SUITS FOR INFRINGEMENT-Continued. * 7. PATENTS INQUIRY INTO VALIDITY. "There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. * It has come to be recognized, however, that of the two questions, validity has the greater public importance, * * * and the district court in this case followed what will usually be the better practice by inquiring fully into the validity of this patent." • Sinclair & Carroll Company, Inc. v. Interchemical Corporation, 601. 8. ANTITRUST LAWS-VIOLATION-PATENTS.-"In view of the nature of the conspiracy found, an injunction should go against the further prosecution of all infringement suits pending at the date this suit was brought.' Hartford Empire Co. et al. v. The U. S. of America, Corning Glass Wks. et al. v. The U. S. of America, Owens-Ill. Glass Co. et al. v. The U. S. of America, Hazel-Atlas Glass Co. et al. v. The U. S. of America, Thatcher Mfg. Co. et al. v. The U. S. of America, Lynch Corp. et al. v. The U. S. of America, Ball Bros Co. et al. v. The U. S. of America, Glass Container Assn. of America et al. v. The U. S. of America, Collins, Isaac J. v. The U. S. of America, Fulton, T. C. et al. v. The U. S. of America, 607. SUITS UNDER SECTION 4915, R. S. See Interference, 67, 68, 69. 1. Remand.—"The record establishes no intention by petitioner not to use his invention, and no proposed use of it disclosed or suggested by the record affords any basis for withholding the grant of the patent. The judgment below must therefore be reversed, and the cause remanded to the court of appeals for further proceedings in conformity to this opinion to enable it to consider and decide the issues raised by the pleadings." Special Equipment Company v. Coe, Com. of Patents, 561. 2. CLAIMS CONSIDERED. “Appellant seeks now to abandon the issue tried in the Patent Office; rid itself of the other claims and the specification which reveal a concept of use in the unqualified alternative of powdered quartz or silicic acid; read into the remaining claims, a new concept, based upon 'an entirely different chemical compound;' and secure an adjudication in this court of an issue not heretofore presented. This amounts to an attempt to secure a patent upon new claims not considered by the Patent Office, and cannot succeed." a W. M. Welch Manufacturing Company v. Coe, Commissioner of Patents, 201. 3. JURISDICTION.-The district court Held to have jurisdiction over a suit brought by petitioner against the Commissioner of Patents under section 4915 R. S., in which the sole issue involved was whether claims copied, or substantially copied, from patents, in order to provoke interferences therewith, were readable on the application filed by petitioner's assignor. The Hoover Company v. Coe, Commissioner of Patents, 593. 4. APPEAL UNDER SECTION 4911 R. S.-ALTERNATIVE RIGHTS OF REVIEW."Alternative rights of review are accorded an applicant-one by appeal to the United States Court of Customs and Patent Appeals, the other by bill in equity filed in one of the federal district courts. In the first the hearing is summary and solely on the record made in the Patent Office; in the other a formal trial is afforded on proof which may include evidence not presented in the Patent Office. Every party adversely affected by a ruling on the merits may, if he so elect, proceed by bill rather than by appeal. In the one case the adjudication in equity authorizes issue of patent on the applicant's 'otherwise complying with the requirements of law'. In the other the decision 'shall govern the further proceedings in the case' in the Patent Office.” • Id. 5. SAME ALTERNATIVE REMEDIES.-The differences in the character of the proceedings under sections 4915 and 4911 R. S. and the statutory effect of decision or adjudication do not require a holding that as to all decisions on the merits adverse to the applicant, other than the final action as to the issue of a patent, the applicant must obtain review by appeal to the Court of Customs and Patent Appeals, and can proceed by bill under section 4915 R. S. only when every step requisite to issue has been taken. Id. SUITS UNDER SECTION 4915, R. S.-Continued. 6. JURISDICTION.-"The ruling of the Board of Appeals in the instant case was neither a procedural ruling nor an interlocutory one as to which the the district court should not entertain a suit under R. S. 4915. On the contrary, it finally denied a patent on the claims presented. In this respect it was like a dismissal of a suit in a court. Unless the applicant could sue to correct error in that dismissal, he could never sue under R. S. 4915. That he was accorded a right of suit in this case the language of the statute, its history, the administrative construction and judicial decision unite in affirming." • Id. SUPREME COURT OF THE UNITED STATES. See Interference, 55; Suits for Infringement, 1; Validity of Patents, 1; Validity of Royalty Adjustment Act, 5. TESTIMONY. See Interference, 42, 46, 55; Trade-Marks, 43, 64, 66, 67. TESTS. See Interference, 42, 43, 44, 45, 46, 47, 49, 50 to 58 inclusive; Validity of TIME FOR APPEAL. See Appeal to the U. S. Court of Custom and Patent TRADE-MARK USE. 68 inclusive. TRADE-MARKS. Appeal to the U. S. Court of Customs and Patent Appeals 1. APPEAL DISMISSAL AS LATE-DECISION BELOW FINAL.