dissenting:

Faced with a difficult question in a complex area of law, the district court stated but did not apply the proper test to determine whether a name is generic. Even if the proper test had been applied, defendant’s evidence was not sufficient to meet the heavy burden of proof it carried.

I.

By statute, plaintiff’s certificate of registration is prima facie evidence of the mark’s validity. 15 U.S.C. § 1057 (b). By case law, this means not only that the mark’s challenger has the burden of going forward, but also that registration carries with it a “strong presumption of validity”. Miss Universe, Inc. v. Patricelli, 408 F.2d 506, 509 (2d Cir. 1969), quoting Maternally Yours, Inc. v. Your Maternity Shop, Inc., 234 F.2d 538, 542 (2d Cir. 1956). Therefore, “the burden of showing genericness [sic] rests *1021 squarely on defendants.” E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F.Supp. 502, 523 (E.D.N.Y.1975). See also American Thermos Products Co. v. Aladdin Industries, Inc., 207 F.Supp. 9, 14 (D.Conn.1962), aff’d sub nom. King-Seeley Thermos Co. v. Aladdin Industries, Inc., 321 F.2d 577 (2d Cir. 1963); 1 J. McCarthy, Trademarks and Unfair Competition 443 (1973). Particularly where, as here, the allegedly infringing name is identical to the registered mark, and its use began after the mark’s registration, defendant carries the “burden of explanation and persuasion.” Kiki Undies Corp. v. Promenade Hosiery Mills, Inc., 411 F.2d 1097, 1101 (2d Cir. 1969), cert. dismissed, 396 U.S. 1054 , 90 S.Ct. 707 , 24 L.Ed.2d 698 (1970). Accord, Bayer Co. v. United Drug Co., 272 F. 505, 509 (S.D.N.Y.1921). The burden “is a heavy one,” and “doubts should be resolved in favor of the trademark owner, especially if he can demonstrate having taken appropriate action to counteract or resist indiscriminate use of the mark by the public.” E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F.Supp. at 523-24 . 1

To satisfy the heavy burden imposed on it, defendant had to meet the test of Bayer by proving that buyers of Surgicenters’ services understood the name to be generic. The district court acknowledges that this should be its test in awarding summary judgment. Yet the court admittedly relies most heavily on Cummins Engine Co. v. Continental Motors Co., 359 F.2d 892 , 53 CCPA 1167 (1966), a case that did not raise the question of buyers’ perception of the disputed name. Cummins’ “dictionary test” supports the district court’s holding that “Surgicenter” is generic because, individually, “surgical” and “center” are in the dictionary. But this merely indicates that neither decision uses the correct test, buyer understanding of the disputed term. 2

Cummins is at odds with the far more numerous and better-reasoned decisions that eschew a scalpel technique in favor of the required inquiry into what the words, together, mean to the consuming public. E. g., Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 698-702 (2d Cir. 1961). In Blisscraft, the mark “Poly Pitcher” was held to be valid despite the presence of “poly” and “pitcher” in the dictionary. The Second Circuit did not even find the dictionary test urged upon it “worthwhile evidence” of the public’s understanding of the term. “In the absence of any evidence to the contrary, we cannot assume that to members of the public at large the word ‘poly,’ either alone or in combination with ‘pitcher,’ had any meaning other than that attributed to it by the lexicographer.” 294 F.2d at 699 . We have chosen to ignore the dictionary test in this circuit. United States Jaycees v. San Francisco Junior Chamber of Commerce, 513 F.2d 1226 (9th Cir. 1975) (affirming district court holding that “chamber of commerce” is not generic over dissent noting presence of term in the dictionary).

The dictionary test is wrong because it is irrelevant. How or whether the dictionary defines a single word is not probative of what customers understand by a combination of words or a compound term like “Surgicenter”.

See also Coca-Cola Co. v. Seven-Up Co., 497 F.2d 1351 (C.C.P.A.1974) (“Uncola” valid mark for soft drink); Maremont Corp. v. Air Lift Co., 463 F.2d 1114 , 59 CCPA 1152 (1972) (“Load-Carrier” valid mark for shock absorbers); Application of Colgate-Palmolive Co., 406 F.2d 1385 , 56 CCPA 973 (1969) (“Chew ‘N’ Clean” valid mark for dentifrice); Tigrett Industries, Inc. v. Top Value Enterprises, Inc., 217 F.Supp. 313 (W.D.Tenn.1963) (“Pitch Back” valid mark for baseball backstop and ball-return apparatus); Feathercombs, Inc. v. Solo Products Corp., 306 F.2d 251, 255 (2d Cir.), cert. denied, 371 U.S. 910 , 83 S.Ct. 253 , 9 L.Ed.2d 170 (1962) (“Feathercombs” valid mark for hair-retaining combs); Q-Tips, Inc. v. Johnson & Johnson, 206 F.2d 144 , 147 n.8 (3d Cir.), cert. denied, 346 U.S. 867 , 74 S.Ct. 106 , 98 S.Ct. 377 (1953) (“Q-Tips” not generic mark; “validity of a trade-mark is to be determined by viewing it as a whole”); Enders Razor Co. v. Christy Co., 85 F.2d 195 (6th Cir. 1936) (“Keen Kutter” not generic for cutting tools); W. G. Reardon Laboratories, Inc. v. B & B Exterminators, Inc., 71 F.2d 515 (4th Cir. 1934) (“Mouse Seed” and “Rat Seed” valid marks for rodenticides); Wonder Manufacturing Co. v. Block, 249 F. 748 (9th Cir. 1918) (“Arch Builder” and “Heel Leveler” valid marks for shoe insoles).

