RYAN, J., delivered the opinion of the court, in which BATCHELDER, J., joined. MARTIN, C.J. (pp. 756-759), delivered a separate dissenting opinion.

RYAN, Circuit Judge.

OPINION

The Rock and Roll Hall of Fame and Museum, Inc., and The Rock and Roll Hall of Fame Foundation, Inc., filed suit against Charles Gentile and Gentile Productions, alleging various trademark and unfair-competition claims under state and federal law. The plaintiffs moved for and were granted a preliminary injunction, on the authority of Fed. R.Civ.P. 65. The defendants appeal, claiming, essentially, that the district court mistakenly concluded that the plaintiffs have shown a strong likelihood of succeeding on the merits. We agree and therefore vacate the entry of the preliminary injunction.

I.

In 1988, The Rock and Roll Hall of Fame Foundation registered the words, “THE ROCK AND ROLL HALL OF FAME,” as its service mark, on the principal register at the United States Patent and Trademark Office. In 1991, the Foundation commissioned I.M. Pei, a world famous architect, to design a facility for The Rock and Roll Hall of Fame and Museum in Cleveland, Ohio. Pei’s design was brought to life on the edge of Lake Erie, in the form of The Rock and Roll Hall of Fame and Museum which opened in September 1995.

In their briefs to this court, The Rock and Roll Hall of Fame and Museum and The Rock and Roll Hall of Fame Foundation have referred to themselves collectively as “the Museum.” Throughout the remainder of this opinion, we will do the same.

*751The Museum states that its building design is “a unique and inherently distinctive symbol of the freedom, youthful energy, rebellion and movement of rock and roll music.” Whatever its symbolism, there can be no doubt that the Museum’s design is unique and distinctive. The front of the Museum is dominated by a large, reclining, triangular facade of steel and glass, while the rear of the building, which extends out over Lake Erie, is a striking combination of interconnected and unusually shaped, white buildings. On May 3, 1996, the State of Ohio approved the registration of the Museum’s building design for trademark and service-mark purposes. The Museum has similar applications pending with the United States Patent and Trademark Office.

Charles Gentile is a professional photographer whose work is marketed and distributed through Gentile Productions. In the spring of 1996, Gentile began to sell, for $40 to $50, a poster featuring a photograph of the Museum against a colorful sunset. The photograph is framed by a black border. In gold lettering in the border underneath the photograph, the words, “ROCK N’ ROLL HALL OF FAME,” appear above the smaller, but elongated word, “CLEVELAND.” Gentile’s signature appears in small blue print beneath the picture of the building. Along the right-hand side of the photograph, in very fine print, is the following explanation: “©1996 Gentile Productions ... Photographed by: Charles M. Gentile[;] Design: Division Street Design[;] Paper: Mead Signature Gloss Cover 80# [;] Printing: Custom Graphics Inc.[;] Finishing: Northern Ohio Finishing, Inc.”

In reaction to Gentile’s poster, the Museum filed a five-count complaint against Gentile in the district court. The Museum’s complaint contends that the Museum has used both its registered service mark, “THE ROCK AND ROLL HALL OF FAME,” and its building design as trademarks, and that Gentile’s poster infringes upon, dilutes, and unfairly competes with these marks. The Museum’s somewhat unusual claims regarding its building design, then, are quite unlike a claim to a service-mark right in a building design that might be asserted to prevent the construction of a confusingly similar building.

Specifically, count one of the Museum’s complaint alleges trademark infringement, in violation of 15 U.S.C. § 1114(1). Count two alleges unfair competition, false or misleading representations, and false designation of origin, in violation of 15 U.S.C. § 1125(a). Count three alleges dilution of trademarks, in violation of 15 U.S.C. § 1125(c) and Ohio common law. Counts four and five allege unfair competition and trademark infringement under Ohio law.

The Museum sought a preliminary injunction and the district court held a hearing on the motion. It is clear from a review of the Museum’s motion and the hearing transcript that, whatever the scope of the Museum’s complaint, the Museum’s request for a preliminary injunction was based on the theory: (1) that the Museum has used both its building design and its service mark, “THE ROCK AND ROLL HALL OF FAME,” as trademarks; and (2) that both the photograph of the Museum and the words identifying the Museum in Gentile’s poster are uses of the Museum’s trademarks that should be enjoined because they are likely to lead consumers to believe that Gentile’s poster is produced or sponsored by the Museum.

Thus, in its motion, the Museum argued that, because Gentile is “using the Museum’s trademarks on posters in a manner which reflects a deliberate attempt to confuse, mislead and • deceive the public into believing that the posters are affiliated with the Museum, ... [t]he Museum has an extremely strong probability of success on the merits of its claims for trademark infringement and unfair competition.” Similarly, at the hearing, the Museum stated only that its motion was “about trademark infringement, [section] 43(a), violations of the Lanham Act in passing off,” although its complaint was broader. Accordingly, the district court explained to Gentile that he needed to respond only to the Museum’s arguments in support of its motion, not its entire complaint.

The Museum submitted several exhibits in support of its motion. Of particular concern in the present dispute is a poster the Museum sells for $20. Although the Museum’s poster, like Gentile’s, features a photograph of the Museum at sunset, the photographs of *752the building in the two posters are very different. Gentile’s photograph is a ground-level, close-up view of the Museum taken at a time when the building appears to be closed. It is an artistically appealing photograph of the Museum and virtually nothing else. In contrast, the Museum’s poster features a photograph of the Museum, taken from an elevated and considerably more distant vantage point, on the Museum’s opening night, when red carpet stretched from the Museum’s front doors, and interior lights highlighted its dramatic glass facade. There is a great deal of detail in the foreground of the Museum’s photograph including the full esplanade in front of the building, and even a portion of the highway adjacent to the property. It, too, is an artistically pleasing photograph of the Museum and its surrounding environment, but it is a very different picture than Gentile’s.

The Museum’s poster is framed by a white border, in which the words, “The Rock and Roll Hall of Fame and Museum — Cleveland,” appear beneath the photograph. To the left of these words is a small circular designation, which appears to be a trademark (the “composite mark”). In the center of this composite mark is a triangle formed by six lines fanning out from a single point. The triangle is intersected by three horizontal lines, contains two dots running vertically, and may be intended to be evocative of the Museum’s building design. In a circle around this triangular design are the words, “ROCK AND ROLL HALL OF FAME & MUSEUM.”

In addition to the parties’ posters, the record on appeal contains color copies of photographs of several items produced by the Museum; specifically, an advertisement for the Museum’s opening, a paper weight, several postcards, and two T-shirts. One postcard features the same photograph which appears in the Museum’s poster, one features a photograph of the rear of the Museum, and the third features six different close-up photographs of various parts of the Museum. One of the T-shirts bears a detailed drawing of the front of the Museum, a small drawing of the back of the Museum, the composite mark, and the words, “The house that rock built.” The other T-shirt features a similar drawing of the front of the Museum, set in front of several other buildings, and the words “Cleveland: Home of the Rock and Roll Hall of Fame + Museum.” The paperweight is a “snow dome” that contains a three-dimensional rendition of the Museum, and bears the words, “Rock and Roll Hall of Fame,” on its base. The advertisement for the opening night concert features a man reaching skyward with one of the Museum’s paperweights. The composite mark appears on the bottom of the advertisement, and the triangular design from that mark appears on the left breast of the man holding the paperweight.

The Museum also submitted affidavits in support of its motion. In particular, Robert Bosak, the controller of the Museum, averred that “the Museum has used versions of the building shape trademark on T-shirts and a wide variety of products, including posters, since as early as June, 1993.” According to his review of sales reports from the Museum’s store, merchandise “featur[ing] the building shape have been among [the Museum’s store’s] top selling items.” Rachel Schmelzer, an employee in the Museum’s licensing and sponsorship department, averred that she informed Gentile, on more than one occasion before Gentile began selling his poster, that the Museum considered Gentile’s poster to be an infringing trademark use of the Museum’s building design.

On May 30, 1996, the district court concluded that the Museum had “shown a likelihood of success in proving its federal and state claims,” and it granted the Museum’s motion for a preliminary injunction. Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 934 F.Supp. 868, 872-73 (N.D.Ohio 1996). The district court explained, inter alia, that

[a]s a result of the extensive advertising and promotional activities involving the [Museum’s] “ROCK AND ROLL HALL OF FAME” and building design trademarks, the public has come to recognize these trademarks as being connected with or sold by the Museum, its official licensees and/or official sponsors.

Id. at 871. The district court found that the Museum’s building design was a fanciful *753mark, and that Gentile’s use of the Museum’s building design and the words, “ROCK N’ ROLL HALL OF FAME,” was likely to cause confusion. Id. at 871-72. It then determined that the balance of equities favored granting the injunction, and it ordered Gentile to refrain from further infringements of the Museum’s trademarks and to “deliver ... for destruction all copies of defendants’ poster in their possession.” Id. at 872-73.

II.

We review a district court’s decision to grant a preliminary injunction for abuse of discretion. See Sandison v. Michigan High Sch. Athletic Ass’n, 64 F.3d 1026, 1030 (6th Cir.1995). When considering a motion for a preliminary injunction, the district court should consider four factors: (1) whether the movant has a strong likelihood of success on the merits; (2) whether the movant would suffer irreparable injury without the injunction; (3) whether issuance of the injunction would cause substantial harm to others; and (4) whether the public interest would be served by issuance of the injunction. Id. “The district court’s determination will be disturbed only if the district court relied upon clearly erroneous findings of fact, improperly applied the governing law, or used an erroneous legal standard.” Blue Cross & Blue Shield Mut. of Ohio v. Blue Cross and Blue Shield Ass’n, 110 F.3d 318, 322 (6th Cir.1997).

Gentile argues that the district court abused its discretion when it concluded that the Museum had shown a likelihood of success on the merits for purposes of the preliminary injunction. Specifically, Gentile argues that his photograph of the Museum is not a trademark use of the Museum’s building design. Gentile also argues that his use of the words, “ROCK N’ ROLL HALL OF FAME,” is a non-trademark use which simply and accurately describes his non-infringing photograph of the Museum. Because we agree that the record before us does not establish a strong likelihood that Gentile has made an infringing trademark use of the Museum’s name or building design, we will vacate the preliminary injunction.

A trademark is a designation, “any word, name, symbol, or device, or any combination thereof,” which serves “to identify and distinguish [the] goods [of the mark’s owner] ... from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. Although some marks are classified as inherently distinctive and therefore capable of protection, see generally Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69, 112 S.Ct. 2753, 2757-58, 120 L.Ed.2d 615 (1992), it is not the case that all inherently distinctive symbols or words on a product function as trademarks. See, e.g., Self-Realization Fellowship Church v. Ananda Church of Self-Realization, 59 F.3d 902, 906-07 (9th Cir.1995); Clairol Inc. v. Gillette Co., 389 F.2d 264, 269-71 & n. 16 (2d Cir.1968); see generally 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 3:3 (4th ed.1997). Rather, in order to be protected as a valid trademark, a designation must create “a separate and distinct commercial impression, which ... performs the trademark function of identifying the source of the merchandise to the customers.” In re Chemical Dynamics, Inc., 839 F.2d 1569, 1571 (Fed.Cir.1988); see also 1 J. McCarthy § 3:3.

It is well established that “[t]here is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed.” United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50-51, 63 L.Ed. 141 (1918). Thus, whether alleging infringement of a registered trademark, pursuant to 15 U.S.C. § 1114(1), or infringement of an unregistered trademark, pursuant to 15 U.S.C. § 1125(a)(1), it is clear that a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark. See, e.g., Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 622-23 (6th Cir.1996), cert. denied, - U.S. -, 117 S.Ct. 770, 136 L.Ed.2d 715 (1997); Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100, 1105 (6th Cir.1991). In other words, the plaintiff must establish a likeli*754hood that the defendant’s designation will be confused with the plaintiffs trademark, such that consumers are mistakenly led to believe that the defendant’s goods are produced or sponsored by the plaintiff. See, e.g., Holiday Inns, 86 F.3d at 623. Although the parties have not discussed the Museum’s state-law claims, we note that trademark claims under Ohio law follow the same analysis. See Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 288 (6th Cir.1997).

At the hearing on the Museum’s motion, Gentile showed the district court a poster of an illustration of the Cleveland skyline, produced by another artist, that included the Museum as one building among many. Gentile also referred to a quilt or blanket which apparently depicts “all kinds of landmarks of Cleveland,” again including the Museum among several others. In response to these exhibits, the Museum stated that “they illustrate something [that the Museum does not] think ... [is] a problem because they show a whole collage of downtown buildings and scenes around Cleveland. That’s not what [the Museum is] trying to stop.” However, the Museum argued that Gentile’s poster features nothing but the Museum and a sunset. According to the Museum, Gentile’s production of his poster was like “going into a store, getting a bottle of [C]oke, taking a picture, [of it and] putting ... [C]oke underneath.”

Although we are mindful that we are called upon to settle only the present dispute, we have found the foregoing exchange from the hearing on the Museum’s motion a helpful guidepost for our discussion.

On the one hand, although Gentile’s exhibits, which depict the Museum as one landmark among others or as one of several buildings in the Cleveland lakefront skyline, present easier cases, their significance is consonant with our initial impression of Gentile’s poster. That is to say that, when we view the photograph in Gentile’s poster, we do not readily recognize the design of the Museum’s budding as an indicator of source or sponsorship. What we see, rather, is a photograph of an accessible, well-known, public landmark. Stated somewhat differently, in Gentile’s poster, the Museum’s building strikes us not as a separate and distinct mark on the good, but, rather, as the good itself.

On the other hand, the import of the Museum’s Coke bottle example is not lost upon us. Indeed, the Museum’s example is not entirely concocted, see Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183 (E.D.N.Y.1972), and we accept that a photograph which prominently depicts another person’s trademark might very well, wittingly or unwittingly, use its object as a trademark. However, after reviewing the record before us with this possibility in mind, we are not persuaded that the Museum uses its budding design as a trademark. Thus, we are not dissuaded from our initial impression that the photograph in Gentde’s poster does not function as a trademark.