-Where appellant took an appeal in a former case from the decision of the Commissioner affirming the action of the Examiner in refusing to register the mark for which it applied, but the appeal was dismissed as not having been timely filed, Held that that decision of the Commissioner "is final and has the same effect as though no appeal had been taken." *In re Retail Clerks International Protective Association, 288 Confusion of the Public 2. CONFUSING SIMILARITY-DOMINANT PORTION.-"In determining the question of the confusing similarity of trade-marks, the marks must be considered in their entirety, but this doctrine is not inconsistent with the rule that one word or one feature of a mark may be the dominant part thereof and entitled to greater force and effect than other parts of the mark. See California Prune & Apricot Growers Association v. Dobry Flour Mills, Inc., 26 C. C. P. A. (Patents) 910, 101 F. (2d) 838, 40 USPQ 616, 504 O. G. 292. Under any circumstances, the common portion of the marks must be considered and cannot be disregarded. See Nepera Chemical Co., Inc., v. The Wm. S. Merrell Company, 50 USPQ 470 and 647." *Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 111. 3. SAME PEOPLE CONSTITUTING THE PUBLIC.-Held that while members of the medical profession may predominantly comprise the purchasers of the blood coagulants to which appellee applies the registered trademark "Thrombol," nevertheless, the goods are available to purchasers of the general public, and consequently all the people constitute the public afforded protection under sec. 5 of the Trade-Mark Act of 1905. *Id. 4. SAME DISCRIMINATING PURCHASERS-EMERGENCY REMEDY.-Held that blood coagulants are likely to be used in an emergency; that physicians and their assistants, no matter how discriminating, would have difficulty in keeping in mind and distinguishing between the two marks "Thrombol" and "Thromboquin," which appellee and appellant respectively apply to such goods; and that "considering the goods upon which the marks are used, and considering the resemblance between the marks in significance, sound, and in appearance, it is impossible to escape the conclusion that confusion or mistake and deception of purchasers might likely result from the concurrent use of the two marks on the respective goods of the parties.” *Id. TRADE-MARKS-Continued. 5. SAME.-Held that there is sufficient similarity in sound, appearance, and mean ng between appellee's trade-mark applied to "Salve, useful in the treatment of head and chest colds, nasal congestion, and as an antiseptic dressing for minor cuts or insect bites" and appellant's registered trade-mark "ROCHE" applied to a large variety of medicinal and pharmaceutical preparations, including preparations recommended for the treatment of colds and preparations having antiseptic qualities, to justify the conclusion that the likelihood of confusion flowing from the concurrent use of the marks would be imminent. *Hoffmann-La Roche, Inc. v. Kawerk, 238. 6. SAME PROPER NAMES-PRONUNCIATION.-The pronunciation of proper names is more or less arbitrary. *Id. 7. SAME. "In considering the likelihood of confusion, it is of greater importance to consider the points of similarity than the points of difference." *Id 8. SAME.-Appellant's mark, comprising the name "Firestone" and the words "Air Chief," displayed in association with two stars and the pictorial representation of a winged figure standing on a globe; and appellee's registered mark, consisting of the word "Airline" crossed by a zig-zag symbol indicative of a flash of lightning, and with a portion of the capital "A" extending in the form of a line under the other letters of the word, Held not to resemble each other sufficiently that confusion might be expected to result from their concurrent use on identical goods. *Firestone Tire & Rubber Co. v. Montgomery Ward & Co., Inc., 358. 9. SAME DISCRIMINATION IN PURCHASE OF GOODS.