(specially concurring).
I concur in the view of the majority that the marks are not confusingly similar. However, in my opinion, the petition fcr cancellation should have been dismissed for the reason that the petitioner’s registration, without more, does not constitute evidence of use of its mark at the time of filing said petition.
The second point set forth in the majority opinion, namely, “whether it is sufficient for the petitioner in a cancellation proceeding to make of record the prior registrations on which it relies in order to show, prima facie, its use of the registered marks on the goods described in the registrations” in my opinion should be answered in the negative rather than in the affirmative as was done by the majority.
In its petition for cancellation, appellant alleged that it has “continuously and extensively used, and petitioner is now using and owns” the trademarks upon which it relies in support of its petition. However, appellee denied the foregoing allegations in its answer to the petition for cancellation.
The questions which come to my mind, as they did to the Assistant Commissioner’s, is whether the petitioner had the burden of overcoming the respondent’s denials by competent proof, or whether the marks relied on by petitioner, without other proof, can be considered a prima facie showing that petitioner still owns and is still using its marks, these factors being a prerequisite to sustaining the petition for cancellation. I think that the answers to these questions should be in the negative.
First of all, I do not believe that the majority opinion in the foregoing respect is sound. The petitioner made certain allegations of use and ownership which were denied by respondent. It would therefore seem that it then became a burden upon the petitioner to submit proof that it still owned and was still using the marks on which it relied, especially since these facts were particularly within the scope of petitioner’s knowledge and could have been submitted with very little difficulty.
I am fully cognizant that there are cases which hold that it is not necessary to submit proof of ownership and use of a mark by a petitioner and that a registration can be relied on without more to sustain a petition for cancellation. However, I have not been able to find any satisfactory rationale for such a procedure. However, there are other cases which set forth a rationale which I deem applicable to the present case.
A case I consider to be pertinent to my viewpoint is Old Monk Olive Oil Co. v. Southwestern Coca-Cola Bottling Co., 118 F.2d 1015, 28 C.C.P.A., Patents, 1091. That case has different facts than the present case (as discussed, infra), but involved a petition for cancellation wherein the respondent offered no evidence, and denied all the specific allegations of fact set forth in the petitioner’s petition for cancellation. At page 1016 of 118 F.*8742d, at page 1093 of 28 C.C.P.A., Patents, the court stated:
“That a petition for cancellation must allege facts upon which injury is predicated is well established. Model Brassiere Co., Inc., v. Bromley-Shepard Co., Inc., 49 F.2d 482, 18 C.C.P.A., Patents, 1294; McIlhenny’s Son v. New Iberia Extract of Tobasco Pepper Company, Ltd., 30 App.D.C. 337.
“Therefore, appellee having denied in its answer all of the allegations of fact in appellant’s petition, the burden was upon appellant to establish injury by the registration of the mark sought to be cancelled.”
The court further stated, 118 F.2d at pages 1019, 1020, 28 C.C.P.A., Patents, at pages 1097, 1098 and 1099,
“* * * When the use of its mark by appellant at the time of filing its petition was put into issue by appellee’s answer, the burden was upon appellant to establish such use by competent proof. * * * ******
“It would have 'been easy for appellant to prove that it was using its mark at the time its petition for cancellation was filed, if such was the fact, and we are unable to understand its failure to do so.”
It is to be again noted at this point that in the present ease, appellant offered no evidence after the allegations of use and ownership in the petition for cancellation were denied by appellee.
Another case which I deem pertinent is Model Brassiere Co., Inc., v. Bromley-Shepard Co., Inc., 49 F.2d 482, 18 C.C.P.A., Patents, 1294. That case involved a cancellation proceeding. Although the facts of that case are different from the facts of the instant case (as noted, infra), that ease is valuable in the sense that it discussed the point of law involved here and set forth the rationale behind this point of law. It is to be noted, however, that while the following cited portions of" that case are to a great extent obiter dictum, these portions of the case were recognized as such in the Old Monk Olive Oil Co. case, supra, but were nevertheless adopted as being the law in the last mentioned case. At page 485 of 49 F.2d, at pages 1298 and 1299 of 18 C.C.P.A., Patents, of the Model Brassiere Co., Inc., case, supra, the court stated:
“It is clear to us that there is a distinction between the proof required to show the statutory authority to petition for cancellation and the injury or damage which would be resultant from an invalid registration in a case where the petitioner claimed to be the owner of a valid trade-mark, and a case where he disputed the right of ownership in anyone. In the former it is clear that he should show such facts as would show his ownership and use at the time the petition was filed. In that case it would be important for him to allege and prove that he was making trade-mark use of the mark at the time of filing the petition, since, if he was not using it at that time it would be possible that he had abandoned its use altogether.”
