(dissenting).
I fully agree with the well-written opinion of the majority in its statement of the facts and disposition of preliminary questions up to the point where it turns “to the determination of whether appellant was rightfully refused registration.” I am convinced that appellant was rightfully refused registration on its unrestricted application. Our decision in Hollowform, Inc. v. Aeh, 515 F.2d 1174 (CCPA 1975), on which the majority so heavily rests its case, was based on entirely different facts and involved a different issue and therefore is not controlling here. In appraising the evidence, the majority preoccupies itself with considering the wrong questions instead of the one question before us.
Appellee’s position, unanimously adopted by the TTAB and now, in this court for the first time, supported by the Solicitor in his brief submitted at our request, is that the evidence shows that the mark sought to be registered, GIANT FOOD, is so widely used throughout the United States for the identical services named in appellant’s application as not to be subject to exclusive appropriation by appellant, for which reason it is unregistrable to appellant on a nationwide basis. What rights appellant may have to register for the territory actually occupied by it, or which in the future it may occupy, is not a question which is before us.
The majority opinion concerns itself unduly with proof of the rights of others — strangers to this proceeding — but that is not what we have to decide. We are concerned only with appellant’s right to unrestricted registration — and as of now, not in 1936, nearly forty years ago. The situation has changed since then. This is no longer an interference in which the issue is priority of use. As the majority has accurately stated, “the board’s decision is in fact, if not in name, an ‘ex parte’ decision.”
*1398In its rationalization of its decision to reverse the TTAB refusal of registration, the first error of law by the majority is in its statement that the evidence is insufficient because:
Appellee’s evidence of third-party use fails to allege or establish that such use predates the commencement of use by appellant of its mark.
It does not have to. One of the fundamental facts about trademark rights is that they are not static. While they may come into being by first use, they are easily lost. Assuming appellant was the first user of GIANT FOOD in the United States and could have obtained an unrestricted registration in 1936, it does not follow that it will necessarily remain in that position forever. Suppose in the course of time the mark became descriptive? What would it avail the first user that all uses by others were subsequent to its own? As the Solicitor said, “It may be safely conceded that there is no evidence that anyone has ‘previously used’, i. e., at a time prior to appellant’s first use * * *Why “safely concede”? Because it makes no difference to the correct outcome here.
The majority, in support of this point, places much weight on Hollowform. What was the Hollowform situation? The issue was the sufficiency of an opposer’s pleading and it arose on an applicant’s motion to dismiss it as insufficient. We affirmed the PTO holding dismissing the notice of opposition because opposer alleged only uses which were subsequent to applicant’s filing date. The sole question was opposer’s standing to oppose. There is no such issue here. The issue here is appellant’s right to register. The issue is not whether a single subsequent user can prevent registration, as the majority opinion would imply in saying of the Hollowform opinion that “much the same rationale is applicable here.” That is nonsense. The question here is not a right to oppose, but a right to register, and registration was not denied because of any right of appellee. It is being denied — “ex parte” as the majority says — by the PTO on the basis of evidence. Appellee’s only concern with this is that it produced the evidence on which the PTO acted.
The majority opinion clearly sets forth what that evidence shows, omitting some additional evidence I will mention. It shows that prior to the time the TTAB refused registration — and I quote the majority — “there were some 22 ‘GIANT FOOD’ supermarkets in 16 different cities and 59 other users of ‘GIANT’ alone or with a prefix or suffix in food merchandising in 15 other cities. These are all unconnected with appellant or appellee.” This evidence was from the personal observation and inspection of the stores by appellee’s witness in the fall of 1971. Other documentary evidence in the form of “Yellow Pages” from local telephone directories obtained from the library of Congress shows, in the period April 1970-January 1971, the following: Harrisburg, Pa., 8 Giant Food Stores Inc.; Kingsport, Tenn., 2 Giant Food Markets Inc.; Greater Houston, Tex., Giant Food Discount Center and Giant Foods; San Luis Obispo, Calif., 3 Giant Food Markets; and Sacramento, Calif., 3 Giant Foods.
