(dissenting).
The majority opinion holds that, in a case of this character, although it is necessary that injury be established as of the date of the filing of the petition for cancellation, a petitioner need not establish that, at that' time, he was using the registered mark, nor one similar thereto, in a trade-mark sense or otherwise, nor that he was prevented from so doing by the registration of which he complains. If that is so, then a petitioner is not required to show legal injury. On the contrary, it is sufficient if he allege and prove that he thinks, or possibly imagines, that he has been, or may be, injured by the registration of an alleged trade-mark.
The doctrine upon which the court bases its decision is not only in defiance of the plain mandates of the statute—section 16 of the Trade-Mark Act of February 20, 1905, 15 USCA section 96, and this is a purely stat*488utory action—but it is contrary to established procedure in all legal and equitable actions. It is never a matter of mere formality, which a court may waive in its discretion, to require a party to a suit, either in Taw or m equity, to establish facts essential to his right to relief. Of course, in a case where it is obvious, as in the ease at bar, that a registered trade-mark is descriptive, the decision can do no harm. However, in close eases, and in those where the marks are obviously not descriptive, an owner of a registered trade-mark may be harassed by petitions for the cancellation of trade-mark registrations.
In the instant case the petitioner failed to show any legal or other interest in the registered trade-mark, but was content to submit the case upon the testimony of its attorney of record, who- apparently had but little, if any, knowledge of the issues raised by the petition for cancellation.
I have read the record with care, and, although it is alleged in appellee’s petition for cancellation that it had continuously used the word “Ensemble” to describe its goods since the year 1924 to the date of filing its application, in my opinion, there is absolutely no evidence, nor any admission by appellant, to establish that appellee was using the registered mark in a descriptive sense or otherwise at the time it filed its application.
It is argued by counsel for appellee, and agreed to by the majority of the court, that appellant is estopped to deny that appellee was using the registered mark at the time it filed its application, because of the suit commenced by appellant in the United States District Court, on or about October 6, 1926, and withdrawn by appellant on October 7, 1927, about three and one-half months prior to the filing of appellee’s application for cancellation.
It is sufficient to say in this connection that appellee’s application for cancellation was filed more than two years after appellant filed his bill of complaint in the District Court, and that, although it may be presumed that appellee was using the mark at the time the suit was instituted, there is nothing in the record to show that it used the registered mark at any tijne thereafter.
Only four of the eases cited in the majority opinion appear to have any bearing on the issues in this case.
In the Andrews Radio Co. Case, the Commissioner of Patents held that it was sufficient for a petitioner for cancellation of a registered descriptive mark to establish that he had used the mark, the time of such use apparently being immaterial.
In the case of Elishewitz v. Leyser Green Co., 47 App. D. C. 193, 8 T. M. R. 34, the court affirmed the decision of the Commissioner of Patents holding that the registered trade-mark “Leghornette” for use on hats was descriptive. In his decision, the commissioner, among other things, said: “The petitioner for cancelation shows injury by the registration, though injury will'be presumed to follow the improper registration of any descriptive word.” No authorities were cited in support of the commissioner’s holding, nor was the matter discussed in his opinion. The Court of Appeals gave no expression of approval of the quoted language, but concurred in the proposition that the- registered mark was descriptive. The question now before us was apparently not considered by the Court of Appeals. In any event, it was not discussed in the court’s decision.
In the case of Electro Steel Co. v. Lindenberg Steel Co., 43 App. D. C. 270, 5 T. M. R. 295, referred to in the majority opinion as the “ease most analogous to the case at bar” the Court of Appeals held that it was not necessary to establish on the trial in a trade-mark cancellation proceeding, involving a descriptive mark, that the petitioner had “ever affixed on its goods the word ‘Electro’ as a trademark or as a description of the goods,” and that it was “not essential in all cases” that “there should have been a strictly trademark qse of the words by complainant,” but that “Injury to its business might be otherwise shown.” (Italics mine.) The court cited the case of Natural Food Co. v. Williams, 30 App. D. C. 348, in support of its holding.