It is to be noted that a minority of the court dissented in that case. However, this minority was in agreement with the conclusion of the majority with respect to the foregoing subject matter pertaining to technical trade-marks. The dissenting opinion concluded, 49 F.2d at page 489, 18 C.C.P.A., Patents, at pages 1305 and 1306, as follows:
“In the case at bar, appellee properly alleged in its petition that it was using the registered mark at the time it filed its application. This allegation was denied in appellant’s answer and, as no evidence was submitted to substantiate the truth of that allegation, there was nothing under the law for the Patent Office tribunals to do but to refuse to cancel the registered mark.”
There are, as mentioned above, cases which support the majority’s viewpoint. In this respect, the case of Charles of the Ritz, Inc. v. Elizabeth Arden Sales Corp., *875supra, cited by appellant appears to fully support its contention. In that case, a cancellation proceeding, each of the parties relied upon its registration and no evidence was introduced by either. The applications, from which the marks involved in that case matured, were co-pending. At page 237 of 161 F.2d, at page 1032 of 34 C.C.P.A., Patents, our court stated:
“We are in agreement with the tribunals of the Patent Office that as appellee was the first to file its application for registration, and that as its claimed first use set forth therein is long prior to the claimed first use in appellant’s application, appellee’s registration is prima facie proof that it was the owner of its registered mark. * * * ”
It is to be further noted that the court apparently cited with approval, 161 F.2d at page 235, 34 C.C.P.A., Patents, at page 1030, the Patent Office tribunal’s holding that “ * * * it was unnecessary that appellee [petitioner for cancellation] submit evidence other than his registration for the purpose of establishing its priority of use and its ownership of its mark.” [Matter in brackets added.] Under the foregoing facts, the court affirmed the sustaining of the petition for cancellation by the Patent Office tribunals.
The case of Rosengart, Etc. v. Ostrex Co., Inc., 136 F.2d 249, 30 C.C.P.A., Patents, 1046, which also supports the majority viewpoint, involved a cancellation proceeding, and had facts very similar to the present case. The petitioner (ap-pellee) in that case took no testimony but was permitted to use testimony taken in previous opposition proceedings. There was a contention by the respondent [appellant] before this court that there was a duty on the petitioner for cancellation to prove use of its mark at the time of filing the petition, this evidently not having been done. The court, in answering this contention, stated, 136 F.2d at page 253, 30 C.C.P.A., Patents, at page 1051:
“On the question of the duty of the petitioner for cancellation to prove the use of its mark at the time of filing the petition, appellant relies to a great extent upon the decision of this court in Old Monk Olive Oil Co. v. Southwestern Coca-Cola Bottling Co., etc., * * * [supra] in which we referred to our ruling in Model Brassiere Co., Inc. v. Brom-ley-Shepard Co., Inc., * * * [supra]. Even a superficial examination of the facts involved there shows that they are not on all fours with the facts presented here. In neither of those cases were we speaking of a registered mark. Moreover in the Old Monk Olive Oil Co. case, there was no attempt to show use of the mark or the right to use it during the period beginning five or six years before the cancellation proceedings were instituted. The facts are different here. The incorporated record shows that the registered mark “Ostrex” was, by the registrant (who was president of the Os-trex Company), transferred to his company a little over three years prior to the filing of the instant petition for cancellation, but during approximately two years of the intervening time the opposition proceedings hereinbefore spoken of were in progress, and those proceedings were based on the Ostrex Company’s ownership and use of its said registered mark.”
