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The J. and J. Eager Company demurred to this notice of opposition on several grounds; but the only ground argued before the Examiner of Interferences and decided by him was that the goods of the respective parties are not of the same descriptive properties. The Examiner of Interferences in sustaining the demurrer based his decision on the ruling in Vanden Bergh & Company v. Belmont Distillery Co., (C. D., 1903, 496; 107 O. G., 2235,) in which it was held that whis and gin are goods of different descriptive properties.
That decision was rendered in a case arising under the TradeMark Act of 1881, which did not provide for an appeal from the decision of the Commissioner of Patents. In two cases arising under the act of 1905 the Court of Appeals of the District of Columbia has rendered decisions bearing upon the question of when goods must be considered to be of the same descriptive properties.
These decisions are Walter Baker & Company, Limited, v. Harrison (post, 284; 138 0. G., 770; 32 App. D. C., 282) and Phoenix Paint & Varnish Company v. Lewis & Bros., (post, 303; 139 O. G., 990; 32 App. D. C., 285.) In the former the Court said:
Things may be said to possess the same descriptive properties when they can be applied to the same general use. Coffee and cocoa, when used as beverages, are at once associated as belonging to the class of beverages in general domestic use. They belong to the class of beverages universally used on the table and sold in prepared packages for that purpose. Should the same mark be granted to different persons for use on coffee and cocoa, respectively, the natural and certain result would be, that the one wishing to profit by the use of the same mark would adopt the style of package used by the other, and, by such unauthorized imitation, cause confusion in the mind of the purchasing, consuming public as to the quality of the goods so marked. The intent of the statute is to protect the rightful owners of trade-marks in their valuable property rights, and it seems to tax the courts to the utmost to protect those rights against the ingenuity of counsel and the designs of sharp competitors. A mark should be denied, not only when used upon goods of the same descriptive properties as a similar registered mark, but when used on goods belonging to the same general class.
In the latter it was said:
We think two trade-marks may be said to be appropriated to merchandise of the same descriptive properties in the sense meant by the statute when the general and essential characteristics of the goods are the same. To rule that the goods must be identical would defeat the purpose of the statute and destroy the value of trade-marks. The test is whether there is such a sameness in the distinguishing characteristics of the goods as to be likely to mislead the general public. If there is only one mark should be registered.
Applying these principles thus announced by the court to the facts in this case, it must be held that gin and whisky are goods of the same descriptive properties. The decision in Vanden Bergh & Company v. Belmont Distillery Company, supra, so far as it holds otherwise, is therefore overruled.
The decision of the Examiner of Interferences is reversed.
IN RE MARVIN ESTATE COMPANY.
Decided September 20, 1909.
148 0. G., 571,
ACCESS TO ABANDONED APPLICATIONACCESS GRANTED.
Where suit is brought on a patent the record of which shows that one of the claims thereof was allowed in a prior application belonging to the same assignee and was transferred to the application on which the patent was granted, Held that the defendants are entitled to inspect and obtain copies
of said prior application. ON PETITION.
Messrs. Winkler, Flanders, Bottom & Fawsett for the Marvin Estate Company.
Mr. Thos. Ewing, Jr., and Mr. Vernon M. Dorsey for Booth. TENNANT, Assistant Commissioner:
This is a petition by the Marvin Estate Company for leave to inspect and obtain copies of the record of an application, including the appeal file, Serial No. 91,389, filed January 27, 1902, by Herbert C. Booth, and also of a division of said application.
The ground upon which this petition is based is that the petitioner is defendant in a suit brought by the Vacuum Cleaner Company in the United States Circuit Court for the Northern District of California, as assignee, for the infringement of Patent No. 847,947, granted to David F. Kenney March 17, 1907, for an apparatus for removing dust, in which the record shows that claim 3, one of the claims involved in said suit, was transferred to the application upon which the Kenney patent was granted from the application of Booth, No. 91,389, to which access is requested.
The record of Patent No. 847,947 shows that the Primary Examiner finally rejected the claims of the Kenney application and that upon appeal to the Examiners-in-Chief the decision of the Examiner was reversed. It appears from the contents of the appeal file that Kenney petitioned the Commissioner of Patents to remand his application to the Examiners-in-Chief for the purpose of presenting a claim to that tribunal for a recommendation as to its patentability. The argument submitted therewith is, in part, as follows:
Counsel is informed that in the application of H. C. Booth, No. 91,389, filed January 27, 1902, a claim has been allowed in language as follows:
"1. In a suction cleaning apparatus, the combination of a suction-nozzle adapted to be moved over the surface and having a narrow inlet-slot, a poweroperated suction-pump, and impurity-collecting means between said nozzle and pump adapted to remove the impurities from the air and prevent fouling the pump while permitting the working vacuum to be maintained at the nozzle."
In view of these actions of the Board, it seems clear that applicant is entitled to the following claim:
" In a suction cleaning apparatus, the combination of a suction-nozzle adapted to be moved over the surface and having a narrow inlet-slot, a suction-creating device capable of maintaining a sufficient vacuum, and impuritiescollecting means between the nozzle and suction-creating device and suitably connected therewith for removing the impurities from the air, substantially as described.”
To secure consideration of this claim under the rules, applicant requests this application to be remanded to the Board to consider applicant's request, which is hereby presented, that the above claim be recommended by the Board as allowable.
The record shows that the Examiners-in-Chief recommended the allowance of this claim, and thereafter Kenney presented an amend. ment containing the claim which had been recommended by the Examiners-in-Chief, stating in connection therewithclaim 3 applicant understands was allowed in an application to H. C. Booth.
This claim is the identical claim except for the words “as substantially described,” which Kenney had stated in his petition to the Commissioner had been allowed in Booth's application, No. 91,389.
