deduction of similarity properly may be drawn from the mere fact that sales of the respective articles, differing in such material respects, are made in the same establishment and often to the same purchasers or classes of purchasers.
Without discussing numerous of the other cited cases in detail, it seems sufficient to say that in none of them do I find any intimation that the containers of goods are of the same descriptive properties as the goods themselves.
Some of the cases cited are decisions of courts other than this court, involving the question of unfair competition, and do not seem to me to be pertinent to the facts of this case where our concern is limited to the statutory right of registration. It is scarcely necessary to say that almost any ' registered trade-mark could be used by its owner in such a manner as unfairly to compete with the business of another. In cases where marks are so used equity grants relief, but this does not affect the purely statutory right of registration. Broadly speaking, registration is one thing and use is another.
I deem it proper to refer specifically to the case of American Tobacco Co., Inc., v. Gordon, 56 App.D.C. 81, 10 F.(2d) 646, relied upon by appellee, in view of the expressions concerning it in the majority opinion. As I understand those expressións, the implication is that the decision in that case, in effect, has been overruled by subsequent decisions of this court. I had not so thought, but, assuming that it has been overruled, either directly or by implication, I still do not feel that such action should affect our decision here. Cigarettes and holders used in smoking them were there held not to be goods of the same descriptive properties. Conceding that there is such an association of cigarettes and cigarette holders in actual use as to justify a holding to the contrary, that does not seem to me to have any particular bearing upon the merits of this case.
In the expression “The Trade-Mark Registration Act (15 U.S.C.A. § 81 et seq.) was designed to prevent confusion,” the majority opinion restates a thought often expressed by this court. I quite agree to its correctness when the expression is properly limited and applied, but I am unable to see where it has any application here. The expression “merchandise of the same descriptive properties” is inextricably interwoven with the matter of confusion by the language of the statute. Simply applying the same mark to different articles of merchandise wholly dissimilar in their nature, characteristics, appearance, and use does not render them of the same descriptive properties. That makes the mark the test of characteristics. I had supposed that to be determinable only from the per se nature of the articles.
It is said in the majority opinion: “The businesses of the parties hereto, obviously, either overlap or in their natural growth and extension will do so. If appellant does not sell refills for its compacts under its trade-mark ‘EAM,’ it certainly ought to have the right, being the owner of the mark, to do so without running afoul of confusion which would result from the registration of the mark of the appellee for the uses stated.”
Authorities need not be cited to support the proposition that trade-marks are not owned as independent entities. They are owned only in connection with the articles to which they are applied. There is nothing in the record to show that appellant has ever applied “EAM” to rouge, sun-tan oil, talcum powder, perfumes, and bath salts.
It may be conceded that appellant has the right to enter the cosmetic field if it chooses so to do, and make and sell, or purchase from other manufacturers and sell, the articles in which appellee deals. So far as I know, it might go into the canning business or the wholesale grocery business with entire freedom and propriety, and so expand its activities, but such expansion of its business would not be that expansion which I understand to be comprehended within the decisions respecting the right to-extend the use of a trade-mark to new articles dealt in or produced.
It seems to me that in expanding its-business appellant must, so far as any trademark rights are concerned, do so in a manner consistent with the rights of appellee, and, even assuming the respective marks to be deceptively similar, as held by the majority, appellee’s right to register “EA” for use upon the merchandise described is superior to appellant’s rights in “EAM” for the same or similar merchandise, upon the showing made in this record. In-extending its business to cosmetics, appel*687laiif. invaded tlie field of appellee, and of the two it was the later entrant into that field. Appellant, is not entitled to be shielded from “running afoul of confusion” when it itself creates the confusion.