The district court found that the Museum’s budding design is fanciful, that the Museum has used its budding design as a trademark, and that “the public has come to recognize [the Museum’s building design] trademark[ ] as being connected with or sold by the Museum.” Rock and Roll Hall of Fame, 934 F.Supp. at 871. There are several problems with these critical findings. First, we find absolutely no evidence in the record which documents or demonstrates public recognition of the Museum’s budding design as a trademark. Such evidence might be pivotal in this case, but it is lacking. Indeed, we are at a loss to understand the district court’s basis for this significant finding of fact.

Second, although no one could doubt that the Museum’s budding design is fanciful, it is less clear that a picture or a drawing of the Museum is fanciful in a trademark sense. Fanciful marks are usuady understood as “totally new and unique combinations] of letters or symbols” that are “invented or selected for the sole purpose of functioning as a trademark.” 1 J. McCarthy § 11:5. Although the plaintiffs “invented” the Museum, the Museum’s existence as a landmark in downtown Cleveland undermines its “fancifulness” as a trademark. A picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a service mark. Such a word is distinctive as a mark because it readdy appears to a consumer to have no other pur*755pose. In contrast, a picture of the Museum on a product might be more readily per-eeived as ornamentation than as an identifier of source.

We recognize, of course, that a designation may serve both ornamental and source-identifying purposes, see, e.g., WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1087 (6th Cir.1983), and this brings us to our principal difficulty with the Museum’s argument and the district court’s judgment. As we described swpra, although the Museum has used drawings or pictures of its building design on various goods, it has not done so with any consistency. As Bosak stated in his affidavit, “the Museum has used versions of the building shape trademark on ... a wide variety of products.” (Emphasis added.) Several items marketed by the Museum display only the rear of the Museum’s building, which looks dramatically different from the front. Drawings of the front of the Museum on the two T-shirts in the record are similar, but they are quite different from the photograph featured in the Museum’s poster. And, although the photograph from the poster is also used on a postcard, another postcard displays various close-up photographs of the Museum which, individually and perhaps even collectively, are not even immediately recognizable as photographs of the Museum.

In this regard, this ease is similar to those in which a party has claimed trademark rights in a famous person’s likeness. See, e.g., Pirone v. MacMillan, Inc., 894 F.2d 579, 588 (2d Cir.1990); Estate of Presley v. Russen, 513 F.Supp. 1339, 1363-64 (D.N.J.1981). In Estate of Presley, the court concluded that, although one particular image of Presley had been used consistently as a mark, “the available evidence [did] not support [the estate’s] broad position” that all images of Presley served such a function. Estate of Presley, 513 F.Supp. at 1364. Similarly, in Pirone, the court stated that “[e]ven if [the plaintiff] could show that it has established a trademark in a particular pictorial representation of [Babe] Ruth, such a trademark would not cover all photos taken of Ruth during his career, no matter how dissimilar.” Pirone, 894 F.2d at 583. The court explained that, given that “Ruth was one of the most photographed men of his generation, ... [i]t cannot be said that every photograph of Ruth serves [the] origin-indicating function” of a trademark. Id.

In reviewing the Museum’s disparate uses of several different perspectives of its building design, we cannot conclude that they create a consistent and distinct commercial impression as an indicator of a single source of origin or sponsorship. To be more specific, we cannot conclude on this record that it is likely that the Museum has established a valid trademark in every photograph which, like Gentile’s, prominently displays the front of the Museum’s building, “no matter how dissimilar.” Even if we accept that consumers recognize the various drawings and pictures of the Museum’s building design as being drawings and pictures of the Museum, the Museum’s argument would still fall short. Such recognition is not the equivalent of the recognition that these various drawings or photographs indicate a single source of the goods on which they appear. Consistent and repetitive use of a designation as an indicator of source is the hallmark of a trademark. Although the record before us supports the conclusion that the Museum has used its composite mark in this manner, it will not support the conclusion that the Museum has made such use of its building design.

In the end, then, we believe that the district court abused its discretion by treating the “Museum’s building design” as a single entity, and by concomitantly failing to consider whether and to what extent the Museum’s use of its building design served the source-identifying function that is the essence of a trademark. As we have noted, we find no support for the factual finding that the public recognizes the Museum’s building design, in any form, let alone in all forms, as a trademark. In light of the Museum’s irregular use of its bufiding design, then, we believe that it is quite unlikely, on the record before us, that the Museum will prevail on its claims that Gentile’s photograph of the Museum is an infringing trademark use of the Museum’s budding design.

Our discussion of the district court’s treatment of the Museum’s budding design would, of course, be much ado about nothing were *756we persuaded that Gentile’s use of the words, “ROCK N’ ROLL HALL OF FAME— CLEVELAND,” was sufficient to sustain the injunction. We are not, however, persuaded. In the first place, the district court did not give separate treatment to Gentile’s use of the Museum’s building design — the photograph of the building itself — and to Gentile’s use of words approximating the Museum’s registered service mark. Thus, we cannot be certain how the district court would have viewed the use of the words in the event that the photograph was found to be non-infringing. For purposes of our review, then, we are not free to sustain the preliminary injunction on the theory that it would have been no abuse of discretion had the district court concluded that Gentile’s use of the words, “ROCK N’ ROLL HALL OF FAME,” was alone likely to constitute a trademark violation. The district court made no, such finding.

Moreover, we think Gentile’s use of these words may very well constitute a fair use of the Museum’s registered service mark, pursuant to 15 U.S.C. § 1115(b)(4). Section 1115(b)(4) permits a party to defend an infringement charge on the ground

[t]hat the use of the ... term, or device charged to be an infringement is a use, otherwise than as a mark ... of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.

Although there can be no doubt that Gentile’s use of the Museum’s service mark presents an unusual case, his use of the words, “ROCK N’ ROLL HALL OF FAME,” would be nothing more than a description of his own “good,” in the event that the Museum fails to prove that Gentile’s photograph makes an infringing use of the Museum’s building design. See, e.g., WCVB-TV v. Boston Athletic Ass’n, 926 F.2d 42, 46 (1st Cir.1991); Pirone, 894 F.2d at 584. The critical question, then, will be whether Gentile’s use of the Museum’s service mark was made fairly and in good faith, and whether his use was “otherwise than as a [tradejmark.” With regard to this latter inquiry, the answer will essentially turn on whether consumers view the words, “ROCK N’ ROLL HALL OF FAME,” as a label for Gentile’s photograph, or as an indicator that Gentile’s photograph originated with or was sponsored by the Museum. As always, the touchstone will be the likelihood of consumer confusion.

To summarize, then, we find that the district court did not properly consider the validity of the Museum’s claim to trademark rights in its building design. In light of this error, we cannot be certain that the district court properly assessed Gentile’s fair use defense in relation to his use of the Museum’s service mark. Thus, we are compelled to conclude that the district court abused its discretion when it concluded that the Museum had shown a strong likelihood of proving its trademark infringement claims. Indeed, on the record before us, we are left with grave doubts as to the likelihood of the Museum’s success on these claims.

III.

For all of the foregoing reasons, we VACATE the judgment of the district court, and REMAND for further consideration.

BOYCE F. MARTIN, Jr., Chief Judge,

dissenting.

I cannot imagine a more cogent explanation of the meaning of a trademark than that offered by Justice Holmes in Beech-Nut Co. v. Lorillard Co., 273 U.S. 629, 633, 47 S.Ct. 481, 482, 71 L.Ed. 810 (1927).

A trademark is not only a symbol of an existing good will, although it is commonly thought of only as that. Primarily it is a distinguishable token devised or picked out with the intent to appropriate it to a particular class of goods and with the hope that it will come to symbolize good will.

Id. Because I believe that the Museum has devised a distinguishable token, appropriated that token to a particular class of goods and plainly demonstrated quantifiable good will, I respectfully dissent.

The majority could have scarcely chosen a better analogy to adopt than that of the Coca-Cola bottle. Doubtless no symbol in the world is so readily recognized. This famous form serves two purposes: it allows the consumer to identify immediately what’s *757inside the bottle; it also serves a utilitarian function by containing the Coca-Cola Company’s primary product — Coca-Cola. Just as with a Coca-Cola bottle, more than one mark can serve to identify a single item. For example, the words “Coca-Cola”, the signature script and the distinctive bottle shape are all trademarked. See, e.g., Coca-Cola Co. v. Alma-Leo U.S.A., Inc., 719 F.Supp. 725, 726 (N.D.Ill.1989) (noting trademark of bottle shape); Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 1186-87 (E.D.N.Y.1972) (noting trademarks in product name and stylized script). All can be found on one product.

The Coke bottle analogy is significant for another reason. The trademarked shape of the bottle has three dimensions. Regardless of the angle from which it is viewed, it is still recognizable as a Coke bottle. When a Coke bottle is photographed it loses a dimension, but the subject of the picture remains recognizable as one of a trademarked, three dimensional figure. If a photograph of a trademark — for example, one of a Coke bottle — can be sold by the owner of the trademark in a poster form, that poster naturally must be recognized as one of the owner’s “goods”, albeit a derivative good.

In this case, the physical structure of the Museum, the I.M. Pei-designed building, is “the Coke bottle.” Webster’s defines token as “an outward sign or expression; symbol, emblem.” Webster’s New Collegiate Dictionary 1227 (1977). The Museum claims, as I am persuaded, that its building symbolizes something unique and protectable under the trademark laws of the United States. What that something is will arouse different feelings in whomever views the Museum, whether in person or through artists’ renderings or photographs. Beyond embodying “the freedom, youthful energy, rebellion and movement of rock and roll music,” the Museum building serves a utilitarian function. Like the Coke bottle, the building is also a container. Instead of containing a soft drink, the Museum envelops an array of tangible and intangible elements. It embraces nostalgia; it shelters memorabilia from one of this century’s cardinal art forms; it also harbors a bazaar selling snow domes and postcards, T-shirts, baseball caps, and posters — souvenirs for the pilgrims of popular culture. It is this amalgam, of which posters are but a part, that is “the good itself.” In short, it is the Coca-Cola in the bottle.

Nobody disputes that the Museum is “unique and distinctive.” I.M. Pei may well be the only living architect whose name would be recognized by more than a handful of Americans. Were the Rock and Roll Foundation to have sought only an attic in which to store its artifacts, it might have leased a warehouse with substantially more space at a fraction of the cost.

Moreover, an effort by the Museum to register a warehouse as a mark would have failed. As we have previously said, a purely functional design is incapable of serving as a trademark. WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1087 (6th Cir.1983). The Museum enabled its building to serve as its mark by constructing a signature edifice so unique as to offer instant recognizability. This is no underground operation; as a tourist destination, and a non-profit one at that, perpetual promotion is the Museum’s lifeline. Through the marketing of the tehotchkes described above, the Museum not only garners revenue, it also helps to expand the renown of the Rock and Roll Hall of Fame. As much as admission receipts, merchandise sales — some $15 to 20 million annually for the Museum- — quantify the “good will” of which Justice Holmes wrote.

This controversy is before us because two parties are selling what is substantially an identical product. See Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1174 (2d Cir.1976). “The only competition between the parties, fair or unfair, can be that where some common market exists for their respective products. The products need not be identical; it is enough that they are so closely related as to confuse consumers in the marketplace.” Id. The majority concludes that Gentile’s use of the caption “ROCK AND ROLL HALL OF FAME” accompanying the photograph of the Museum “would be nothing more than a description of his own ‘good,’ ” and that, “in Gentile’s poster, the Museum’s building strikes us not as a separate and distinct mark on the good, but, *758rather, as the good itself.” Such a conclusion exposes what I see as the flaw in the majority’s premise. Gentile’s poster is not a photograph of “the good,” but rather, a photograph of “the mark.” Applying the majority’s reasoning to the issue before us, the Museum sells buildings; Gentile sells photographs of buildings. I am certain that regardless of who produces it, the good is the poster.

The majority is unable to “conclude ... that the Museum has established a valid trademark in every photograph which, like Gentile’s, prominently displays the front of the Museum’s building, ‘no matter how dissimilar.’ ” But who disputes this? Not the Museum. It is not Gentile’s photograph of the building that infringes on the Museum’s mark; it is his use of that photograph — and more precisely, his use of the protected mark that unfairly competes with the Museum. The Museum does not imply that a poster of the Cleveland skyline, of which the building is now a part, would infringe upon the Museum’s mark. Certainly any visitor to the City of Cleveland could walk up and take a picture of the Museum. Any artist could sketch the building freely. Indeed, the Museum would be powerless to protest. These depictions are not “uses in commerce” until they are offered for sale. We reaffirmed in Esercizio v. Roberts, 944 F.2d 1235, 1243 (6th Cir.1991), that “[wjhere the copying by one party of another’s product is not done to deceive purchasers and thus derive a benefit from another’s name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out.”

Furthermore, not only may Gentile take a photograph of the building, he can sell a photograph of it — the Lanham Act only prevents him only from “using in commerce” his photograph of the trademark in such a way as to cause a “likelihood of confusion” in the market place. It is not our place to try to list, even if we could, every commercial possibility for the work of a professional photographer of obvious talent. Merely selling a poster of its own trademark does not give the Museum the right to enjoin every duplication of its mark, only those that compete directly with its own product in similar channels of commerce. See, e.g., Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 35 (1st Cir.1989)(acknowledging that trademarks create no “right in gross” yet confusing uses are en-joinable); Boston Professional Hockey v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir.1975) (holding duplication and sale of trademarked hockey team emblems as “products” violated Lanham Act).

