The opinion
O’CONNELL, Judge
(dissenting).
Westinghouse properly concedes here in its brief that while the primary test with regard to the confusing similarity of trademarks attached to competing merchandise involves a consideration of the respective marks as a whole, nevertheless it is permissible and often necessary to dissect the marks in order to disclose prohibited descriptiveness or likelihood of confusion which otherwise may not be apparent. 1
Westinghouse presenting its argument on the foregoing assumption contends that the only point of similarity between the involved marks, the suffix “Line,” is nowise descriptive of the electric motors in issue, 2 *874 is not the dominant feature of either mark, and does not render the marks, as a whole, confusingly similar, because the ordinary purchaser would attach little importance to “Line” when both marks are concurrently used on electric motors identical in kind.
The record, however, does not support Westinghouse. As the Examiner of TradeMark Interferences in his decision aptly put it:
“It is the examiner’s opinion that the word ‘Line’ is the dominant part of op-poser’s mark. Certainly there would be likelihood of confusion if this dominant part were used by someone else and 'another letter of the alphabet were substituted for the letter ‘B\ The substitution of the word ‘Life’ for the letter ‘B’, in some respects, makes the marks involved more distinguishable, but in other respects increases the likelihood of confusion by suggesting, when the goods are sold side by side or advertised through the same advertising media, that both goods have the same origin, and that those marked ‘Life-Line’ are of superior quality. Considering the marks as a whole, the examiner is of the opinion that there is likelihood of confusion and mistake if the respective marks are used concurrently on the same products.”
The record discloses that the identical goods of the parties are not only sold side by side but also have been advertised simultaneously in the same class of advertising mediums since the recent entry of Westinghouse into the field. There is no dispute that as a matter of fact, and as established by the evidence of record, the letter “B” in appellant’s mark “B-Line” is the initial for the individual surnames of Brown and Brockmeyer.
Appellant’s opposition rests on the basis that the concurrent use of the respective marks on the same goods, sold side by side and simultaneously advertised in the same mediums of trade, is likely to cause purchasers to believe that appellant’s “B-Line” motor is a second grade motor, the first grade being appellee’s “Life-Line” motor.
In support of that contention, among other things, appellant submitted a letter from China, which so far as pertinent reads:
“Lee Hsing Textile Factory
“Wusih China, Aug. 19, 1848 [1948]
“The Brown-Brockmeyer Co.
‘'Dayton, O. U. S. A.
“Messrs:
“We have bought a number of your motors, include:
Type PM 10 HP 1450 R.P.M. for Ring Frame
Type PM 5 HP 1450 R.P.M. for Roving
Type PM 3 HP 1450 R.P.M. For Winding
all B-Line quality, from U.N.N.R. nine months ago. What means B-Line ?' Is it means second class quality? The running condition is good. But with our old opinion, the installed ball bearing arrangement doubted us, * * *'
“ * * * We are confused, please direct us some opinion, and the proper operating method for your motors, very thanks.
“Yours truly,
“Wang Shi An.
Mee. & Ele. Dept.
“Lee Hsing Textile Factory”
In reply to the customer, appellant, among other things, replied:
“Dear Sir:
“We were interested to learn from your letter of August 19th that you *875 purchased a number of three, five and ten horsepower B-Line motors through U.N.N.R.A. and that you are satisfied with their performance. * * * “B-Line is our trade-name and not a quality classification. All B-Line products are first quality products designed and produced in thoroughly modern plants by expert motor craftsmen. Illustrated circulars on our motors and grinders are enclosed for your information. * * * ”
More vital to the essential issue in this case, however, is the following excerpt from Brown-Brockmeyer’s Exhibit 12 of record, consisting, among other things, of a letter from their Los Angeles representative, the Kuhn Company, indicating that the Requisition Officer for the United States Navy at Inyokern had withheld the placing of orders for appellant’s motors on the ground that such motors were not “Class A” motors. In the letter of May 31, 1949, Kuhn, so far as pertinent, wrote:
“This letter is in further reference to the several invitations outstanding on bids issued from the Inyokern office of the Navy.
“When I called on them Wednesday regarding the bids, I was told off the record that the Navy did not know what to do about the bids since the Brown-Brockmeyer Company were low on items in each bid. Since they did not consider our motors to have enough ‘quality’ and were not ‘rugged’ enough to stand the desert temperatures of Inyokern they did not issue orders and did not know how to issue them without giving them to Brown-Brockmeyer. I was asked why we were furnishing B-Line quality motors since they wanted first class motors and thought we should give them A-Line motors. They said ‘You know how good a “B” motion picture usually is — no good’. I explained that B-Line had nothing to do with the product being second quality. Incidentally, we get a lot of comment on the name B-Line in this regard.”
