SHEPARD, C. J.:

This is an appeal from the decision of the Commissioner of Patents sustaining a demurrer to an opposition to the registration of a trademark. (C. D., 1908, 114; 134 O. G., 257.)

On May 22, 1907, Brandau filed an application for the registration of a trade-mark used on molders' shoes manufactured of leather and asbestos. The description and the drawing filed with this application, show the picture of an ass, above which, in a curved line, appear the words, "A. Brandau's " in large printed letters. In a straight line, across the figure of the ass, appears the word, "Asbestos" in large printed letters, and in smaller letters, immediately under the same, appears the word "Fireproof." Below the figure appear the words, in a curved line and in large printed letters," Moulder's Shoes."

The application was passed for allowance after the required publication, and on August 19, 1907, Charles W. Johnson filed an opposition thereto. In this he alleges the use of the word "Asbestos" as a trade-name applied to boots and shoes of heat-resisting and fireproof qualities, since early in 1903; and the registration of the trade-name, "Asbestos Shoes" under the laws of many of the States. That his shoe has been known from the first, as the "Asbestos Shoe." That these shoes have been designed especially for the molder's trade and are well known to the trade as the "Moulder's Original Asbestos Shoe." That the applicant, Brandau, well knew of opponent's sole and exclusive use of the word "Asbestos " as a trade-name applied to boots and shoes, and used this word as a part of the trade-mark for which he has made application for registration for the purpose of securing trade already established by opponent, among molders, for his "Asbestos Shoe." He further says that, having a large and constantly-increasing trade in the several States in which his trade-mark has been registered, if applicant is allowed to register his trade-mark containing the word "Asbestos," his use thereof would greatly damage opponent's business. The applicant demurred to this statement of opposition on the following grounds:

1. It appears by the opponent's showing that he is not entitled to the relief prayed.

2. It appears by said opposition that opponent alleges that if applicant is permitted to use the word "Asbestos," or "Asbestos Shoes:"

By what authority has the opponent the exclusive right to use the word "Asbestos," or the words "Asbestos Shoes?" The word "asbestos" is a common word as is also the word "shoe." The word "asbestos," alone, as applied in this case is descriptive, and if not descriptive it is deceptive, and if either descriptive or deceptive is not registrable subject-matter for trade-mark registration in the United States Patent Office.

3. That applicant does not claim the word "Asbestos," or the words "Asbestos Shoe" to be the essential feature of his trade-mark, and

the Commissioner has no right to determine which feature is the essential one of applicant's mark.

The Examiner expressed the opinion that the word "Asbestos" as used by the applicant is descriptive because he describes his goods as made of leather and asbestos. That as the opponent does not state the material of which his shoe is made, the word as employed by him is, if not descriptive, deceptive. That as the word "Asbestos" is the only matter in common between the parties, and cannot be exclusively appropriated by either, but may be used by any one, it is not seen how the opposer can be damaged by the registration of the applicant's mark" which contains this word as an element." He expressed the further opinion that "Asbestos" is not the essential feature of the applicant's mark.

There is other matter in the mark which is far more striking than the word "Asbestos," and the fact that the applicant happens to use this descriptive term in conjunction with other matter does not render the mark as an entirety unregistrable.

He then sustained the demurrer and adjudged the applicant entitled to registration.

On appeal to the Commissioner this decision was affirmed. The Commissioner discussed the question at greater length, but took substantially the same ground as the Examiner. After quoting some of the provisions of the statute, he said:

By virtue of this provision of the statute registration of a trade-mark is permitted where the controlling and distinguishing feature of the mark is an arbitrary symbol, although such symbol may be accompanied by accessories which in themselves are not registrable. This being the case it follows that although the opposer may show that he has used the word "Asbestos" since 1903, which is prior to the alleged date of adoption of the applicant's mark, in connection with goods of the same descriptive properties as those sold by the applicant, such use would not prevent the registration by the latter of a mark which includes the word “Asbestos" merely as a descriptive and subordinate feature, since any manufacturer of asbestos goods has the right to describe his goods by that term, and the inclusion of this word by the applicant in his trade-mark would not cause legal damage to the opposer.

The second ground of the notice of opposition raises a question of unfair competition, which it is well settled will not be considered in any opposition proceeding.

It is also urged by the opposer that the applicant having admitted by his demurrer that the word "Asbestos" is descriptive registration of the mark should be refused. This is not one of the grounds of opposition, and the question is not, therefore, before me; but it may be noted that the applicant is not seeking to register the word "Asbestos" alone. Upon the contrary, the word "Asbestos" as disclosed in the applicant's mark is merely an accessory and not the controlling feature of the mark. (C. D., 1908, 114; 134 O. G., 257.)

The word "Asbestos " is clearly descriptive of the goods manufactured by each party. Being descriptive its registration as a

trade-mark is prohibited by the statute. It is, therefore, open to use by the public at will, subject, of course, to such limitations as may be imposed by the courts in cases involving unfair competition.

The opposer in this case is not attempting to secure registration of the word for himself. Claiming to have used it as a trade-name prior to its adoption by the applicant, and to have built up a considerable trade in his goods, he opposes its registration as an exclusive trade-mark, under section 6 of the statute, as a "person who believes he would be damaged by the registration." If registration be allowed, it becomes prima facie evidence of the applicant's ownership of it as a valid trade-mark, under section 16 of the act, in any action which he may institute against the opposer or others who may use the word as a general trade-name for similar articles of goods. Having used the word as such a trade-name, although not entitled to ownership of it as a trade-mark, we think it is permissible for the opposer to make opposition to the registration by the applicant. (Ky. D. & W. Co. v. Old Lexington Co. C. D. Co., C. D., 1908, 417; 135 O. G., 220; 31 App. D. C., 223, 228.)

