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HEWITT AND WATERMAN v. GREENFIELD.

Decided November 30, 1909.

149 0. G., 1119.

1. INTERFERENCE-RIGHT TO MAKE THE CLAIMS IN A PARTY's Own APPLICA

TION--FINAL HEARING.
A party's right to make a claim in issue in his own application is not a

matter that can be properly raised at final hearing under Rule 130. 2. SAME--SAME-Two APPLICATIONS OF SAME PARTY INVOLVED-TRANSFEBRING

CLAIMS. Where a party contends that a claim in issue is not readable upon that one of two of his applications involved in which it is made, but upon the other, Held that, if true, this would not constitute such irregularity as to preclude a proper determination of priority and that the supervisory authority of the Commissioner will not be exercised to have the claim transferred from one application to the other.

APPEAL from Examiners-in-Chief.

FLEXIBLE TUBING.

Mr. Henry A. Seymour for Hewitt and Waterman.
Mr. Samuel 0. Edmonds for Greenfield.

BILLINGS, First Assistant Commissioner:

This is an appeal by Hewitt and Waterman from the decision of the Examiners-in-Chief affirming the decision of the Examiner of Interferences awarding priority of invention as to count 13, the only count upon which appeal was taken, to Greenfield, the senior party, upon the record.

As declared, this interference included two applications of appellants, and the issue embraced fourteen counts. Appellants' original application disclosed three species, and claims corresponding to counts 9–14, inclusive, were made in that application. Counts 1-8, inclusive, correspond to claims 1-8, inclusive, of appellants' later application. This application was filed as a division of appellants' original application for the purpose of embodying claims specific to the form of device shown in Figures 3 and 6 of the original application.

During the prosecution of the interference appellants brought a motion to dissolve the interference as to count 13, on the ground that it is not patentable over the prior art. This motion was transmitted to the Primary Examiner and was denied by him. Appellants then filed a second motion to dissolve as to count 13, on the grounds of no interference in fact, informality in the declaration of the interference, and that they had no right to make the claim corresponding to said count in their earlier application. This motion was refused transmission by the Examiner of Interferences, for the reason that appellants' motions to dissolve were brought piecemeal, also because the showing did not satisfactorily excuse the delay in bringing the latter motion. On appeal the decision of the Examiner of Interferences refusing transmission was affirmed by the Commissioner. Neither party took testimony, and priority of invention was awarded in favor of the senior party.

Of the eight assignments of error set up in this appeal only the fifth alleges error in the award of priority. This assignment reads as follows:

5th. The Examiners-in-Chief erred in awarding priority to Greenfield as to count 13, for the reason that the Hewitt and Waterman application embodying count 13 does not disclose the elements of said count.

If appellants' application containing the claim of this count does not disclose all of the elements of said count and if appellants have no right to make the claim in said application, as they allege, it clearly furnishes no reason why the award of priority in favor of Greenfield should be reversed. Moreover, this is not a matter that can be properly raised at final hearing under Rule 130.

The remaining assignments allege error in the decision of the Examiners-in-Chief in not holding that appellants had no right to make the claim of count 13 in their parent application, as it is specific to the construction disclosed in their divisional application; in not holding that there was such irregularity in the declaration of the interference as would preclude a proper determination of the question of priority as to count 13; in not suggesting that count 13 should be transferred to the divisional application; in not calling the attention of the Commissioner to the matters stated above, and in not recommending that said count is anticipated by a British patent. The matters set forth in these assignments do not relate to priority of invention and were not properly before the Examiners-in-Chief. It is well established that no appeal lies to the Commissioner from a refusal to make a recommendation under Rule 126. (Walsh v. Hallbauer, C. D., 1901, 9; 94 O. G., 223; Benet and Mercie v. McClean, C. D., 1901, 191; 97 O. G., 1595; Wilcomb v. Lasher, C. D., 1903, 235; 105 0. G., 743; Woods v. Waddell, C. D., 1903, 391; 106 O. G., 2017.)

Appellants state in their brief:

All that we seek to do by this appeal is to have this irregularity corrected by a transfer of count 13 from the original to the divisional application.

And they ask that the Commissioner exercise his supervisory authority and instruct the Primary Examiner that count 13 is readable only on the construction disclosed in their divisional application and should be transferred to said application.

The circumstances of this case do not call for the exercise of the supervisory authority of the Commissioner. Appellants failed to

raise this matter in their original motion to dissolve, and the refusal of the Examiner of Interferences to transmit their later motion was affirmed by the Commissioner. The purpose of this interference proceeding is to determine the question of priority of invention, and appellants do not question the correctness of the lower tribunals in their award in favor of Greenfield. Both applications of appellants are involved in the interference, and they admit that the count is readable on the construction of at least one of said applications. Under these circumstances and at this stage of the proceeding it is unnecessary to construe the count and determine which forms of appellants' device come within the terms of the count. This is a matter for the determination of the courts after the issue of Greenfield's patent.

Whether count 13 is generic to all forms of appellants' device or is specific to that of the divisional application is immaterial, since the award of priority in any event must be in favor of Greenfield. Clearly there was no such irregularity in the declaration of the interference as to preclude the proper determination of priority.

No error is found in the decision of the Examiners-in-Chief, and it is accordingly affirmed.

B. FISCHER & Co. v. A. F. BECKMANN & Co.

Decided November 16, 1909.

