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In the decision in ex parte Union Carbide Company the mark was refused on several grounds, one of which was that the words “Union Carbide," which was the mark sought to be registered, were substantially the name of the applicant, and therefore the case fell within the ruling in the case of K’entucky Distilleries & Warehouse Company v. Old Lexington Club Distilling Company, supra.
It is urged by the appellant that these cases do not apply, for the reason that the word “ Champion ” forms a smaller portion of the name of the applicant than did the marks in question in the cases above cited. The word “ Champion," however, forms substantially the name of the applicant, and as it is not written in any distinctive manner the case falls clearly within the ruling of the decisions cited.
The decision of the Examiner of Trade-Marks is affirmed.
EX PARTE BARCLAY AND BARCLAY.
Decided June 1, 1909.
143 0. G., 1109.
The question of republication, whatever may be the ground therefor, is one that should be left to the discretion of the Examiner of Trade-Marke, and his action on such question will not be disturbed unless it be shown that such discretion has been abused.
TRADE-MARK FOR PILLS.
Messrs. Julian C. Dowell & Son, for the applicants. Moore, Commissioner:
This is a petition that the Examiner of Trade Marks be directed to withdraw the mark referred to herein from republication.
The record of this case shows that the mark was originally presented as a technical trade-mark. The case was passed to publication, and an opposition was filed. After the termination of that opposition the Examiner required that certain words be taken from the mark, and other objections were made thereto. In order to avoid the latter objections, the mark was presented under the “ten-years ” clause of the Trade-Mark Act. The Examiner thereupon gave notice that the mark would be republished.
This action of the Examiner appears to have been clearly right. As stated above, the mark was originally published as a technical trade-mark. It is now presented under the “ ten-years" clause of the Trade-Mark Act. There may be grounds for opposition to the registration of a mark presented under the “ ten-years." clause which do not apply to a mark presented as a technical trade-mark, and for that reason it is deemed that republication was properly ordered.
In ex parte The American Wringer Company (C. D., 1908, 145; 134 O. G., 1803) it was said that
The question of whether any substantial change has been made in the class of goods or such a change as to warrant republication is one that should be left to the discretion of the Examiner of Trade-Marks.
It is believed that the question of republication, whatever may be the ground therefor, is one that should be left to the discretion of the Examiner of Trade-Marks, and his action on such question will not be disturbed unless it be shown that such discretion has been abused.
The petition is denied.
EX PARTE MOTSINGER.
Decided June 3, 1909.
143 0, G., 1110.
APPEAL-RECOMMENDATION OF THE EXAMINERS-IN-CHIEF.
Where on appeal from the rejection of certain claims the Examiners-inChief hold that the references cited are insufficient to anticipate the claims, but call attention to certain other references and suggest that the Examiner reject the claims thereon and the Examiner does so reject the claims, Held that appeal from this action lies to the Examiners-in-Chief in the irst instance,
PROCESS OF TREATING CONCRETE FLOORS, WALLS, ETC.
Messrs. Bradford & Hood for the appellant.
BILLINGS, Assistant Commissioner:
This case comes before me as a purported appeal from a decision of the Examiners-in-Chief refusing the allowance of certain claims to an improvement in the art of treating concrete.
These claims were rejected by the Primary Examiner on certain references, and an appeal was taken to the Examiners-in-Chief from that decision. In the opinion of the Examiners-in-Chief they stated that the references cited by the Examiner were regarded as insufficient to anticipate applicant's claims; but they called attention to certain other patents and suggested the consideration thereof by the Primary Examiner and the rejection of the claims thereon in case he was of the opinion that they anticipated the invention claimed. Thereupon the Examiner rejected the claims on the references to which attention was called by the Examiners-in-Chief. The present appeal was then prosecuted as an appeal from a decision of the Examiners-in-Chief. As to the propriety of taking appeal counsel for applicant states:
It is believed that it is proper for the Commissioner to hear the present appeal, even though it be an appeal on the merits direct from the decision of the Primary Examiner, for the reason thåt the Board of Examiners-in-Chief has already expressed its opinion as to the applicability of the new references cited, and the action of the Examiner is in effect simply the completion of the action or decision of the Board of Examiners-in-Chief. Consequently applicant ought not to be put to the expense of a pro forma proceeding before the Board of Examiners-in-Chief, such expense involving not only a Government fee for the appeal, but also the expense of counsel fees, etc.
This appeal is informal. It is true that the Examiners-in-Chief have considered the references upon which the claims now stand rejected; but as the Examiner had not rejected the claims on the references now relied upon they did not refuse the allowance of the claims by reason of the references relied upon at that time nor could they have done so. Their suggestion to the Examiner that the references now relied upon anticipated the claims appealed was not a refusal to allow the claims in view of said references.
The law provides (sec. 4909, R. S.) for an appeal to the Examinersin-Chief in the first instance, and the mere suggestion of the Examiners-in-Chief to the Primary Examiner that patents be considered on the question of anticipation cannot be regarded as a decision by them in accordance with the law, such as would entitle an appeal to be taken. It is a mere recommendation. Moreover, the Examiner has rendered another decision, and this appeal is taken directly from that decision As the law does not provide for such an appeal, it must be dismissed.
It is noted that contrary to the belief of the applicant, as expressed in the above quotation from his brief, no appeal fee is required on a second appeal to the Examiners-in-Chief in this case. (Sec. 4909, R. S.)
