DENMAN, Chief Judge.
Appellant, Safeway Stores, Inc., hereinafter called Stores, long user of its corporate name as its trade name, appeals from a judgment of the district court (a) requiring the Commissioner of Patents to grant registration to Dunnell as his trade mark the words “Safe Way”, which his application to the Patent Office states he "used ,* * * for toilet seat covers” and (b) denying to the Stores an injunction against Dunnell and his agents sought in a Stores’ counterclaim restraining him from using the words “Safe Way” in the course of his business of selling the toilet [651]*651seat covers. Stores did not seek damages for the claimed infringement.
The evidence before the district court was in part of witnesses there and that taken before the Examiner of Interferences in an application of Dunnell filed May 1st, 1942, to the Commissioner of Patents for registration of the words “Safe Way.”
Stores opposed the application to the Commissioner of Patents on the ground that it had since 1926 and prior to Dunnell’s use of-the words “Safe Way” engaged in the business of owning and operating retail grocery stores under the name “Safeway” and that in 1944, when its opposition was heard, it owned and operated approximately 2,500 retail stores doing business as “Safeway” in the following states: Arkansas, Arizona, California, Colorado, District of Columbia, Idaho, Iowa, Kansas, Maryland, Missouri, Montana, Nebraska, Nevada, New Jersey, New Mexico, New York, Oklahoma, Oregon, South Dakota, Texas, Utah, Virginia, Washington, Wyoming.
Stores alleged “The name ‘Safeway’ is the distinguishing and dominant part of opposer’s [Stores’] name. Opposer’s name ‘Safeway’ has been and is now prominently displayed in signs on its stores and places of business, in newspaper advertisements, price tags, gummed tape, cash register receipts, invoices, paper bags, display cards, and other forms of advertising, in such manner and to such an extent that the op-poser’s name ‘Safeway’ alone has become associated in the mind of the public with opposer, and the name ‘Safeway’ by reason of such extensive and continuous use by the opposer over a long period of years has come to mean the opposer, and the public know and identify the opposer by the name ‘Safeway’ alone. ‘Safeway’ is a substantial part of the valuable good will of opposer.”
And alleged that “The name ‘Safeway’ claimed by applicant [Dunnell] is identical to the name ‘Safeway’ owned and in prior use by opposer and used by opposer in connection with the sale of merchandise in various classification, including, particularly, paper products, such as toilet tissue, paper towels, paper napkins. The use by applicant of the name ‘Safeway’ is likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin of such goods, and thereby cause irreparable damage to the good-will of the opposer’s business in connection with which the opposer’s name ‘Safeway’ is extensively used.”
And alleged that “On or about August 16, 1939, the predecessor of opposer deposited with the Commissioner of Patents a certified copy of its corporate charter, showing its corporate name ‘Safeway Stores,, Incorporated,’ and received certificate of deposit No. 4220 therefor.”
And alleged that “The unauthorized use by the applicant of opposer’s name ‘Safeway’ on goods such as toilet seat covers is likely to cause confusion or mistake in the minds of the purchasers or to deceive purchasers into believing that such goods' are in some manner ■ associated with or emanate from this opposer.”
And alleged that “The name ‘Safeway’ sought to be registered by applicant consists merely in the name of the opposer corporation, or the distinctive, dominant portion thereof, not written, printed, impressed or woven in some particular or distinctive manner, or not associated with a portrait of an individual, and is therefore within the prohibition against registration of such name under Section 5(b) of the Act of 1905.”
And alleged that “The applicant, Warren W. Dunnell, is not the owner of the trade mark sought to be registered by him, and he was not entitled to the exclusive use thereof at the time of the filing of his application, nor at any other time.”
Dunnell’s response claimed Stores hs,d lost its right to oppose because it had not brought an injunctive proceeding against Dunnell during the nine years he had used “Safe Way” as a trade mark for his toilet seat covers. The response placed in issue the above allegations of Stores, and particularly alleged that Stores had not sold or distributed in its groceries any toilet seat covers under the name “Safeway” or otherwise, and that no one else had sold such covers to the general public, and that Dunnell had sold them only to large concerns [652]*652which distributed them to the public using them in their public toilets.
Though Dunnell. lays great stress on his claim that he was selling his seat covers only to these large users of them in their public toilets, no such limitation of the use of his claimed trade mark was sought from the patent office. The granting of his petition to the Commissioner of Patents as ordered by the judgment of the district court would have given him a monopoly on the trade mark in their sale to the general public in response to a demand which the evidence, infra, shows already existing and certain to increase.