II.

Having cited the proper test of a generic name (Bayer), the district court proceeded to decide the case before us on a factor irrelevant under that test. I do not dispute that, were the disputed term itself in the dictionary, its generic character might thereby be established. Miller Brewing Co. v. G. Helleman Brewing Co., 561 F.2d 75, 80-81 (7th Cir. 1977) (presence of word “light” in dictionary one indication that word is generic); Henry Heide, Inc. v. George Ziegler Co., 354 F.2d 574, 576 (7th Cir. 1965) (presence of “jujube” in dictionary evidence that word is generic). But the parties admit that plaintiff coined the term “Surgicenter”.

This also impeaches the district court’s holding as a strictly logical matter. The parties stipulate that there was no such thing as a “Surgicenter” until plaintiff invented the name. Yet the district judge held that the mark was generic ab initio. He held that defendant had proved that consumers automatically identified the made-up name, admittedly never used before, with a whole class of services produced by plaintiff, defendant, and others from the moment of the word’s conception. This seems logically impossible to me.

III.

What buyers understand by the term “Surgicenter” is a question of fact. Bayer Co. v. United Drug Co., 272 F. at 509 ; Blisscraft of Hollywood v. United Plastics Co., 294 F.2d at 701 . Because it shoulders the burden of proof, defendant must “make a rather clear and convincing showing that the principal significance of the word * * to the public” was generic. E. I. DuPont de Nemours & Co. v. Yoshida International, Inc., 393 F.Supp. at 528 .

Defendant has not met its burden here. There is reason to believe that the “consuming public”, whose understanding of the term is all-important under Bayer, includes both patients and doctors. As to the latter, defendant presented statements from doctors that the term was generic; plaintiff had statements from physicians that the term was not generic. Further, plaintiff has undertaken many activities to promote *1023 its name, linking the term coined to itself and distinguishing its product from that of others. These activities are apparently successful, as many corporations are paying plaintiff for the right to use its name.

The evidence concerning doctors was hardly “clear and convincing”. More important, however, none of defendant’s evidence came from the ultimate consumers of the services plaintiff and defendant provide. Much of it was from trade sources like medical journals and magazine articles that are irrelevant to what patients think of the term.

The same is true of defendant’s evidence on the use of “Surgicenter” by the Library of Congress, NBC News and others.

I find no case in which a mark was held generic without strong proof by the challenger of what the ultimate consumers— those who pay for the product — understand by the term. (Indeed, any such holding would violate the unchallenged rule of Bayer, which the majority opinion claims to follow.) In Zajicek v. KoolVent Metal Awning Corp., 283 F.2d 127 , 133 (9th Cir. 1960), cert. denied, 365 U.S. 859 , 81 S.Ct. 827 , 5 L.Ed.2d 823 (1961), we said that where evidence established that a term was understood as generic in the trade but not by consumers it was a valid mark. In Bayer, those in the trade realized that the contested term referred to plaintiff’s product, but to the public it was generic. In selling to the public, therefore, defendant was free to use plaintiff’s trademarked name.

Defendant has not an iota of evidence about what patients and prospective patients understand by the word “Surgicen-ters”. Neither does plaintiff, but it is defendant that carries the burden. It may be that the public would, in fact, view “Surgi-center” as the district court claims, synonymously with “surgical center”. But defendant’s merely saying so is not enough. “We have said, so often as not to require citation of authority, that marks must be viewed as the public sees them, i. e., in their entireties. In the present case, the record is devoid of evidence that the buying public would employ the scalpel technique”, as claimed by appellees here. Coca-Cola Co. v. Seven-Up Co., 497 F.2d at 1353 . 3

I would reverse.

. Plaintiff here has shown ample diligence in opposing others’ use of its registered, pre-sumedly-valid mark, including the bringing of this suit. It has protested those uses of “Surgi-center” that defendant has offered as proof the name is generic. Following plaintiffs objections, at least one clinic that had adopted the name “Surgicenter” changed its name, and the Government Printing Office suspended sales of a publication using the term.

. “The manner in which the alleged mark has been used in magazines, newspapers, books, dictionaries, patents, and other publications, is significant as to how it is regarded by the writers thereof. * * * One reason that it would not be determinative [of validity] could be that the writers of those publications would not be representative of the purchasers of the goods or services.” E. Vandenburgh, Trademark Law and Procedure 271 & n.19 (2d ed. 1968). (Emphasis added).

The district court does not claim that the author of Webster’s Third New International Dictionary, on which it relied, is somehow representative of “Surgicenter” users.

. I confine my dissent to the district court’s holding that “Surgicenter” is generic and do not discuss its dictum that, were it not generic, the name would be descriptive without secondary meaning. If “Surgicenter” is invalid, it is because the term is generic: it defines the service. There is nothing descriptive about the term. See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (2d Cir. 1976); E. Vanderburgh, Trademark Law and Procedure 86-89 (2d ed. 1968). “For example, while ‘cellophane’ might be a * * * generic name for a sheet of transparent regenerated cellulose, words such as ‘tough,’ ‘strong,’ ‘shiny,’ ‘transparent,’ etc. would be descriptive terms with respect to that product.” Id. at 88 (footnotes omitted).