How can anyone suggest that this fact situation is in any way comparable to the merely pleaded fact in Hollowform (there was no evidence) that opposer — a single commercial entity — had used its mark, TOP KAT for campers, in twelve western states, which could have meant no more than the sale of one camper in each of the twelve. Here we have supermarkets, at least twenty-two of them, scattered all over the country, operated by many different companies, using the very mark appellant wants to register, and many dozen more using almost the same mark. We can take judicial notice of how a supermarket operates. The application here is to register GIANT FOOD for services. Supermarkets render services on a continuous daily basis to hundreds of customers under large signs (which the evidence shows in pictures) announcing to passers-by as well as to customers that they are GIANT *1399FOOD markets. This is not comparable to a few sales of a single item of merchandise by a single company as in Hollowform.
Under these circumstances, which are not denied by appellant, 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”1 throughout the United States. Regardless of how long appellant has been using its mark, or how good a trademark or service mark it may be in its territory, or how registrable it may have been twenty or thirty years ago or more, as of now it simply does not comply with the basic § 2 prerequisite to registration, namely, that it shall distinguish appellant’s services “in commerce.” What does GIANT FOOD indicate to someone in Harrisburg, in Houston, in San Luis Obispo, or in the 13 to 38 other cities where GIANT FOOD or the like is in use? It certainly does not indicate appellant. It indicates “others.” The PTO has the evidence that GIANT FOOD does not and cannot distinguish appellant’s services from the services of others. That is all it needs to make a strong prima facie case for denying a nationwide registration under the statute. Appellant says the evidence is insufficient because nobody has been shown to be a prior user. The majority appears to agree. I do not.
The majority says:
Appellant has made a sufficient showing that its mark is capable of distinguishing its services from the services of others in its market area * * * . So far as the record reveals, appellant was the first to use the mark in commerce. No more is required by the statute. [My emphasis.]
I think that simply is not the law. The majority has not cited any authority for its view of what the law requires. I think reason is on my side and some authority too.
What the majority suggests as the law is that the operator of a single GIANT FOOD grocery store in a place like the District of Columbia or near any state border where customers come from two or more states, so that the operation is “in commerce,” can wait for thirty or forty years to apply for registration, during which period hundreds or thousands of other GIANT FOOD markets have cropped up in every state in the Union, and get a nationwide registration because he is prior and the statute requires “no more.” I have exaggerated the facts — a little — but that is a good way to test the proposition. I think this view is as ridiculous as saying that today the first person to use the term “supermarket” — if he knows who he is and can prove it — can register that word as a service mark because no one can prove he was prior. In the latter case we would say the reason for denial is descriptiveness. In the former it is lack of distinctiveness, when viewed on a nationwide basis as it must be. The two grounds are not unrelated. Descriptiveness and lack of distinctiveness both are the result of widespread use by many.
When, as here, the ground of refusal is lack of distinctiveness, nationwide, there is no reason to produce evidence beyond what is necessary to establish that lack.
The majority faults the evidence, first, because it does not prove any prior uses and, second, because it “fails to establish what common-law rights, if any, have accrued to third parties * * *But we are not concerned here with what the rights of third parties may be; we are concerned only with appellant’s present right to nationwide registration. Under the statute and on the evidence of record, it has no such right.
