This appeal is from the December 16, 1982, decision of the United States Patent and Trademark Office (PTO) Trademark Trial and Appeal Board (board),
OPINION
Familiarity with the factual background of the dispute before us, which is found in the opinion of the board, is presumed and will not be reviewed in detail.
1. The Likelihood of Confusion Issue
The record before the board showed that Giant adopted its GIANT FOOD mark before RM began using its marks; that Giant owns five federal registrations for several marks containing the term GIANT (only No. 1,085,784 was appended to each of the Notices of Opposition; the other four registrations were introduced by Giant as exhibits in connection with its stipulated testimony); that the parties are competitors; and, that there is evidence of some third-party use of GIANT in the same business. The board opinion states (
Opposer’s stipulated facts establish its entrance into the food service business in 1935 as Giant Food Shopping Center, Inc. which name was changed in 1957 to Giant Food, Inc.; and that it has continuously, since 1936, marketed food and various other products under its “GIANT” mark. Operations were commenced in the District of Columbia but were expanded in 1941 to Virginia and in 1946 to Maryland. The word “GIANT” appears on several hundred products marketed in opposer’s stores and is used on shelf talkers, price labels, sales slips, bags, trucks, employee uniforms, packaging, point-of-sale displays and other materials. The marks “GIANT”, “GIANT FOOD” and “SUPER GIANT” have been continuously advertised in connection with opposer’s stores and products through newspapers, radio, television, trade journals and circulars. More than 90 stores were in operation by opposer in 1970. From 1939 through 1970 more than 32 million dollars were expended for advertising. From 1970 through 1979 another 52 million dollars were added to that figure. Sales receipts were over 400 million dollars in 1970 as compared with 3 million dollars in 1940. As a *1265 result of its extensive use of its marks, the terms “GIANT” and “GIANT FOOD” have become distinctive of opposer’s activities in this area.
In light of the above, we agree with the holding of the board that there is a likelihood of confusion and we base our decision on its reasoning.
Cf. Giant Food, Inc. v. Nation’s Foodservice, Inc.,
We do not agree, however, with the board’s conclusion that, “even if [it were conceded] that ‘GIANT’ is a weak mark,” the opposition should be sustained because “it is well established that even the owner of a weak mark is entitled to be protected from damage due to a likelihood of confusion with another’s use of the same or a confusingly similar mark.” (Emphasis ours.)
There is no reason to assume that refusing registration to an applicant under 15 U.S.C. § 1052(d) will protect an opposer from “damage” due to likelihood of confusion in the marketplace. It is axiomatic that likelihood of confusion results only from the concurrent
use
of confusingly sim-
liar
marks, not from their
registration. See In re National Distillers and Chemical Corp.,
Accuracy aside, the danger in making statements such as the board made is that it may be perceived that some form of “damage” must be proved in order to prevail in an opposition or cancellation proceeding, and that is not the law.
E.g., Selva & Sons, Inc. v. Nina Footwear, Inc.,
Further, “damage” from registration is mentioned in sections 13 and 14 of the Lanham Act, 15 U.S.C. §§ 1063 and 1064, only in connection with standing, and the similar language of those sections has been held to require only that the opposer or cancellation petitioner plead and prove facts showing a “real interest” in the proceeding.
Nina Footwear, supra.
Actual damage from registration is relevant to that determination, of course, but it is not requisite. Absent actual damage from an existing registration,
e.g., Plastilite Corp. v. Kassnar Imports,
grau¿ issue
RM s counterclaim for cance lation of Gia”ts registration No. 1,085,784 is based on alle&/atloris of fraud m that’ des?lte Gia?\s agreement not to use its marks m a limited geographical area. Giant sought an unredieted nationwide federal registration. We a^ee Wlth the board that under the facts here Giant committed no fraud,
RM bases its claim of fraud on the ground that Giant had a duty, which it failed to carry out, to continuously review and amend the oath filed with its application for the registration sought to be can-celled. We do not doubt that an applicant has that duty. That oath requires that an
*1266
applicant aver that “no other person, firm, corporation, or association, to the best of his knowledge and belief, has the right to use such mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when applied to the goods of such other person, to cause confusion, or to cause mistake, or to deceive,” 15 U.S.C. § 1051(a)(1) (1976); 37 CFR 2.33(b) (1982). The statute does not, however, obligate “one seeking federal registration of a mark to investigate and report all other possible users of an identical or confusingly similar mark.”
The Money Store
v.
Harriscorp. Finance, Inc.,
On the other hand, the oath in an application for registration must be truthful. Thus, in some instances a senior user would be making a false oath where he fails to acknowledge conflicting rights of a junior user which are clearly established, for example, by a court decree, by the terms of a settlement agreement, or by a registration. However, the rights of a junior user must be clearly established and must be in an identical mark or one so similar as to be clearly likely to cause confusion.
While in this case there is a settlement agreement, the agreement is not one in which the parties acknowledged that use of the respective marks would be likely to cause confusion. The parties agreed to a division of trade territory regardless of confusion. Indeed, RM defended the oppositions on the ground of no likelihood of confusion and itself sought unrestricted registrations. Since the issue of likelihood of confusion was not a clear and simple one, and was not resolved until this decision, we cannot on this record say that the oath was knowingly false. We hold that there was no fraud in Giant’s application on which the subject registration issued.
As a final matter, we reiterate: “Such common-law rights cannot be used as a basis for the denial of a nationwide registration to appellant except by way of a concurrent use proceeding.”
American Security Bank v. American Security and Trust Co.,
The decision of the board is affirmed.
AFFIRMED.