Although the majority rejects the idea that the Museum “uses its building design as a trademark,” the plain meaning of the wording of the Lanham Act suggests otherwise. As the majority notes, the law provides no trademark protection absent that mark’s use in commerce. The statute provides:

[t]he term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(1) on goods when—

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto ... and

(B) the goods are sold or transported in commerce

15 U.S.C. § 1127 (1994)(emphasis added). The same section of the Act provides that

[t]he term “trademark” includes any word, name, symbol, or device, or any combination thereof—

(1) used by a person, or

(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,

to identify and distinguish his or her goods, including a unique product from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

15 U.S.C. § 1127 (1994).

The majority’s doubts that the Museum “use[d] its building as a trademark” can be answered by sequence of events in this case. *759The architect and building design were approved years before the Museum’s building came into being. According to the Museum, “versions of the building shape [were used] on T-shirts and a wide variety of products, including posters, since as early as June, 1993.” Such use predates the opening of the Museum by more than two years; the Museum would have then been not a public landmark, but a construction project. As properly noted by the majority, there can be no trademark without a dependent product. If the Museum was using its trademarks before the building was completed, what were its “goods”? The goods were the promotional material it published and sold, which announced to the public the coming of a place where not only could they measure their own lives by the evolution of rock music, they could also buy more promotional material to show for their visits. Whether viewed as a “service” or an intangible “good” any museum provides a place where the public can come to appreciate the theme promoted by the museum’s sponsors. As we have seen, however, provision of such an intangible need not be the museum’s exclusive good.

The majority is also troubled by the various “versions” of the Museum’s likeness. Yet, if as the majority concedes, the Museum building is unique and distinctive, should it matter from what angle the building is depicted? The building itself is fixed in location; any change in perspective depends on the viewer. Again, here the Coke bottle example is helpful. If Coca-Cola came in a ten-story high bottle, would the trademark enjoy any less protection? A photograph of that bottle would still be of a photograph of a trademark. The Coca-Cola Company could not only sell posters of its giant bottle, it could enjoin others from doing so. If a particular photograph of the bottle were not recognizable, that would not impair the protection of the bottle itself as a mark. If a photograph was not recognizable as one of a trademark, there would be no likelihood of confusion and thus no controversy to litigate.

The record includes official certificates for five trademarks and two service marks registered with the State of Ohio. All seven certificates describe the registered mark as being the “Rock and Roll Hall of Fame and Museum Building” or the “Rock and Roll Hall of Fame and Museum Building Shape.” Some version of the Museum’s shape appears in each of the exhibits of the T-shirts, snow dome, and posters supplied in the record. That the impressions of the building differ from product to product is not inconsistent with the mark’s registration.

The majority’s observation that “[a] picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a service mark,” could not be more accurate or less relevant. Moreover, I think such a deduction ignores the sound reasoning of the Supreme Court’s holding in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). In Qualitex, the plaintiffs distinctive green-gold color was held to be a valid trademark, even though it had a functional use beyond that of identifying the product. “Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, [the language of 15 U.S.C. § 1127] read literally, is not restrictive.” Qualitex, 514 U.S. 159, 162, 115 S.Ct. 1300, 1302-03 (1995).

There is no meaningful legal distinction between a three-dimensional and a two-dimensional trademark. I believe the Museum has a valid trademark in its building, and that a photographic image of the museum building could qualify as a trademark on merchandise. I do not read the Lanham Act to mean that simply because a trademark is also the subject of a poster it should enjoy any less protection.

I therefore respectfully dissent.

ARCHER, Circuit Judge.

This is an appeal from the grant of a summary judgment by the United States Patent and Trademark Office Trademark Trial and Appeal Board (board), Opposition No. 73,217 (January 13, 1989), dismissing the opposition of Larry Harmon Pictures Corporation (Harmon) to the application for registration by The Williams Restaurant Corporation (Williams) of the service mark BOZO’S for restaurant services. On the sole issue raised by Harmon’s opposition, the board held that Williams “satisfied the use in commerce requirement of Section 3” *663of the Lanham Trademark Act of 1946, 15 U.S.C. § 1053 (1988). We affirm.

I

The board found the following facts to be undisputed. Williams has operated BOZO’S pit barbecue restaurant in Mason, Tennessee, since 1932. Mason is about a 50 or 60 minute drive from Memphis, Tennessee, which is a large city and a major commercial center for the Mid-South region. The Memphis metropolitan statistical area comprises not only a portion of Tennessee, but also portions of Mississippi and Arkansas. As conceded by Harmon before the board, BOZO’S “restaurant is obviously popular with Memphis residents ... It is close enough (50-60 minutes) to make a pleasant outing from the city. Articles ... from Memphis newspapers and magazines also refer to the restaurant’s popularity with Memphis residents.” In addition, BOZO’S restaurant has been at least mentioned in publications originating in New York, New York; Washington, D.C.; Dallas, Texas; Gila Bend, Arizona; and Palm Beach, Florida. Further, according to the board’s opinion, “[tjhere is no dispute that BOZO’S restaurant services are rendered to interstate travelers” and Harmon “acknowledges that applicant’s restaurant ... serves some interstate travelers.”

The board concluded on the basis of these “undisputed facts” that Williams had made use of its service mark BOZO’S in a manner sufficient to satisfy the use in commerce requirement of Section 3 of the Lan-ham Act. The board, therefore, granted Williams’ motion for summary judgment and dismissed Harmon’s opposition. In doing so it stated that it “resolve[d] all factual disputes in favor of [Harmon]” and “construe^] all inferences to be drawn from established facts in the light most favorable to [Harmon].” The proper standard for considering a summary judgment motion was therefore applied. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 2513, 91 L.Ed.2d 202 (1986) (“The evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.”).1

II

The only issue in this appeal is whether the board correctly concluded that the “use in commerce” requirement set forth in Section 3 of the Lanham Act is satisfied by the service in a single-location restaurant of interstate customers. Harmon argues that the use in commerce requirement of Section 3 cannot be satisfied by a single-location restaurant, such as BOZO’S, that serves only a minimal number of interstate travelers. In support of its argument, Harmon relies on In re Bookbinder’s Restaurant, Inc., 240 F.2d 365, 44 CCPA 731, 112 USPQ 326 (1957), in which a single-location restaurant in Philadelphia was not permitted to register its service mark. Harmon further contends that if the Bookbinder’s rule — which it interprets to be that single-location restaurants, not located on an interstate highway, cannot be considered as rendering services in commerce — seems too restrictive, this court *664should adopt the test that a single-location restaurant is not entitled to register its service mark unless (1) it is located on an interstate highway, (2) at least 50% of its meals are served to interstate travelers, or (3) it regularly advertises in out-of-state media. We decline to circumscribe the statute in the manner suggested.

Section 1 of the Lanham Act provides that the “owner of a trade-mark used in commerce may apply to register his trademark under this chapter.” 15 U.S.C. § 1051 (1988) (emphasis added). Section 3 of the Act states that “service marks shall be registrable, in the same manner and with the same effect as are trade-marks.” 15 U.S.C. § 1053 (1988). In general, therefore, service marks must be “used in commerce” before they may be registered.

Section 45 of the Lanham Act provides the following definitions for the word “commerce” and the phrase “use in commerce:”

The word “commerce” means all commerce which may lawfully be regulated by Congress.

For purposes of this chapter a mark shall be deemed to be in use in commerce ... on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

15 U.S.C. § 1127 (1988) (emphasis added).

Congress has broad powers under the commerce clause of the United States Constitution, Art. 1, sec. 8, to regulate interstate commerce. In In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (CCPA 1977), this court’s predecessor observed that the Lanham Act represented a change in the scope of federal trademark jurisdiction and that in making the change “Rep. Lanham and his subcommittee,” and presumably the Congress, were “mindful of the broad scope of Congressional regulatory powers which the Supreme Court has sanctioned.” Id. at 810, 194 USPQ at 265. The CCPA stated:

In the Lanham Act, Congress set out what appears to be an unambiguous statement of the scope of federal trademark jurisdiction, namely, “all commerce which may lawfully be regulated by Congress.” 15 USC 1127 (1976). This language represents an obvious change from the phrasing of the former trademark acts, which phrasing expressly limited trademark jurisdiction to interstate and foreign commerce and commerce with Indians. [Footnote omitted.] The change clearly involves a broadening of jurisdiction.10

Silenus Wines, 557 F.2d at 809, 194 USPQ at 264-65.

Harmon’s position is based primarily on In re Bookbinder’s, but in that case the court’s decision reflects clearly the failure to prove any use in commerce. The court observed that “[t]he record indicates that appellant operates a single restaurant in Philadelphia, Pennsylvania, and the services relied on are rendered in that city,” and that “[t]here are no affidavits or testimony of record and the application states merely that the mark is used ‘for restaurant, catering and banquet services.’ ” 240 F.2d at 366, 368, 112 USPQ at 326, 328. The court also discounted as not probative the “unverified statement [by the applicant’s attorney] that the services were offered to customers and prospective customers in states adjoining Pennsylvania.” 240 F.2d at 368, 112 USPQ at 328.

In In re Gastown, Inc., 326 F.2d 780, 51 CCPA 876, 140 USPQ 216 (1964), decided seven years after Bookbinder’s, the CCPA again discussed the “use in commerce” requirement set forth in Section 3 of the Lanham Act. In Gastown, the appellant operated a chain of automobile and truck service stations, some of which were located on federal highways. Although the services rendered by the appellant were con*665fined to the State of Ohio, some of appellant’s customers had their legal situs in other states, were engaged in interstate commerce when served by appellant in Ohio, and were extended credit and billed in their respective domiciliary states. The court held that those circumstances established that the services had a direct effect on interstate commerce and were sufficient to show that applicant’s mark was used in commerce within the meaning of Sections 3 and 45 of the Lanham Act.

The Bookbinder’s and Gastown decisions are distinguishable from each other on the basis of the underlying evidence before the board in each case. See Gastown, 326 F.2d at 784, 140 USPQ at 218 (noting the deficiency in proof of interstate commerce in Bookbinder’s and stating that “[n]o weight ... was given to those unverified statements”). In Bookbinder’s, the evidence of record indicated that the applicant’s services were not “rendered in commerce” within the meaning of the Act. In Gastown, the opposite was true. 326 F.2d at 782, 140 USPQ at 217.

While the facts supporting Williams’ contention that its service mark is used in commerce are not as extensive, or as persuasive, as those in Gastown, we are convinced they are sufficient to satisfy the statutory requirement for registration. In Gastown, the court approved the Fifth Circuit’s observation that in enacting the Lanham Act “[i]t would seem that ... Congress intended to regulate interstate and foreign commerce to the full extent of its constitutional powers,” Gastown, 326 F.2d at 784, 140 USPQ at 218 (quoting the Fifth Circuit’s decision in Bulova Watch Co. v. Steele, 194 F.2d 567, 571, 92 USPQ 266, 269 (5th Cir.), aff'd, 344 U.S. 280, 73 S.Ct. 252, 97 L.Ed. 319 (1952)).

Again, in Silenus Wines, the CCPA pointed to the “broadened commerce provisions of the Lanham Act” (quoting the Supreme Court’s decision in Steele v. Bulova Watch Co., 344 U.S. at 287, 73 S.Ct. at 256) and stated that the changed language regarding use in commerce in the Lanham Act “clearly involves a broadening of jurisdiction.” 557 F.2d at 810, 194 USPQ at 265. The court also quoted from the Supreme Court’s decision in Wickard v. Filburn, 317 U.S. 111, 125, 63 S.Ct. 82, 89, 87 L.Ed. 122 (1942), as indicating the scope of Congressional regulatory powers that the Supreme Court had sanctioned prior to the passage of the Lanham Act. Moreover, the Silenus Wines court found support for the broadened trademark jurisdiction in other federal courts’ decisions which applied the infringement provisions of the Lanham Act:

Our Gastown decision and this opinion are further fortified by the manner in which other federal courts have treated these terms, “use in commerce” and “commerce,” when used in the infringement portion of the Lanham Act. [Footnote omitted.] Courts have uniformly held, in the infringement context, that “commerce” includes intrastate transactions that affect interstate or foreign commerce. [Footnote omitted.] We see no basis for the meaning of commerce in the registration context to be different from the meaning in the infringement context, particularly since the meanings both derive from the same definition in 15 USC 1127 (1976).

557 F.2d at 811-12, 194 USPQ at 266-67 (emphasis in original).

In Silenus Wines, the CCPA expressly rejected the position of the Patent and Trademark Office that the statute is ambiguous and that the various statements in legislative history “contradict and overshadow [the] statutory definition of commerce.” Id. 557 F.2d at 810-11, 194 USPQ at 265-66. The CCPA found instead that the Lanham Act contains “a clear and unambiguous definition of federal trademark jurisdiction” and that “with unambiguous language in a statute, it is improper to consider extrinsic sources like legislative history to raise ambiguities.” Id. (footnote omitted). It also noted that “[w]hile some of the other hearing participants appear to have taken a position contrary to the language of the statute, their opinions as to what the statute should have said will not be used to reverse clear, contrary language *666in the statute.” Id. at 811, 194 USPQ at 266.

Thus, our predecessor court whose decisions are binding on us, South Corporation v. United States, 690 F.2d 1368 (Fed.Cir.1982) (in banc), has unequivocally-held that the definition of commerce in the Lanham Act means exactly what the statute says, i.e., “all commerce which may lawfully be regulated by Congress.” In view of our precedent as to the scope of the use in commerce provision of the Lanham Act, we must reject Harmon’s contention that its suggested non-statutory limitations, i.e., location on an interstate highway, or 50% of the meals furnished to interstate travelers, or regular advertising in out-of-state media, should be imposed on the registration of a mark used by a single-location restaurant.