-Held that the matter of discrimination in purchase of the goods of the parties, radios and radio supplies, could have little if any bearing upon decision of the issue of confusing similarity between their marks; that "the goods of the parties are sold to the general public, which is comprised not only of critical buyers but also of those who buy without stopping to analyze;" and that it is "not only well known that the so-called indiscriminate public purchases cheap radios and numerous inexpensive parts and supplies, but also recognized that such purchases ordinarily neither require nor receive any extended or serious investigation." *Id. 10. SAME. "The sound, appearance, and meaning of the words 'Chief' and 'line' are wholly different-so different as to lead one away from any thought springing from the commonly used word 'Air'. The portions of Firestone's mark other than the dominant portion, 'Air Chief' and those of Montgomery Ward's mark other than 'Airline' are so wholly different in their appearance, suggestions, and meaning as to prompt the conclusion that when the marks as a whole are considered, there would be no likelihood of confusion." *Id. 11. SAME. "It is true that over the radio and in advertising literature, the goods of the respective parties will be referred to as Air Chief' and Airline' radios, and many prospective customers would be unaware of certain features of the respective marks. It is our view, however, that notwithstanding this fact, the terms 'Air Chief' and 'Airline', considered alone, being the dominant portions of the two marks, are so vastly different in meaning, appearance, and sound as to insure against the probability of confusion." *Id. 12. SAME. Upon consideration of the opposition to the application for registration of the notation "Calle" as a trademark for dentures, based upon opposer's ownership of the registered trade-mark "Calox" for tooth powder, Held that the "respective fields are distinct;" and that "at any rate, there is such a distinct difference between the goods and between the marks taken as a whole, that we are unable reasonably to anticipate likelihood of confusion in origin or in trade which might deceive purchasers." *Sholl Dental Laboratory Company v. McKesson & Robbins, Incorporated, 441. TRADE-MARKS-Continued. 13. SAME. "So far as the record shows, both the marks are coined terms which have no dictionary definitions, and are devoid of any suggestiveness. It is probable that appellee's dentrifice product is generally known and called for as 'Calox' just as certain camera outfits are known and called for as 'kodaks.' Also, it is a fair assumption that dentists order appellant's product as 'Calle,' or 'Calle dentures.' Both words are entireties. There is no separation of them into syllables and there is nothing to indicate that any portion of either mark constitutes a dominant feature of the whole." *Id. 14. SAME. "We think there is likelihood of confusion as to the origin of the two products if sold under the involved trade-marks, and that if appellant's product is sold in large containers, as it may well be, * * * and the fungicides of the parties are stored in the same storeroom, as they are apt to be, there is also likelihood of appellee's product being used for that of appellant, thereby causing injury to the user thereof." *The Physicians & Hospitals Supply Co., Inc., d. b. a. Ulmer Pharmacal Company v. Bayer-Semesan Company, Inc., now by change of name, Du Pont Semesan Company, Inc., 512. 15. SAME. "We are of opinion that one familiar with appellee's portable valve grinding tool and its trade-mark 'Vibro-Centric,' seeing the trade-mark 'Speedi-Centric' on appellant's tool, would be likely to believe that appellant's tool was the product of appellee; that the marks of the parties are confusingly similar; and that appellant is not entitled to have its mark registered." *Snap-On Tools Corporation v. The Black & Decker Manufacturing Co., 507. 16. SAME.-Held that the marks "Dent-A-Min" and "Cytamin" differ only in the first syllable; that both "are coined expressions"; and that "their concurrent use on the goods of the parties would be likely to cause confusion in the mind of the purchasing public both as to origin and as to the goods themselves." *McKesson & Robbins, Inc., v. American Foundation for Dental Science, 519. Construction of Trade-Mark Statutes 17. "MERCHANDISE OF THE SAME DESCRIPTIVE PROPERTIES"-CONSTRUCTION SAME IN EX PARTE AND INTER PARTES PROCEEDINGS.-"The legal construction of the statutory phrase 'merchandise of the same descriptive properties' is the same in both ex parte and inter partes proceedings and the same rules are applied in reaching a decision whether the proceedings are ex parte or contested. In re Keller, Heumann & Thompson Co., Inc., 23 C. C. P. A. (Patents) 837, 839, 81 F. (2d) 399, 28 USPQ 221, 465 O. G. 246." *In re Laskin Brothers, Inc., 104. 18. COMMISSIONER AS GUARDIAN OF PUBLIC INTERESTS.