their rights having been carefully determined by the district court, we think that within its legitimate field of use applicant is as much an "owner" as is opposer.

[6] Opposer contends that the amendment of the application was an admission that DUNHILL TAILORS is in legal effect the same as "Dunhill." The amendment merely conformed the form of the mark to the rights established by the judgment. The Patent Office made no objection to it. The district court clearly felt they were not the same. We see no merit in this argument.

Opposer attempts to show how it would be damaged by the granting of the registration in any event. The gist of the argument is that applicant would obtain the various advantages of registration which the Lanham Act affords, viz.: a finding and evidence of "ownership," the right to use the mark, to mark it with notice of registration, constructive notice and eventual incontestability. We see no reason why applicant should not enjoy these advantages with respect to the limited rights it already enjoys in the use of the mark under the judgment. Opposer has failed to show us how it would be any worse off as a result of registration than it is now under the terms of the judgment, provided the registration is restricted to conform to the judgment. Such a registration will do no more than aid applicant in the enforcement of substantive rights it already has.

[7] The next point of opposer is, in effect, that right to register does not necessarily follow right to use. Of course we agree. Salem Commodities, Inc. v. The Miami Margarine Co., 44 CCPA 932, 244 F.2d 729, 114 USPQ 124, DeWalt, Inc. v. Magna Power Tool Corp., 48 CCPA 909, 289 F. 2d 656, 129 USPQ 275. Applicant admits the validity of this point but says in reply that section 19 of the Lanham Act provides that

In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable, may be considered and applied.

Applicant argues that this section "clearly applies to this proceeding" and that the "very purpose of Section 19 was to conform the right to register to the right to use as determined by judicial decree," but at the same time says "We need not be concerned here with the question whether laches is available in an opposition proceeding; the judgment of the District Court is based upon acquiescence and estoppel." Applicant's position is not too clear.

We do not see where we have any occasion to apply equitable principles or section 19 in this case. The applicable equitable principles were all applied in the district court in New York where the facts to support their application were proved. Opposer was there held to be estopped to interfere with applicant's use within the terms of the

judgment. In this opposition applicant is relying on a judicially established right, not on estoppel. If the facts underlying the estoppel had been proved in the opposition, instead of in the New York court, then we might have occasion to rely on section 19 and to apply equitable principles, but such is not the case.

[8] We are clearly of the view on the record before us that the applicable statutory law, which neither party has invoked but which we should nevertheless apply, The Coschocton Glove Co. v. Buckeye Glove Co., 24 CCPA 1338, 1343, 90 F. 2d 660, 664, 34 USPQ 64, 67, is that provision of section 2(d) which provides for concurrent registration "when a court has finally determined that more than one person is entitled to use the same or similar marks in commerce." That is the situation here and it is the determination of the district court in the suit between these parties which is controlling, no question as to the registrability of DUNHILL TAILORS apart from opposer's possibly adverse rights having been raised. Equally applicable, however, are the provisions of section 2(d) with respect to incorporating in the registration certificate the "conditions and limitations as to the mode or place of use or the goods." These "shall be prescribed in the grant."8

We believe the board erred in approving, in effect, the granting of an unrestricted registration by dismissing the opposition. We also believe that opposer is not entitled to prevent the grant to applicant of a registration on the mark described and for the goods named in its amended application, provided the registration contains, as

[9] For a Commissioner's decision holding that the clause of section 2(d) we find to be applicable to this case is not limited by the provision of the first clause of the proviso respecting use of the mark "prior to any of the filing dates of the applications involved," see Es parte Crown Beverage Corp., 102 USPQ 312, 45 T.M.R. (Part II) 69. We agree with that holding.

[10] In formally declared concurrent user proceedings it is the board which decides "the respective rights of registration." Section 17 (15 U.S.C. 1067, as amended Aug. 8, 1958). We do not see that it is of any practical significance that the present inter partes proceeding is called an "opposition" when the facts are such as to require a decision on an issue of concurrent registration.