In addition to the statements in the record showing the transfer of claim 3 of the Kenney patent from the Booth application, No. 91,389, there appear in the record of the Kenney patent the affidavit of John Platt, an expert in this art, and also the affidavit of the applicant, Kenney, which show the identity and operation of the device disclosed in Kenney's patent and that covered by a British patent to Booth, No. 17,433, series of 1901, and that Kenney was the owner of the Booth application, No. 91,389, at the time the claim was transferred from that application to Kenney's application. Comparison shows that the Booth application, No. 91,389, is substantially identical with the British patent granted to him. It therefore follows that the disclosure of Booth's application, No. 91,389, will place no knowledge of other inventions of his in the hands of the public. The case is in this respect similar to the case in re The New York Woven Wire Mattress Company, (C. D., 1906, 101; 121 O. G., 688,) in which it is said:
All of the reasons for preserving original applications and caveats in secrecy do not exist in reissue applications, and therefore the same character of showing is not required to warrant furnishing copies. A reissue applicant has no secret invention to be concealed from the public, since he has necessarily disclosed it in his patent. All that can be concealed in a reissue case is the procedure and new claims made.
It is, however, urged in behalf of Kenney that the Commissioner is without authority to grant access to the pending application of Booth without a certificate or order of the court before which the suit for infringement is being tried. This contention is believed to be without force. As stated in the Metropolitan West Side Elevated Railroad Company et al. v. Siemens, (C. D., 1898, 220; 85 0. G., 290 :)
To sustain the second point it is urged on behalf of Siemens that in view of the opinion of the court in U. 8., en rel. Bulkley, v. Butterworth, Commr. of Patents (C. D., 1897, 685; 81 O. G., 505) no discretion is vested in the Commissioner to grant or withhold copies of such papers as those in question without a certificate or order from the court in which the case is pending. I do not so interpret the decision referred to. As a general rule it will probably be found to be safer to require an order or certificate from a court of competent Jurisdiction before furnishing parties with coples of pending or abandoned applications. But when a patentee has referred to a prior application for a patent, whether such reference appears upon the face of the specification or only among the application papers, and thereafter brings suit upon his patent, he cannot with very good grace urge that the papers referred to by him are private papers."
It is well settled that the history of claims in the Patent Office during the pendency of an application has a material bearing upon the scope of such claims when construed by the courts in infringement cases, and it is the settled practice of the Patent Office to permit access to applications which the record of the patent shows led to the grant of the claims contained in the patent on a proper showing of interest by the party desiring access to such application. (Ex parte Doman, C. D., 1905, 101; 115 O. G., 804; ex parte Lewis and Unger).C. D., 1903, 303; 106 O. G., 543; ex parte Lanning, C. D. 1906, 412; 124 O. G., 2902; in re The Vacuum Specialty Company, ante, 88; 142 O. G., 1114.) The authority of the Commissioner to grant access to such applications is believed to be sustained by the opinion of the court in the case of MacWilliam v. Connecticut Web Company, (119 Fed. Rep., 509,) in which the Court said:
It is not quite clear what sort of certificate this court is asked to give. No reference is made to any statute or to any rule or regulation of the Patent Office requiring a certificate of court as prerequisite to the production for inspection and copy of an abandoned application. For aught that appears, the Commissioner of Patents has full power in the premises. From the argument in the briefs of counsel for the respective parties, it would seem that the principal matter of dispute between them is as to whether the application is rele vant and material to the issues in this suit. The Supreme Court, however, in Blease v. Garlington, (92 U. S., 1; 23 L. Ed., 521,) has indicated that, in the course of taking proofs in equity, all such questions should be reserved for final hearing, and the testimony preserved for the appellate court should the decision at final hearing be adverse to its admission. This court is prepared to sign a certificate to the effect that, in conformity to the rulings of the United States Supreme Court, it would admit said abandoned application in evidence if it, or a certified copy, were offered, notwithstanding any objections to its relevancy, materiality, or pertinency.
The facts in this case are substantially the same as those appearing in the case of in re The Vacuum Specialty Company, (ante, 88; 142 0. G., 1114,) and, for the reasons stated in that decision, it is believed
that the petitioner is entitled to access to the Booth application and to the record of the proceedings on appeal therein.
I find, however, no reason for permitting access to the divisional application, since it does not appear that any action in that application led to the allowance of claims now forming a part of the Kenney patent.
The petition is granted to the extent indicated.
HAMMOND AND DONAHUE v. COLLEY V. NORRIS.
Decided October 30, 1909.
148 0. G., 573.
INTERFERENCE-MOTION TO AMEND UNDER RULE 109-APPEAL.
A motion to dissolve the interference and a motion to amend under Rule 109 were transmitted to the Primary Examiner, who granted the former, but denied the latter. Held that the fact that appeal was not taken from the decision on the motion to dissolve constitutes no ground for the dismissal of the appeal from the decision on the motion to amend.
Mr. H. J. Livermore and Mr. Horace Van Everen for Hammond and Donahue.
Mr. S. W. Bates for Colley.
TENNANT, Assistant Commissioner:
This case is before me upon petition by Norris that the case be remanded to the Examiners-in-Chief for the purpose of hearing and deciding an appeal from the decision of the Examiner refusing certain claims presented under Rule 109, and also upon an appeal from certain portions of the decision of the Examiner refusing such claims.
The record shows that the preliminary statements were approved January 29, 1909, and on that date an order was issued against Hammond and Donahue to show cause on or before March 1, 1909, why judgment on the record should not be rendered against them. On February 27, 1909, Norris filed a motion for dissolution and also a motion to amend under Rule 109. On March 8 the Examiner of Interferences rendered judgment against Hammond and Donahue and on the same day transmitted in part Norris's motion to dissolve and also his motion to amend. On April 16 the Examiner granted