concurring-in-result.
I concur with the majority’s reversal of the denial by the United States Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) of registration of the mark at issue based on “lack of ownership.” I do so, however, on the merits of the denial, not because the PTO was prohibited by this court’s remand from denying registration on that basis.
The majority opinion holds that the Board was without authority to raise a new basis of denial of registration after the remand from this court because its opinion instructed the Board to consider only the likelihood of confusion issue. Here, the Board considered the remand issue as instructed by the court and resolved it in favor of appellant. The present appeal, therefore, does not in any way involve that issue. I view the majority opinion as wrong in holding that the PTO cannot, upon disposing of the remand issue, consider other grounds for denying registration.
*730In In re Clemens, 622 F.2d 1029, 1039, 206 USPQ 289, 299 (CCPA 1980), which involved a patent appeal from the PTO, our predecessor court (whose opinions bind us) stated:
Under the statute, 35 U.S.C. 144, we are required to review the board’s entire decision on ... the record before us. Further proceedings in the PTO are matters for PTO election, the statute merely requiring that any such proceedings be governed by this court’s decision.... The PTO is free to make another rejection, after this decision, should it develop facts that would render such a rejection justifiable.... It is the Patent Office which grants patents, not this court.
Accord In re Fisher, 448 F.2d 1406, 1407, 171 USPQ 292, 293, (CCPA 1971) (“As we have often pointed out, we pass only on the rejections actually made and do not decree the issuance of patents.”); In re Ruschig, 379 F.2d 990, 993, 154 USPQ 118, 121 (CCPA 1967) (“Appellants insinuate that ... we found all the claims ... patentable [and returned the application] to the Patent Office for issuance. We did neither of these things. We passed on a rejection on prior art, affirmed by the board, found it error, and reversed the board decision. Nothing more. Under 35 U.S.C. 144 the only effect of our decision was to govern further proceedings in the case.”)
Although these opinions involve patent appeals, the statutes pertaining to both patent and trademark appeals from the PTO are virtually identical. They both prescribe
The United States Court of Appeals for the Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Commissioner its mandate and opinion, which shall be entered of record in the Patent and Trademark Office and shall govern the further proceedings in the case.
35 U.S.C. § 144 (Supp.1984); see also 15 U.S.C. § 1071(a)(4) (Supp.1984).* Hence, I see no reason to differentiate trademark and patent proceedings on the issue now before us, i.e., the governance of further proceedings in the PTO on remand from this court.
The notion that only the PTO has the authority to issue a patent (or register a federal trademark) is consistent with the statutory mandates upon the PTO to issue patents and register trademarks only when they meet the strict requirements of the law. See 35 U.S.C. § 102 (1982) (“A person shall be entitled to a patent unless ....”); 35 U.S.C. § 103 (1982 & Supp.1984) (“A patent may not be obtained_”); 15 U.S. C. § 1052 (1982) (“No trademark ... shall be refused registration ... unless_”) (emphasis added). To limit, as would the majority, the power of the PTO to invoke new grounds for denying the issuance of a patent or the registration of a trademark may, in the appropriate factual setting, be tantamount to ordering the PTO to disregard its statutory duty.
The majority suggests that because the PTO denied the registration on a ground suggested by Judge Nies rather than on one “it independently discerned,” this case is rendered “quite different” from cases where the PTO enters a new ground of denial following a reversal by this court. The majority gives no reason to support its view that an “independently discerned” ground of rejection is any more meritorious than one suggested by a member of this court. In my view it is the merits of the new ground for rejection that are important, not its source.
In any event, our prior order required the Board to determine whether the public is likely to believe that the source of the WELLASTRATE product is WELLA U.S. rather than WELLA A.G. Notwithstanding the opinion of the majority, the Board did comply with our order when it answered the remanded question in the negative. The Board found no such likelihood because WELLA A.G. and WELLA U.S. “constitute a single source”. Having so concluded, the Board rightly reversed the Section 2(d) refusal to register as improper. *731Thus, this case is, for all practical purposes, exactly the case that the majority seeks to distinguish, i.e. a reversal by this court followed by a new ground of denial by the PTO.
I would, therefore, address on the merits the new ground for denying registration raised by the PTO, which is “lack of ownership” by the appellant. There is no assertion by appellant that the PTO’s denial of registration on that basis was not made in accord with proper procedure or is otherwise unfair. Indeed, appellant conceded at oral argument that the PTO had the authority to use that basis of denial, even after the earlier opinion of this court.
On the merits, the PTO determined that Wella U.S., a subsidiary of Wella A.G., is the owner of the WELLASTRATE mark sought to be registered and that only the owner may register a trademark. 15 U.S. C. § 1051 (1982). This finding of the PTO, however, is clearly erroneous.
The Board based its finding that Wella A.G. does not own the mark on the fact that Wella U.S. had previously registered four separate marks in the Wella family. The Board referred to 15 U.S.C. § 1057(b), which states:
A certificate of registration of a mark upon the principal register provided by this chapter shall be prima facie evidence of the validity of the mark, and of registrant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate, subject to any conditions and limitations stated therein.
Although the Board may have been correct in drawing a presumption based on that section and the ownership by Wella U.S. of its four registered marks that it and not Wella, A.G. owned the mark at issue, I believe it is clear that this presumption was overcome by the declaration of Wella, A.G., supported by the foreign registration, that it owned a fifth mark — WELLASTRATE— at issue here.
Included in Wella A.G.’s application for registration of WELLASTRATE is a declaration by the President of Wella A.G. that he “believes said corporation to be the owner of the trademark sought to be registered.” Also included is a copy of the 1958 registration of the same mark by Wel-la A.G. in the Federal Republic of Germany. No evidence was presented by the PTO to contradict that evidence of ownership by Wella A.G.
For the foregoing reasons, the Board’s rejection on the basis of “lack of ownership” should be reversed.
The only difference between these two statutory provisions is that in the latter the phrase “to the commissioner” in the second sentence appears in a different location in the same sentence.