Voluminous'evidence was taken and the Examiner of Interferences found that such products as toilet seat covers “are very closely related to the paper products which opposer [Stores] does sell and that the average consumer might reasonably suppose that a paper toilet seat cover sold under the notation “Safeway” was sponsored and sold by the opposer. Indeed, it appears that applicant [Dunnell] himself is of the opinion that his toilet seat covers might be readily carried and sold by opposer since he has approached opposer in an effort to have opposer sell his goods. Considering all the facts involved herein, therefore, it is the examiner’s opinion that in view of the nature of the goods confusion of persons and reputations is reasonably likely,” and gave his decision against Dunnell that “Safe Way” was non-registerable. On appeal the Commissioner sustained the Examiner, holding .that “Safe Way” as used by Dunnell is “non-registerable” because that “mark constitutes a substantial appropriation of opposer [Stores] corporate name” and finding that “Opposer [Stores] operates a chain of more than two thousand grocery stores, which are scattered through half the States of the Union. In them it sells not only groceries, but all ■ such -more or less related items as the public demands. It has been in business for many years, and has come to be widely known merely as 'Safeway’. In fact, it has almost invariably used that word alone as its name. And while it may not be as universally recognized as is Radio Corporation of America, its customers constitute a very considerable portion of the American public," and that, though as Dunnell contends, Stores “was not dealing in the particular merchandise for which registration was sought; but that fact was held to be immaterial. Moreover, as pointed out by the examiner of interferences, opposer does sell such paper products as toilet tissue and paper towels, which are clearly of the same descriptive properties as applicant’s paper toilet seat covers.”
The Commissioner further decided that Stores need not have sought to enjoin Dunnell as a condition precedent to opposing the registration.
This decision of the Commissioner of Patents presented to the district court, and now to this court, the issue whether the evidence in the patent office proceeding afforded inferences of fact supporting it. The rule established in such cases- is that stated by the Supreme Court in Morgan Massachusetts v. Daniels, 153 U.S. 120, 124, 125, 14 S.Ct. 772, 38 L.Ed. 657. There the suit in the circuit court to compel the registration of a patent, which had been denied, was stated to be “something more than a mere appeal [from the Commissioner’s decision]. It is an application to the court to set aside the action of one of the executive departments of the government. .The one charged with the administration of the patent system had finished its investigations and made its determination with respect to the question of priority of invention. That determination gave to the defendant the exclusive rights of a patentee. A new proceeding is instituted in the courts —a proceeding to set aside the conclusions reached by the administrative department and to give to the plaintiff the rights there awarded to the defendant. It is something in the nature of a suit to set aside a judgment, and as such is not to be sustained by a mere preponderance of evidence * * * Upon principle and authority, therefore, it must be laid down as a rule that where the question decided in the Patent Office is one between contesting parties as to priority of invention, the decision there made must be accepted as controlling upon that question of fact in any subsequent suit between the same parties, unless the contrary is established by testimony which in character and amount carries thorough conviction.”
[653]*653This rule is applicable to trade mark cases. Century Distilling Co. v. Continental Distilling Co., 3 Cir., 106 F.2d 486, 489, certiorari denied. Yale Electric Co. v. Robertson, 2 Cir., 26 F.2d 972 (Cir. 2). It precedes the more general rule regarding the finality of findings of an administrator or administrative body of Dobson v. Commissioner of Internal Revenue, 320 U.S. 489, 498, 64 S.Ct. 239, 88 L.Ed. 248, and succeeding cases.1
The evidence presented to the Examiner warranted the inference of the vast business of Stores through directly owned stores and through directly owned corporations operating grocery stores in many states, having painted on their wall exposures the word Safeway in block capital letters; that millions of dollars were spent annually advertising their products under that name, including toilet paper, paper towels and sanitary napkins; that it is a matter of general knowledge that such toilet tissue and paper towels are used as toilet seat covers by cleanly persons in public toilets, a fact confirmed in the district court in an exhibit of Dunnell’s advertising of his “Safe-Way” toilet seat covers stating, “People dread going into a public toilet. Even though the place is modern and kept immaculately clean there is constant fear ■of infection * * * Save toilet tissue and towels, eliminate pipe stoppage, do away with littered floors.”