The fact remains, however, that a petition for cancellation was sustained in that case notwithstanding that the petitioner did not show use of the mark at the time of filing the petition.
It can readily be seen from the foregoing four cases, which have been discussed at length, that the law is unsettled. It is to be noted, however, that the Charles of the Ritz, Inc. case, supra, does not cite the Old Monk Olive Oil Co. case, supra, nor the Model Brassiere Co., Inc. case supra. Furthermore, it appears from the record and the briefs of the Charles of the Ritz, Inc. case, supra, that these other cases were not cited to the court nor was the point in issue in the instant *876case treated by the parties in their briefs before the court. However, the Old Monk Oil Co. and Model Brassiere Co. cases, supra, were definitely considered and distinguished in the Rosengart case, supra. I am of the opinion that it is erroneous for the court to rely on holdings such as the Charles of the Ritz Co., Inc. and Rosengart cases, supra, without seriously reconsidering the rationale of the other cases which I have discussed above, notwithstanding that the fact situations in the former two cases are more in point than the latter two cases.
I am not disposed to speculate as to what the court’s rationale was in the Charles of the Ritz, and Rosengart cases, supra. However, it is my opinion, after considering the foregoing cases, that the Old Monk Olive Oil Co. and the Model Brassiere Co., Inc. cases, supra, express the sounder legal viewpoint. It seems quite clear to me as a general legal proposition that when a petitioner makes certain allegations which are denied by a respondent that the petitioner has the burden of bringing in evidence to support his allegations. This must of necessity be the case in a cancellation proceeding such as the present one since the petitioner can prevail only if it can show the likelihood of confusion which would be indicative of injury to itself. However, before there can be such injury, as this term is used in trade-mark law, the petitioner, in a case such as this one, must prove that it owns and is using the trade-mark where the pleadings- relating to these factors have been controverted. If the petitioner fails to submit such proof when the ownership and use of petitioner’s trade-mark have been placed in issue by respondent’s answer, the petitioner has not shown that it is in a position to be injured since it has not proved the elements ancillary to injury, namely, ownership and use. If the proof of ownership and use, when required, is not submitted by a petitioner, an owner of a registered mark could be harassed by petitions for cancellation of its trademark registration, and may even possibly lose such registration notwithstanding that the petitioner never proved itself to be in a position where it could have been or could be injured by respondent’s use of a mark alleged to be confusingly similar to petitioner’s mark.
In the present case, where the allegations of ownership and use of the mark were denied by respondent, it would have been much simpler for petitioner to prove these elements than for respondent to prove lack of use and ownership of the mark. It seems most logical to me that petitioner had the burden of proving these elements, and I am not disposed to speculate why petitioner did not do so. It is my opinion, after giving much deliberation to the matter and extensively researching the subject, that a petitioner should be required to prove its standing to petition for cancellation of another’s mark, by proving ownership and use once these questions have been raised by the pleadings.
I am further of the opinion that insofar as the holdings of the Charles of the Ritz, Inc. and Rosengart cases, supra, are in conflict with the rationale of the other of the above-cited cases, they should be overruled.
There is another reason why I feel that the rule adopted by the majority 'is improper. Section 9 of the Lanham TradeMark Act, 15 U.S.C.A. § 1059, reads in part as follows:
“Each registration may be renewed for periods of twenty years from the end of the expiring period upon the filing of an application therefor accompanied by an affidavit by the registrant stating that the mark is still in use in commerce and the payment of the renewal fee required by this chapter; * *
It is to be noted that an applicant for renewal of a registration must submit an affidavit of current use to the Patent Office.
Renewal proceedings are an ex parte matter, and another party’s rights are not directly involved. The present case is an inter partes proceeding where another party’s rights are directly involved. *877Can it be logically said that there is less proof of current use required in an inter partes proceeding where another party’s rights are directly involved than in an ex parte proceeding where they are not directly involved? I think not, but this is what the majority opinion sanctions.
For the foregoing reasons I believe that the dismissal of the petition for cancellation should have been affirmed by us on the ground that there was no actual proof introduced by the petitioner that it owned and was using its marks at the time of filing its petition.