(concurring).
I agree with the decision of the majority on the basis of the following statements in its opinion:
The evidence of third-party use submitted by appellee is . insufficient to support the board’s position, because it fails to establish what common-law rights, if any, have accrued to third parties based upon their use of the term “GIANT” either alone or in combination with other terms. Use is not enough to establish common-law rights in a mark, and the record is devoid of any indication of, for instance, the circumstances under which the third-party marks were adopted.
Essentially, this is an ex parte proceeding. Third party rights can be established in subsequent inter partes proceedings as a result of which “commercial realities” can be recognized by issuing appellant a registration which will, at least,' encompass its present areas of use and the “virgin territory”' of more than thirty states.
However, I cannot join the majority opinion because of its needless reliance on this court’s majority opinion in Hollowform, Inc. v. Aeh, 515 F.2d 1174, (CCPA 1975).
I cannot join the dissenting opinion of my brother Rich for several reasons. I disagree with the statement that the issue in Hollowform was simply opposer’s standing to oppose. As noted in his opinion for the majority in that case, the board said:
The present proceeding ... is directed solely to applicant’s right to a geographically unrestricted registration.
And this is how the majority opinion put it:
The only question before us is whether opposer’s allegations, if true, would establish that applicant is not entitled to the [geographically unrestricted] registration.
The majority opinion then went on to say:
whatever common law rights opposer may have in its states of use are completely irrelevant here and the fact that a subsequent user adopts a mark in good faith in a territory where the prior user’s mark has not been known or used will not preclude [geographically unrestricted] registration of the prior user’s mark.
Now, however, Judge Rich’s dissenting opinion says it “makes no difference” whether uses by others of GIANT and GIANT FOOD were prior to or subsequent to appellant’s use, because, in view of the evidence:
it simply cannot be said that GIANT FOOD is a trademark or service mark “by which the services of the applicant may be distinguished from the services of others” throughout the United States.
That evidence, as the majority opinion points out, “fails to establish what common law rights, if any, have accrued to third parties.1 However, this deficiency *1397is brushed aside by saying there is no reason to produce evidence beyond what is necessary to establish a “lack of distinctiveness, nationwide.”
I agree with Judge Rich that “[i]t is simply not the law that concurrent use proceedings are the only means by which nationwide registration can be denied appellant.” As I said in my dissenting opinion in Hollowform:
If an opposer shows facts which refute an applicant’s claim that applicant is the owner of a trademark and that no one else has the right to use the mark in commerce, the Commissioner has clear authority to deny the application for an unrestricted registration. . . . As this court has pointed out, “the Act does intend that registration and use be coincident so far as possible.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1364, (CCPA 1973).
However, the majority opinion in Hollowform quoted, without disapproval, the board’s statement that opposer’s only remedy was by a concurrent use proceeding and said:
Opposer is not here asking that applicant’s registration be territorially limited but that it be denied.
Although I strongly disagree, at least the majority opinion here is consistent with the majority opinion in Hollowform when it says:
Such common-law rights cannot be used as a basis for the denial of a nationwide registration to appellant except by way of a concurrent use proceeding.
In my view, those common law rights could be established by evidence of first and continued use by others in good faith in states not occupied by appellant, in which event appellant can and should be denied a nationwide registration.
. The evidence consists of the Littlepage affidavit showing use of GIANT or GIANT FOOD in 8 states and telephone directory listings showing such use in 4 additional states — a total of 12 states (31 cities) — the same number of states in which opposer in Hollowform had used its mark. Judge Rich says that such evidence makes “a strong prima facie case for denying a nationwide registration.” However, in Hollowform, opposer’s allegations having been taken as true for purposes of applicant’s motion to dismiss, there was also a prima fa*1397cie case for denying a nationwide registration; and it won’t do to suggest that such a prima facie case was not made by imagining that no more than one sale was made by opposer there in each of its 12 states of first use in which the applicant had never used her mark.