MOORE, Commissioner:

This is an appeal by the Reading Hardware Company from the decision of the Examiner of Interferences sustaining the application for cancelation filed by The E. T. Fraim Lock Company and adjudg ing that the registration, No. 60,668, dated February 19, 1907, of the representation of a keystone for locks, latches, escutcheons, doorbolts, etc., should be canceled.

The Examiner of Interferences found that The E. T. Fraim Lock Company had established adoption and continuous use of the mark since as early as 1892.

No testimony is presented in behalf of the Reading Hardware Company; but it is stated in the brief that the trade-mark registration No. 60,668 is a renewal of a previous registration of its mark, No. 82,910, which was registered May 19, 1899.

The questions raised by this appeal, as stated in the applicant's brief, are:

1. Whether Rule 46 applies to an applicant for registration who is rejected on a registered trade-mark and thereafter files an application for cancelation of said trade-mark based only on a claim to prior use.

2. Whether the registrant of a trade-mark can be deprived of the rights. secured to an interferant under Rule 46 and section 7 of the Trade-Mark Act, through the institution of cancelation proceedings under section 18 by a later claimant and applicant for registration.

8. As to the sufficiency and certainty of evidence as to prior use required to warrant cancelation of a long and extensively used trade-mark first registered nine years before, and registered one year before, any suggestion of an opposing claim.

Section 18 of the Trade-Mark Act is as follows:

That whenever any person shall deem himself injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration therefor. The Commissioner shall refer such application to the Examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the Examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the Examiner shall so decide, the Commissioner shall cancel the registration. Appeal may be taken to the Commissioner in person from the decision of Examiner of Interferences.

It is obvious from the terms of the statute above quoted that an application for cancelation based upon the ground that the applicant was the first, to adopt the mark is warranted by the clause which provides that

If it appear after a hearing before the Examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, the Commissioner shall cancel the registration.

This section of the statute provides a separate and distinct remedy

from that provided hu sections & and 7 of the statutes which ralata

interferences and oppositions. There is no limitation as to the time in which the application for cancelation shall be filed. It is clear that by virtue of this section a party who believes he will be damaged by the registration of the mark is given another remedy from that which is provided by sections 6 and 7, which relate to interferences and oppositions. A similar question was raised in the case of Magic Curler Company v. Porter, (C. D., 1907, 168; 128 O. G., 2088,) in which it was said:

The conclusion that the applicant for cancelation need not show why an opposition was not filed and that the registrability of the mark is not res adjudicata by reason of the registration are considered to be right.

It may be further stated that interference proceedings are instituted by the Office, the applicants having no control over the declaration of the same. It is therefore reasonable that a person who believes himself to be damaged by the registration of a trade-mark should be allowed to take advantage of a proceeding which he is permitted by law to institute of his own motion, such as that provided for by section 13, above quoted.

It is contended by the appellant that the cancelation proceeding should be set aside or suspended pending the declaration and determination of interference proceedings between the application for registration of The E. T. Fraim Lock Company and the registration of the Reading Hardware Company. No good reason appears for such action. On the contrary, there are good reasons in support of the continuation of this proceeding. A decision upon the application for cancelation will dispose of any questions which might arise in the interference proceeding and will constitute a much more expeditious manner of disposing of the whole question. If interference proceedings were first instituted and it should be found that The E. T. Fraim Lock Company was the first to adopt the mark and was accordingly entitled to registration, another and separate proceeding would be necessary to obtain the cancelation of the Reading Hardware Company's registration.

It is urged in behalf of the Reading Hardware Company that the. testimony presented by The E. T. Fraim Lock Company is insufficient to establish priority of adoption and use. This testimony has been carefully analyzed by the Examiner of Interferences, and I find no reason for again discussing the same, for, in my opinion, the adoption and continuous use of the trade-mark in issue by The E. T. Fraim Lock Company and its predecessors in business since 1892 is clearly established. The merchandise upon which the respective parties to this proceeding use said trade-mark is clearly of the same descriptive properties within the rulings of the Court of Appeals of the District of Columbia in the cases of Walter Baker & Company v. Harrison (post, 284; 188 O. G., 770) and Phoenix Paint & Var

nish Company v. John T. Lewis & Bros. Company, (post, 303; 139 O. G., 990.)

It is also urged that because of acquiescence by The E. T. Fraim Lock Company in the use by the registrant of the trade-mark in issue for a long period the former is estopped from contesting the validity of the registration. It is well settled that mere failure to assert the trade-mark right through a period of years does not cause a forfeiture of that right which will prevent such person from obtaining an injunction against the infringer from further use of that mark. (McLean v. Fleming, 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.) It therefore follows that this contention in this cancelation proceeding, which only involves the question of the registrant's ownership of the mark at the time he applied for registration, has no standing, for reasons similar to those stated by the Court of Appeals of the District of Columbia in the case of Phoenix Paint & Varnish Company v. John T. Lewis & Bros. Company, supra, in which the Court said:

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.

It is accordingly held that the Reading Hardware Company was not entitled to the use of the mark at the date of its application for registration and that the registration of the Reading Hardware Company, No. 60,668, should be canceled.