More correspondence and telegrams on the same point addressed in protest by appellant to the officer of the Navy m charge of the purchasing of supplies are part of the record here, together with the following significant and unrefuted testimony given by Stephen A. Brown, president of the appellant company in response to the questioning of counsel:
“Q. 82. As far as you know, has any other company ever used the word ‘Line’ in connection with electric motors prior to your adoption of it as early as 1926? A. No, I know of no one having used the word ‘Line.’ It was just an arbitrary word we used with the ‘B’ in order to get the trademark when used in connection with motors.
“Q. 83. Has anyone used the word . ‘Line’ in connection with motors until Westinghouse came out with this trademark, in 1946 of ‘Life-Line’? A. I don’t know of anybody. I have never seen it used in connection with motors to my knowledge.
“Q. 84. Did you have any competition from any other motor manufacturer, with the use of the word ‘Line’ or ‘B-Line,’ between the period of your first adoption of it in 1926 and the time when Westinghouse adopted ‘Life-Line’ in 1946? A. I know of no competition from any other motor company using the word ‘Line’ from the time that we started in business in 1925 up to the time Westinghouse started to use the word ‘Life-Line.’
******
“Q. 88. The fact that the word ‘Line’ is the predominating word in t'he Westinghouse mark ‘Life-Line,’ as you have so testified, what effect did this have on your business and your customers? A. As I look on the word ‘Life-Line,’ the word ‘Line,’ as far as I am concerned, means motors. We have spent about a quarter of a century building up that word, and that has given us a great deal of prestige and good will. The word ‘Life,’ as far as I can understand, means longevity, and on that basis I would say that ‘Life-Line’ means a Class A motor.
*876 “If Westinghouse is building a Qass A motor and we are advertising a ‘B-Line’ motor, it seems to me that Westinghouse is getting a free ride. As a matter of fact, ever since Westinghouse has started to use the word ‘Life-Line’ we have had complaints come in to us where customers have graded our motors as a ‘B-Line’ quality. We never had those complaints before, as long as we have been in business, never had any complaints like that before. The result has been that we have lost business, we have lost prestige.
“We are definitely not building a poor product; our product is better today than it has ever been, especially since you (Glancing at counsel for Applicant) 3 have introduced this trademark. We have expended more money in machines, in improving our product, and more money in inspection than before you introduced the trade-mark ‘Life-Line.’ But still we are getting these complaints whereby our motors are being graded as ‘B-Line’ motors — B Grade motors. Now, whether it is intentional or unintentional on your part — on the part of Westinghouse — or whether it is a psychological reaction from the public in general, I don’t know. But it has hurt us tremendously.”
The record is replete with additional testimony of a similar nature submitted on the part of appellant. For example, the witness, David C. Benning, retired postal supervisor who handled appellant’s mail at Dayton, Ohio, told how customers from time to time over a period of years addressed mail to appellant merely as the “Line Company,” or as “Line, Inc.” The law has long been settled that where the purchasing public has given a product a name other than its registered trade-name, such as “Kolce” for “Coca-Cola,” one who appropriates such a nickname for use on identical goods, regardless of fraudulent intent on proof of actual injury, is guilty of unfair competition against which protection by injunction will be granted. Coca-Cola Co. v. Koke Co., 254 U.S. 143 , 41 S.Ct. 113 , 65 L.Ed. 189 ; Coca-Cola Co. v. Boas, D.C., 27 F.2d 756 ; The Coca-Cola Company v. China Finance Corporation, U.S.Ct.China, 42 U.S.P.Q. 108 .
Industrious efforts made by appellant to prevent the spoliation of its reputation and good will caused by the advent into the field of Westinghouse with its accused trade-mark are disclosed in the record. Concededly the electric motor marketed by each of the parties is of the highest quality, yet appellant has not been able to counteract the degrading influence caused by Westinghouse. The confusion by which appellant’s customers have been diverted and by which its business may ultimately meet disaster emanates from the destructive force of the insidious Westinghouse mark which has unfairly placed appellant’s motor in a false and degrading light before the purchasing public.
The predominant part of the respective marks, the suffix “Line,” is not primarily descriptive of an electric motor, and Westinghouse by its own representation to that effect before the examiner is here estopped from claiming that it is. Skol Company, Inc. v. Olson, 151 F.2d 200 , 33 C.C.P.A., Patents, 715. Since words primarily descriptive of the goods or their character are the only words which reside in the public domain subject to be freely appropriated by any person in the same line of business for use in the sale of wares, Standard Paint Co. v. Trinidad Asph. Co., 220 U.S. 446, 453 , 31 S.Ct. 456 , 55 L.Ed. 536 ; Celanese Corp. of America v. E. I. Dupont De Nemours & Co., 154 F.2d 146 , 33 C.C.P.A., Patents, 948; KoolVent Metal Awning Corp. of America v. Price, 368 Pa. 528 , 84 A.2d 296 , Westinghouse is not entitled to appropriate “Line” as part of the mark which that corporation here desires to register. In re Brockway Glass Company, Inc., 154 F.2d 673 , 33 C.C.P.A., Patents, 969.
