varnishes." Upon the filing of an application for the registration of the same mark by appellee and the declaration of an interference, the Phoenix Company amended its application so as to have the mark apply to ready-mixed paints and stains, japans and varnishes. The Examiner of Interferences found that paste paints and readymixed paints are of the same descriptive properties, and awarded priority of adoption and use to appellee. This decision was affirmed by the Commissioner.

While there is considerable evidence in the record that the John T. Lewis & Bros. Company have used this mark on ready-mixed paints as well as on paint-colors and paste paints, we prefer to rest our decision upon the broader ground that paste paints and readymixed paints are goods of the same descriptive properties within the meaning of the Trade-Mark Act. Section 5 of that act provides:

That trade-marks which are identical with a registered or known trade-mark and known and in use by another and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trademark owned and in use by another and appropriated to merchandise of the same descriptive properties as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers, shall not be registered.

In construing the above provisions it must be borne in mind that the purpose of the act was to protect honest dealers and the public. It must also be borne in mind that courts have been very loath to permit one concern, however remotely its goods might be connected with those of another concern, to appropriate through the instrumentality of a technical trade-mark the reputation of the other firm.

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. Congress evidently intended to prevent the second registration of a mark that would enable an unscrupulous dealer to obtain the benefit of a valuable trade reputation established by conscientious effort and fair dealing to the injury of the public as well as the owner of the mark.

The record shows that paste paint is produced by grinding dry colors in linseed-oil until the paint and the oil become blended together and form a cohesive mass or substance. While this substance is in a semifluid condition it requires further thinning with oil and drier before it is ready for use. It will thus be seen that the distinguishing characteristics of paste paint and ready-mixed paint are

the same. They both contain color and both contain oil and both are designed for the same ultimate purpose. The conclusion is irresistible that the use of this mark on paste paints, which are really mixed' paints, by one concern and its use on ready-mixed paints by another concern would inevitably lead to confusion to the possible injury of the public and the firm first to adopt and use the mark.

When the Phoenix Company adopted this mark it had been in use by appellee for more than thirty years. It is a technical mark, and there was absolutely no valid reason for its adoption by the Phoenix Company. The mark was then the property of appellee, and whether appellee desired to use it in connection with the sale of its readymixed paint or not, appellant had no right to so use it.

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.

In Collins v. Ames (18 Fed., 561) Justice Blatchford restrained the use by the Ames Company of the trade-mark "Collins & Co." on shovels, notwithstanding that up to that time Collins & Company had made no shovels, but were engaged in the manufacture of edge-tools. The Court said:

It appears that the axes and other articles made by the plaintiff, and which before that time were known and used in Australia, were stamped "Collins & Co." Therefore, although the shovels made by Ames & Sons under this order and subsequently, and stamped "Collins & Co.," and sent to Australia and elsewhere, may intrinsically have been of high quality, yet the only object of the defendant in putting the stamp "Collins & Co." upon them must have been to avail himself of the credit and reputation and market which the plaintiff had established for the articles it made and sold with the stamp "Collins & Co." upon them. There was no other purpose in this. Clearly, those who purchased shovels made by Ames & Sons and stamped "Collins & Co.," would believe that such shovels were made by the plaintiff * *. This was an unlawful appropriation of the plaintiff's trade-mark. It is true that the plaintiff up to that time had made no shovels. It is also true that Ames & Sons and the defendant have built up a business in shovels stamped "Collins & Co." But the plaintiff had a right to make shovels, and it had made kindred articles of metal, and its good name and reputation in its business were wholly connected with the use, in its trade, of the mark" Collins & Co."

In Church & Dwight Co. v. Russ et al. (C. D., 1900, 260; 91 O. G., 228; 99 Fed., 276) it was held that a trade-mark used on packages of baking-soda and saleratus is infringed by the use of such mark on

packages of baking-powder on the ground that the articles are of the same class. The Court said:

The greater part of the baking-powder consists of the starch, used simply as a drier to absorb the moisture to which the baking-powder may be exposed, and thus to prevent the formation of carbonic-acid gas by the chemical combination of the soda and acid. Consequently every time the respondents sell a package of their baking-powder, having the complainant's trade-mark upon it they are actually selling a package a material part of which consists of baking-soda. * They belong to the same class of goods, coming in direct competition with each other in sale and use for the same purpose. The public would readily suppose that the baking-powder bearing the complainant's trade-mark was either manufactured by it or by some one having its authority and consent and that it vouched for the superiority and high character of the goods bearing such trade-mark. (See also Godillot v. Amer. Grocery Co., 71 Fed., 873.)

Smith v. Reynolds, (10 Blatchf., 100, and 13 Blatchf., 458,) relied upon by appellant is not in point. That case merely holds that the registration of a trade-mark for "paints" does not enable the registrant to restrain another party who previously to the adoption and use of the mark by the registrant had adopted and used it as a trademark on a particular kind of paint.