We have before us, as did the Patent Office, both of the interested parties, the finally adjudicated facts on which they ask to have their rights determined, the Commissioner has already decided to grant a registration, which in our opinion would be "concurrent" whether so named or not, and that proposed registration has already been published in the Official Gazette of the Patent Office, all as contemplated in section 2(d).

Section 18 (15 U.S.C. 1068) provides that in "such proceedings," which is a reference back to section 17 (15 U.S.C. 1067) and includes oppositions, such as we have here, the Commissioner may

440 8 register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings: Provided, That in the case of any mark based on concurrent use, the Commissioner shall determine and fix the conditions and limitations provided for in subsection (d) of section 2 of this Act.

Any registration granted to applicant-appellant will clearly be based on concurrent use, and section 18 gives the Commissioner authority-indeed makes a requirement--to determine, fix, and (under 2(d)) prescribe in the grant, the conditions and limitations under which the applicant has, by court decree, the right to use.

contemplated by section 2(d) in such cases, conditions and limitations corresponding to those contained in that portion of the judgment entered Sept. 22, 1958 in the United States District Court for the Southern District of New York, in Civil Action No. 119-295, constituting the injunction and designated "6," which is of record in the application file.

Since the opposition was dismissed by the board without any such requirement, its decision must be reversed.

WORLEY, Chief Judge, concurring.1

I agree that the board should be reversed but for different reasons than those advanced by the majority.

First, I fail to see how the district court action can be given the controlling weight accorded it below or by the majority here. The jurisdiction, the facts, and the issues there were wholly different from those here. There the basic issue was the right to use; here it is the right to register. That there are substantial differences between the two in fact as well as in law is too well established to require citation of authorities.

Second, I agree with the majority that "Dunhill" had, and has, a "special significance." Indeed, it is so significant that there is no doubt in my mind that the average purchaser would associate "Dunhill" and "Dunhill Tailors" to a degree which I think the provisions of Section 2(d) were intended to prevent.

It is interesting to note that no application for concurrent registration has ever been filed or considered by the Patent Office. It is not mentioned in the reasons of appeal to this court. Yet the net effect of the majority view is to order the board to grant concurrent registration. I have grave doubts that this court has that power.

MARTIN, Judge, concurring.

I agree that the decision of the board should be reversed but on a different basis than that of the majority. The district court in its findings of fact found inter alia:

27. Defendant's purpose in using the word "Dunhill" in connection with its business at its store at 65 East 57th Street was with the intent and for the purpose of trading upon plaintiff's reputation and goodwill.

28. A substantial number of members of the public were confused, mistaken or deceived by defendant's use in its business of the word "Dunhill," whether alone or with other language, into the belief that defendant was plaintiff, or that defendant was a branch of or connected with plaintiff and that defendant's goods were plaintiff's goods.

29. Defendant used the word "Dunhill" in its business at 65th East 57th Street with the purpose, intent and result that a substantial number of members of the purchasing public were confused, mistaken or deceived into the belief

1 Opinion of December 18, 1961, substituted for concurring opinion filed August 16, 1961.

that defendant and its products were plaintiff and its products or that defendant was a part of or connected with plaintiff. [Emphasis mine.]

and in its conclusions of law inter alia stated:

10. The pleadings of each of the parties in this civil action respectively claim that there is likelihood of confusion, mistake and deception of the public by the use of "Dunhill" by the other party; and since plaintiff has proven that members of the public have in fact been confused, mistaken and deceived by defendent's use of "Dunhill" into the belief that defendent and its products are plaintiff and its products and that defendant is connected with plaintiff, defendant is guilty of trademark and trade name infringement and unfair competition with plaintiff.

