concurring.
I agree with the majority disposition of this case. It is a case which is fraught with conceptual difficulty primarily because a trademark interference brings into play in a single proceeding two distinct, but easily confused, concepts — ownership of property rights sufficient to oppose the registration of a trademark and the satisfaction of the statutory conditions for registration.
The statute affords little guidance with respect to the substantive showings and determinations which must be made in the resolution of a trademark interference. Section 16 of the Lanham Act, 15 USO 1066, provides only that:
Whenever application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when applied to the goods or when used in connection with the services of the applicant to cause confusion or mistake or to deceive, the Commissioner may declare that an interference exists.
Since under § 7 (b) of the Lanham Act, 15 USO 1057 (b), registration is prima facie evidence of ownership and registrant’s exclusive right to use the registered mark, it follows that settlement of an interference proceeding can ordinarily produce no more than one registrant.1 That registrant would be the party adjudged to have ownership *1022of the property right in the trademark, and thus an interference is a contest to determine prior, hence superior, rights in the mark. Whether or not the prevailing party has a right to register the mark, however, engenders a different inquiry, one predicated on the conditions imposed by the statute for registration. Capacity to register is independent of relative rights, and the situation may arise in which neither party is in a position to register. See Coschocton Glove Co. v. Buckeye Glove Co., 24 CCPA 1338, 90 F.2d 660, 35 USPQ 64 (1937).
Prior to the declaration of an interference, each party must be able to register the mark. Trademark Pule of Practice 2.92(a). This means compliance with the statutory conditions, and there is no dispute in the present case as to the registrability of the marks in question to the respective parties aside from the priority issue. The requisite use in commerce §§ 1 and 45,15 USC 1051 and 1127, has been shown by both White and Dandy. The inquiry shifts, therefore, to the priority issue.
As the majority notes, prior decisions of this court in opposition and interference proceedings have considered evidence of prior adoption and use, such as advertising use, not amounting to such technical trademark use as would be sufficient to establish a right to register, to be probative of prior ownership adequate to defeat another’s right to register. It would seem that an interference, insofar as it is a priority contest, may properly be viewed as a consolidation of concurrent oppositions for what each party is attempting to prove is that it has an interest in the mark which is likely to be compromised if the other party is granted registration — the same ultimate legal holding an opposer seeks.
If we accept this characterization of an interference, we can readily bring to bear on an interference the concepts of use already developed in the law of oppositions. It enables us to divorce the capacity to register from the priority determination in an interference, for it is well settled, as demonstrated in tire cases cited in the majority opinion,' that to sustain an opposition it need not be proved that opposer is in a position to himself register the mark. Thus, the majority correctly limits the West case, and, necessarily Powermatics, Inc. v. Globe Roofing Products Co., Inc., 52 CCPA 950, 341 F. 2d 127, 144 USPQ 430 (1965), which followed West, since although proof of the ability to register carries with it the requisite proof of prior ownership, lack of capacity to register does not necessarily mean lack of prior ownership or lack of the right to oppose.
I agree with the majority when it concludes that:
[Evidence of a party’s “prior adoption and lise” in a manner not amounting to a technical trademark use may be of significance in an interference proceeding for the purpose of determining that party’s right of registration, depending on the weight to be accorded the evidence. In other words, it is possible for a *1023party possessing sucli a “prior adoption and nse” to establish its own right to register, in an interference proceeding between it and a party mating first trademark use of the term or expression on goods in interstate commerce, by tacking or coupling the time period of that “prior adoption and use” onto its own date of first actual trademark use on goods in interstate commerce.
As I understand it, the majority is saying that the party with the later date of first use in commerce (party A), may, in appropriate circumstances, be entitled to register notwithstanding the earlier date of use in commerce by the other party (party B). The correctness of this proposition can be seen from the opposition model I have described. Party B is in actuality an opposer alleging that the mark sought to be registered by party A “so resembles * * * a mark of trade name previously used in the United States by another [party B] and not abandoned, as to be likely, when 'applied to the goods of the applicant [party A], to cause confusion, or to cause mistake, or to deceive * '* *,” [emphasis added], to use the language of §2(d) of the Lanham Act, USO 1052(d). EEowever, party B is no longer in a position to maintain an opposition once it is proved that it is party A which has previously used to mark, albeit not on goods in interstate commerce, and the earlier use in commerce of party B’s mark on the goods is no bar to the registration of the mark to party A. The latter has thereby established a right to register the mark over prior use in commerce by another, and is entitled to registration if the statutory, prerequisites to registration ¡are otherwise met.
■ All of this may in the near future be moot in light of recent changes in the Patent Office Pules of Practice in Trademark Cases. Under the new practice effective March 1, 1972, “[a]n interference will not be declared * * * except upon petition to the Commissioner,” and then, “only upon a showing of extraordinary circumstances which would result in a party being unduly prejudiced without an interference.” Pule 2.91, 37 Fed. Peg. 2880 (1972). In lieu of an interference, Pule 2.91 states that “[i]n ordinary circumstances, the availability of an opposition or cancellation proceeding to the party will be deemed to remove any undue prejudice.” New Pule 2.83 provides that where two pending applications are for the registration of marks, the contemporaneous use of which would be likely to cause confusion or mistake or to deceive, the application with the earliest effective date will be published for opposition. In effect, the Patent Office has apparently found that by utilizing opposition and cancellation proceedings, interferences become unnecessary. Where an interference is declared, however, the conceptual difficulties can be minimized by viewing it as separate oppositions and distinguishing ownership from registrability.
For the reasons I have stated, I agree with the majority approach to the threshold question of what prior use need be proved in this *1024case, and I agree as well with, the majority’s assessment of the evidence herein. I therefore join in affirming the decision of the Trademark Trial and Appeal Board.
This assumes that there is in fact a likelihood of confusion and that concurrent registrations are not granted.