This evidence of the substitution of Dunnell’s seat covers for toilet tissue and paper towels evidently was not considered by the district court when it set aside the patent office decision that there could be a confusion of origin of Dunnell’s goods, stating in its opinion: ‘From the evidence it is clear to me that there is not the slightest relationship between the merchandise of the defendant and the kind of sanitary service provided by plaintiff.”
The Examiner and Commissioner further could infer that though now selling toilet tissue used as such toilet covering, Stores contemplated the probable selling of paper toilet seat covers as such in a rise in the demand for such sanitary articles by individual users. Confirming this is testimony in the district court that another corporation manufactured and sold to retailers for resale to the public a Travel Aid pocket of seat covers since 1926 and another cover since 1940, they being not a large but a continuous item of sale in a field of seat cover business which “hasn’t been touched”. Exhibit P shows that Dunnell also, under the name “Slide Away,” sold his seat covers in “travel aid” packages of ten covers for sale to the public, his advertising stating “Travel Aid Packages for resale by stores prove a popular item for sale to the Traveling Public.”
Further, Dunnell, on June 19, 1944, wrote Stores, under the name “Sani-Guard Cover Company”, stating, “We are manufacturers of sanitary paper toilet seat covers. Before taking your time with details of a sale proposition, we should like to inquire if you would consider our product for merchandising to the public in your stores ?” There was nothing in the letter to indicate the “product” was labelled “Safe Way”. On the contrary, Exhibit P showed the packages for individual purchases were under the name “Slide Away”. To this Stores replied on June 29, 1944, that “up to the present time we have not approved of such an item for resale in our stores. Should our policy in this regard change at any time in the future we shall be happy to discuss the matter with you”.
With the burden of proof before the patent office on Dunnell, there is no evidence that any responsible officer or agent of Stores knew of Dunnell’s use of Stores’ trade mark.2 None appearing there was questioned in that regard and Dunnell’s contention is that his advertising of Safe Way seats was confined to a trade other than that of Stores, and the evidence is that the bulk of it was so confined, and the remainder is not shown to be known to Stores.
It appeared before the Examiner that Dunnell’s covers are sold in packages hav[654]*654ing on them the words “Safe Way-” with a sketched cover between the words and a hyphen after the word “Way” in block capital letters as printed on Stores’ buildings, without other matter identifying them as made by Dunnell or any one else, from which the persons seeing them in public toilets could infer they were made by Stores, the Safeway Company. Exhibits before the district court showed that Dunnell also had advertised, though in no great volume, his covers under the name “Safe-Way” with the hyphen' between the two words, without any identifying matter disclosing the maker or vendor but advising prospective buyers to “Inquire Today About Safe Way From Your Jobber”, despite which the district court erroneously found that Dunnell “advertised said product * * * only under his fictitious name ‘Sani-Guard Sales Company’
Dunnell offered evidence that many hundreds of thousands of persons in California using public toilets of his customers have taken his paper seats from their containers hung in the toilets, having on them nothing but the words “Safe Way-” from which the Examiner and Commissioner could make the inference supporting their finding, supra, that the average consumer might reasonably suppose -that Dunnell’s paper seat cover “was sponsored and sold by .the op-poser”, Stores.
This obvious and common sense inference is but the balancing of the evidence of 'the effect of what was seen by hundreds of thousands, if not millions, of public toilet users against evidence of a simple statement before them, that of Dunnell’s deposition, that “no instance has come to [his] knowledge of anyone mistaking the source of [his] toilet seat covers under the trade mark ‘Safe Way’ as being opposer’s, in this case Safeway Stores Incorporated”.
Without any further evidence, the district court, in its finding XII, erroneously finds affirmatively "no one ever confused the source of the toilet seat manufacture, distribution or sponsorship”. It is not by such treatment of-the evidence that the inferences and findings of the Examiner and Commissioner are overcome by “testimony which in character and amount carries conviction”.
The Examiner and Commissioner had before them many registrations of the word “safeway” of which it does not appear that any of the registrants had been or were using that mark in any volume or at all when Stores opposed Dunnell’s application. Such use of such registrations was not shown to the Examiner, and no inference adverse to his decision can be drawn.