The record here established that the BOZO’S mark has been used in connection with services rendered to customers traveling across state boundaries. It is not required that such services be rendered in more than one state to satisfy the use in commerce requirement. See Gastown, 326 F.2d at 782-84, 140 USPQ at 217-18; see also In re Smith Oil Corp., 156 USPQ 62, 63 (TTAB 1967); 1 J. McCarthy, Trademarks and Unfair Competition, § 19:36.A at page 960 (2d ed. 1984). Harmon does not dispute that there has been some use in commerce of Williams’ mark. It contends only that the volume of such activity was less than Williams’ affidavit would indicate. Harmon, however, has produced no evidence to counter the proof of interstate activity by Williams, and its reliance on attorney arguments is similar to the situation in Bookbinder’s where such arguments were given no weight. See Bookbinder’s, 240 F.2d at 368, 112 USPQ at 216; Gastown, 326 F.2d at 784, 140 USPQ at 218.

We therefore reject Harmon’s argument that a certain increased threshold level of interstate activity is required before registration of the mark used by a single-location restaurant may be granted. The Lan-ham Act by its terms extends to all commerce which Congress may regulate. This court does not have the power to narrow or restrict the unambiguous language of the statute. Accordingly, we affirm the decision of the board.

AFFIRMED.

PAULINE NEWMAN, Circuit Judge,

dissenting.

This appeal raises questions of procedure and law, in both of which the Trademark Trial and Appeal Board erred. I respectfully dissent from this court’s endorsement of those errors.

I

Procedure

Particularly in an administrative proceeding of the Trademark Board, where the entire record is documentary and the factual premises few, there is scant benefit to imposing the strictures of Federal Rule 56 when there are material facts in dispute. The public and governmental interest in prompt and final resolution of disputes by administrative agencies is not served by too facile application of the rules governing summary judgment, with its required inferences and presumptions and burdens. See Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). Indeed, in this case the Board incorrectly adopted the movant’s version of disputed facts, and improperly shifted the burden of proof on summary judgment. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 106 S.Ct. 2505, 2511, 91 L.Ed.2d 202 (1986).

This case turns on the material and disputed fact of the effect on interstate commerce of the restaurant services at Bozo’s Bar-B-Que Restaurant of Mason, Tennessee. Finding this fact is predicate to determination of whether the restaurant services were “rendered in commerce” in terms of Section 45 of the Lanham Act:

15 U.S.C. § 1127 [Section 45],

>(: >J: >jc if %

*667The word “commerce” means all commerce which may lawfully be regulated by Congress.

* * * * * *

For purposes of this chapter, a mark shall be deemed to be in use in commerce—

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

It was undisputed that Bozo’s Restaurant services were not rendered in more than one state or in this and a foreign country. Thus the applicant was required to show that the services were “rendered in commerce”. In connection with that showing the parties disputed, inter alia, the factual issue of the extent of patronage of Bozo’s Restaurant by customers from other states. This issue was material to determination of whether the restaurant’s services were “rendered in commerce”.

The Board erred in accepting, on summary judgment, the movant’s version of this fact. The Board also erred in law, in holding that “some” contact with interstate commerce suffices to cause single-location restaurant services to be “rendered in commerce” within the meaning of the Lanham Act. The Board’s explanation, that it would be burdensome on the trademark examination system to ascertain the actual effect on commerce of such intrastate services, is insufficient reason to depart from the Lanham Act, with its balances, safeguards, and reasoned jurisprudence.

II

Single-Location Restaurant Services

Unlike the interstate movement of goods for purposes of trademark registration, the services of a single-location restaurant do not move across state borders. Federal registration of such service marks invokes other criteria, all of which relate to the extent of interstate contact of the local service establishment. With sufficient interstate contact, services provided entirely intrastate .may indeed satisfy the Lanham Act requirements. A useful body of deci-sional law has developed, providing legal analysis and guidance in the context of statutory intent and public policy.

A

Precedent is sparse for single-location restaurants. The only court decision cited is In re Bookbinder’s Restaurant, Inc., 240 F.2d 365, 44 CCPA 731, 112 USPQ 326 (1957), wherein the CCPA held that the applicant did not make a sufficient showing to establish that its services were rendered in commerce within the meaning of the Lanham Act, the court holding that attorney argument alone was insufficient. Id. 240 F.2d at 368, 112 USPQ at 328. In In re Smith Oil Corp., 156 USPQ 62 (TTAB 1967) the Board authorized registration of the service mark of a single-location restaurant located on an interstate highway, where “many, if not the majority” of the patrons were from out-of-state. Id. at 62.

For services other than restaurants there is substantial authority, accompanied by edifying analysis. In In re Gastown, 326 F.2d 780, 51 CCPA 876, 140 USPQ 216 (1964) federal registration was granted for the service mark of a chain of automobile and truck service stations located only in Ohio; the CCPA held that the location of some of these stations on interstate highways, the frequent patronage by out-of-state vehicles and persons engaged in interstate commerce, the road service provided to disabled vehicles from out-of-state, and the extension of credit and out-of-state billing, were sufficient to show that the services rendered had a “direct effect” on commerce. Id. 326 F.2d at 784, 140 USPQ at 218.

In In re Silenus Wines, Inc., 557 F.2d 806, 194 USPQ 261 (CCPA 1977) the CCPA discussed its holding in Gastown, explaining that a service mark is used in commerce when the services “directly affect interstate commerce”. Id. 557 F.2d at 808 & n. 3, 194 USPQ at 263 & n. 3. The court *668stated that such direct effect requires that two elements pertain, i.e., “when the services are sold intrastate to persons moving in interstate commerce, and the services are of the type necessary for the accomplishment of the interstate commerce.” Id. The court held that Silenus Wines’ trademark was used in commerce because it was affixed to bottles of wine that were imported from France and sold intrastate, remarking that “appellant’s sale within Massachusetts was so intimately involved with foreign commerce as to become a ‘use in commerce’ as defined in the Lanham Act”. Id. at 809, 194 USPQ at 264. As applied to the case at bar, I can not agree with the panel majority that Silenus Wines supports a broadened scope of the Lanham Act.

To the contrary, in accord with the Silenus Wines discussion of the criteria for service mark registration, the Board refused registration of the service mark of a beauty shop, In re Conti, 220 USPQ 745 (TTAB 1983), and a service mark for housing development and real estate services, In re U.S. Home Corp. of Texas, 199 USPQ 698, recon. denied, 201 USPQ 602 (TTAB 1978). In Conti the Board rejected the applicant’s argument that its local beauty salon services were rendered in commerce for purposes of the Lanham Act because it was a public accommodation regulable under the Civil Rights Act. 220 USPQ at 747. In U.S. Home the Board rejected the argument that because the real estate services were governed by the Federal Fair Housing Act that bars discrimination in housing, the services were rendered in commerce for purposes of the Lanham Act. Id., 199 USPQ at 701-02. These cases correctly implement the premise that the criterion for registration under the Lanham Act is whether the services are rendered in commerce.

B

Federal service mark registration is a statutory grant, enlarging common law rights. The requirement of the words “rendered in commerce” is of carefully delineated scope, and is not identical to the scope of different words in other statutes. See the discussion in United States v. Gillies, 851 F.2d 492, 493, 494 (1st Cir.), cert. denied, 488 U.S. 857, 109 S.Ct. 147, 102 L.Ed.2d 119 (1988), of such statutory usages as “in commerce”, “engaged in commerce”, and “affecting commerce”. Thus in U.S. Home the Board correctly held that the effect of prohibited discrimination on commerce does not mean that the accompanying local service mark is registrable under the Lanham Act. These are different issues, and the issue of applicability of the Lanham Act turns on whether Congress intended to authorize nation-wide registration of the service marks of local restaurants when Congress used the phrase “services ... rendered in commerce”; not whether it has the power to do so under the Constitution.

The distinction between the power to legislate, and the intended scope of a specific act of Congress, pervades judicial decisions. The Supreme Court summarized the truism that not all legislation based on the Commerce Clause invokes the full power of Congress:

The phrase “in commerce” does not, of course, necessarily have a uniform meaning whenever used by Congress.

United States v. American Building Maintenance Industries, 422 U.S. 271, 277, 95 S.Ct. 2150, 2155, 45 L.Ed.2d 177 (1975) (holding that the usage “engaged in commerce” of the Clayton Act was not intended to be coextensive with the reach of congressional power under the Commerce Clause, and was intentionally narrower than the usage “affecting commerce”).

Thus the determination of how much interstate contact is required to transform a single-location restaurant’s local services into services rendered in commerce must be decided in view of the statute governing federal service mark registration. Congress was not silent as to its intent that intrastate commerce shall be excluded. The legislative history of the Lanham Act clearly shows the purpose to deny federal registration to marks for “local matters *669that affect or hamper interstate commerce”:

Senator PEPPER: Mr. Kelley [testifying for the Federal Trade Commission] ... would you mind suspending at this point so that we may get a statement from Miss [Daphne] Robert [testifying for the American Bar Association] as to whether it is her opinion that it is the intent of Congress that this bill shall apply to any sort of intrastate commerce?

Mr. KELLEY: Yes, Sir.

Miss ROBERT: That is not my understanding of it, Senator.

Senator PEPPER: It is your understanding that it is the intent of the bill, and if enacted will be the intent of Congress, to apply only to commerce among the States?

Miss ROBERT: That is my understanding — and foreign commerce.

Senator PEPPER: Very well. Is that the general opinion of the people who are here today as proponents of it? * * *

Senator PEPPER: I should like the record to show that, by their silence, those who are here today as proponents of the bill have agreed to the statement of [Congressman] Lanham, the author of the bill, and of Miss Robert, who has been regarded as one of the able spokesmen for it, that it is the intention of the bill to apply only to commerce among the States and to foreign commerce.

Mr. KELLEY: And not to local matters that affect or hamper interstate commerce. That is the point, I think.

Senator PEPPER: That is correct.

Hearings on HR. 82 before a Subcommittee of the Senate Committee on Patents, 78th Cong., 2d Sess. at 138 (1944).

Thus the courts and the trademark registration authorities have required, for registration of local service marks, more than “some” contact with interstate commerce. Shortly after enactment of the Lanham Act, the Assistant Commissioner for Trademarks, stating that the Act required that registrable services be “actively rendered in interstate commerce”, denied federal registration to the service mark of an automobile paint shop despite its location on an interstate highway serving cars with out-of-state license plates and its advertising in newspapers with interstate circulation. In re Gill, 87 USPQ 274, 275 (Comm’r Pat. 1950). Subsequent rulings did not depart from this standard.

C

The Board held that the provision at Bozo’s Bar-B-Que Restaurant of services to some interstate travellers, accompanied by a few free mentions in out of state publications, satisfied the "rendered in commerce” requirement of the Lanham Act.

The parties disputed the extent of interstate patronage, the applicant estimating that fifteen percent of its customers were from out-of-state, and the opposer observing that during a busy lunchtime there were no cars at all with out-of-state licenses. Bozo’s Restaurant had received four or five mentions by newspaper columnists in other states and in a cookbook, but all but one of these instances occurred after the filing date of the application for federal registration. Use in commerce, to support a trademark application, must be made before the filing date of the application. 15 U.S.C. § 1051(a) [Section 1 Lanham Act].

Further, an unsolicited mention in an article is not “use” in commerce. Such evidence has served with varying success to support a claim to priority, but not to support registration. See Old Swiss House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1130, 1133, 196 USPQ 808, 810 (CCPA 1978) (references to a mark “buried in the body of the articles” is “not the type of public exposure of a mark that would be expected to have any significant impact on the purchasing public.”) The Board erred in relying on this evidence.

Other factual circumstances that were generally undisputed add weight to the strictly local nature of Bozo’s Restaurant: It was not on an interstate highway or near a state line. It was not listed in any travel guide. It was not listed in any restaurant guide. It was not advertised in any out-of-*670state media. It had no liquor license, accepted no credit cards, and took no reservations. It was closed on Sundays.

Even if the rules governing summary judgment were correctly ignored by the Board, these facts do not meet the threshold criterion of services “rendered in commerce”, as defined by law and policy.

This court can not ignore the potential impact on all commerce of authorizing national registration of local marks based on reduced standards for determining use in commerce: the issue on which Senator Pepper sought assurance from Congressman Lanham and Miss Robert. The Lanham Act does not and need not apply to predominantly local services. The state trademark registrations of fifty states are designed for this purpose.

I would reverse the Board’s grant of summary judgment, and remand for development of an adequate evidentiary record and application of the correct law to the found facts.

LUMBARD, Circuit Judge.

The principal question is whether the plaintiff, a wholesale distributor of doughnuts and other baked goods under its federally registered trademarks “Dawn” and “Dawn Donut,” is entitled under the provisions of the Lanham Trade-Mark Act to enjoin the defendant from using the mark “Dawn” in connection with the retail sale of doughnuts and baked goods entirely within a six county area of New York State surrounding the city of Rochester. The primary difficulty arises from the fact that although plaintiff licenses purchasers of its mixes to use its trademarks in connection with the retail sales of food products made from the mixes, it has not licensed or otherwise exploited the mark at the retail level in defendant’s market area for some thirty years.

We hold that because no likelihood of public confusion arises from the concurrent use of the mark in connection with retail sales of doughnuts and other baked goods in separate trading areas, and because there is no present likelihood that plaintiff will expand its retail use of the mark into defendant’s market area, plaintiff is not now entitled to any relief under the Lanham Act, 15 U.S.C.A. § 1114. Accordingly, we affirm the district court’s dismissal of plaintiff’s complaint.

This is not to say that the defendant has acquired any permanent right to use the mark in its trading area. On the contrary, we hold that because of the effect of the constructive notice provision of the Lanham Act, should the plaintiff expand its retail activities into the six county area, upon a proper application and showing to the district court, it may enjoin defendant’s use of the mark.

With respect to defendant’s counterclaim to cancel plaintiff’s registration on the ground that its method of licensing its trademarks violates the Lanham Act, a majority of the court holds that the district court’s dismissal of defendant’s counterclaim should be affirmed. They conclude that the district court’s finding that the plaintiff exercised the degree of control over the nature and quality of the products sold by its licensees required by the Act was not clearly erroneous, particularly in view of the fact that the *361defendant had the burden of proving its claim for cancellation. I dissent from this conclusion because neither the finding of the trial judge nor the undisputed evidence in the record indicates the extent of supervision and control actually exercised by the plaintiff.

