Q. 83. Has anyone used the word "Line" in connection with motors until Westinghouse came out with this trade-mark, in 1946, of "Life-Line"? A. I don't know of anybody. I have never seen it used in connection with motors to my knowledge. Q.84. Did you have any competition from any other motor manufacturer, with the use of the word "Line" or "B-Line," between the period of your first adoption of it in 1926 and the time when Westinghouse adopted "Life-Line" in 1946? A. I know of no competition from any other motor company using the word "Line" from the time that we started in business in 1925 up to the time Westinghouse started to use the word "Life-Line." Q.88. The fact that the word "Line" is the predominating word in the Westinghouse mark "Life-Line," as you have so testified, what effect did this have on your business and your customers? A. As I look on the word "Life-Line," the word "Line," as far as I am concerned, means motors. We have spent about a quarter of a century building up that word, and that has given us a great deal of prestige and good will. The word "Life," as far as I can understand, means longevity, and on that basis I would say that "Life-Line" means a Class A motor. If Westinghouse is building a Class A motor and we are advertising a "B-Line" motor, it seems to me that Westinghouse is getting a free ride. As a matter of fact, ever since Westinghouse has started to use the word "Life-Line" we have had complaints come in to us where customers have graded our motors as a "B-Line" quality. We never had those complaints before, as long as we have been in business, never had any complaints like that before. The result has been that we have lost business, we have lost prestige. We are definitely not building a poor product; our product is better today than it has ever been, especially since you (Glancing at counsel for Applicant)3 have introduced this trade-mark. We have expended more money in machines, in improving our product, and more money in inspection than before you introduced the trade-mark "Life-Line." But still we are getting these complaints whereby our motors are being graded as "B-Line" motors-B Grade motors. Now, whether it is intentional or unintentional on your part-on the part of Westinghouse or whether it is a psychological reaction from the public in general, I don't know. But it has hurt us tremenduously. The record is replete with additional testimony of a similar nature submitted on the part of appellant. For example, the witness, David C. Benning, retired postal supervisor who handled appellant's mail at Dayton, Ohio, told how customers from time to time over a period of years addressed mail to appellant merely as the "Line Company," or as “Line, Inc." The law has long been settled that where the purchasing public has given a product a name other than its registered trade-name, such as "Koke" for "Coca-Cola," one who appropriates such a nickname for use on identical goods, regardless of fraudulent intent or proof of actual injury, is guilty of unfair competition against which protection by injunction will be granted. Coca-Cola Co. v. 3 Westinghouse took no testimony but its counsel was present and cross-examined witnesses who testified for appellant. Koke Co., 254 U. S. 143; Coca-Cola Co. v. Boas, 27 F. 2d 756; The Coca-Cola Company v. China Finance Corporation, 42 USPQ 108. Industrious efforts made by appellant to prevent the spoilation of its reputation and good will caused by the advent into the field of Westinghouse with its accused trade-mark are disclosed in the record. Concededly the electric motor marketed by each of the parties is of the highest quality, yet appellant has not been able to counteract the degrading influence caused by Westinghouse. The confusion by which appellant's customers have been diverted and by which its business may ultimately meet disaster emanates from the destructive force of the insidious Westinghouse mark which has unfairly placed appellant's motor in a false and degrading light before the purchasing public. The predominant part of the respective marks, the suffix "Line," is not primarily descriptive of an electric motor, and Westinghouse by its own representation to that effect before the examiner is here estoppel from claiming that it is. Skol Company, Inc. v. Olson, 33 C. C. P. A. (Patents) 715, 151 F. 2d 200, 67 USPQ 96. Since words primarily descriptive of the goods or their character are the only words which reside in the public domain subject to be freely appropriated by any person in the same line of business for use in the sale of wares, Standard Paint Co. v. Trinidad Asph. Co., 220 U. S. 446, 453; Celanese Corp. of America v. E. I. Dupont de Nemours & Co., 33 C. C. P. A. (Patents) 948, 154 F. 2d 146, 69 USPQ 101; KoolVent Metal Awning Corp. of America v. Price, 91 USPQ 378, Westinghouse is not entitled to appropriate "Line" as