dissenting.
I would affirm the decision of the board granting summary judgment against appellant Action Temporary Services, Inc. (Action). That was a holding that Action is not entitled to a concurrent registration under the statute, this being a concurrent use proceeding. A concurrent registration is the only kind of registration Action could possibly get, Labor Force, Inc. (Labor), the appellee, being the prior and continuing user and the holder of a registration of the mark at the time Action adopted and began using it. This case would not be here but for the fact Labor allowed its registration *1567to lapse by failing to file the affidavit of continuing use required by § 8(a) of the Lanham Act (15 U.S.C. § 1058(a)), apparently inadvertently, which omission it is now attempting to remedy by its application, now before us, to reregister the same mark for the same services.
The board correctly pointed out that, at the time Action adopted the mark, Labor’s registration of the same mark for the same services was in force and, under § 22 (15 U.S.C. § 1072), was constructive notice to Action of Labor’s ownership of the mark, wherefore, under the concurrent registration proviso of § 2(d) (15 U.S.C. § 1052(d)), Action could not be a “lawful” user, i.e., “without knowledge of Labor’s use of the same mark for the same services.” To be sure, the notice being “constructive,” the knowledge was, on this theory, a legal fiction. Nevertheless, this state of affairs prevailed unchanged for a period of five years and 11 months, until Labor’s registration lapsed on July 1, 1981. The majority accepts all this. The registration then terminated by force of law and the majority is holding that the relatively short period from July 1, 1981, to July 21, 1982, when Labor filed its application, a period of one year and 20 days, was a period of “lawful” use which has the effect, for no stated reason, of cancelling out the effect of the period of five years and 11 months of “unlawful” use, there being no constructive notice during that shorter period. By the majority reasoning, the result would be the same if the period of lawful use was only one day. As the board pointed out, correctly I believe, the termination of a registration has no retroactive effect. I agree with the board that “What had been an unlawful adoption when it occurred [and which continued for nearly six years] was still unlawful.”
The majority makes clear (page 1566) that had Action’s knowledge been “actual" instead of “constructive,” it would have reached the opposite result. The only reason given — if it can be called a reason — is that, unlike an actual notice, which exists forever independently of the event giving rise to it — a constructive notice based on a registration lasts only as long as the registration. I cannot accept that as justification for ignoring or wiping out altogether the effect of the initial adoption under the legal impediment of constructive notice and continued “unlawful” use thereafter for nearly six years. The majority is giving retroactive effect to the termination of the registration and giving no heed to Action’s failure to meet the conditions of § 2(d) at the time the events relied on took place, treating Labor just as though it never had a registration or any of the benefits registration provides. Labor was entitled to those benefits for at least nearly six years, during which Action initiated and carried on the activities on which is based its application to register here involved. I do not see the justification for looking only to the time of instituting the concurrent use proceeding. It is contrary to the spirit of the statute.
Since this is a reversal of only a grant of summary judgment, which undoes the board’s expeditious disposition of the concurrent use proceeding, wherefore the board and counsel must wrestle with it further on remand, it will now be necessary for the board to face the other § 2(d) issue: whether confusion, mistake, or deception is likely. I note on page 25 of Action’s brief in this court that it is of the opinion that if either party does business in the other’s territory, “Consumer confusion would be inevitable.” I also note that the majority would have decided this case the other way, and properly so, had there been evidence to support a determination that Action had actual notice of Labor’s use of the mark. One or the other of these issues will surely bring this case eventually to the correct conclusion already reached by the board and it is regretable that the majority, with no precedent whatever requiring it to do so, feels compelled to prolong matters on tenuous legal theory, thereby imposing useless expense on the parties and more work on the board.