The appeal is dismissed.
THIEM V. BOWEN.
Decided May 18, 1909.
143 0. G., 1345.
1. INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.
A decision of the Examiner of Interferences transmitting a motion to dissolve will not be disturbed merely because the motion was filed more than thirty days after the preliminary statements of the parties were approved, but only where it is shown that there has been a clear abuse of discretion by the Examiner of Interferences in transmitting such motion.
2. SAME-SUPERVISORY AUTHORITY OF THE COMMISSIONER.
The supervisory authority of the Commissioner will not be exercised to determine whether one of the parties to the interference has a right to make the claims in issue where it appears that a motion to dissolve on that ground has been transmitted to the Primary Examiner and is awaiting action on his part. APPEAL ON MOTION.
Messrs. Ofield, Towle & Linthicum and Messrs. Bacon & Milans for Thiem.
Messrs. Hey & Parsons and Mr. John M. Coit for Bowen.
This case is before me upon an appeal by Thiem from the decision of the Examiner of Interferences transmitting a motion brought by Bowen to dissolve the interference on the ground that Thiem has no right to make the claims forming the counts of the issue; also, on a petition by Thiem for an order dissolving the interference and instructing the Primary Examiner to pass petitioner's application to issue without further delay.
The record shows that on April 1, 1909, Thiem filed a motion to shift the burden of proof, on the ground that the invention of the issue is disclosed in a patent issued to him fourteen months prior to the filing date of his present application, and a motion to dissolve the interference, on the ground that Bowen has no right to make the claims of the issue. The motion to shift the burden of proof and the motion to transmit the motion to dissolve were noted for hearing on April 6, 1909, the last of the thirty days provided by Rule 122 for the filing of such motions. By stipulation the hearing of the above motions was postponed until April 16, 1909. On April 17, 1909, Bowen filed a motion to dissolve the interference, on the ground that Thiem has no right to make the claims of the issue. The Examiner of Interferences transmitted Thiem's motion to dissolve and deferred his decision on the motion to shift the burden of proof. He also transmitted the motion of Bowen so far as it is based on the allegation that a patent on Thiem's application is barred by a patent issued to Thiem some fourteen months prior to the filing date of his application in the interference.
Thiem contends that in view of the holding of the Examiner of Interferences that the showing by Bowen in excuse for the delay in filing his motion is insufficient the Examiner exceeded his authority in transmitting the motion. The reason given by the Examiner of Interferences for transmitting the motion is as follows:
II Bowen's motion for dissolution was on a footing with the usual motion presented in these cases it would not be transmitted at this time. This motion
21895-H. Doc. 124, 61-28
stands on a different footing from the usual motion in that the question which it ralses is the complement of that ralped by Thiem in his motion to shift the burden of proof. Thiem, in due time and if the interference is not dissolved, will have a determination of the suficiency of his prior patent as a constructive reduction to practice of the invention in issue. If this same patent is at the same time a bar to the prosecution of this interference by Thiem this fact should also be discovered at this time. That Thiem should take advantage in this interference of a patent which disentitles him to prosecute the same is repugnant to reason. As suggested above, the availability of that patent to Thiem and its effect as a bar to a patent upon his present application are such closely. related matters as to constitute practically a single question. To determine the former without determining the latter might lead to the prosecution of a lengthy Interference upon an artificial situation, that is, an interference which, if the contentions of Bowen are sound, Thiem is not entitled to defend and prosecute under the long-established practice of the Office.
It is a well-established practice that the decision of the Examiner of Interferences transmitting a motion to dissolve will not be disturbed unless there is shown a clear abuse of discretion on his part. (Winter v. Slick v. Vollkommer, C. D., 1901, 210; 97 0. G., 1837; Arbetter v. Lewis, C. D., 1902, 161; 99 O. G., 1383; Sturgis v. Hopewell, C. D., 1904, 82; 109 O. G., 1067; Harrison v. Shoemaker, C. D., 1904, 129; 109 O. G., 2170; Dunn v. Halliday, C. D., 1905, 545; 119 0. G., 2236; Pickard v. Ashton and Curtis, C. D., 1908, 241; 137 O. G. 977.) In Pickard v. Ashton and Curtis, supra, it is stated :
For the same reasons which apply to motions to amend preliminary statements (Smith and Wicker v. Emerson v. Sanders, C. D., 1908, 97; 133 0. G., 1433) and to motions with respect to the taking of testimony (Goodfellow v. Jolly, C. D., 1905, 105; 115 0. G., 1064) the question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.
In the present case I find no such abuse of discretion. It may be noted that Rule 122 states that the motionshould, if possible, be made not later than the thirtieth day after the statements of the parties have been received and approved.
The rule does not state that the motion should not be transmitted by the Examiner of Interferences if it could possibly have been brought within the thirty days where, as in the present case, there appears to be good reasons why it should be transmitted.
As to the petition, the circumstances of the case clearly do not call for the exercise of the supervisory authority of the Commissioner. The petition is based on the contention that Bowen has no right to make the claims of Thiem suggested by the Primary Examiner. Thiem has brought a motion to dissolve on this ground, which has been transmitted to the Primary Examiner and is awaiting his action. He is the proper official to decide the matter in the first instance, and