In view of these findings of fact and this conclusion of law and my own conviction that applicant's use of "DUNHILL TAILORS" on its good is likely to result in purchaser confusion, there is a serious question whether applicant is entitled to registration under the Lanham Act. Section 2 of that Act provides:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it

(d) consists of or comprises a mark which so resembles a mark registered in the Patent Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion or to deceive purchasers: Provided, That the Commissioner may register as concurrent registrations the same or similar marks to more than one registrant when they have become entitled to use such marks as a result of their concurrent lawful use thereof in commerce prior to any of the filing dates of the applications involved and the Commissioner or a court on appeal determines that confusion or mistake or deceit of purchasers is not likely to result from the continued use of said marks under conditions and limitations as to the mode or place of use or the goods in connection with which such registrations may be granted which conditions and limitations shall be prescribed in the grant of the concurrent registrations thereof; and concurrent registrations may be similarly granted by the Commissioner with such conditions and limitations when a court has finally determined that more than one person is entitled to use the same or similar marks in commerce. *** [Emphasis mine.]

Although the majority opinion states that the board found that the District Court implied that confusion, mistake or deception of purchasers was unlikely, I find no such implication in the District Court decision. In fact, the plain words of the quoted findings of fact go far beyond the question of "likelihood of confusion, mistake or deception of purchasers" in stating:

28. A substantial number of members of the public were confused, mistaken or deceived by defendant's use in its business of the word "Dunhill," whether alone or with other language, *** [Emphasis mine].

There is no finding of fact or conclusion of law which states categorically that the use of "DUNHILL TAILORS" by applicant is not likely to cause purchaser confusion which seems to me would have been in order if the court so believed, in view of the findings of fact and conclusions of law which indicate the contrary to be true.

We have before us this question: Does the law authorize the concurrent registration of a trademark which is so similar to another and the goods so related that purchaser confusion is not only likely but, as a matter of fact does exist, on the basis of opposer's long knowledge of and acquiescence in applicant's use of the trademark? I do not think so.

Although this court cannot interfere with the use of this trademark by applicant, we do have the responsibility of determining its registrability under these circumstances. In making this decision it seems to me that we have a problem of deciding in this instance whether the public interest or certain equitable rights of applicant should prevail.

There is no question but that this court has concluded that the public interest is not only involved but must be protected in situations involving purchaser confusion. In Dubonnet Wine Corp. v. Ben-Burk, Inc., 28 CCPA 1298, 121 F. 2d 508, 50 USPQ 76, this court said:

Appellee contends that since the registered mark "Dubonnet" is owned by the opposer but is used by another it cannot be considered as a mark "owned and in use by another," under the confusion-in-trade clause of section 5 of the Trade-mark Act of 1905 (as amended), so as to bar registration of the mark "Bourbonet." We must not lose sight of the fact that the dominant purpose of the said clause is to protect the purchasing public from confusion and mistake. Sun-Maid Raisin Growers of California v. American Grocer Co., 17 C.C.P.A. (Patents) 1034, 40 F. (2d) 116, 5 U.S.P.Q. 68; California Packing Corp. v. Tillman & Bendel, Inc., 17 C.C.P.A. (Patents) 1048, 40 F. (2d) 108, 5 U.S.P.Q. 59; Skelly Oil Co. v. The Powerine Co., 24 C.C.P.A. (Patents) 790, 86 F. (2d) 752, 32 U.S.P.Q. 51. "It [Congress] never intended that a trade-mark should be registered if its use was likely to cause confusion or mistake in the mind of the public or if purchasers were likely to be deceived by its use." Sun-Maid Raisin Growers of Calif. v. American Grocer Co., supra.

See also Lucky Heart Laboratories, Inc. v. Morton G. Neumann, 33 CCPA 1034, 154 F. 2d 519, 69 USPQ 393, where it was stated:

This court has held repeatedly that the primary purpose of that portion of the trademark law with which we are here concerned is to protect the public. See In re Laskin Brothers, Inc., 32 C.C.P.A. (Patents) 820, 146 F. (2d) 308, 64 USPQ 225; Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 32 C.C.P.A. 827, 146 F. (2d) 1019, 64 USPQ 394. ***

Although these decisions relate to the provisions of the 1905 Act, I believe the same rationale is applicable in the consideration of the