“Safeway” is a coined word not appearing in the dictionary. That others may have used it does not prevent its acquiring a secondary meaning, as the district court states in its finding IX that; “Defendant corporation is owner and operator of a national chain of approximately 2,300 retail grocery stores in twenty-four of the states of the United States.- The evidence without dispute shows that the general public identifies these stores under the name ‘Safeway’. Much effort and money have been expended to establish the good will of defendant’s stores under the name ‘Safeway’. Since 1926 defendant has been so engaged in the operation, under the name ‘Safeway’, of retail grocery stores, and sells [40] therein foods and grocery products, including paper toilet tissue, sanitary napkins, facial tissue, paper cups, paper towels, and paper napkins.”
The Examiner and Commissioner well could make a similar inference of such a secondary meaning of the word safeway as indicating the origin of Stores’ toilet paper and other wares, to be protected as in this circuit’s decision in Phillips v. Governor & Co., 9 Cir., 79 F.2d 971, 973 3 Also they could infer that the word so described the origin of -the toilet seat covers and that its use was not confined to a mere description of their sanitary quality.
Finally, it appeared before the district -court that Dunnell had denied in his deposition before the Examiner that in 1933, when he' began distributing his covers under the name “Safe Way”, he had heard or [655]*655knew of “a grocery business conducted under the name ‘Safeway’ ”, However, on the showing that in Los Angeles, where Dunnell then conducted his business, there were in 1933 as many as 320 stores all designated as Safeway stores, his counsel admitted that Dunnell had seen them but did not pay any attention to them. This, although Dunnell used block capital letters Safe Way closely resembling that of Stores —that is to say, Dunnell from the beginning built up his business knowing of the identity of his claimed trade name with Stores’ use of it.
A. The decision of the Commissioner of Patents is not overcome by evidence before the district court. It cannot be said that the latter evidence produces the “thorough conviction” of Morgan v. Daniels, supra, overcoming the Examiner’s finding that in view of the close relation of Stores’ paper products, the users of public toilets supplied with Dunnell’s covers might reasonably suppose that such covers, sold under the mark “Safe Way,” were sponsored and sold by Stores, and the Commissioner’s finding that Dunnell’s mark of “Safe Way” “constitutes a substantial appropriation of opposer’s [Stores’] • corporate name” and the Commissioner’s decision that the words “Safe Way” are not registerable.
As found by the district court, the public identifies Stores’ 2,300 establishments, using the name “Safeway,” as those of Stores’ corporate name “Safeway Stores, Inc.,” and it appears they were selling toilet tissues, a ware which Dunnell admits in his advertising is used as toilet seat covers. The situation is that described in American Steel Foundries v. Robertson, 269 U.S. 372, 383, 46 S.Ct. 160, 163, 70 L.Ed. 317, “where a single word in the corporate name has become so identified with the particular corporation that, whenever used, it designates to the mind of the public that particular corporation.”
The American Foundries case is followed in many of the circuits and the Patent Office. In Holly Moulding Devices v. Esquire, 148 F.2d 355, 32 C.C.P.A., Patents, 935, it was held that the corporate name “Esquire, Inc.” precluded the registration of the word “Esquire,” though that corporation published only a newspaper while the petitioner sought to use the word on a hamburger moulding machine. We regard Dunnell’s use of the words “Safe Way,” whether with or without the hyphen, to be a similar appropriation of the word “Safeway” a part of Stores’ corporate name “Safeway Stores, Inc.”
Other cases are to the same effect: Feldman v. Amos and Andy, 1934, 68 F.2d 746, 21 C.C.P.A., Patents, 823, (“Amos ’N Andy” as trademark for work shirts denied registration on opposition of radio entertainment firm of “Amos and Andy”) ; Yale Electric Corporation v. Robertson, 2 Cir., 26 F.2d 972, (“Yale” as trademark for flashlights and batteries denied registration on opposition of Yale & Towne Manufacturing Co., a manufacturer of locks); Kroll Bros. Co. v. Rolls-Royce, 1942, 126 F. 2d 495, 29 C.C.P.A., Patents, 897, (“Kroll’s Royce” as trademark for baby buggies denied registration on opposition of Rolls Royce Company) ; Safeway Stores, Incorporated v. Safeway Opticians, Inc., 68 U.S. P.Q. 332, Pat.Comm.1946, (“Safeway” as trademark for eyeglasses denied registration on opposition of Safeway Stores, Incorporated) ; Beechnut Cereal Co. v. Beech-Nut Packing Co., 1921, 51 App.D.C. 5, 273 F. 367, (“Beechnut” as trademark for cereal denied registration on opposition of Beech-Nut Packing Co.)