We come now to the question whether the registration applied for amounts to the registration of the word "Asbestos" as the trademark, or as an essential feature of the trade-mark. The Examiner of Interferences and the Commissioner held that it does not. As we have seen from the parts of their decision hereinbefore recited, the Examiner thought that there was other matter in the mark, as applied for, "far more striking" than the word "Asbestos," and though happening to use the word in conjunction with other matter, that fact does not render the mark unregistrable as an entirety. The Commissioner regards it "merely as a descriptive and subordinate feature" of the applicant's trade-mark. The "far more striking matter" of the trade-mark, referred to by the Examiner, necessarily indicates the figure of the ass, for the other word printed in connection with "Asbestos," namely, "Fireproof" is equally if not more certainly descriptive. The applicant describes with particularity, what he has used, and what he wishes to have registered as his trademark. He not only described his trade-mark but also filed a drawing in which the figure and words appear. He does not limit his claim to any particular feature of the drawing, or claim one as the essential feature of the mark, as he might have done. See in re Standard Underground Cable Co., (C. D., 1906, 687; 123 O. G., 656; 27 App. D. C., 320, 324.) In that case the applicant asked registration for the word "Eclipse," and was denied because he did not claim it and show it in his drawing as accompanied by a certain accessory figure and words shown on a label which he had used, but limited his claim to the said word as the essential feature of his trade-mark. In re

versing that decision, Mr. Justice Duell, who delivered the opinion of the court, said:

We do not think that Congress intended to confer upon the Commissioner of Patents authority to say to an applicant how much or how little of the embellishments appearing, in connection with what may be called the essential feature of a trade-mark, form an actual part of the trade-mark. Rather do we think that this right of selection and designation rests with the applicant.

It is to be noted, also, that the applicant in the third ground of his demurrer, himself, denied the right of the Commissioner

to determine which feature is the essential one of applicant's mark.

The applicant deliberately selected and carefully designated the trade-mark having the descriptive word printed in large letters across, and partly obscuring the figure of the ass. He thereby made it an actual and prominent feature of his trade-mark, claiming the same as an entirety. He made all essential, and as we have seen, denied the Commissioner's right to determine that any one was the essential feature, and another accessory and subordinate. Under these conditions it was not for the Commissioner to say that the word "Asbestos" was an unessential feature, and to be regarded as mere surplusage. The registration, if granted, would show no such exception or qualification on its face, and the prima facie right accorded to registration would apply to the mark as an entirety as shown in the application and drawing.

We have recently affirmed a decision of the Commissioner denying registration to a trade-mark showing the figure of an eagle with the words "Oriental Cream " printed above it, and described as"Oriental Cream" associated with an eagle holding a scroll in its beak.

"Oriental" was held to be a geographical term prohibited by the statute. (In re Hopkins, C. D., 1907, 549; 128 O. G., 890; 29 App. D. C., 118.) The figure of the eagle was as conspicuous in that case as is the figure of the ass in this; and the words descriptive of the nature of the goods were printed above it so that it was in no wise obscured. There was no suggestion that because the figure was registrable, the words could be treated as merely accessory. When an applicant describes and illustrates his trade-mark and applies for its registration as so described, the Commissioner must likewise consider it in its entirety. We are of the opinion that, in this case, he should have denied registration as claimed, giving the applicant, at the same time, an opportunity to amend by disclaiming and omitting the word objected to.

For the reasons given we must reverse the decision sustaining the demurrer to the opposition. It is so ordered, and that this decision be certified to the Commissioner of Patents.

[Court of Appeals of the District of Columbia.]

PHOENIX PAINT & VARNISH COMPANY v. JOHN T. LEWIS & BROS.

COMPANY.

Decided December 22, 1908.

139 O. G., 990; 32 App. D. C., 285.

1. TRADE-MARKS-GOODS OF SAME DESCRIPTIVE PROPERTIES.

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 are the same, the test being whether there is such sameness in the distinguishing characteristics of the goods as to be likely to mislead the public.

2. SAME-SAME-PASTE PAINTS AND READY-MIXED PAINTS.

Paste paints and ready-mixed paints are goods of the same descriptive properties within the meaning of the Trade-Mark Act.

3. SAME-INTERFERENCE-KNOWLEDGE BY LATER TO ADOPT OF PRIOR USE BY

ANOTHER PARTY-PRESUMPTION.

The purpose of the act being to prevent and not to promote fraud and mistake, we would not feel inclined, even in a doubtful case, to grant registration to a claimant where it appeared, as here, that when he adopted the mark he knew of its prior adoption and use by another firm in connection with goods of the same general character and properties. The opportunity for selection being as limitless as the human imagination, we have reason to question the motive prompting the adoption by one dealer of a mark previously applied by another dealer to like goods.

4. SAME-SAME-LACHES.

In an interference proceeding where the only question involved is whether the right of registration will be accorded either or both parties to the proceeding the question of laches is immaterial.

Mr. T. W. Johnson for the appellant.

Mr. F. M. Phelps for the appellee.

ROBB, J.:

This is an appeal from the decision of the Commissioner of Patents awarding priority of adoption and use of the trade-mark "Phoenix" to John T. Lewis & Bros. Company, the appellee herein. (C. D., 1908, 128; 134 O. G., 1049.)

The John T. Lewis & Bros. Company and its predecessors have used this mark continuously on paint-colors and paste paint since 1860. The company is located at Philadelphia, Pa. In 1892, more than thirty years after its adoption and use by appellee, the Phoenix Paint & Varnish Company was organized in Philadelphia, and commenced to use this mark on ready-mixed paints, which use has continued to the present time.

On May 1, 1905, the Phoenix Paint & Varnish Company filed an application for registration, in which application it is stated that the mark is appropriated by the firm to "paints and stains, japans and