The contention is made that the appellee has forfeited its right by laches. This contention in this proceeding is untenable. (McLean v. Flemming, C. D., 1878, 262; 13 O. G., 913; 96 U. S., 245; Menendez v. Holt, C. D., 1889, 344; 46 O. G., 971; 128 U. S., 514.) This is not an infringement suit, but is an interference proceeding where the only question involved is whether the right of registration will be accorded either or both parties to the proceeding. If the Commissioner is of the opinion that confusion will follow registration by both parties, it is his duty to deny such registration. In an action for infringement the question of laches may be pertinent, but not here.

The decision of the Commissioner of Patents is affirmed, and the clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents, as required by law.

[Court of Appeals of the District of Columbla.]

IN RE GARDNER.

Decided December 22, 1909.

140 O. G., 258; 32 App. D. C., 249.

1. PATENTABILITY-FUNCTIONS OR RESULTS NOT PATENTABLE.

It is a well-settled law that a patent cannot issue for a result sought to be accomplished by the inventor of a machine, but only for the mechanical means or instrumentalities by which that result is to be obtained. One cannot describe a machine which will perform a certain function and then claim the function itself and all other machines that may be invented by others to perform the same function.

2. SAME-SAME-VAPOR-REGISTER.

The claim reading "In combination in a vapor-register, a dial upon which are marked pressures and heat characteristics and a device for automatically indicating on said dial simultaneous pressures and heat characteristics" and claims similar thereto were properly rejected as claims for functions or results. If allowed, they would cover means substantially different from those described which might be discovered by another for accomplishing the same results.

Mr. James Hamilton for the appellant.

Mr. W. S. Ruckman and Mr. Lineas D. Underwood for the Commissioner of Patents.

SHEPARD, C. J.:

This is an appeal from a decision of the Commissioner of Patents rejecting seven claims in an application for a patent.

As stated in the application, the

invention relates to improvements in registering devices, and particularly to devices operated automatically and made to register by the vapor itself its characteristics, such as its pressure, its degree of superheat, (if any,) the number of thermal units contained in a unit weight of it, its conditions as to dryness or quality and the like. By the instrument herein described one is enabled to determine at a glance the heat characteristic of the vapor, as well as its pressure; and, also, its condition as to dryness, that is whether wet, just dry, or superheated.

Thirteen of the eighty-three claims of the application were rejected by the Primary Examiner; some of them on the ground that they were functional, and others on references to other patents. On appeal to the Examiners-in-Chief the decision was reversed as to six of the claims, and affirmed as to the following seven:

13. In a vapor-register, in combination with a vapor-conduit, means operatively connected therewith for determining and showing the percentage of entrained liquid in the vapor.

78. In combination in a vapor-register, a dial upon which are marked pressures and heat characteristics and a device for automatically indicating on said dial simultaneous pressures and heat characteristics.

79. In combination in a vapor-register, a dial upon which are marked pressures and conditions as to dryness; and a device for automatically indicating on said dial simultaneous pressures and conditions as to dryness.

80. In combination in a vapor-register, a dial upon which are marked heat characteristics and conditions as to dryness; and a device for automatically indicating on said dial simultaneous heat characteristics and conditions as to dryness.

81. In a vapor-register, in combination with a suitably-inscribed dial, a device for automatically indicating thereon simultaneous pressures and heat characteristics for superheated vapor.

82. In a vapor-register, in combination with a suitably-inscribed dial, mechanism for automatically determining and indicating thereon simultaneous heat units and conditions for wet and superheated vapor.

83. In a vapor-register, in combination with a suitably-inscribed dial, mechanism for automatically determining and indicating thereon the condition of the vapor through a range from wet to superheated inclusive and the heat

obaracteristics of the venor corresponding to env given condition of the vapor.

Their decision was affirmed by the Commissioner, and the applicant has again appealed.

It is well-settled law that a patent cannot issue for a result sought to be accomplished by the inventor of a machine, but only for the mechanical means or instrumentalities by which that result is to be obtained. One cannot describe a machine which will perform a certain function, and then claim the function itself, and all other machines that may be invented by others to perform the same function.

Section 4888 Revised Statutes requires that the applicant for a patent shall describe his invention in such full, clear, concise, and exact terms as to enable any person skilled in the art to make, and use the same; and that in case of a machine that he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and that he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. The purpose of this requirement is not only to secure to the inventor the benefit of his invention, but also that the public may know what they are prevented from doing during the existence of his monopoly. (Brooks v. Fiske, 15 How., 211, 214; O'Reilly v. Morse, 15 How., 62, 119.) In the case last cited the requirements are thus stated by Chief Justice Taney:

Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact that any one skilled in the science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy, known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case, he must describe the manner and process as above mentioned, and the end it accomplishes. Any one may lawfully accomplish the same end, without infringing the patent, if he uses means substantially different from those described.

It is the duty of the Commissioner of Patents to see that these conditions are performed.

Testing the appealed claims by the rules above stated, we are of the opinion that they were rightly rejected as claims for functions or results. If allowed they would cover means substantially different from those described, which might be discovered by another for accomplishing the same results, namely, the determination of the perentage of entrained liquid in the vapor, as in claim 13, and the