(dissenting)-
I am unable to agree with the majority that, under the facts of this ease, appellee’s “Air-O” trade-mark should be canceled.
Briefly, the facts are these:
Appellee began the use of his mark on leather belts worn upon the person in 1915, and has continuously so used it since, without complaint or question, so far as this record shows, until this cancellation proceeding was instituted sometime in 1927.
In 1922 appellee, having then used the mark for about seven years, secured its registration under the Trade-Mark Act of 1905 (15 USCA § 81 et seq.), “for use on men’s and women’s belts.”
[' Prior to 1915 appellant had used the trade-mark “Arrow,” combined with a representation of an arrow, on collars, cuffs, and outer shirts, and held five registrations of •same. Whether these registrations were of the word “Arrow” alone, or of the word combined with the picture, the record does not •show. Of eleven exhibits of the mark filed, .as those used, nine of them have the word rand picture combined. Subsequent to 1915 rappellant extended its use of the mark to ‘handkerchiefs, union suits, pajamas, nightshirts, and other articles of wearing apparel. In 1926 it extended its line of goods to bathing belts made of the same kind of fabrics that are used in the manufacture of some of its collars and, perhaps, some of its other goods. Its arrow mark was used upon these belts, and in 1927 it sought to register same for belt use. This application was denied on the ground that it conflicted with appellee’s mark “Air-O” since the goods of both parties were belts. While its application was still pending, following an early preliminary adverse action by an examiner, appellant instituted the cancellation proceedings. It did not carry its application for registration beyond the examiner’s final or third decision rendered after a second reconsideration.
It thus appears that appellant did not enter the belt field until eleven years after appellee had begun the use of the mark on belts and four years after appellee’s registration.
It seems obvious that appellee has strong equities. There is no suggestion of the slightest bad faith upon his part; no contention that he was endeavoring to obtain any benefits from appellant’s advertising or appropriate to his advantage any part of appellant’s good will. He began and continued the use of his mark in good faith, and registered it. He has evidently built up an extensive business in interstate and foreign commerce. The stipulated record shows:
“* * * In most of the states of the Union and in Canada, Cuba, Hawaii, Holland, Egypt, Japan and Mexico, from which foreign countries registrant has received orders for belts under the trade name of ‘Air-O.’ ”
His location is' at St. Louis, Mo.; the locations of appellant are in the Eastern States and one in Canada. They were in no sense competitors and appellant has made no effort to show any actual injury to itself growing out of appellee’s use of his mark over a period of many, years. No confusion as to origin of the respective goods, or as to anything else, has been shown; no attempt has been made to show any.
It seems to me that the goods at issue in this cancellation proceeding, proper to be considered, are only those which were being dealt in by the respective parties in 1915 when appellee’s use of his mark began. These were collars, cuffs, and outer shirts (of textile material) on the one hand and belts (of leather) on the other.
If we extend the matter up to the date of appellee’s registration, December, 1922, we should add ' to appellant’s goods, handkerchiefs, nightshirts, pajamas, undershirts, underdrawers, and union suits.
In the common and ordinary meaning of the phrase “of the same descriptive properties,” I think it may be fairly said that they do not apply to the goods in which the respective parties to this ease were dealing prior to 1926. There were no complaints by appellant of appellee’s use of his mark or of his registration of same, of which latter it had at least constructive notice, until appellant had entered the bathing belt field and sought to register for that field.
*715But, even if it be conceded that the goods are of the same descriptive properties, By reason of the construction given by this court to the word “elass,” there remains the difference in the marks themselves.
I do not agree that they are so similar as that the statute should be held to justify or require the cancellation of appellee’s mark.
Admittedly they do not have the same appearance. No person looking at them would he at all likely to think of any resemblance between them. Appellant’s word, “Arrow,” is most frequently used in connection, or in combination, with a representation of an arrow. It was being wholly so used in and prior to 1915.' Indeed, this representation is quite as distinctive as the word itself. Appellee’s word, “Air-O,” is, according to the record, used alone, unaccompanied by any sign or symbol. Whether appellant’s registrations have generally had the representation of the arrow as a part of the drawings does not appear. The registrations were not placed in the record. Why I do not know. As stated above, nine of the eleven exhibits purporting to give the mark as used show the picture or representation of an arrow. Appellee’s registration is in the record and consists of the single word “Air-O.”
It is only when the words are pronounced that any resemblance is noted and I do not believe that an order of cancellation should, in this ease, be based upon sound alone.
The equities of appellee are too great hero to admit of their being lightly brushed aside. He is not the newcomer in the belt field against whom doubt should be summarily resolved. He is the prior user of the mark for belts, and, as between the parties, is entitled, as I view it, to have any doubt resolved in his favor. So far as any public interest may be thought to be involved, there has been no confusion in the past and I know of no reason to presume that any will result from a continuance of the status quo.
This court has had occasion to say in several eases, in substance, that it would be useless to admit a mark to registration which a court of equity will not protect. In so saying we but followed what other courts have frequently said. The Supreme Court of the United States itself has declared the principle.
The converse of this proposition, within proper limits, is true, of course, and I think the principle is applicable here. That appellee has acquired property rights in the mark “Air-O”, which, upon this record, .a court of equity would protect, I do not for a moment doubt. He is, in my opinion, entitled to have his registration stand.