The decision of the Examiner of Interferences sustaining the application for cancelation is affirmed.

EX PARTE BITNER.

Decided February 23, 1909.

140 O. G., 256.

1. CLAIMS-FUNCTIONAL-OPEN TO REJECTION-REMEDY BY APPEAL.

In all cases where the Examiner holds a claim otherwise clear and intelligible to be functional-that is, for a function merely or because it fails to include sufficient mechanical elements to effect the function expressed in the claim-the action of the Examiner shall be a rejection of the claim upon the ground that the claim does not point out the invention with sufficient particularity and distinctness to meet the requirements of section 4888, Revised Statutes. The rejection shall at the same time include all of the grounds enumerated in Rule 133 that the Examiner thinks applicable. Applicant's remedy is by way of appeal successively to the Examiners-inChief, the Commissioner, and the Court of Appeals of the District of Columbia.

2. SAME INDEFINITE-WHEN OPEN TO OBJECTION-REMEDY.

Only where claims are indefinite in the sense that they are ambiguous, equivocal, lacking in clearness, or unintelligible shall the Examiner's action be in the form of an objection. The remedy from this action is by petition to the Commissioner in person.

ON PETITION.

MOP-HEAD.

Messrs. Dyrenforth, Dyrenforth, Lee & Wiles for the applicant. BILLINGS, Assistant Commissioner:

This is a petition from the action of the Primary Examiner objecting to claims 1, 3, 4, 5, and 6 on the ground that they are indefinite and functional.

Each of the claims objected to terminates in a clause containing the words "constructed and arranged," followed by a statement of function, and the Examiner holds that the structure set forth in the claims is not sufficient to accomplish the function or result. In claim 6 the terminal clause includes the word "means " and reads as follows:

And means connected with the lever constructed and arranged to bind when the latter is moved from its closed position, and resist the initial movement thereof in such direction.

Petitioner contends that the language and terms employed in the elaims are perfectly clear, that the claims are definite and intelligible, and that the objection of the Examiner goes to the breadth or scope instead of to the form of the claims.

While the Examiner's action in treating the matter as one of form and objecting to the claims appears to be in accord with certain published decisions, it is believed that this practice should no longer be followed. The trouble with claims of this character is one of substance. Do they include sufficient structure to support the function stated or do they attempt to differentiate from the prior art merely by a statement of function to the exclusion of the proper structural definition? It is well settled that there is no objection to a statement of function in the claim provided the structure set forth is capable of producing that function. (Ex parte Holder, C. D., 1903, 442; 107 O. G., 833.) The claims are not indefinite in the sense that they are ambiguous, equivocal, or lacking in clearness.

The Examiner has also objected to these claims on the ground that they are functional. This term describes their character better than the term "indefinite." Claims that are functional in that they contain no structure, but merely a statement of function, are rejected under the well-established practice of the Office. (Ex parte Knudsen, C. D., 1895, 29; 72 O. G., 589; ex parte McClellan, C. D., 1892, 125; 59 O. G., 1763.) It would seem that a claim that recites a function

and some structure, but not enough to support the function, stands on the same footing and should be rejected rather than objected to as defective in form. The fault with the claim in either case is a lack of substance and goes to the merits of the claim.

In claims of the character presented in this case the question is ordinarily whether the structure broadly indicated is set forth with sufficient particularity. It requires a consideration of the entire application and often a knowledge of the prior art, for, as stated in ex parte Knudsen, supra:

A broader construction should be given a claim if it covers a new departure in the art.

(See, also, ex parte Pacholder, C. D., 1890, 55; 51 O. G., 295; and ex parte Halfpenny, C. D., 1895, 91; 73 O. G., 1135.) Clearly the fault of such claims is not a mere matter of form that should be finally disposed of by petition. On the contrary, the matter is believed to be one relating to the merits, concerning which the applicant is entitled to an appeal from an adverse decision successively to the Examiners-in-Chief, the Commissioner of Patents, and the Court of Appeals of the District of Columbia. On account of the appeals provided by the statutes from a rejection of the claims it is unquestionably in the interest of the applicant to treat the matter as one of merits rather than form. While it may be urged that if he is obliged to seek his remedy by appeal and the action of the Examiner is affirmed the applicant is precluded from going back to the Examiner and further amending his claims, the obvious answer is that before appealing the claims and before they are finally rejected the applicant should introduce other claims having the structure stated with sufficient particularity to avoid this ground of the Examiner's rejection.

This case is but one of several now before me involving the question of the proper treatment of claims of this character. The criticism that a claim is indefinite or functional, as these terms have been used in the Office, may relate to the merits or the form of the claim, or to both. It is often a difficult matter to determine what action they should receive, with the result that there is a lack of uniformity in the various divisions of the Office, and it is the purpose in this decision to make a ruling that will result in a more uniform practice. Some Examiners reject claims of this character, while other Examiners object to them and notify applicants that their remedy is by petition to the Commissioner, and the matter is apt to be considered and passed upon by either one of the higher tribunals without determining the question of jurisdiction. The published decisions show that the practice under different Commissioners has not been uniform and render it difficult for the Examiner to determine the course to pursue in a particular case. This difficulty is increased