The opinion
LENROOT, Associate Judge (specially concurring).
I concur in the conclusion reached in this case, but I cannot agree to the following statement in the opinion of the majority: “ • * * The words 'same class’ and 'same descriptive properties’ were intended to be given a limited or an extended meaning and application, according to whether or not the use of identical or similar trade-marks would be likely to cause confusion or mistake in the mind of the publie or to deceive purchasers.”
It seems to me that the language quoted clearly violates the express terms of section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85), and in effect would amend said act by striking out of said section the word “class,” and the phrase “same descriptive properties” where it occurs the second time in the first proviso of said section.
*105 Clearly, if confusion or mistake is to be determinative of “elass” and “same descriptive properties,” then these words have no meaning or effect whatever, used as above indicated in said section.
I agree with the majority that the words “same elass” and the phrase “same descriptive properties,” as,used in said section, are synonymous in their meaning, and for the sake of brevity shall use the words “same elass” in lieu of the phrase “same descriptive properties.”
Under the language first above quoted, as I construe it, the portions of section 5 (15 USCA § 85) here under consideration, would, in effect, read as follows:
“That no mark by which the goods of the owner of the mark may be distinguished from other goods * • * shall he refused registration as a trade-mark on account of the nature of such mark unless such mark— * * #
“Provided, That trade-marks which are identical with a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another * * * as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers shall not be registered.”
In other words, under the interpretation given the section in the majority opinion, the words “elass” in the first part of the section and “same descriptive properties” where they occur the second time in the proviso, are mere surplusage.
The rule is so familiar that it requires no citation of authorities in support of it, that effect must be given to every part of a statute.
In the ease of American Steel Foundries v. Robertson, 269 U. S. 372 , 46 S. Ct. 160, 162 , 70 L. Ed. 317 , the court declared that “to the extent the contrary does not appear from the statute, the intention was to allow the registration of such marks as that law” (substantive law of trade-marks), “and the general law of unfair competition of which it is a part, recognized as legitimate.” (Italics mine.)
I submit that there is nothing in this language that supports the elimination of the words here being considered from section 5. On the contrary, it clearly implies that effect must be given to every part of the section.
It seems to me that the statute, bdth in express language and intent, is clear, that in a trade-mark proceeding it is the duty of the Patent Office first to ascertain whether the mark proposed to be registered distinguishes the goods to which it is applied from other goods of the same elass. In order to determine this, its first inquiry must be as to class. The word “class” has a common meaning and has been defined by lexicographers as follows:
The Century Dictionary defines “elass” as: “4. A number of objects distinguished by common characters from all others, and regarded as a collective unit or group; a collection capable of a general definition; a kind.”
Funk & Wagnalls New Standard Dictionary defines it thus: “3. A number of objects, facts, or events having common accidental or essential properties; a set; kind; variety; as, a class of propositions, of energies, of duties.”
If the Patent Office finds that the goods are not of the same class, it should inquire no further with a view to possible adverse action upon the application, so far as that part of the section here under consideration is concerned. If, however, it finds that they are of the same class, and the marks are not identical, then and not until then is it authorized to consider the matter of confusion. Under the rule laid down in the majority opinion, it must first determine whether confusion exists in order to determine class. But why determine class at all under this rule? If confusion results by the use of two marks, that is the end of it; they are then of the same elass; so says, in effect, the majority opinion, as I understand it. If the term “class” is to have a limited or extended meaning and application, according to whether confusion is likely to be caused by the use of the marks, then the word “class” means nothing in the section, for it has no application. According to this theory, two articles may clearly belong to the same class, according to the ordinary meaning of the word, but' they are not of the same elass if confusion is not likely to be caused by the use of similar trade-marks upon them. As I construe the statute,' it plainly states that confusion shall be the test of rejection of an application for registration only if the goods to wjfieh marks, not identical, are applied, are in the same class, but by the majority opinion, the consideration of confusion is always necessary in order to determine elass. -
I appreciate that the language in the opinion which I have been discussing is followed by the statement: “And, of course, in this connection, the use, appearance, and *106 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.”
I do not, however, understand that this language is intended to modify in any way the statement preceding it, that “the words 'same class’ and 'same descriptive properties’ were intended to be given a limited or an extended meaning and application, according to whether or not the use of identical or similar trade-marks would be likely to cause confusion or mistake in the mind of the publie or to deceive purchasers.”
If the language following is intended to modify the foregoing, it seems to me that it should so state. If so intended, does the majority mean that confusion shall not always be the test of whether the goods are in the same class or not, but only in certain eases? If so, to what eases will the test of confusion be applied, and in what cases will class be determined from the ordinary meaning of the word?
However, as I understand the opinion, the fair construction of the language is that the test of confusion shall always be applied in determining whether goods are of the “same class” or possess the same “descriptive properties,” and the language referring to use, appearance, structure of the articles, etc., is intended to aid in determining whether confusion is likely to be caused, and has no bearing or application otherwise.
The statute we are construing is, it seems to me, clear and unambiguous, at least when it is held that the word “class” and the phrase “same descriptive properties” are synonymous in their meaning, and, that being the case, I cannot concur in a construction whieh in my opinion eliminates therefrom a material element designed to govern proceedings in the Patent Office.
GARRETT, Associate Judge, concurs in the specially concurring opinion.