dissenting, with whom
Baldwin, J., joins.With deference, I am unable to agree with the principal opinion in much of its reasoning, nor can I agree with the majority in its result. I would reverse the decision of the Trademark Trial and Appeal Board granting appellee’s petition to cancel appellant’s registration.
The majority is made up of Judge Rich’s principal opinion and Judge Lane’s concurring opinion. Each opinion sets forth somewhat different reasons for affirming. Judge Lane votes to affirm mainly on the theory that since an interference between the parties was possible, appellee should be permitted to petition for cancellation with the burden placed on appellant to show that appellee had abandoned its marks. The problem with that approach is that there is no evidence of *1139record that appellee filed an application which could have gone into interference with appellant’s. While appellee’s petition for cancellation alleged that it owned a pending trademark application, no copy of that application was ever produced.
Therefore, the situation presented us in one where appellee has had some limited prior use of the marks MULTICAP and MULTI-CAP; that use has since ceased and there was no use at the time the petition for cancellation was filed; appellee’s marks are unregistered, there is no evidence that appellee ever attempted to register the marks, and appellee has petitioned to cancel a mark which is registered and is being used. Under the law to date, it is clear that appellee could not succeed under such circumstances. Old Monk Olive Oil Co. v. Southwestern Coca-Cola Bottling Co., 28 CCPA 1091, 118 F. 2d 1015, 49 USPQ 192 (1941). The board and two judges of this court would evidently abolish the long-established principle of Old Monk which in this case dictates dismissal of the petition for cancellation. I would not.
While, as stated in Judge Rich’s principal opinion and the cited Grove opinion, the strict rule of Old Monk may no longer be viable,1 I think the underlying rationale in Old Monk is still sound. When the owner of an unregistered mark petitions for cancellation of a registered mark, I think it incumbent on him to prove that his mark was being used on or about the time of filing the petition for cancellation or show that its nonuse is due to special circumstances which excuse such nonuse and is not due to any intention to abandon the mark. See Singer Mfg. Co. v. Brueggeman, 120 USPQ 325 (TTAB 1959). Otherwise the petitioner cannot be damaged as a matter of law by the existing registration.
The burden should not be on the owner of the existing registration (appellant here) to prove that the cancellation petitioner (appellee here) had abandoned its unused and unregistered marks, and I tbiuk the board and the majority are in error in placing the burden on apr pellant in this case. Appellee alleged in its petition for cancellation that it has “continuously used” its marks, as I think it must, and the burden should have been placed on appellee to show that it was in fact using the marks or show good cause for not using them. For *1140reasons which will be discussed below, it is my opinion that appellee has failed to meet that burden here. It is questionable whether appel-lee has even met the burden placed on it by the majority, i.e., rebutting the prima facie case of abandonment which statutorily arises by reason of over two years’ nonuse.
The principal opinion suggests that placing the burden on the cancellation petitioner to show use or excusable nonuse merely delays filing the petition until he has resumed use of the unregistered marks. Even if this were true, it is the only logical approach. As long as the owner ■of the unregistered marks is not using them and has no good reason for not doing so, I see no justification for allowing him to obtain cancellation of an existing registration, which presumably is being used, on the mere “hope” or “expectation” that use of the unregistered marks will be resumed. Mere hope of resuming use should not be a sufficient ground for cancellation. If it turns out to be more than a mere expectation, then perhaps cancellation can be achieved at that time, assuming that the five-year “statute of limitations,” 15 USC 1064(a), has not been exceeded. Until that expectation becomes a reality, however, there can be no damage as a matter of law upon which to base the cancellation petition.
In this case, I think that all appellee had was a mere hope that the use of the marks would be resumed. As the principal opinion notes, appellee had not used the marks for over two years even though it had apparently had at least one occasion to sell capacitors similar to the ones on which the marks had previously been used. Its expectation for resumed use of the marks was stated by appellee’s president to be only an “anticipation” based on certain “proposals” which had been made but which had not come into fruition at the time the testimony was taken. In addition, there is no indication that the marks MULTI-CAP and MULTICAP were specifically tied to those proposals. I do not think this sufficient to satisfy the burden which should have been placed on appellee.
For the foregoing reasons, I feel appellee has not shown sufficient grounds for cancellation of appellant’s registration. Accordingly, I would reverse the decision of the board.
It is noted, however, that despite the Grove decision the Trademark Trial and Appeal Board consistently followed Old Monk in a long line of cases and required opposers and cancellation petitioners to prove that the unregistered marks which they relied upon were being used. See, e.g., Phillips Petroleum Co. v. C. J. Webb, Inc., 158 USPQ 662 (TTAB 1968); Yard-Man, Inc. v. Getz Exterminators, Inc., 157 USPQ 100 (TTAB 1968); Genesco Inc. v. Tru Balance Corsets, Inc., 152 USPQ 198 (TTAB 1966); Procter & Gamble Co. v. Cohen, 146 USPQ 137 (TTAB 1965); Kiekhaefer Corp. v. Outboard Marine Corp., 130 USPQ 422 (TTAB 1961); Michigan Chemical Corp. v. Remington Products Corp., 126 USPQ 200 (TTAB 1960).