There is no escape from the conclusion upon the facts presented that West *877 inghouse in this case has attempted through the color of law to obtain an unfair advantage over its competitor, and therefore registration of its mark should be refused not only on the ground of confusing similarity but also on the ground of unfair competition. Coty, Inc. v. Perfumes Habana, S. A., 190 F.2d 91 , 38 C.C.P.A., Patents, 1180; Kaut-Reith Shoe Co. v. International Shoe Co., 45 App.D.C. 545 . This is particularly true under the Act of 1946, which provides that the greatest protection at home and abroad must be given to previously registered trade-marks used on competitive goods. Bacardi Corp. v. Domenech, 311 U.S. 150 , 61 S.Ct. 219 , 85 L.Ed. 98 ; S. C. Johnson & Son v. Johnson, 2 cir., 175 F.2d 176 , certiorari denied 338 U.S. 860 , 70 S.Ct. 103 , 94 L.Ed. 527 . 4
The following statement quoted from the decision of Coty, Inc., supra [ 190 F.2d 95 ], is of special significance here:
“The Commissioner of Patents, in placing the imprimatur of the Patent Office of the United States Government upon applicant’s marks by granting registration thereof, pursued a method of reasoning whereby the trivial was exploited and the important ignored. As Mr. Justice Holmes put it, writing for a unanimous Court in Coca-Cola Co. v. Koke Co., 254 U.S. 143 , 41 S.Ct. 113 , 65 L.Ed. 189 : ‘Of course a man is not to be protected in the use of a device the very purpose and effect of which is to swindle the public.’ Justice Holmes further pointed out there that the defects of an owner’s trade-mark ‘do not offer a very broad ground for allowing another to swindle him.’ ”
Appellant has raised other points regarding the secondary meaning of its trademark and presented other facts tending to prove that Westinghouse in the adoption of the word “Line” had illegally appropriated advertising material which appellant had used in the association with the sale of its merchandise long before Westinghouse entered the field. 5
It is difficult, however, to completely define here the validity of appellant’s position in those respects. Findings of fact derived from what might be called conference table consideration are not as a rule clear cut and complete like the findings of fact based upon additional extrinsic evidence produced in open court by recourse to testimony from the market place and the consuming public. Philadelphia Inquirer Co. v. Coe, 77 U.S.App.D.C. 39 , 133 F.2d 385 . Therefore, appellant should exercise its right under the statute and present the issue de novo before such a tribunal. John Morrell & Co. v. Doyle, 7 Cir., 97 F.2d 232 .
For the reasons hereinbefore stated, the decision of the Examiner-in-Chief, in my opinion, should be reversed.
. Citing Firestone Tire & Rubber Co. v. Montgomery Ward & Co., Inc., 150 F.2d 439 , 32 C.C.P.A.,Patents, 1074; Franco-Italian Packing Corp. v. Van Camp Sea Food Co., Inc., 142 F.2d 274 , 31 C.C.P.A.,Patents, 1029. See also Frankfort Distilleries, Inc. v. Kasko Distillers Prod. Corp., 111 F.2d 481 , 27 C.C.P.A.,Patents, 1189, 1190.
. In its application for registration, Westinghouse took the following stand in the successful rebuttal of the examiner’s re *874 quest for disclaimer of “Line” on the ground that it is descriptive of applicant’s goods:
“* * * Applicant’s mark is used on electric motors and it is not seen how the term ‘Line’ can possibly be held to describe these motors. In trade or commerce the term line is used to designate a supply or stock of various qualities and values of the same general class of articles. The term Une, however, is never used to describe the particular goods constituting the line. Such term is no more descriptive of electric motors than of women’s dresses. In other words, the term line is snyonymous with the term class.” (Italics quoted.)
. Westingliouse took no testimony but its counsel was present and cross-examined witnesses who testified for appellant.
. See also sections 44(h) and (i) of the Trade-Mark Act of 1946, 15 U.S.C.A. § 1126 (h, i); Robert, The New TradeMark Manual, pages 167-180; Jewel Tea Co. v. Kraus, 7 Cir., 187 F.2d 278 .
. Section 45 of the Act of 1946, 15 U.S.C.A. § 1127 ; Cheek-Neal Coffee v. Hal Dick Mfg. Co. [Good to the Last Drop], 40 F.2d 106 , 17 C.C.P.A.,Patents, 1103, 1104; Lucky Heart Laboratories, Inc. v. Morton G. Neumann, 154 F.2d 519, 520 , 33 C.C.P.A.,Patents, 1034.