part of the mark which that corporation here desires to register. In re Brockway Glass Company, Inc., 33 C. C. P. A. (Patents) 969, 154 F. 2d 673, 69 USPQ 324. There is no escape from the conclusion upon the facts presented that Westinghouse in this case has attempted through the color of law to obtain an unfair advantage over its competitor, and therefore registration of its mark should be refused not only on the ground of confusing similarity but also on the ground of unfair competition. Coty, Inc. v. Perfumes Habana, S. A., 38 C. C. P. A. (Patents) 1180, 190 F. 2d 91, 90 USPQ 224; Kaut-Reith Shoe Co. v. International Shoe Co., 45 App. D. C. 545. This is particularly true under the Act of 1946, which provides that the greatest protection at home and abroad must be given to previously registered trade-marks used on competitive goods. Bacardi Corp. v. Domenech, 311 U. S. 150; S. C. Johnson & Son v. Johnson, 175 F. 2d 176, certiorari denied, 338 U. S. 860.* See also sections 44 (h) and (i) of the Trade-Mark Act of 1946; Robert, The New Trade-Mark Manual, pages 167-180; Jewel Tea Co. v. Kraus, 187 F. 2d 278. The following statement quoted from the decision of Coty, Inc., supra, is of special significance here: The Commissioner of Patents, in placing the imprimatur of the Patent Office of the United States Government upon appplicant's marks by granting registration thereof, pursued a method of reasoning whereby the trivial was exploited and the important ignored. As Mr. Justice Holmes put it, writing for a unanimous Court in Coca-Cola Co. v. Koke Co., 254 U. S. 143: "Of course a man is not to be protected in the use of a device the very purpose and effect of which is to swindle the public." Justice Holmes further pointed out there that the defects of an owner's trade-mark "do not offer a very broad ground for allowing another to swindle him.” Appellant has raised other points regarding the secondary meaning of its trade-mark and presented other facts tending to prove that Westinghouse in the adoption of the word "Line" had illegally appropriated advertising material which appellant had used in the association with the sale of its merchandise long before Westinghouse entered the field.5 It is difficult, however, to completely define here the validity of appellant's position in those respects. Findings of fact derived from what might be called conference table consideration are not as a rule clear-cut and complete like the findings of fact based upon additional extrinsic evidence produced in open court by recourse to testimony from the market-place and the consuming public. Philadelphia Inquirer Co. v. Coe, 133 F. 2d 385. Therefore, appellant should exercise its right under the statute and present the issue de novo before such a tribunal. John Morrell & Co. v. Doyle, 97 F. 2d 232. For the reasons hereinbefore stated, the decision of the Examinerin-Chief, in my opinion, should be reversed. 665 O. G. 977; 39 CCPA 1059; 197 F. (2d) 539; 94 USPQ 181 MASCIARELLI v. FOERSTE (No. 5898) PATENTS 1. INTERFERENCE-BURDEN OF PROOF-ISSUES TO BE DETERMINED Junior party (patentee) has burden to establish priority of invention by preponderance of evidence; it makes no difference whether or not patent inadvertently issued; priority is sole issue; validity of patent is not in issue. 2. APPEALS TO COURT-ISSUES TO BE DETERMINED PATENT INTERFERENCES In interferences between patentee and applicant, court must assume that application (on which patent issued) and claim were understood by Patent Office when patent issued. 5 Section 45 of the Act of 1946; Cheek-Neal Coffee et al. v. Hal Dick Mfg. Co. [Good to the Last Drop], 17 C. C. P. A. (Patents) 1103, 1104, 40 F. 2d 106, 5 U. S. Pat. Q. 55; Lucky Heart Laboratories, Inc. v. Morton G. Neumann, 33 C. C. P. A. (Patents) 1034, 154 F.2d 519, 520, 69 USPQ 393. United States Court of Customs and Patent Appeals, June 24, 1952 [Reversed.] APPEAL FROM PATENT OFFICE, INTERFERENCE No. 84,364 Charles R. Fay (Munson H. Lane of counsel) for appellant. [Oral argument May 7, 1952, by Mr. Fay] Before GARRETT, Chief Judge, and O'CONNELL, JOHNSON, WORLEY, and JACKSON (retired), Associate Judges JACKSON, Judge, delivered the opinion of the court: Appellant has appealed from a decision of the Board of Interference Examiners of the United States Patent Office in an interference proceeding awarding to appellee priority of invention of the subject matter embraced within a single count which reads as follows: 1. In a system for operating and regulating an electric discharge tube having thermionic electrode filaments, a source of alternating current, a transformer providing a closed magnetic core having two relatively long legs and two relatively short legs connecting the respective ends of said long legs, primary and secondary windings each providing a coil disposed on the same long core leg, with the end of