The opinion
GARRETT and LENROOT, Associate Judges (specially concurring).
While concurring in the conclusion reached by the majority in this ease, we are not in accord with all the reasoning upon which that conclusion is based.
We think the decision should rest upon practically' the same grounds as those expressed in Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F. (2d) 106, decided concurrently herewith, and upon the reasoning in the specially concurring opinion in Goodrich Co. v. Hoekmeyer, 40 F.(2d) 99 , also decided on this day.
The effect of the majority opinion, as we construe it, is to give an undue emphasis to confusion without first determining the issues of “class” and “same descriptive properties” which are elements that, in contemplation of the statute, must be present to cause the confusion. It is said: “ * * * If one pound sealed cans of coffee in grocery stores, on the same shelves -with 150 other sealed cans or containers of groceries such as are shown to be the product of appellant, might be mistaken for the goods of appellant, when identical trade-marks are used and both are sold to the same class of purchasers, then the goods are of the same descriptive properties and fall within the provision of the proviso. * * * ”
It seems to us that the effect of this reasoning is' largely to make the mark itself, after it has been applied, the predominating element in determining whether confusion in origin may result and thus determine similarity of class or deseriptiveness of properties, not so much from the nature and characteristics of the goods themselves as from the marks that may be applied to them.
In the administration of the Trade-Mark Act of 1905, the duties of the Patent Office are purely statutory, and the authority of this court, when it is invoked by an appeal, is limited in the same manner that the Patent Office is limited. We do not think we are clothed with the equitable jurisdiction inherent in the common-law courts and conferred by law upon those federal and District of Columbia courts having equity jurisdiction. Vide Postum Cereal Co. v. Calif. Fig Nut Co., 272 U. S. 693, 698, 699 , 47 S. Ct. 284 , 71 L. Ed. 478 .
It seems to us that if the doetrine of the majority opinion be followed to its logical end there may be brought into the determination of matters arising under the Registration Statute questions that belong only to equity courts and which we do not think Congress intended to place within the Patent Office jurisdiction, or within the jurisdiction of this court, in registration proceedings. We fear that we are about to assume a jurisdiction which Congress never intended we should exercise in mere administrative or statutory proceedings.
The majority say: “We conclude, therefore, that the meaning of the phrase ‘merchandise of the same descriptive properties’ must not only be ascertained in the light of the use of the words ‘goods of the same class,’ in the first part of section 5 [15 US CA § 85], and the words ‘of substantially the same descriptive properties’ in section 16 of the Trade Mark Act [15 USCA § 96], but must also be construed in connection with the predominant phrase of the provision ‘as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers,’ and the predominant word ‘distinguished’ in the first part of the section.” (Italics ours.)
This holds, as we understand it, that greater emphasis is to be given a result than is placed upon the causes producing it. It reasons from effeet back to cause, and virtu *115 ally amounts to saying that if confusion as' to origin may result from the application of the mark, that will be taken as conclusive of the fact that the statutory elements whieh, under certain circumstances, prohibit registration — similarity of class and descriptiveness — are present. This seems to us a strained construction of the statute, and does not give to the words “same class” and “same descriptive properties,” used in the statute, the consideration whieh is their due.
We do not think we are at liberty to relegate those phrases to a state of practical unimportance, and declare the condition they describe will be inferred to exist because we believe confusion might exist.
It seems to us that the natural and orderly way to apply the statute is to determine, first, whether the goods are of the same class and of the same descriptive properties, and then look to the character of the mark so as to ascertain whether its application would cause confusion. The reasoning of the majority opinion apparently would have it first determined whether by reason of the application of the mark there might be confusion, and, if so, would conclude from this the existence of sameness or similarity.
It is true that the majority opinion says: “The mere fact that some indefinite and farfetched confusion is to be shown or pointed out does not necessarily require that the goods shall be regarded as of the same descriptive properties,” and gives certain illustrations by comparing products of the “chewing-gum maker” and the “ironmonger” as well as “clothes pins” and “dried herrings.” But this seems to us merely to mean that before any particular consideration need be given to the statutory words, other than confusion, there must be such a difference as that those words might as well never have been included in the statute.
It seems to us that for all practical purposes the majority opinion can be readily and logically so extended as virtually to eliminate class sameness and similar deseriptiveness from the act and deny registration where the marks are identical or so resemble each other as that confusion of origin may be believed possible simply as a result of the application of the mark.
Since the words are in the statute we think it our duty to give them effect, and feel that the test should be made from a consideration of the characteristics of the goods themselves whieh are to produce the effect, and not by taking a mere possible result as conclusive of its causes.