We are presented here with cross-appeals from a judgment entered by the District Court for the Western District of New York dismissing both plaintiff’s complaint for infringement of its federally registered trademarks and defendant’s counterclaim to cancel plaintiff’s federal registrations.

Plaintiff, Dawn Donut Co., Inc., of Jackson, Michigan since June 1, 1922 has continuously used the trademark “Dawn” upon 25 to 100 pound bags of doughnut mix which it sells to bakers in various states, including New York, and since 1935 it has similarly marketed a line of sweet dough mixes for use in the baking of coffee cakes, cinnamon rolls and oven goods in general under that mark. In 1950 cake mixes were added to the company’s line of products. Dawn’s sales representatives call upon bakers to solicit orders for mixes and the orders obtained are filled by shipment to the purchaser either directly from plaintiff’s Jackson, Michigan plant, where the mixes are manufactured, or from a local warehouse within the customer’s state. For some years plaintiff maintained a warehouse in Jamestown, New York, from which shipments were made, but sometime prior to the commencement of this suit in 1954 it discontinued this warehouse and has since then shipped its mixes to its New York customers directly from Michigan.

Plaintiff furnishes certain buyers of its mixes, principally those who agree to become exclusive Dawn Donut Shops, with advertising and packaging material bearing the trademark “Dawn” and permits these bakers to sell goods made from the mixes to the consuming public under that trademark. These display materials are supplied either as a courtesy or at a moderate price apparently to stimulate and promote the sale of plaintiff’s mixes.

The district court found that with the exception of one Dawn Donut Shop operated in the city of Rochester, New York during 1926-27, plaintiff’s licensing of its mark in connection with the retail sale of doughnuts in the state of New York has been confined to areas not less than 60 miles from defendant’s trading area. The court also found that for the past eighteen years plaintiff’s present New York state representative has, without interruption, made regular calls upon bakers in the city of Rochester, N. Y., and in neighboring towns and cities, soliciting orders for plaintiff’s mixes and that throughout this period orders have been filled and shipments made of plaintiff’s mixes from Jackson, Michigan into the city of Rochester. But it does not appear that any of these purchasers of plaintiff’s mixes employed the plaintiff’s mark in connection with retail sales.

The defendant, Hart Food Stores, Inc., owns and operates a retail grocery chain within the New York counties of Monroe, Wayne, Livingston, Genesee, Ontario and Wyoming. The products of defendant’s bakery, Starhart Bakeries, Inc., a New York corporation of which it is the sole stockholder, are distributed through these stores, thus confining the distribution of defendant’s product to an area within a 45 mile radius of Rochester. Its advertising of doughnuts ahd other baked products over television and radio and in newspapers is also limited to this area. Defendant’s bakery corporation was formed on April 13, 1951 and first used the imprint “Dawn” in packaging its products on August 30, 1951. The district court found that the defendant adopted the mark “Dawn” without any actual knowledge of plaintiff’s use or federal registration of the mark, selecting it largely because of a slogan “Baked at midnight, delivered at Dawn” which was originated by defendant’s president and used by defendant in its bakery opera*362tions from 1929 to 1935. Defendant’s president testified, however, that no investigation was made prior to the adoption of the mark to see if anyone else was employing it. Plaintiff’s marks were registered federally in 1927, and their registration was renewed in 1947. Therefore by virtue of the Lanham Act, 15 U.S.C.A. § 1072, the defendant had constructive notice of plaintiff’s marks as of July 5, 1947, the effective date of the Act.

Defendant’s principal contention is that because plaintiff has failed to exploit the mark “Dawn” for some thirty years at the retail level in the Rochester trading area, plaintiff should not be accorded the exclusive right to use the mark in this area.1

We reject this contention as inconsistent with the scope of protection afforded a federal registrant by the Lanham Act.

Prior to the passage of the Lanham Act courts generally held that the owner of a registered trademark could not sustain an action for infringement against another who, without knowledge of the registration, used the mark in a different trading area from that exploited by the registrant so that public confusion was unlikely. Hanover Star Milling Co. v. Metcalf, 1916, 240 U.S. 403, 36 S.Ct. 357, 60 L.Ed. 713; cf. White Tower System, Inc. v. White Castle System of Eating Houses Corporation, 6 Cir., 1937, 90 F.2d 67, certiorari denied, 1937, 302 U.S. 720, 58 S.Ct. 41, 82 L.Ed. 556; Note, Developments in the Law of Trade-Marks and Unfair Competition, 68 Harv.L.Rev. 814, 857-858 (1955). By being the first to adopt a mark in an area without knowledge of its prior registration, a junior user of a mark could gain the right to exploit the mark exclusively in that market.

But the Lanham Act, 15 U.S.C.A. § 1072, provides that registration of a trademark on the principal register is constructive notice of the registrant’s claim of ownership. Thus, by eliminating the defense of good faith and lack of knowledge, § 1072 affords nationwide protection to registered marks, regardless of the areas in which the registrant actually uses the mark. Sterling Brewing, Inc. v. Cold Spring Brewing Corp., D.C.D.Mass.1951, 100 F.Supp. 412, 418, modified on rehearing, D.C.D.Mass.1952, 92 U.S.P.Q. 37; Roberts, Commentary on the Lanham Trade-Mark Act, 15 U.S.C.A. pp. 272, 280; Amdur, Trade-Mark Law and Practice (1948) pp. 332-333; Note, Developments in the Law of Trade-Marks and Unfair Competition, 68 Harv.L.Rev. 814, 828, 859; Note, 100 U.Pa.L.Rev. 1075 (1952) ; Note, 21 St. John’s L.Rev. 209, 220-221 (1947); Van Valkenburg, The New Trade-Mark Law, 20 Rocky Mt.L.Rev. 76, 80 (1947).

That such is the purpose of Congress is further evidenced by 15 U.S.C.A. § 1115(a) and (b) which make the certificate of registration evidence of the registrant’s “exclusive right to use the * * * mark in commerce.”2 “Commerce” is defined in 15 U.S.C.A. § 1127 to include all the commerce which may lawfully be regulated by Congress. These two provisions of the Lanham Act make it plain that the fact that the defendant employed the mark “Dawn,” without actual knowledge of plaintiff’s registration, at the retail level in a limited geographical area of New York state before the plaintiff used the mark in that market, does not entitle it either to exclude the plaintiff from using the mark in that area or to use the mark concur*363rently once the plaintiff licenses the mark or otherwise exploits it in connection with retail sales in the area.

Plaintiff’s failure to license its trademarks in defendant’s trading area during the thirty odd years that have elapsed since it licensed them to a Rochester baker does not work an abandonment of the rights in that area. We hold that 15 U.S.C.A. § 1127, which provides for abandonment in certain cases of non-use,3 applies only when the registrant fails to use his mark, within the meaning of § 1127, anywhere in the nation. Since the Lanham Act affords a registrant nationwide protection, a contrary holding would create an insoluble problem of measuring the geographical extent of the abandonment. Even prior to the passage of the Lanham Act, when trademark protection flowed from state law and therefore depended on use within the state, no case, as far as we have been able to ascertain, held that a trademark owner abandoned his rights within only part of a state because of his failure to use the mark in that part of the state. Cf. Jacobs v. Iodent Chemical Co., 3 Cir., 1930, 41 F.2d 637.

Accordingly, since plaintiff has used its trademark continuously at the retail level, it has not abandoned its federal registration rights even in defendant’s trading area.

We reject defendant’s further claim that plaintiff is prevented by laches from enjoining defendant’s use of the mark “Dawn” upon doughnuts and other baked and fried goods. Defendant argues that plaintiff’s New York sales representative, one Jesse Cohn, who also represented several other companies besides plaintiff, called upon defendant on a monthly basis, and that about four years prior to the commencement of this law suit he observed boxes bearing the label “Dawn” on the desk of one Jack Solomon, defendant’s bakery manager. At the trial Cohn denied that he ever saw any packaging in defendant’s bakery for baked and fried goods bearing the label Dawn, although he admitted seeing some packages for other food products in defendant’s bakery bearing the mark “Dawn.” The district court held that since Cohn’s contacts with the defendant were on behalf of companies other than the plaintiff, the knowledge of Cohn would not be imputed. We agree with the district court’s conclusion.

The defendant, by raising the defense of laches, asserts that plaintiff, or because the plaintiff is a corporation, those corporate officers of the plaintiff responsible for instituting legal proceedings against unauthorized users of plaintiff’s trademark, forbore from initiating any proceedings against the defendant when they knew or should have known of its use of plaintiff’s mark, and thus allowed the defendant to expand its efforts to develop the mark in a false atmosphere of security. But since it is not shown that plaintiff’s New York sales representative Cohn at any time had any duty to investigate whether bakers, such as the defendant, who did not purchase mixes from the plaintiff and who were not authorized to use its trademark, were in fact using the mark, his knowledge of defendant’s use, whatever it may actually have been, cannot be imputed to the plaintiff. In order to impute an agent’s knowledge to a principal in a particular transaction, it must be shown that the agent at some time had some duties to perform on behalf of the principal with respect to the transaction, although the agent need not have acquired his knowledge in connection with those duties. Restatement of Agency 2d, § 272 and appendix to § 272 at p. 450. The plaintiff is therefore not estopped by reason of laches from enforcing its exclusive *364right to use its registered trademarks in defendant’s trading area.

Accordingly, we turn to the question of whether on this record plaintiff has made a sufficient showing to warrant the issuance of an injunction against defendant’s use of the mark “Dawn” in a trading area in which the plaintiff has for thirty years failed to employ its registered mark.

The Lanham Act, 15 U.S.C.A. § 1114, sets out the standard for awarding a registrant relief against the unauthorized use of his mark by another. It provides that the registrant may enjoin only that concurrent use which creates a likelihood of public confusion as to the origin of the products in connection with which the marks are used. Therefore if the use of the marks by the registrant and the unauthorized user are confined to two sufficiently distinct and geographically separate markets, with no likelihood that the registrant will expand his use into defendant’s market,4 so that no public confusion is possible, then the registrant is not entitled to enjoin the junior user’s use of the mark. See, Fairway Foods, Inc. v. Fairway Markets, Inc., 9 Cir., 1955, 227 F.2d 193; Note, Developments in the Law of Trade-Marks and Unfair Competition, 68 Harv. L.Rev. 814, 857-60 (1955); cf. Sterling Brewery, Inc. v. Cold Springs Brewing Corp., supra.

As long as plaintiff and defendant confine their use of the mark “Dawn” in connection with the retail sale of baked goods to their present separate trading areas it is clear that no public confusion is likely.

The district court took note of what it deemed common knowledge, that “retail purchasers of baked goods, because of the perishable nature of such goods, usually make such purchases reasonably close to their homes, say within about 25 miles, and retail purchases of such goods beyond that distance are for all practical considerations negligible.” No objection is made to this finding and nothing appears in the record which contradicts it as applied to this case.

Moreover, we note that it took plaintiff three years to learn of defendant’s use of the mark and bring this suit, even though the plaintiff was doing some wholesale business in the Rochester area. This is a strong indication that no confusion arose or is likely to arise either from concurrent use of the marks at the retail level in geographically separate trading areas or from its concurrent use at different market levels, viz. retail and wholesale in the same area.

The decisive question then is whether plaintiff’s use of the mark “Dawn” at the retail level is likely to be confined to its current area of use or whether in the normal course of its business, it is likely to expand the retail use of the mark into defendant’s trading area. If such expansion were probable, then the concurrent use of the marks would give rise to the conclusion that there was a likelihood of confusion.

The district court found that in view of the plaintiff’s inactivity for about *365thirty years in exploiting its trademarks in defendant’s trading area at the retail level either by advertising directed at retail purchasers or by retail sales through authorized licensed users, there was no reasonable expectation that plaintiff would extend its retail operations into defendant’s trading area. There is ample evidence in the record to support this conclusion and we cannot say that it is clearly erroneous.

We note not only that plaintiff has failed to license its mark at the retail level in defendant’s trading area for a substantial period of time, but also that the trend of plaintiff’s business manifests a striking decrease in the number of licensees employing its mark at the retail level in New York state and throughout the country. In the 1922-1930 period plaintiff had 75 to 80 licensees across the country with 11 located in New York. At the time of the trial plaintiff listed only 16 active licensees not one of which was located in New York.5

The normal likelihood that plaintiff’s wholesale operations in the Rochester area would expand to the retail level is fully rebutted and overcome by the decisive fact that plaintiff has in fact not 'licensed or otherwise exploited its mark at retail in the area for some thirty years.

Accordingly, because plaintiff and defendant use the mark in connection with retail sales in distinct and separate markets and because there is no present prospect that plaintiff will expand its use of the mark at the retail level into defendant’s trading area, we conclude that there is no likelihood of public confusion arising from the concurrent use of the marks and therefore the issuance of an injunction is not warranted. A fortiori plaintiff is not entitled to any accounting or damages. However, because of the effect we have attributed to the constructive notice provision of the Lanham Act, the plaintiff may later, upon a proper showing of an intent to use the mark at the retail level in defendant’s market area, be entitled to enjoin defendant’s use of the mark.