-Held that the primary purpose of the provision of sec. 5 of the Trade-Mark Act of 1905 that marks which are deceptively similar to an existing trademark shall not be registered if they are for use on merchandise of the same descriptive properties, "is to protect the public against confusion or mistake in the purchase of goods, and the Commissioner of Patents, in refusing to register a prohibited mark, acts as the guardian of the public interests, and not merely as an arbiter of a private dispute between two parties." *Schering & Glatz, Inc. v. Sharp & Dohme, Inc., 111. Descriptive Trade-Marks 19. "BASKETWEAVE."-"We are in agreement with the Commissioner of Patents that the word 'BASKETWEAVE' which appellant seeks to register as a trade-mark is merely descriptive of the ornamental surface of appellant's paper; that it is descriptive of appellant's goods or of the character or quality of such goods; and that, therefore, appellant is not entitled to the registration of its mark." *In re La Monte & Son, 90. TRADE-MARKS-Continued. 20. REGISTRABILITY.-Appellant's application for the registration under the act of 1905 of the words "BREAKFAST BREAD" as a trade-mark for use on "merchandise wrappers, particularly bread wrappers sold in roll, sheet, or bag form." the word "BREAD" being disclaimed apart from the mark as shown, Held properly rejected, since the mark is, as stated by the Commissioner, "merely descriptive of the intended purpose and function of the wrappers, to wit, to contain or to enclose bread suitable for breakfast." *In re The Dobeckmun Co., 163. 21. DESCRIPTIVENESS.--Held that the prefix "Speedi" in appellant's mark "Speedi-Centric," as a mere misspelling of the common dictionary term "speedy," is merely descriptive of one of the claimed features of appellant's portable valve grinding tool. *Snap-On Tools Corporation v. The Black & Decker Manufacturing Co., 507. 22. SAME.-The suffix "Centric" in the marks "Speedi-Centric" and "VibroCentric" Held suggestive, but not descriptive, of the concentric type of valve grinding tools to which the marks are applied. *Id. Dominant Portion of Trade-Marks 23. DOMINANT PORTION.-Held that, being descriptive, "Speedi" would not to any degree indicate to the purchasing public the origin of appellant's goods, and could not be considered the dominant feature of appellant's mark "Speedi-Centric." *Snap-On Tools Corporation v. The Black & Decker Manufacturing Co., 507. 24. SAME. The suffix "Centric" Held to be an important, if not the dominant feature of appellee's registered mark "Vibro-Centric." Goods of the Same Descriptive Properties *Id. 25. GOODS OF THE SAME DESCRIPTIVE PROPERTIES.-Panties, slips, night dresses, combinations, and petticoats Held to be goods of the same descriptive properties as hosiery. *In re Laskin Brothers, Inc., 104. 26. "MAGAZINE" AND "PERIODICAL."-In connection with appellant's application for the registration of a trade-mark for a "magazine of cartoons," which was rejected on the basis of a registration of a trade-mark for a "periodical publication," Held that "magazine" is embraced within the meaning of the term "periodical," and the terms are synonymous; that both terms describe publications; and that "the fact that appellant chose to use 'magazine' rather than 'periodical' is of no moment in considering the question of whether appellant's publication has the same descriptive properties as the publication of the reference." *In re Wings Publishing Co., Inc., 210. 27. PUBLICATIONS.-"The 'merchandise' to which applicant applies the mark of the application is a periodical within the common meaning of that term. So is the 'merchandise' to which the registered mark is applied. Hence the 'merchandise' broadly is identical. It may be that there are differences in the nature of the contents of the respective publications, but the marks are not for application to the contents, but to the publications themselves. They constitute titles. The nature of the contents may vary in each from month to month, and we are unable to see upon what basis the contents of a single issue, or even a plurality of issues, may be taken as a criterion in considering the question of descriptive properties." *Id. 28. REGISTRABILITY.-Appellant's application for the registration, as a trademark for a "magazine of cartoons," of the notation "WINGS COMICS," the latter word being disclaimed apart from the mark shown, and the former word being imposed upon a drawing representative of wings, Held properly rejected on the basis of a registration of the word "WINGS" as a trade-mark for a "periodical publication." *Id. 29. GOODS OF THE SAME DESCRIPTIVE PROPERTIES.-Appellant having shown no use of the glycerin or alcohol to which it applies its trade-mark "Goldex" other than as pharmaceuticals, Held that such goods are not goods of the same descriptive properties as the automobile antifreeze compound to which applellee applies the trade-mark "Coldex" even though it is well-known that glycerin and alcohol may be used in anti-freeze preparations for automobiles. *Goldsmith Bros. v. Atlas Supply Co., 285. |