The majority opinion contains the following statement: “After its decision in the American Tobacco Co. Case, and after the Supreme Court's decision in the American Steel Foundries Case, we find the Court of Appeals of the District of Columbia almost unanimously and uniformly holding that goods were of the same descriptive properties, when considered with reference to trademark registrability, if the goods in their characteristics, sale or use were sufficiently similar to permit the goods of the one to be taken by the public as the goods of the other —the question of confusion being the test. In Duro Pump & Mfg. Co. v. California Cedar Products Co., 56 App: D. C. 156, 11 F. (2d) 205, pumps and wall board were held to be goods of the same descriptive properties, since the court concluded that confusion would result. The same was the holding in Macy & Co. v. Carter & Sons, 56 App. D. C. 249, 12 F.(2d) 190,191 , as to men’s clothing and hosiery; in Haas Bros. Fabrics Corp. v. Bliss, Fabyan & Co., 57 App. D. C. 44, 16 F.(2d) 540 , as to crinkly fabrics of cotton and artificial silk; in Di Santo v. Guarneri, 57 App. D. C. 89, 17 F.(2d) 677 , as to olive oil and tomato paste; in Blek Co. v. Mishawaka Rubber & Woolen Mfg. Co., 57 App. D. C. 149, 18 F.(2d) 191 , as to garments and socks; in Kassman & Kessner v. Rosenberg Bros. Co., 56 App. D. C. 109, 10 F.(2d) 904 , as to men’s hats and caps, and men’s suits and overcoats; in Lincoln Motor Co. v. Lincoln Mfg. Co., 58 App. D. C. 191, 26 F.(2d) 563, 564 , as to automobiles and brakes and timers, and in Re Defender Mfg. Co., 58 App. D. C. 234, 26 F.(2d) 1012, 1013 , as to sheets and piece goods.”
We have carefully examined, the authorities cited in the quotation, and it is our opinion that the majority is in error in holding that, in the eases cited, confusion was the test of. whether the goods were of the same descriptive properties, as that phrase is used in said section 5 (15 USCA § 85).
The first ease cited, Duro Pump & Mfg. Co. v. California Cedar Products Co., supra, did not involve in any way the question in the ease at bar. That ease involved the use of a part of a corporate name, and the ease • arose under the second proviso of section 5, whieh proviso does not contain the words “same descriptive properties.” Obviously, in deciding that ease, the construction of the words “same descriptive properties,” contained in the section, was not involved, and it was clearly proper to apply the test of confusion irrespective of whether the goods *116 of the parties were of the same descriptive properties.
We might add that the above observations are also applicable to the American Steel Foundries Case, 269 U. S. 372 , 46 S. Ct. 160 , 70 L. Ed. 317 .
In the cited case of Haas Bros. Fabrics Corp. v. Bliss, Fabyan & Co., supra, the court said: “ * * * the goods in question, as shown by certain of the exhibits, arfe of the same descriptive properties, and that the purchasing public, seeing them sold under the same mark, would naturally believe that they had the same commercial origin in point of manufacture or marketing.”
Here clearly the court first found that the goods were of the same descriptive properties without applying the test of confusion, and the confusion test was applied only as between goods possessing the same descriptive properties.
In the ease of Di Santo v. Guameri, cited and thereafter quoted from and discussed in the majority opinion herein, the opinion was written by Presiding Judge GRAHAM of this court, sitting as a member of the Court of Appeals of the District of Columbia, as provided by law.
In that opinion Judge GRAHAM expressly held that the goods there involved were of the same descriptive properties, and he made no mention of confusion in arriving at that determination. He applied the test of confusion only as to trade-marks on goods possessing the same descriptive properties; that is, he first determined class or descriptive properties, and then inquired into confusion, as we contend section 5 clearly requires.
The ease of Blek Co. v. Mishawaka Rubber & Woolen Mfg. Co., supra, throws no light whatever upon the question under discussion.
In Kassman & Kessner v. Rosenberg Bros. Co., supra, the court expressly held that .the goods were of the same descriptive properties, and there is no reference in the opinion to confusion in arriving at that conclusion.
In Lincoln Motor Co. v. Lincoln Mfg. Co., supra, the court said: “ * * * the marks are not only deceptively similar, but were applied to goods of the same descriptive properties, to an extent that would inevitably lead to confusion.”
Here clearly is stated the proposition for which we contend, and that is that confusion is the result of a deceptively similar mark being applied to goods of the same descriptive properties, and not the test of whether the goods have such properties.
, In the ease of In re Defender Mfg. Co., supra, the court held that “the goods possess the same descriptive properties,” and there is no reference in the opinion to the test of confusion being applied in reaching that conclusion.
From our examination of the authorities cited, there is only one that makes any reference to the doctrine asserted in that part of the majority opinion last quoted, and that is the ease of Macy & Co. v. Carter & Sons., supra.
In that ease it was expressly held that the goods “belong to the same general class of merchandise,” and in that connection no reference was made to confusion. Later in the opinion, however, it was stated that where eonfusion results in the minds of purchasers, goods may be said to be of the same descriptive properties; but we believe this is the only ease decided since the decision in the American Steel Foundries Case, supra, where the doctrine adopted in the majority opinion is even referred to.
On the other hand, there have been a large number of cases decided by the Court of Appeals of the District of Columbia, in addition to those cited in the majority opinion, where goods were decided to be, or not to be, of the same descriptive properties without any reference to confusion as a test in arriving at that conclusion.
It is our view that a careful examination of all the eases decided by that court, including those cited in the majority opinion, compels the conclusion that they do not sustain the position taken by the majority upon this question.