Since we have held that upon a proper subsequent showing the plaintiff may be entitled to injunctive relief, it is appropriate that we answer here the defendant’s argument that such relief is beyond the constitutional reach of Congress because the defendant uses the mark only in intrastate commerce. Clearly Congress has the power under the commerce clause to afford protection to marks used in interstate commerce. That being so, the only relevant question is whether the intrastate activity forbidden by the Act is “sufficiently substantial and adverse to Congress’ paramount policy declared in the Act. * * * ” Mandeville Island Farms, Inc. v. American Crystal Sugar Co., 1948, 334 U.S. 219, 234, 68 S.Ct. 996, 1005, 92 L.Ed. 1328. The answer to such an inquiry seems plain in this case. If a registrant’s right to employ its trademark were subject within every state’s borders to preemption or concurrent use by local business, the protection afforded a registrant by the Lanham Act would be rendered virtually meaningless. Therefore we think it is within Congress’ “necessary and proper” power to preclude a local intrastate user from acquiring any right to use the same mark. See Lorain Journal Co. v. United States, 1951, 342 U.S. 143, 152, 72 S.Ct. 181, 96 L.Ed. 162; Wickard v. Filburn, 1942, 317 U.S. 111, 63 S.Ct. 82, 87 L.Ed. 122; cf. also, Lyon v. Quality Courts United, Inc., 6 Cir., 1957, 249 F.2d 790, 795; Iowa Farmers Union v. Farmers’ Educational & Coop. Union, 8 Cir., 1957, 247 F.2d 809, 815-816; Pure Foods, Inc. v. Minute Maid Corp, 6 Cir., 1954, 214 F.2d 792, 795-796.

Plaintiff also asserts a right to injunctive relief based upon state law. *366Plaintiff maintains that under the law of New York injunctive relief against trademark infringement has been granted to prevent the likelihood of dilution of the distinctive quality of the trademark, even in the absence of competition and confusion. Judge Weinfeld has said that the underlying rationale of this so-called dilution doctrine “is that the gradual diminution or whittling away of the value of a trademark, resulting from extensive use by another of a mark identical or similar to that of the senior user, constitutes an invasion of the senior user’s property right in his trademark and gives right to actionable wrong. The wrong, under this theory, is not dependent upon a showing of competitive relationship of the products or the likelihood of confusion.” G. B. Kent & Sons, Limited v. P. Lorillard Co., D.C.S.D.N.Y. 1953, 114 F.Supp. 621, 630, affirmed per curiam, 2 Cir., 1954, 210 F.2d 953.

Section 368-c of New York’s General Business Law may provide relief against dilution of a trademark but plaintiff has not registered its mark in New York and the first sentence of § 368-c limits protection therein provided to owners of marks registered under New York law. Plaintiff is therefore remitted to his common law rights. Section 368-d of the General Business Law.

Although at common law New York courts on occasion have granted injunctive relief in the absence of direct competition, plaintiff has cited us no New York case which has awarded such relief in a situation comparable to the one presented here. We think that most of the New York decisions which may appear to afford such protection may be distinguished for the reasons advanced in G. B. Kent & Sons, Limited v. P. Lorillard Co., supra, 114 F.Supp. at pages 630-631.

But even if New York common law afforded trademarks protection from the mere fact of concurrent use by another, such relief would be provided only in the case of a mark which has a well established secondary meaning with the consuming public within the state. Cf. Tiffany & Co. v. Tiffany Productions, Inc., 147 Misc. 679, 264 N.Y.S. 459, affirmed 1 Dept., 1932, 237 App.Div. 801, 260 N.Y.S. 821, affirmed 1933, 262 N.Y. 482, 188 N.E. 30. See also Food Fair Stores, Inc. v. Food Fair, Inc., 1 Cir., 1951, 177 F.2d 177, 185. Here plaintiff has failed to introduce any evidence that the use of its mark in connection with retail sales had come to mean to retail purchasers in the Rochester area or in any part of New York State that the goods were made from its mixes. Accordingly, we find no basis for affording plaintiff injunctive relief at this time.

The final issue presented is raised by defendant’s appeal from the dismissal of its counterclaim for cancellation of plaintiff’s registration on the ground that the plaintiff failed to exercise the control required by the Lanham Act over the nature and quality of the goods sold by its licensees.

We are all agreed that the Lanham Act places an affirmative duty upon a licensor of a registered trademark to take reasonable measures to detect and prevent misleading uses of his mark by his licensees or suffer cancellation of his federal registration. The Act, 15 U.S.C.A. § 1064, provides that a trademark registration may be cancelled because the trademark has been “abandoned.” And “abandoned” is defined in 15 U.S.C.A. § 1127 to include any act or omission by the registrant which causes the trademark to lose its significance as an indication of origin.

Prior to the passage of the Lanham Act many courts took the position that the licensing of a trademark separately from the business in connection with which it had been used worked an abandonment. Reddy Kilowatt, Inc. v. Mid-Carolina Electric Cooperative, Inc., 4 Cir., 1957, 240 F.2d 282, 289; American Broadcasting Co. v. Wahl Co., 2 Cir., 1941, 121 F.2d 412, 413; Everett O. Fisk & Co. v. Fisk Teachers’ Agency, Inc., 8 Cir., 1924, 3 F.2d 7, 9. The theory of these cases was that:

“A trade-mark is intended to identify the goods of the owner and to *367safeguard his good will. The designation if employed by a person other than the one whose business it serves to identify would be misleading. Consequently, ‘a right to the use of a trade-mark or a trade-name cannot be transferred in gross.’ ” American Broadcasting Co. v. Wahl Co., supra, 121 F.2d at page 413.

Other courts were somewhat more liberal and held that a trademark could be licensed separately from the business in connection with which it had been used provided that the licensor retained control over the quality of the goods produced by the licensee. E. I. DuPont de Nemours & Co. v. Celanese Corporation of America, 1948, 167 F.2d 484, 35 CCPA 1061, 3 A.L.R.2d 1213; see also 3 A.L.R.2d 1226, 1277-1282 (1949) and cases there cited. But even in the DuPont case the court was careful to point out that naked licensing, viz. the grant of licenses without the retention of control, was invalid. E. I. DuPont de Nemours & Co. v. Celanese Corporation of America, supra, 167 F.2d at page 489.

The Lanham Act clearly carries forward the view of these latter cases that controlled licensing does not work an abandonment of the licensor’s registration, while a system of naked licensing does. 15 U.S.C.A. § 1055 provides:

“Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.”

And 15 U.S.C.A. § 1127 defines “related company” to mean “any person who legitimately controls or is controlled by the registrant or applicant for registration in respect to the nature and quality of the goods or services in connection with which the mark is used.”

Without the requirement of control, the right of a trademark owner to license his mark separately from the business in connection with which it has been used would create the danger that products bearing the same trademark might be of diverse qualities. See American Broadcasting Co. v. Wahl Co., supra; Everett O. Fisk & Co. v. Fisk Teachers’ Agency, Inc., supra. If the licensor is not compelled to take some reasonable steps to prevent misuses of his trademark in the hands of others the public will be deprived of its most effective protection against misleading uses of a trademark. The public is hardly in a position to uncover deceptive uses of a trademark before they occur and will be at best slow to detect them after they happen. Thus, unless the licensor exercises supervision and control over the operations of its licensees the risk that the public will be unwittingly deceived will be increased and this is precisely what the Act is in part designed to prevent. See Sen. Report No. 1333, 79th Cong., 2d Sess. (1946). Clearly the only effective way to protect the public where a trademark is used by licensees is to place on the licensor the affirmative duty of policing in a reasonable manner the activities of his licensees.

The critical question on these facts therefore is whether the plaintiff sufficiently policed and inspected its licensees’ operations to guarantee the quality of the products they sold under its trademarks to the public. The trial court found that: “By reason of its contacts with its licensees, plaintiff exercised legitimate control over the nature and quality of the food products on which plaintiff’s licensees used the trademark ‘Dawn.’ Plaintiff and its licensees are related companies within the meaning of Section 45 of the Trademark Act of 1946.” It is the position of the majority of this court that the trial judge has the same leeway in determining what constitutes a reasonable degree of supervision and control over licensees under the facts and circumstances of the par*368ticular case as he has on other questions of fact; and particularly because it is the defendant who has the burden of proof on this issue they hold the lower court’s finding not clearly erroneous.

I dissent from the conclusion of the majority that the district court’s findings are not clearly erroneous because while it is true that the trial judge must be given some discretion in determining what constitutes reasonable supervision of licensees under the Lanham Act, it is also true that an appellate court ought not to accept the conclusions of the district court unless they are supported by findings of sufficient facts. It seems to me that the only findings of the district judge regarding supervision are in such general and conclusory terms as to be meaningless. In the absence of supporting findings or of undisputed evidence in the record indicating the kind of supervision and inspection the plaintiff actually made of its licensees, it is impossible for us to pass upon whether there was such supervision as to satisfy the statute. There was evidence before the district court in the matter of supervision, and more detailed findings thereon should have been made.

Plaintiff’s licensees fall into two classes: (1) those bakers with whom it made written contracts providing that the baker purchase exclusively plaintiff’s mixes and requiring him to adhere to plaintiff’s directions in using the mixes; and (2) those bakers whom plaintiff permitted to sell at retail under the “Dawn” label doughnuts and other baked goods made from its mixes although there was no written agreement governing the quality of the food sold under the Dawn mark.6

The contracts that plaintiff did conclude, although they provided that the purchaser use the mix as directed and without adulteration, failed to provide for any system of inspection and control. Without such a system plaintiff could not know whether these bakers were adhering to its standards in using the mix or indeed whether they were selling only products made from Dawn mixes under the trademark “Dawn.”

The absence, however, of an express contract right to inspect and supervise a licensee’s operations does not mean that the plaintiff’s method of licensing failed to comply with the requirements of the Lanham Act. Plaintiff may in fact have exercised control in spite of the absence of any express grant by licensees of the right to inspect and supervise.

The question then, with respect to both plaintiff’s contract and non-contract licensees, is whether the plaintiff in fact exercised sufficient control.

Here the only evidence in the record relating to the actual supervision of licensees by plaintiff consists of the testimony of two of plaintiff’s local sales representatives that they regularly visited their particular customers and the further testimony of one of them, Jesse Cohn, the plaintiff’s New York representative, that “in many cases” he did have an opportunity to inspect and observe the *369operations of his customers. The record does not indicate whether plaintiff’s other sales representatives made any similar efforts to observe the operations of licensees.

Moreover, Cohn’s testimony fails to make clear the nature of the inspection he made or how often he made one. His testimony indicates that his opportunity to observe a licensee’s operations was limited to “those cases where I am able to get into the shop” and even casts some doubt on whether he actually had sufficient technical knowledge in the use of plaintiff’s mix to make an adequate inspection of a licensee’s operations.

The fact that it was Cohn who failed to report the defendant’s use of the mark “Dawn” to the plaintiff casts still further doubt about the extent of the supervision Cohn exercised over the operations of plaintiff’s New York licensees.

Thus I do not believe that we can fairly determine on this record whether plaintiff subjected its licensees to periodic and thorough inspections by trained personnel or whether its policing consisted only of chance, cursory examinations of licensees’ operations by technically untrained salesmen. The latter system of inspection hardly constitutes a sufficient program of supervision to satisfy the requirements of the Act.

Therefore it is appropriate to remand the counterclaim for more extensive findings on the relevant issues rather than hazard a determination on this incomplete and uncertain record. I would direct the district court to order the cancellation of plaintiff’s registrations if it should find that the plaintiff did not adequately police the operations of its licensees.

But unless the district court finds some evidence of misuse of the mark by plaintiff in its sales of mixes to bakers at the wholesale level, the cancellation of plaintiff’s registration should be limited to the use of the mark in connection with sale of the finished food products to the consuming public. Such a limited can-collation is within the power of the court. Section 1119 of 15 U.S.C.A. specifically provides that “In any action involving a registered mark the court may * * * order the cancellation of registrations, in whole or in part, * * * ” Moreover, partial cancellation is consistent with § 1051(a) (1) of 15 U.S.C.A., governing the initial registration of trademarks which requires the applicant to specify “the goods in connection with which the mark is used and the mode or manner in which the mark is used in connection with such goods *- * * ”

The district court’s denial of an injunction restraining defendant’s use of the mark “Dawn” on baked and fried goods and its dismissal of defendant’s counterclaim are affirmed.

STEWART, Circuit Judge:

Peaches Entertainment Corporation (“PEC”), owner of the federally registered service mark PEACHES, appeals the district court’s judgment, which held that Entertainment Repertoire Association, Inc. (“ERA”), retained limited, exclusive rights to use a similar mark within stores in two parishes in Louisiana and advertise in five more. ERA appeals the district court’s holding that limited future store expansion to the two parishes where it had operated stores. For the following reasons, the judgment of the district court is affirmed in part, modified, and remanded with directions.

BACKGROUND

Peaches Entertainment Corporation, a retail music and video chain, operates twenty-one locations in six states. It is the owner of the federally registered service mark PEACHES for “retail tape and record services,” the mark having been registered by a corporate predecessor, Lishon’s Inc. (“Li-shon’s”),1 on July 6, 1976. Lishon’s began using the mark in commerce in relation to music stores sometime in 1974.

Likewise, ERA owns a retail music and video store in New Orleans, Louisiana, which does business under the trade name PEACHES.2 ERA first began to use the name PEACHES and a related graphic service mark in August 1975, when it opened stores in both Orleans and Jefferson Parish.

ERA’s PEACHES fame spread beyond the Louisiana area, and Lishon’s learned of ERA’s use of the PEACHES name and mark. On December 2,1975, Lishon’s sent a cease and desist letter to ERA notifying it of its claim to the PEACHES trademark and demanding that ERA stop using the trademark PEACHES in connection with its Louisiana music stores. ERA responded, by letter, that when it first began to use the trademark PEACHES, it was unaware of Lishon’s prior use of the trademark. Because Li-shon’s did not reply to its letter, ERA assumed that it continued to have the right to use the PEACHES trademark in Louisiana. Consequently, ERA’s use of the trademark neither ceased nor desisted, and it continued to expand its operations. By May 1980, ERA operated six stores in Louisiana, two stores in Jefferson Parish and four stores in Orleans Parish. In 1981, Lishon’s filed for bankruptcy and sold the PEACHES trademark to PEC.

In 1992, when PEC learned of ERA’s use of the mark PEACHES, it brought an infringement suit in federal court under the *692Lanham Trademark Act of 1946, seeking an injunction and damages. See 15 U.S.C. §§ 1116,1117. At that time, ERA was operating only one store in Orleans Parish, although the one store was extremely profitable. ERA defended on the grounds that it was an “intermediate junior user,” entitled to exclusive use of the trademark within the territory that it had established prior to the federal registration of the mark. The district court agreed.