each primary coil being spaced axially of a long core leg from the end of each secondary coil, to permit a relatively large magnetic leakage between said long legs, means connecting the coils of said secondary winding and said tube in a closed series circuit, filament energizing windings having the terminals connected to said tube filaments, with each filament winding being disposed on a long core leg in a space between said primary and secondary coils, and means for connecting both terminals of said primary winding to said source, whereupon sufficient voltage is developed by said filament energizing windings to immediately heat said filaments to a temperature where electrons are emitted and ionization of the gas in the tube takes place, at the open circuit voltage between the electrodes as developed by said primary and secondary windings, with the magnetic flux density in a long core leg at the location of each filament energizing winding being such that the voltage developed by such windings and resulting heating current in the filaments is reduced from its initial starting value to a lower value when the tube is ionized and operating with a reduced steadystate voltage across its electrodes, due to the back electromotive force induced by flow of arc current through the secondary winding which is out of phase with the voltage across the secondary induced from the primary, and with the out of phase current in said secondary winding being in full control of the energy output of each filament winding to obtain the desired degree of filament heating for operating the tube. On March 16, 1950, the interference was declared. It involves a patent of appellant, No. 2,455,791, dated December 7, 1948, issued upon an application entitled "SYSTEM FOR OPERATING ELECTRIC DISCHARGE TUBE," serial No. 693,217, filed August 27, 1946, and a patent application of appellee, serial No. 617,037, filed September 18, 1945, which is entitled "TRANSFORMER FOR REGULATING THE OPERATION OF HOT CATHODE GASEOUS DISCHARGE LAMPS." One-half interest of the application is assigned to Eugene A. Quarrie. [1] The count is a substantial copy of the only allowed claim in the patent of appellant who is the junior party and therefore has the burden of establishing priority of invention by a preponderance of the evidence. Both parties filed preliminary statements. In that of appellant it is stated that on April 7, 1942, he started working on a model of his device; that the date of actual reduction to practice and disclosure of the invention to others was April 17, 1942; and that on February 10, 1943, the first drawing and written description of the invention were made. The preliminary statement on behalf of appellee (deceased) made by his hereinbefore mentioned assignee, alleged that the invention was first disclosed to others and demonstrated by appellee during the latter part of 1944; that the invention was actually reduced to practice on or about April 5, 1945; and that the first drawing and written description of the invention were made on May 3, 1945. Both parties allege the exercise of reasonable diligence, that of appellant beginning April 7, 1942, and that of appellee May 3, 1945. Appellant alone took testimony at the taking of which the appellee was not represented. The case was submitted below at final hearing on briefs by both parties and there was no appearance here for appellee either by brief or argument. The interference relates to a system for operating an electric discharge tube having thermionic electrode filaments. We are troubled by the language used in the decision of the board. After having noted the burden under which the junior party rests, it is stated in the opinion that "He derives no advantage in the proceeding by the fact of the inadvertent issue of his patent." What meaning can be attached to that we are at a loss to understand. What difference does it make whether or not the patent was inadvertently issued? Further on in the decision of the board, it is stated that: The count may be summarized by saying that it requires physically that six transformer coils be arranged symmetrically on two long legs of a rectangular core, and electrically that the intermediate coils on each leg function as low voltage filament excitation secondaries for a filament electrode tube, two extreme coils function as a discharge current secondary, and that leakage of the primary magnetic flux between the primary and the secondaries be effective to reduce the voltage on all the secondaries upon current flow in the discharge secondary. This analysis fails to reveal an obviously invention-characterizing feature or relationship, and we have been moved to examine the record of the Masciarelli application in order to ascertain, if possible, just what was supposed to be the kernel of the invention when the claim was finally allowed. For, although the |