ON PETITION.

TRADE-MARK FOR MEDICINE.

Messrs. Taylor & Hulse and Messrs. Steuart & Steuart for The Ozo Remedy Company.

Mr. James L. Norris for Carnrick & Co., Ltd.

TENNANT, Assistant Commissioner:

This is a petition by Carnrick & Co., Ltd., invoking the exercise of the supervisory authority of the Commissioner to set aside a decision of the Examiner of Interferences.

This is an interference between an application of The Ozo Remedy Company and a registration of Carnrick & Co., Ltd., No. 23,098, granted May 23, 1893. It appears from the record of The Ozo Remedy Company's application for registration and from a motion by that company in this interference that the officers of The Ozo Remedy Company carried on certain correspondence with Carnrick & Co., Ltd., relative to the use of the trade-mark involved in this interference and were advised by Carnrick & Co., Ltd., that—

we have not yet put upon the market a preparation bearing this name.

These facts are set up in an affidavit in support of the motion by The Ozo Remedy Company before the Examiner of Interferences that Carnrick & Co., Ltd., be required to file counter affidavits within a certain time traversing these facts and that in event of the failure of the latter to comply with this requirement judgment be rendered in favor of The Ozo Remedy Company.

The Examiner of Interferences granted this motion, holding that the affidavit accompanying the motion filed by The Ozo Remedy Company is, in effect, a sworn pleading by that party alleging that Carnrick & Co., Ltd., are not the owners of the mark in issue and that the registration of the latter is invalid and that in the event of the failure of Carnrick & Co., Ltd., to file a sworn pleading in answer thereto judgment by default would be rendered against the latter.

It is contended in behalf of the petitioner that the certificate of registration issued to Carnrick & Co., Ltd., is prima facie evidence of ownership, which can be overcome only by testimony duly taken, with the right of cross-examination, establishing priority of adoption of the mark in issue by the applicant or abandonment by the registrant. It is further urged that the Examiner of Interferences was without authority to require the registrant to file affidavits in reply to those filed by the applicant.

I am of the opinion that these contentions are untenable and that the action of the Examiner of Interferences in this case is well founded. An interference proceeding is instituted for the purpose of

determining the question of the right of an applicant to register a trade-mark the ownership of which is claimed by another applicant or by a registrant. His right to registration is dependent upon his ownership of such mark. Where an issue is raised between an applicant and a prior registrant as to the present ownership of the mark, the questions involved may be, first, whether the applicant was the first to adopt and use the trade-mark; second, whether the applicant, although not the first to adopt, is owner of the mark by reason of the abandonment of the mark by the registrant before the date of adoption and use thereof by the applicant. As stated in ex parte Gill Bros. Co., (C. D., 1904, 119; 109 O. G., 1885:)

The right to registration depends upon the present ownership of the trademark, and it is clear that priority of adoption alone does not establish present ownership. It depends upon present use of the mark, and to retain title to a mark once adopted there must be continuous use of it thereafter. If after adopting a mark its use is abandoned, the field is left open to others, and one who subsequently adopts it and uses it continuously may acquire title to it.

Where, as in the present case, an applicant for registration of a trade-mark traverses the ownership of such mark by a registrant by a sworn statement of facts tending to show that the registrant is not now using or has abandoned the mark, it is reasonable and just that the registrant should be required to file a sworn statement replying to the allegation of the applicant. The fact of abandonment is peculiarly within the knowledge of the registrant and is exceedingly difficult of proof from circumstances known to others. The affidavit of the applicant that the registered mark has been abandoned is, in fact, a pleading, and in analogy to all legal proceedings in which pleadings are required such an averment calls for answer under oath setting forth facts in reply to those alleged by the applicant. Where there is reason to believe that after securing registration the registrant failed to use his mark or after having used the mark for some time abandoned the same, and therefore will probably not contest the applicant's right to register same, it is thought to be unreasonable to place the burden upon an applicant of taking testimony to prove such abandonment of the mark in the absence of a statement under oath from the registrant setting forth facts indicating his claim to ownership or other facts which would bar the applicant from receiving his registration.

The procedure taken in this case is not in conflict with the statutes or with the Rules of Practice of the United States Patent Office. It is, in my opinion, in accordance with the equity practice, and experience in this Office has demonstrated that this procedure, which has been followed in the Interference Division for considerable time, has proven a salutary means of avoiding expensive litigation.

The petition is denied.

EX PARTE WRIGHT.

Decided April 15, 1909.

147 O. G., 235.

PATENTABILITY.

Where the art showed it was old to introduce a powder as a modifying element into a stream of molten metal in the direction of its travel between the ladle and the mold, also that it was old to blow powder into a stream of metal transversely, Held that no invention is involved in introducing the powder in the manner first described by the aid of fluid-pressure.

APPEAL from Examiners-in-Chief.

PROCESS FOR INTRODUCING MODIFYING ELEMENTS INTO CASTINGS.

Messrs. Synnestvedt & Carpenter for the applicant.

MOORE, Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Primary Examiner rejecting the following claims:

1. The process of introducing a modifying element into a cast body during pouring into the molds which consists in forcing the element in the form of a powder by fluid-pressure into the stream of heated metal intermediate the ladle and the mold.