Under these cases our decision would be the same, even though toilet tissues were not used as toilet seat covers, which Dun-hell sought to displace with his seat covers.
The principle of these cases, decided under the Trade Mark Act of February 20, 1905, is now incorporated in the Lanham Act, 15 U.S.C. 1051 et seq., 15 U.S.C.A. § 1051 et seq., which became effective July 1947, after the judgment in the district court and prior to the taking of this appeal and, under section 47(b), 60 Stat. 445, 15 U.S.C.A. § 1051 note, is here applicable. It prohibits registration as a trademark of a mark “which so resembles * * * a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion or mistake or to deceive the purchasers * * 15 U.S. [656]*656C. § 1052(d), 15 U.S.C.A. § 1052(d). Even though “Safeway” was not appellant’s “name” within the literal language of' the old statute, as we hold it is, it is plainly appellant’s “trade name” within the express language of the Lanham Act.
B. Stores is entitled to an injunction against Dunnell’s use of the words “Safe Way-” or “Safe-Way” or “Safe Way,” without the hyphen.
A paramount consideration in determining this equitable question is Dunnell’s appropriation in 1933 of these words and using them in block capital letters, with full knowledge that they then were so used on Stores’ 320 stores in Los Angeles, where Dunnell started his toilet seat cover business — a fact he at first denied and then admitted. Dunnell, with his eyes open, thus chose to seek the benefit of Stores’ vast expenditures for advertising on the chance 'that it might prove enjoinable.
Our controlling decision is Stork Restaurant v. Sahati, 9 Cir., 166 F.2d 348, 363, and the cases there cited. That case, reversing the same district court’s decision, was decided after the judgment in the district court in the instant case.
We there held that the use of the trade-mark of and name “Stork, Club” by a small restaurant in San Francisco could be enjoined by the “Stork Restaurant, Inc.,” a New York corporation owning a widely advertised restaurant in New York City. There no real competition in .the restaurant business was shown. There, as here, the defendant sought to maintain his burden of proof off laches in ■the plaintiff. Plaintiff showed the mailing of protesting letters and defendant contested their receipt. We held the contention of absence of protest immaterial, stating “ * * * we hold that in a case of this -type laches is no defense.” We there cited, 166 F.2d, at. page 363, as the federal law the statement in McLean v. Fleming, 96 U.S. 245, 257, 24 L.Ed. 828, “ ‘Acquiescence of long standing is proved in this case, and inexcusable laches in seeking redress, which show beyond all doubt that the complainant was not entitled to an account nor to a decree for gains or profits; but infringement having been proven, showing that the injunction was properly ordered, he is entitled to the costs in the Circuit Court; * * (Emphasis supplied.)”
Nor has Dunnell maintained his burden of proof of an estoppel. Stores’ letter to Dunnell of June 29, 1944, supra, shows no encouragement in Dunnell’s use of the words "Safe Way” and none of Stores’ witnesses or any one else examined to show such encouragement or authority.
Even assuming the absence of any competition of toilet tissues and Dunnell’s covers for protection of toilet users, Stores is entitled to its injunction. The principle is well stated in Judge Learned Hand’s opinion in Yale Electric Corporation v. Robertson, 2 Cir., 26 F.2d 972, at page 974, “However, it has of recent years been recognized that a merchant may have a sufficient economic interest in the use of his mark outside the field of his own exploitation to justify interposition by a Court. His mark is his authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he borrows the owner’s reputation,, whose quality no longer lies within his own control. This is an injury, even though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of its possessor and creator, and another can use- it only as a mask. And so it has come to be recognized that, unless the borrower’s use is so foreign to the owner’s as to insure against any identification of the two, it is unlawful. Aunt Jemima Mills Co. v. Rigney, 2 Cir., 247 F. 407, L.R.A. 1918C, 1039; Akron-Overland v. Willys-Overland, 3 Cir., 273 F. 674, Vogue Co. v. Thompson-Hudson Co., 6 Cir., 300 F. 509; Wall v. Rolls-Royce, 3 Cir., 4 F.2d 333. * * * ”
The judgment ordering the registration of the trademark is reversed.
The judgment denying Stores’ claim for a permanent injunction against Dunnell’s use of the words Safe Way is reversed and the district court ordered to render such an injunction.