The triable issues that remained were limited to determining the extent of PEC’s right to use the PEACHES service mark and ERA’s additional defense of laches. After considering the evidence, the district court held that ERA’s use was protected under two doctrines. First, ERA was an intermediate junior user and, second, PEC was estopped by laches from encroaching on ERA’s territory on account of its seventeen-year delay in pursuing its rights. Moreover, the court stated that it would not hold ERA to a “strict standard” of proof of its trade territory, because of the delay. To determine the trade territory, the district court determined ERA’s trade territory based “primarily on the evidence of the geographic extent of ERA’s continuous radio advertising and its reputation.” It also relied on ERA’s evidence “regarding the geographic origin of its customers.” This evidence came primarily from Harris and Shirani Rea, who co-owned and operated ERA. The district court issued a permanent injunction that allowed ERA to advertise in a seven parish territory,3 but limited future store expansion to Orleans and Jefferson Parish, the two parishes where ERA had operated stores.

LAW

In 1946, Congress passed the Lanham Act in order to federalize the common law protection of trademarks used in interstate commerce. See Lanham Trademark Act of 1946, c. 540, 60 Stat. 427 (codified as amended at 15 U.S.C. §§ 1051-1127). The Act was designed to protect both consumers’ confidence in the quality and source of goods and services and protect businesses’ goodwill in their products by creating a federal right of action for trademark infringement. S.Rep. No. 1333, 79th Cong., 2d Sess. at 1, reprinted in 1946 U.S.Cong.Serv. 1274. Owners of a federally recognized trademark, 15 U.S.C. § 1052, service mark 15 U.S.C. § 1053, or other collective mark, 15 U.S.C. § 1054; see also, 15 U.S.C. § 1127 (defining types of marks),4 may bring suit in federal court for damages or injunctive relief against users of similar marks whose use is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114.

The basic scheme that creates rights under the Lanham Act is a national registration system. Under the common law, use of a distinctive mark in commerce only created a right through priority and market. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 50-51, 63 L.Ed. 141 (1918) (“There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed.”). The Lanham Act, however, changed the common law rule by allowing a user to acquire rights in a mark by registration. To complicate this process, however, Congress also created several defenses to a registered-user’s rights. Significant to this case, junior users, parties who use a mark subsequent to another’s use, may retain rights. If the use predates the senior user’s registration,5 then the Act provides a defense if the mark “was adopted without knowledge of the registrant’s prior use and has been continuously used by such party ... from a date prior to registration of the mark ...” 15 U.S.C. § 1115(b)(5). The rights of a junior intermediate user, however, “apply only for the area in which such continuous prior *693use is proved.” 15 U.S.C. § 1115(b)(5); see generally, 3 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 26.18[1] (3d ed. 1994) (examining “limited area defense”). The junior user’s area of continuous prior use, which is frozen at the time the senior user obtains registration, see John R. Thompson v. Holloway, 366 F.2d 108, 116 (5th Cir.1966); and Dawn Donut Co. v. Hart’s Food Stores, Inc., 267 F.2d 358, 360 (2d Cir.1959), becomes the junior user’s trade territory.

The junior user may establish his trade territory by identifying the “zone of reputation” acquired for his mark. See William J. Gross, Comment, The Territorial Scope of Trademark Rights, 44 U.Miami L.Rev. 1075, 1084-87 (1990); see also, Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 415-16, 36 S.Ct. 357, 361, 60 L.Ed. 713 (1916) (“Into whatever markets the use of a trademark has extended, or its meaning has become known, there will be the manufacturer or trader whose trade is pirated by an infringing use be entitled to protection and redress.” [emphasis added]); Thrifty Rent-A-Car System, Inc. v. Thrift Cars, Inc., 639 F.Supp. 750, 753 (D.Mass.1986), aff'd., 831 F.2d 1177 (1st Cir.1987) (“A party who has established a reputation in an area may acquire exclusive rights to its mark there, even though the product bearing the mark is unavailable.”); Quill Corp. v. LeBlanc, 654 F.Supp. 380, 385 (D.N.H.1987) (“At the point in time of registration, the junior user’s current market — its ‘area [of] continuous prior use’ .. . — is frozen, and ... the junior user’s reputation, advertising, and sales delimit its frozen area.” [citations omitted]); and 3 McCarthy, supra, § 26.12[1] at 26-41 (“The territorial scope of a trademark and its goodwill must be defined in terms of the area from which customers are drawn, the coverage of advertising media and the nature of goods or services sold.”). Provided that the junior user has significant sales in the areas the mark has gained reputation, these areas comprise the junior user’s trade territory at the time the senior user obtained registration. See Thrifty Rent-A-Car System, 639 F.Supp. at 753. Advertising alone cannot establish the junior user’s trademark rights in an area. Id.

STANDARD OF REVIEW

We review the trial court’s granting or denial of permanent injunction for abuse of discretion. See Merrill Lynch v. Stidham, 658 F.2d 1098 (5th Cir.1981) (holding that the trial court had not abused its discretion in permanently enjoining the defendants); see also, Lone Star Steakhouse & Saloon, Inc. v. Alpha of Virginia, Inc., 43 F.3d 922, 939 (4th Cir.1995) (noting that abuse of discretion is the appropriate standard of review for a granting or denial of permanent injunction). The district court abuses its discretion if it (1) relies on clearly erroneous factual findings when deciding to grant or deny the permanent injunction (2) relies on erroneous conclusions of law when deciding to grant or deny the permanent injunction, or (3) misapplies the factual or legal conclusions when fashioning its injunctive relief.

“The standard of review over the district court’s grant of a permanent injunction must, of course, be segmented according to the component functions performed by the district court.” Multnomah Legal Serv. Workers Union v. Legal Serv. Corp., 936 F.2d 1547, 1552 (9th Cir.1991). Thus, we will review the district court’s findings of fact under the clearly erroneous standard, and the conclusions of law under the de novo standard.

Historically, finding the territorial scope of trademark rights has been a question of fact. 3 McCarthy, supra, § 26.12[1] at 26-41; see also, Federal Glass Co. v. Loshin, 224 F.2d 100, 102 (2d Cir.1955); cf. American Foods, Inc. v. Golden Flake, Inc., 312 F.2d 619, 627 (5th Cir.1963) (“The ancient observation that each trade-mark case must be decided upon its own facts still obtains.... ”). We overturn the district court’s factual findings only if they are clearly erroneous. Chevron Chemical Co. v. Voluntary Purchasing Groups, Inc., 659 F.2d 695, 703 (5th Cir.1981). The determination of the proper legal standard for assessing a junior or senior user’s trade territory is a question of law that we review de novo. See id.

*694If we find that the district court misapplied its factual findings and/or legal conclusions when fashioning its permanent injunction, we must remand the case for modification of the order. Modifications of an order granting injunctive relief “cannot be devised from on high. The district court must bear the responsibility for doing so.” See United States v. Lawrence County School Dist., 799 F.2d 1031, 1047 (5th Cir.1986); see also, B & A Pipeline Co. v. Dorney, 904 F.2d 996, 1002 (5th Cir.1990) (remanded the case with directions that the court modify its judgment in order to limit the permanent injunction placed on the defendant); and Premier Indus. Corp. v. Texas Indus. Fastener Co., 450 F.2d 444, 448 (5th Cir.1971) (remanded the case with directions that the district court modify its judgment in order to extend the time of the injunctive relief).

ANALYSIS

I. SIZE OF TRADE AREA

PEC contends that the district court made several errors in determining the size of ERA’s trade area. Initially, it contends that the district court erred in not holding ERA to a “strict proof’ of its trade area. Our research has found no jurisprudence to the effect that ERA should have been held to a “strict proof’ requirement and PEC has virtually conceded this point in its reply brief.

PEC also contends that the district court relied on inadmissible hearsay adduced at trial in making its judgment. The testimony at issue is that of Harris Rea and his wife. They testified that they drew their customers primarily from within seven parishes and sometimes beyond. They based their testimony on their business experiences acquired through the day-to-day operation of the record store and personal contacts with customers who sought out their wide inventory mix of rhythm and blues, blues, jazz, gospel, and rap music. ERA stocked hard-to-find collector’s items and music indigenous to Louisiana such as cajún, zydeco and dixieland jazz. PEC concedes that it did not object to this testimony during trial.

In this circuit, “unobjected-to hearsay may be considered by the trier of fact for such probative value as it may have.” Flores v. Estelle, 513 F.2d 764, 766 (5th Cir.), cert. denied, 423 U.S. 989, 96 S.Ct. 401, 46 L.Ed.2d 308 (1975). When a party fails to object to the admission of evidence, we can review only for plain error. Permian Petroleum v. Petroleos Mexicanos, 934 F.2d 635, 648 (5th Cir.1991); Fed.R.Evid. 103(d). Plain error is error which, when examined in the context of the entire case, is so obvious and substantial that failure to notice and correct it would affect the fairness, integrity, or public reputation or judicial proceedings. Permian Petroleum, 934 F.2d at 648.

At trial, it was established that the retail record business is a cash-and-carry business. Most customers pay by cash or check, leaving no written record of their residence. Thus, the testimony of Harris Rea was probative as to the location of the customer base. It also gave every indication of being reliable, particularly in view of the absence of any contrary evidence presented by PEC. See Flores, 513 F.2d at 766 (holding that “unobjected-to hearsay may be considered by the trier of fact for such probative value as it may have”). Moreover, the district court also heard testimony of ERA’s extensive radio advertising and promotion activity, which the district court relied upon in issuing the permanent injunction. Consequently, the alleged hearsay testimony was not the sole basis for the district court judgment. We find no error in the admission of this testimony that would have affected the fairness, integrity or public reputation of the district court proceedings.

II. ERA’S TRADE TERRITORY

The trial court identified ERA’s trade territory, which was frozen at the time Lishon obtained registration of the PEACHES mark, using uncontroverted testimony regarding ERA’s reputation, advertising and sales in the areas in which it concentrated its advertising. We hold that the zone of reputation — that is, the reputation, advertising, and sales proven in a given service area— may be used to determine a junior or senior user’s trade territory. Therefore, the trial court did not err in relying on ERA’s zone of reputation to classify ERA’s trade territory.

*695In calculating ERA’s trade area, the trial court made the following factual findings:

On August 1, 1975, Smith and Rea began using the service mark PEACHES on exterior and interior signs, point-of-sale displays at its original locations in Gretna and on Elysian Fields and on bags for purchased merchandise. At that time it also began distributing flyers using the PEACHES service mark and word mark in various other forms of advertising is uncontroverted. In this vein, Rea testified that in August 1975, ERA began advertising on numerous radio stations in the metropolitan area of New Orleans, including WXEL (which is now WLTX-FM), WNNR (which is now WYAT), WYLD-AM and FM, WBOK, WTIX and WRNO-FM[.]

... The coverage areas for the broadcast signals of the radio stations on which ERA advertised all include Orleans and Jefferson Parishes and most include all of the parishes south of New Orleans to the Gulf of Mexico, all of the parishes on the north shore of Lake Ponchartrain and across the state line well into Mississippi on the north and east, past Baton Rouge to the northwest, and past Lafayette to the west.

The trial court deduced that the market served continuously by ERA’s PEACHES prior to Lishon’s registration included the greater New Orleans area (i.e., Orleans Parish), and its contiguous parishes, Jefferson, Plaquemines, St. Bernard, St. Tammany, St. Charles and St. John the Baptist.

Our review of the record, and in particular the trial court’s memorandum opinion, demonstrates that the trial court’s determination of ERA’s trade territory was based upon cumulative evidence regarding ERA’s reputation. The trial court’s determination was not made on the basis of the radio signals going out to various far-reaching areas, but rather on recognized sales coming in from particular localities. A comparison of the radio signals and the court-recognized trade territory reveals that the radio signals through which ERA advertised clearly went far beyond the seven parishes identified as ERA’s trade territory. For example, some of the radio signals stretched to the Gulf of Mexico, while others penetrated Mississippi. Evidence adduced at trial magnifies the incongruity between ERA’s sales and the radio signals. Harris Rea testified that ERA’s PEACHES store survived despite the presence of two nearby Sound Warehouse stores because of ERA’s ability to draw from a larger trade area than the PEACHES stores’ immediate neighborhoods. He further testified that PEACHES’ “reputation” and “customer loyalty” regularly drew customers from the following parishes: Orleans, Jefferson, St. Tammany, Tangipahoa, St. John the Baptist, St. Charles, St. Bernard and Plaque-mines. The trial court carefully tailored the trade territory to conform with evidence regarding ERA’s sales; it did not rely solely on ERA’s advertising evidence. Because ERA proved its reputation, advertising and sales in these seven parishes, the trial court delineated these parishes as ERA’s trade territory. We cannot say that the trial court’s factual finding of ERA’s trade territory, which was fully supported by testimony and evidence at trial, was clearly erroneous.

III. EXPANSION LIMITATION

Both parties appeal the restrictions placed on ERA’s ability to expand within the trade area. PEC argues that ERA should be limited to the one store that is operating now, despite the fact that its trade area covers seven parishes. We find no support for this contention in the case law. As an intermediate junior user, ERA has the right to fully exploit the market potential of its trade area. Dawn Donut Co., 267 F.2d at 362. PEC’s rights are not affected by the opening of one store or one hundred stores as long as ERA does not infringe upon PEC’s trademark outside of the seven parish trade area. We find PEC’s argument to be without merit.