2. A process for introducing a modifying element into a cast body during pouring which consists in forcing the element in the form of a powder by fluidpressure into the stream of metal in the direction of travel of such metal.

The references are: Wilmington, December 4, 1883, No. 289,741; Samuel, February 16, 1886, No. 336,439.

Appellant's alleged invention is for a process of introducing a modifying element-as, for example, manganese-into a cast body by forcing the element in the form of a powder by means of air or other fluid pressure into a stream of molten metal while intermediate the ladle and the mold. Claim 2 also specifies that the powder is forced— into the stream of metal in the direction of travel of such metal.

The patent to Wilmington discloses the idea of introducing such a modifying element in the form of a powder into a stream of molten metal while flowing from a ladle into a mold and of introducing it in the direction of travel of said metal.

The patent to Samuel shows a device for blowing powder into a stream of molten metal, the powder being introduced transversely of the stream.

The Wilmington patent clearly discloses all of the steps of appellant's process except that of introducing the powder by fluid-pressure. The patent to Samuel shows the latter step to be old. In view of the latter patent I think it clear that there is no invention involved

in introducing the powder in Wilmington's process in the manner disclosed in the Samuel patent.

The decision of the Examiners-in-Chief is affirmed.

LAWRENCE v. Voight.

Decided April 21, 1909.

147 O. G., 235.

1. INTERFERENCE-PRIORITY-ABANDONED EXPERIMENT.

Where after making a device which while capable of operation was still in a crude stage L. turned it over to the officers of his company, who laid it aside and later set other employees to work to devise a similar improvement, and it was not until he learned of their work that L. took any further interest in his invention, Held that the device made by L. was a mere abandoned experiment.

2. SAME-SAME-CONCEALMENT OF INVENTION.

L. made a device embodying the invention prior to V.'s conception thereof. He showed it only to the officers of his company, who laid it aside on account of other business, and no attention was given it by them or L. until they obtained knowledge of the work done by a rival company, V.'s assignee. Held that if the device made by L. was a reduction to practice he had forfeited his right to a patent by his concealment, (citing Mason v. Hepburn, C. D., 1898, 510. 84 O. G., 147; 13 App. D. C., 86, and other decisions.)

APPEAL from Examiners-in-Chief.

Mr. Henry A. Seymour for Lawrence.

Messrs. Bartlett, Brownell & Mitchell for Voight.

MOORE, Commissioner:

This is an appeal by Lawrence from the decision of the Examinersin-Chief affirming the decision of the Examiner of Interferences and awarding priority of invention in favor of Voight.

The issue is in twenty-one counts, and the invention is sufficiently illustrated for the purpose of this decision by count 1, which reads as follows:

1. In a lock the combination with a bolt, and knob mechanism for retracting the bolt, of a slide for deadlocking the outer knob, and means actuated by the closing of the door for deadlocking said slide.

The invention is for an improvement in mortise-locks. In such locks it was old to provide a slide to deadlock the main bolt, and the characteristic feature of the invention in issue is the provision of means for deadlocking said slide to prevent unauthorized persons from manipulating the lock.

Voight was the first to make application for patent, his application bearing date of March 13, 1906. The Lawrence application was filed some two and a half months later, on May 29, 1906. The applicants, Voight and Lawrence, are in the employ of and assigned their applications, respectively, to the Russell & Erwin Mfg. Co. and the Yale & Towne Mfg. Co., and these rival companies are the real parties in interest in this proceeding.

The Examiner of Interferences and the Examiners-in-Chief awarded priority in favor of the senior party, Voight. They found that Lawrence was the first to conceive and disclose the invention, but that certain devices made by him in 1903 and 1904 and alleged by him to constitute a reduction to practice of the invention were merely abandoned experiments and that he was not exercising diligence at the time Voight entered the field. They further found that even if these devices could be held to constitute a reduction to practice Lawrence had forfeited his rights by his concealment and suppression of the invention until after his rival had entered the field and perfected the invention.

Concerning the facts in the case there is little dispute, and the controversy is rather as to the legal conclusions to be drawn from such facts.

It appears from the evidence that Lawrence completed his "Exhibit Lock No. 1" in 1903 and his "Exhibit Lock No. 2" in the summer of 1904. While the first device did not embody the invention of all of the counts of the issue, there is no question but that the counts will all read upon the latter device. It appears that in constructing the device of " Exhibit Lock No. 2" Lawrence took one of the standard locks made by his company and inserted therein the additional dogging feature forming the characteristic feature of the invention of the issue. This lock was a full-sized device, was operable, and after being tested on a small door some two feet high was turned over to the officials of the company, who did nothing with it and finally deposited it in the model-room.

It further appears that in January, 1906, certain robberies occurred in Chicago in which locks were picked by prying up the beading on the door frame, then inserting a bent wire and manipulating the push-buttons in the plate which control the dogging device. Both of the companies interested in this interference were informed by their agents of these robberies and urged to provide their locks with a suitable safeguard. Voight was set at work to perfect a remedy by the Russell & Erwin Mfg. Co. He devised his lock in February, 1906, and filed his application on March 13, 1906. In view of the prompt filing of his application it is unnecessary to consider whether he made an actual reduction to practice prior thereto, as contended. 21895-H. Doc. 124, 61-2-12