The majority claims not to be ignoring nationwide commercial reality. I think *1400clearly it is. The majority would only take cognizance of such reality “by means of proper evidence.” That evidence, to satisfy it, would apparently have to prove just what rights the third parties have. My position is that it does not matter what rights third parties have — I am therefore not concerned with them. This is not any longer a fight between appellant and any other party. Appellee’s counsel was well aware of that when he stood in court wondering out loud just what he was doing there, suggesting that the proper person to be there in his place was the Commissioner. This dispute has moved into another arena, and the PTO is representing the public interest.2
The majority suggests that the purpose of the Trademark Act of 1946 was to provide for constructive notice, which is true. But it had other purposes, such as to provide a register of marks reflecting commercial realities. I consider it farcical — as I think the TTAB did — to give appellant a registration which, under § 7(b) (15 U.S.C. § 1057), makes appellant prima facie the owner of an “exclusive right to use the mark in commerce,” which, of course, means interstate commerce. “Exclusive right” means the right to exclude others from using it throughout the United States. The evidence before us is more than sufficient to show that appellant clearly has no such right. It might have had a right to do so had it behaved differently over the years and had “policed” its trademark right as the first user from the beginning. But it did not and, as every business man learns sooner or later, trademark rights can be lost through inaction. The originally “virgin territory,” as the majority terms it, has been deflowered and grown up to weeds; GIANT FOOD markets have sprung up all over the country. As the majority recognizes, only part of the virgin territory is left now. State boundaries are not determinative; market areas rather are. Perhaps appellant can enter it without conflict by actually entering it. I cannot conceive that the purpose of the statute was to let appellant enter it constructively with a nationwide registration under the present circumstances. There are altogether too many potential conflicts.
The majority states:
The fact that third-party rights are alleged * * * is not material to appellant’s right to registration.
In the first place, we are not dealing with an allegation of third-party rights. The fact is that third-party uses have been proved. The evidence of such uses is, indeed, very material to appellant’s right to the registration it seeks. It is simply not the law that concurrent use proceedings are the only means by which nationwide registration can be denied appellant. The majority cited neither statute nor case to support that allegation.
The precedent I wish to mention is our decision in DeWalt, Inc. v. Magna Power Tool Corp., 289 F.2d 656, 48 CCPA 909 (1961). That was a trademark opposition in which the applicant sought to register the term “power shop” for woodworking saws, and the question arose as of what time the right to register should be determined. We said:
* * * the situation must be judged and the right to registration decided on the basis of the factual situation as of the time when registration is sought.
I think this applies here where the TTAB refusal to register was based on the situation as it existed at the close of testimony in these consolidated proceedings. Whatever rights to register GIANT FOOD as a service mark appellant may have had at any given time in the past forty years, they are not relevant to a determination of whether appellant is *1401entitled to a registration of the mark now, or as of a date no earlier than its February 1969 filing date. In this case, as in DeWalt, the record shows that as of the time the TTAB determined to refuse registration, the nationwide situation with respect to the use of GIANT FOOD and confusingly similar marks was such that the mark did not serve to distinguish appellant’s services from those of many others, regardless of what rights those “others” had to use the same or similar marks. On the time as of which registrability is to be determined, see also In re Thunderbird Products Corp., 406 F.2d 1389, 56 CCPA 969 (1969).
The evidence was entirely sufficient, at least prima facie, to support the TTAB’s refusal to register and to show that appellant is not entitled to a registration carrying, nationwide, the presumptions attaching by reason of § 7(b). GIANT FOOD has been shown not to be capable, across the nation, of distinguishing appellant’s services from the services of others, and the mark does not fall within § 2(§ 3). Appellant has not contradicted the evidence; indeed, its own witness seemed well aware of the situation and was shut off by counsel from saying more about it than he did. I know of no basis for the majority’s statement that appellant has had no opportunity to rebut the evidence. Certainly the record does not show appellant ever attempted to do so. It is clear to me that it would not be possible to rebut the existence of the “Yellow Pages” listings or the GIANT FOOD markets that the affiant visited, described, and photographed. No further evidence is necessary.
For the foregoing reasons I would affirm the board.
. I am quoting from section 2 (15 U.S.C. § 1052), substituting the word “services” for the word “goods” therein in accordance with section 3 (15 U.S.C. § 1053). Section 2 is entitled, “Trademarks registrable on principal register.”
. It should not be forgotten that this appeal is by the winner of both the opposition and the interference.