The court was obviously right. In such cases it is necessary only that the petitioner show that he was using the registered mark in a descriptive sense in connection with his goods. It is not necessary that he show a strictly trade-mark use or that the mark was affixed to his goods.
In the case of McIlhenny’s Son v. New Iberia Extract of Tobasco Pepper Co., Limited, 30 App. D. C. 337, the Court of Appeals of the District of Columbia held that the right of a party to petition for the cancellation of a registered trade-mark was dependent upon a showing of interest, and that he must allege in his petition, and establish by competent evidence on the trial, sufficient *489facts “on this jurisdictional question” to show that he has “been injured by registry of the mark he seeks to have canceled.” It is true that the court there said: “The petition of the appellee does not contain an averment that it had used the word ‘Tobaseo’ as a trademark for pepper sauce.”- (Italics ours.)
In the case at bar, the commissioner construed the decision in the Mcllhenny’s Son Case to mean that, if it is alleged in a petition for cancellation and established on the trial that the petitioner had used the registered mark at any time, the statutory requirements have been complied with, and he is not required to allege and establish use of the registered mark at the time of the filing of his petition.
As I understand the decision in that case, the court held that, unless a petitioner for cancellation of a registered trade-mark alleged in his petition and established on the trial that he had used the registered mark on goods of the same descriptive properties, and had an interest in the. mark not common to the general publie, the tribunals of the Patent Office had no authority to cancel the registration. If the decision in that case was sound, and I have no doubt that it was, a petitioner for cancellation must, in order to show an interest in the registered mark not common to the general publie, allege in his petition, and establish by competent evidence on the trial, that he was using the registered mark, or one confusingly similar thereto, on, or, under some circumstances, in connection with, goods of the same descriptive properties as those covered by the registration, at the time of the filing of his petition. In no other way could he show an interest in the mark not common to the general public or establish that he was “injured” within the statutory meaning of that term.
It is true that this court, in the case of Skookum Packers’ Ass’n v. Pacific Northwest Canning Co., 45 F.(2d) 912, 18 C. C. P. A.-, held, in accordance with the decisions of this eourt in eases therein cited, that, in an opposition proceeding, the Patent Office tribunals had authority to dispose of any question relating to the proposed registration that might properly be considered in an ex parte ease.
That decision was based upon the mandates of section 7 of the Trade-Mark Act of February 20, 1905,15 USCA § 87, which provides, in part, that the Commissioner of Patents + * shall direct the examiner in charge of interferences to determine the question of the right of registration to such trade-mark, and of the sufficiency of objections to registration. * * *” (Italics ours.)
Section 7, however, has no application to eases involving the cancellation of registered trade-marks.
Section 13 of that act (15 USCA § 93) reads as follows: “Sec. 13. That whenever any person shall deem himself ’ injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. The commissioner shall refer such application to the examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner shall so decide, the commissioner shall cancel the registration. Appeal may be taken to the commissioner in person from the decision of examiner of interferences.”
It will be observed that section 13 provides that, whenever a person deems himself injured, he may at any time apply to the commissioner to cancel a registered trademark; and that the commissioner shall refer the application to the Examiner of Interferences “who is empowered to hear- and determine this question.” (Italics ours.) Obviously, the first question to be decided is the question of injury to the petitioner by virtue of the registration of a trade-mark.
Furthermore, section 16 of that act (15 USCA § 96) provides that “the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership.” Accordingly, the registration of a trade-mark descriptive or otherwise, is prima facie evidence of ownership, and, in a proceeding to cancel the registered mark, the statutory authority of the Patent Office tribunals is, in my opinion, limited to the disposition of issues properly raised inter partes.
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.
*490For the reasons stated, I am of opinion that the decision of the Commissioner of Patents should be reversed.
LENROOT, Associate Judge, concurs in the above dissent.