ERA appeals the portion of the district court’s judgment that limits it from opening new stores outside of the Orleans and Jefferson Parish parts of the trade area. Harris Rea testified that ERA’s specialization in ethnic music and its wide inventory of Louisiana music had gained it a loyal following. He also testified that gross revenues for the single store had been growing over the last few years despite competition from large *696franchise stores. As noted above, in 1991, gross revenues were $345,000. In 1992, they were $455,000. In 1993, they were $650,000. By July 31, 1994, gross revenues exceeded $750,000. He testified that gross revenues by square footage in 1994 was $417 dollars per square foot, which is approximately three times the industry average of $165 dollars per square foot.

Rea testified that in order to increase profitability in the future, he had planned to expand the size of his store in Orleans Parish as well as open new stores within the trade area. By opening new stores, he stated that he would be able to spread management costs over several stores and generate more sales for the same advertising dollar. Rea also testified that the new stores would make ERA eligible for volume discounts from record manufacturers and distributors.

Based on this uncontroverted evidence at trial, the district court stated in its memorandum opinion that:

It appears incongruous for a court to limit an intermediate junior user to a specific retail location or a set of specific locations within its defined Trade Territory when the law is precisely to the effect that an intermediate junior user is entitled to freely use its mark within the confines of its established trade territory without interference by the registered owner of the mark. Accordingly, the Court is of the opinion that it is inappropriate to interfere with the ERA’s use of its mark within its Trade Territory by delineating specific locations therein where the intermediate junior use is permitted [to] utilize its mark. [Footnote omitted.]

This conclusion comports perfectly with the principle that an intermediate junior user is entitled to fully exploit its trade area. See Dawn Donut, 267 F.2d at 362.

In its judgment, however, the district court limited the opening of new stores to the Orleans and Jefferson Parish, explaining its reason for the restriction:

The court imposes such restriction for the sole purpose of avoiding the possibility of a prohibited expansion of the intermediate junior user’s trade territory which would logically follow the establishment of additional retail locations approaching the outer boundaries of ERA’s Trade Territory.

This restriction is unsupported by the record or law. There was no evidence adduced at trial indicating that a restriction on the physical location of an ERA store was required to prevent the expansion of ERA’s trade area. In fact, the evidence at trial was that the opening of new stores was planned by ERA as a means of exploiting the existing trade area. This evidence was not contested by PEC. Neither the district court nor PEC cites any case that has allowed this type of restriction on the location of a store within a trade area, nor has our own research produced any case law that has imposed this type of restriction.

The district court reached the factual conclusion that ERA’s trade area consisted of seven contiguous parishes in South Louisiana. This conclusion was fully supported by the evidence and testimony submitted at trial. Having reached that conclusion, it was error for the district court to restrict the location of any of ERA’s future stores to Orleans and Jefferson Parish.6

CONCLUSION

For the foregoing reasons, we REMAND the cause to the district court, and the district court is directed to MODIFY its judgment, consistent with this opinion, by removing the stricture prohibiting ERA from opening new stores outside of Orleans and Jefferson Parish. In all other respects, the judgment of the district court is AFFIRMED.

Affirmed in part, modified, and remanded with directions.

VAN GRAAFEILAND, Circuit Judge:

Empire of Carolina, Inc., Empire Industries, Inc. and Empire Manufacturing, Inc. (hereafter “Empire”) and Thomas Lowe Ventures, Inc. d/b/a Playing Mantis (hereafter “TLV”) appeal from orders of the United States District Court for the Southern District of New York (Baer, J.) preliminarily enjoining appellants from violating Warner-Vision Entertainment Inc.’s trademark, “REAL WHEELS,” and denying Empire’s cross-motion for injunctive relief. See 915 F.Supp. 639 and 919 F.Supp. 717. The appeal was argued on an emergency basis on May 31, 1996, and on June 12, 1996, we issued an order vacating the preliminary injunction with an opinion to follow. This is the opinion.

Appellants contend that the grant of preliminary relief in WarnerVision’s favor should be reversed on any of several grounds. We limit our holding to one — the district court’s misapplication of 15 U.S.C. § 1057(c), part of the intent-to-use (“ITU”) provisions of the Lanham Act, to the facts,of the instant case. This error constitutes án abuse of discretion. See Reuters Ltd. v. United Press Int'l, Inc., 903 F.2d 904, 907 (2d Cir.1990).

Prior to 1988, an applicant for trademark registration had to have used the mark in commerce before making the application. Following the enactment of the ITU provisions in that year, a person could seek registration of a mark not already in commercial use by alleging a bona fide intent to use it. See 15 U.S.C. § 1051(b). Registration may be granted only if, absent a grant of extension, the applicant files a statement of commercial use within six months of the date on which the Commissioner’s notice of allowance pursuant to 15 U.S.C. § 1063(b) is issued. See 15 U.S.C. § 1051(d); see also Eastman Kodak Co. v. Bell & Howell Document Management Prods. Co., 994 F.2d 1569, 1570 (Fed.Cir.1993). The ITU applicant is entitled to an extension of another six months, and may receive further extensions from the Commissioner for an additional twenty four months. 15 U.S.C. § 1051(d)(2). If, but only if, the mark completes the registration process and is registered, the ITU applicant is granted a constructive use date retroactive to the ITU filing date. 15 U.S.C. § 1057(c). This retroactive dating of constructive use permits a more orderly development of the mark without the risk that priority will be lost. The issue we now address is whether the creator of a mark who files an ITU application pursuant to 15 U.S.C. § 1051(b) can be preliminarily enjoined from engaging in the commercial use required for full registration by 15 U.S.C. § 1051(d) on motion of the holder of a similar mark who commenced commercial use of its mark subsequent to the creator’s ITU application but prior to the ITU applicant’s commercial use. A brief statement of the pertinent facts follows.

On September 9, 1994, TLV sent the Patent and Trademark Office (“PTO”) an ITU application for the mark “REAL WHEELS,” stating an intent-to-use the mark in commerce on or in connection with “the following goods/services: wheels affiliated with %4th and ferd scale toy vehicles.” The application was filed on September 23, 1994. Around the same time, two other companies, apparently acting in innocence and good faith, decided that the “REAL WHEELS” mark would fit the products they were preparing to market. One of them, Buddy L, a North Carolina manufacturer that had been marketing toy replicas of vehicles for many years, selected the name for its 1995 line of *261vehicle replicas. The other, WarnerVision Entertainment Inc., found the name suitable for certain of its home videos which featured motorized vehicles. The videos and vehicles were shrink-wrapped together in a single package. Both companies ordered trademark searches for conflicts in the name, but, because TLV’s application had not yet reached the PTO database, no conflict was found.

' Both companies then filed for registration of their mark. However, because WarnerVision’s application was filed on January 3, 1995, three days before Buddy L’s, it was approved, and Buddy L’s was rejected. Buddy L nonetheless continued with its marketing efforts and entered into negotiations with TLV for a possible license based on TLV’s ITU application.

Unfortunately, Buddy L encountered financial problems, and on March 3, 1995, it filed for relief under Chapter 11 of the Bankruptcy Law as a debtor in possession. Thereafter, in an auction sale approved by the Bankruptcy Court, Buddy L sold substantially all of its assets to Empire. On October 20, 1995, Empire purchased from TLV all of TLV’s title and interest in and to the REAL WHEELS product line, trademarks and good will associated therewith, including the September 23, 1994 ITU application. At the same time, Empire licensed TLV to use the REAL WHEELS mark for toy automobiles. On November 13, 1995, WarnerVision brought the instant action.

In granting the preliminary injunction at issue, the district court quoted the Supreme Court’s admonition in Connecticut Nat’l Bank v. Germain, 503 U.S. 249, 253-54, 112 S.Ct. 1146, 1149-50, 117 L.Ed.2d 391 (1992), to the effect that when the words of a statute are unambiguous, judicial inquiry as to its meaning is complete. 919 F.Supp. at 719. We do not quarrel with this statement as a general proposition; however, we question its application in the instant case. Section 1057(c) of Title 15, the statute at issue, provides that, “[cjontingent on the registration of a mark ... the filing of the application to register such mark shall constitute constructive use of the mark, conferring a right of priority, nationwide in effect....” Empire is not claiming constructive use based on registration. Registration will not take place until after the section 1051(d) statement of use is filed and further Examination is had of the application for registration. See Eastman Kodak, supra, 994 F.2d at 1570. Empire contends that the district court erred in granting the preliminary injunction which bars it from completing the ITU process by filing a factually supported statement of use.

We agree. Empire does not contend that the filing of its ITU application empowered it to seek affirmative or offensive relief precluding WarnerVision’s use of the REAL WHEELS mark. It seeks instead to assert the ITU filing as a defense to WarnerVision’s efforts to prevent it from completing the ITU registration process. In substance, Empire requests that the normal principles of preliminary injunction law be applied in the instant ease. This accords with the stated intent of Congress that the Lanham Act would be governed by equitable principles, which Congress described as “the core of U.S. trademark jurisprudence.” See S.Rep. No. 515, 100th Cong., 2d Sess. 30 (1988), reprinted in 1988 U.S.C.C.A.N. 5577, 5592.

Thirty years ago, the author of a note in 78 Harv.L.Rev. 994 (1965) made the following cogent observation concerning preliminary injunctions:

A court hearing a request for a preliminary order must determine how best to create or preserve a state of affairs such that it will be able upon conclusion of the full trial to render a meaningful decision for either party.

This concept — the preservation of the court’s power to render a meaningful decision after trial on the merits — has been, and continues to be, a basic principle of preliminary injunction law. The purpose of a preliminary injunction is not to give the plaintiff the ultimate relief it seeks. It is “to prevent irreparable injury so as to preserve the court’s ability to render a meaningful decision on the merits,” Meis v. Sanitas Serv. Corp., 511 F.2d 655, 656 (5th Cir.1975); “to keep the parties, while the suit goes on, as far as possible in the respective positions *262they occupied when the suit began,” Hamilton Watch Co. v. Benrus Watch Co., 206 F.2d 738, 742 (2d Cir.1953). See 11A Charles Alan Wright, Arthur R. Miller and Mary Kay Kane, Federal Practice and Procedure § 2947 at 121. As a general rule, therefore, a temporary injunction “ought not to be used to give final relief before trial,” United States v. Adler’s Creamery, Inc., 107 F.2d 987, 990 (2d Cir.1939). Neither should it “permit[] one party to obtain an advantage by acting, while the hands of the adverse party are tied by the writ.” Corica v. Ragen, 140 F.2d 496, 499 (7th Cir.1944).

As the International Trademark Association (“ITA”) correctly notes at page 9 of its amicus brief, if Empire’s ITU application cannot be used to defend against WarnerVision’s application for a preliminary injunction, Empire will effectively be prevented from undertaking the use required to obtain registration. In short, granting a preliminary injunction to WarnerVision would prevent Empire from ever achieving use, registration and priority and would thus effectively and permanently terminate its rights as the holder of the ITU application. Quoting 2 McCarthy on Trademarks and Unfair Competition § 19.08[l][d] at 19-59 (3d ed. 1992), the ITA said “this' result “would encourage unscrupulous entrepreneurs to look in the record for new [intent-to-use] applications by large companies, rush in to make a few sales under the same mark and sue the large company, asking for a large settlement to permit the [intent-to-use] applicant to proceed on its plans for use of the mark.’ ” This vulnerability to pirates is precisely what the ITU enactments were designed to eliminate. See S.Rep. No. 515, supra, at 5592.

The Trademark Trial and Appeal Board believes that an ITU applicant should be able to defend against such piratical acts despite the fact that full registration, has not yet been given. See Larami Corp. v. Talk to Me Programs Inc., 36 U.S.P.Q.2d 1840 (T.T.A.B.1995); Zirco Corp. v. American Tel. & Tel. Co., 21 U.S.P.Q.2d 1542 (T.T.A.B.1992). When the foregoing authorities were cited to the district court, the court correctly stated that it was not bound by them. 919 F.Supp. at 721. However, the district court was bound not to construe and apply the ITU provisions in such a manner as to effectively convert a preliminary injunction based largely on disputed affidavits into a final adjudication on the merits.

The ITU provisions permit the holder of an ITU application to use the mark in commerce, obtain registration, and thereby secure priority retroactive to the date of filing of the ITU application. Of course, this right or privilege is not indefinite; it endures only for the time allotted by the statute. But as long as an ITU applicant’s privilege has not expired, a court may not enjoin it from making the use necessary for registration on the grounds that another party has used the mark subsequent to the filing of the ITU application. To permit such an injunction would eviscerate the ITU provisions and defeat their very purpose.

This is not to say that a holder of a “live” ITU application may never be enjoined from using its mark. If another party can demonstrate that it used the mark before the holder filed its ITU application or that the filing was for some reason invalid, then it may be entitled to an injunction. WarnerVision says that it made analogous use of the REAL WHEELS mark before TLV filed its ITU application and also that the assignment to Empire of TLVs ITU application was invalid. ■ But the district court did not pass on these contentions, and we will not consider them in the first instance.

The district court based its grant of preliminary relief on the proposition that “[t]he first party to adopt and use a mark in commerce obtains ownership rights,” and held that ‘WarnerVision made prior use of the mark in commerce and is the senior user.” 915 F.Supp. at 645. On the basis of the present record, that decision cannot stand. WarnerVision also contends that TLVs ITU application was not properly assigned to Empire because Empire did not succeed to a portion of TLVs business. See 15 U.S.C. § 1060. Like the claims of analogous use, this contention raises fact issues which should not be addressed in the first instance by this Court. We vacate that portion of the district court’s orders that grants WarnerVi*263sion preliminary injunctive relief and remand to the district court for further proceedings not inconsistent with this opinion.

We affirm the district court’s denial of Empire’s application for a preliminary injunction enjoining WarnerVision from using the REAL WHEELS mark for toys outside the video cassette market. Empire does not claim that it may use TLV’s ITU application offensively to obtain this injunction, and we express no opinion on this subject. Empire says only that Buddy L, a company it acquired in a bankruptcy sale, made analogous use of the mark prior to WarnerVision’s first use of the mark. On the record before us, we cannot say that the district court abused its discretion in denying a preliminary injunction on this ground.