(dissenting).

“42” filed an application to register the trademark Executive. Gillette filed an opposition. The trial board found “42” was entitled to date of first use in 1945 as a successor in business to Lander. On appeal to the C.C.P.A., Gillette Company v. “42” Products, Ltd. (C.C.P.A. 1968), 396 F.2d 1001 , 55 C.C.P.A. 1347 reversed the decision of the board and held that “42” was entitled to a “date of first use no earlier than 1957” because the nunc pro tunc assignment by Lander was not intended to be an assignment of rights by the parties thereto and therefore “appellee (“42”) is not entitled to claim Lander as its predecessor in interest.”

The C.C.P.A. stated that the case was “remanded to the board for further proceedings consistent with this opinion.” The remand was for a limited purpose, “to determine likelihood of confusion in the light of our holding” that “appellee is entitled to a date óf prior use no earlier than 1957.”

*1120 After the first hearing and decision by the trial board, Gillette, the aggrieved party, had an election. It elected to go to C.C.P.A. by appeal rather than commence an independent action in the district court. When Gillette appealed, “42” then had an election to (1) allow the C.C.P.A. to proceed with and conclude the appeal, or (2) to move to have the appeal dismissed and require Gillette to commence an action in the district court. The section, 15 U.S.C. § 1071 , is difficult to read but the words “adverse party” clearly means “42”, the non-aggrieved party in the posture of the case after Gillette had appealed to the C.C.P.A.

The cases uphold our reading of the statute that each party has an initial election. Westgate-Sun Harbor Co. v. Watson (1953), 92 U.S.App.D.C. 341 , 206 F.2d 458 ; Chase v. Coe (1941), 74 App.D.C. 152 , 122 F.2d 198 . Nor does “42” dispute this reading of the statute.

We think that there should not be available to “42”, the right to elect to commence proceedings in the district court, in view of its prior election not to have required dismissal of the appeal to the C.C.P.A. on the first go around. Such a rule would prevent two bites at the apple and would leave the entire case in the hands of C.C.P.A., a court ideally fitted by its expertise and experience for a complete decision in the matter. Such a rule would further the interests of judicial and litigant economy.

When Gillette appealed, “42”, though then not aggrieved, could have forced the case to go the district court route. For good reasons of its own, it in substance allowed Gillette’s choice of the C.C.P.A. route to stand. When a party to litigation succeeds in a trial court and the opponent takes an appeal, the appellee is foolhardy if he assumes he will succeed on appeal. If at this stage he foregoes an election to abort the appeal and have the case tried de novo in a trial tribunal, we must say he has made a binding election.

The C.C.P.A. did not send the single issue back for retrial; it sent it back for reconsideration on the record made. This explains why the trial board on remand neither permitted nor considered new evidence. Thus we think that, although the C.C.P.A. did not expressly retain jurisdiction to follow the remand, there was impliedly a retention of jurisdiction in the C.C.P.A.

We think that Tibbetts Industries, Inc. v. Knowles Electronics, Inc. (7 Cir. 1967), 386 F.2d 209 , cert. denied 390 U.S. 953 , 88 S.Ct. 1046 , 19 L.Ed.2d 1146 was wrongly decided. However, it can be distinguished. In Tibbetts a patent interference was involved in which the issue was priority of invention. Tibbetts had two claims, (1) that Knowles had failed to prove reduction to practice before Tibbetts’ filing date and (2) assuming Knowles had proved such earlier reduction to practice, he was deprived of any legal benefit because of his having “suppressed, abandoned or concealed the invention.” The Board of Patent Interferences, the equivalent of the trial board in our case, found for Tibbetts on the first issue, i. e. that Knowles was not first in reduction to practice, but did not decide the second one. Knowles appealed to the C.C.P.A. Tibbetts failed to elect an action in equity. The C.C.P.A. found in favor of Knowles on the first issue, and reversed, thus making the second issue, “suppression” critical and remanded the case to the board for trial of this issue. Knowles v. Tibbetts (1965), 347 F.2d 591 , 52 C.C.P.A. 1800 . The C.C.P.A. stated, “Tibbetts has raised this issue throughout the interference and it must be decided. We thus remand for consideration of the 35 U.S.C. § 102 (g) issue.” [ 347 F.2d 591, 597 ].

Thus in Tibbetts the issue sent back was not for reconsideration on the record but for a trial of an issue that had not theretofore been tried. Viewed thus, the final result in Tibbetts Industries Inc. v. Knowles Electronics Inc., supra, i. e. that after a hearing before the trial board, *1121 on this previously untried issue, Tibbetts might elect to file in the district court, clearly distinguishes our case from Tibbetts .

I would reverse as to the first cause of action.