The opinion
GARRETT, Associate Judge
(specially concurring).
While concurring in the ponelusion in this case, I do so simply upon the ground that the goods are of the same descriptive properties, and that the marks bear such a resemblance to each other as that registration is forbidden under a proper construction of the TradeMark Registration Act (15 USCA §§ 81-109).
I do not fully understand the statement in the majority opinion that, “in a case of this kind this question [likelihood of confusion], of course, is largely a matter of opinion.” Ample -authority to establish the proper legal rule by which to test the issue is to be found in decisions of this and other courts. Goodrich Co. v. Hockmeyer, 40 F.(2d) 99 , 17 C. C. P. A. 1068; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F.(2d) 106 , 17 C. C. P. A. 1103; California Packing Corporation v. Tillman & Bendel, Inc., 40 F.(2d) 108 , 17 C. C. P. A. 1048; Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.(2d) 116 , 17 C. C. P. A. 1034, Heekin Co. v. Lawrenceburg Roller Mills Co., *961 40 F.(2d) 119 , 17 C. C. P. A. 1093; Malone v. Horowitz, 41 F.(2d) 414 , 17 C. C. P. A. 1252; Fishbeck Soap Co. v. Kleeno Manufacturing Co., 44 App. D. C. 6, and eases cited in these several decisions.
I find nothing in the record which leads me to feel justified in joining in the inference that “applicant sought to profit by the confusion that would result.”
The record discloses that, when appelleeapplicant had tentatively decided to adopt “Oxol” for the particular commodity involved, it, as is common in such cases, referred the matter to its attorney for a search in the Trade-Mark Division of the Patent Office to ascertain whether there were any registered marks with which that mark might conflict. In the course of this search the attorney came upon appellant-opposer’s mark “Oxydol,” and another mark of another party — “Oxo.” The attorney seems to have advised that “Oxo” might conflict and appellee proceeded to acquire that mark by purchase from its owner. The attorney advised that, in his opinion, there would be no conflict with “Oxydol” which would prevent appellee’s registration of “Oxol.”
As the Registration Law was then being construed, such advice was not surprising, and I am unwilling to read into this transaction any sinister purpose on the part of appellee. That counsel and appellee had grounds for believing that no legal conflict existed is certainly strongly evidenced by the fact that both tribunals of the Patent Office concurred in granting the registration which we are now denying under what we conceive to be the proper construction of the statute.
It is thought that, if we adopt a policy of determining cases largely as a “matter of opinion,” rather than by fixed legal rule, attorneys will find it extremely difficult to advise clients in the future. Individual’s opinions may vary or change as they have in the past.
In a specially Concurring opinion in Lever Bros. Co. v. Riodela Chemical Co., 41 P. (2d) 408 , 17 C. C. P. A. 1272 — the only ease cited by the majority in their decision in the instant case — I endeavored to point out what seems to me to be the legal unsoundness, in construing the registration statute, of reasoning from effect to cause, by inferring a motive on the part of an applicant and then permitting that inferred motive to constitute a factor in determining the only question with which the court is concerned' — confusion or likelihood of confusion. Whatever value that reasoning may have in an unfair trade case, it has little or none m a registration proceeding.
In so far as I can determine from the record, the trade practices of appellee are quite as ethical as are those of appellant, and I see no occasion for reflecting upon either.