149 O. G., 1120.

1. TRADE-MARK8-CANCELATION-DAMAGE-SUFFICIENCY OF SHOWING.

Where the mark shown in the registration whose cancelation is sought consists of the words “ Crown Aster" for “canned fruits, canned vegetables, pork and beans, Jam, preserves, and marmalades" and the applicant for cancelation merely alleges that it had adopted the mark “Hotel Astor" for coffee prior to the date of adoption of the mark “Crown Aster" by the registrant and had used it continually ever since, Held that the showing of damage is not sufficient, and a demurrer to the application for cancelation

was properly sustained. 2. SAME-SAME-SAME-GOODS IN SAME CLA88.

While the owner of a trade-mark is entitled to protection against the registration of the same or a similar mark by another upon goods adapted to similar use, he is not entitled by reason of its use on one article to a monopoly of the mark for all goods which may be included in a broad class

established by the Patent Office. APPEAL from Examiner of Interferences.

TRADE-MARK FOR CANNED FRUITS AND VEGETABLES

Messrs. C. A. Snow & Co. for B. Fischer & Co.
Mr. Samuel E. Darby for A. F. Beckmann & Co.

TENNANT, Assistant Commissioner:

This is an appeal from the decision of the Examiner of Interferences sustaining a demurrer of Beckmann & Co. dismissing the application for cancelation of Fischer & Co. upon the ground that the petition for cancelation does not set forth allegations of fact showing that the petitioner has acquired any such trade-mark right as would warrant the cancelation of the registration of the respondent.

The record shows that a demurrer was filed against the application for cancelation as originally filed. This demurrer was sustained by the Examiner of Interferences and the applicant for cancelation permitted to amend. Upon filing such amendment a second demurrer was filed, which in turn was sustained and Fischer & Co. again permitted to amend its application for cancelation. The demurrer under consideration was filed against this amended application for cancelation and, as was stated, is sustained by the Examiner of Interferences.

The mark sought to be canceled comprises the words “ Crown Aster," which were registered by A. F. Beckmann & Co. February 11, 1908, No. 67,588, as its trade-mark for canned fruits, canned vegetables, pork and beans, jam, preserves, and marmalades.

The grounds set forth in the amended application for cancelation briefly stated that on or about October, 1905, Fischer & Co. adopted for use as a trade-mark for coffee the words “Hotel Astor" and that said mark has been continuously used by it until the present time, and it is further alleged that

(4) Your petitioner is informed and believes that on the date of its adoption and first use of the said trademark for coffee that no other person, firm, or corporation was using such trade-mark or any near resemblance thereto for coffee, canned fruits or goods of the same general class.

(5) That your petitioner is informed and believes that the respondent A. F. Beckmann did not adopt and use the words “Crown Aster" for coffee or for any other goods of the same descriptive properties of the same general class . until subsequent to the adoption and use of your petitioner's words Hotel Astor” for coffee.

It is further asserted that at the time the respondents' trade-mark for coffee was registered the same was classified in class 50, “ Foods not otherwise classified," and that the mark of B. Fischer & Co., which is also registered, was classified in class 46, “Coffee, tea, and substitutes,” being a separate and distinct class, and that then separate registration was required for the goods in each separate class, but that since the registration of the trade-marks in controversy the Patent Office classification has been changed, so that the merchandise formerly contained in classes 46 and 50 are now classified in a single class 46, “Foods and ingredients of foods." It is contended that inasmuch as merchandise of the respective parties is now included

21895-H. Doc. 124, 6-2-17

in the same general class as prescribed by the Patent Office classification the allegations of the application for cancelation are sufficient to warrant the taking of testimony in the present cause, and in support of this contention the decision of the Court of Appeals of the District of Columbia in the case of Walter Baker & Co. v. Harrison (post, 284; 138 O G., 770; 32 App. D. C., 272) is cited. In that case the court had under its consideration the question, raised by demurrer, whether coffee was goods of the same descriptive properties as cocoa and cocoa preparations. In respect to the similarity of these goods the Court said:

Coffee and cocoa when used as beverages are a. once associated as belonging to the class of beverages in general domestic use. They belong to the class of bererages universally used on the table and sold in prepared packages for that purpose.

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.

The Court further said:

It is not a debatable question that coffee and cocoa belong to the saine class of goods that may be described generally as household beverages. The injury which the appellant would sustain by granting registration to the appellee consists chiefly in the possibility of the appellant's using the mark on an inferior quality of coffee and thereby by association in the mind of the public injure the standing of the appellant's goods. The public are entitled to protection against such a result.

It is to be observed that in this application for cancelation Fischer & Co. asserts merely that it is the owner of the trade-mark for coffee and that A. F. Beckmann & Co. did not adopt and use the words “ Crown Aster” for coffee or for any other goods of the same descriptive properties of the same general class until subsequent to the adoption and use by the petitioner of the words “ Hotel Astor” for coffee. I fail to find in this allegation or in any other set forth in the application for cancelation any sufficient ground upon which to base an allegation of damage to the applicant for cancelation. Section 13 of the Trade-Mark Act of 1905 provides that, whenever any person shall deem himself injured by the registration of a trademark in the Patent Office he may, at any time, apply to the Commissioner of Patents to cancel the registration thereof.

The Court of Appeals of the District of Columbia held in McIlhenny's Sons v. New Iberia Extract of Tabasco Pepper Co., Ltd., (C. D., 1908, 325; 133 0. G., 995; 30 App. D. C., 337,) that the right of the petitioner to intervene was dependent upon a showing of interest, stating that The statute does not contemplate that any one may petition the Commissioner to cancel a trade-mark regularly registered, but it does provide that any one who “shall deem himself injured” may do so. The petition, therefore, must ontain a statement of fact upon its jurisdictional question sufficiently full to

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