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only on the ground that they lacked artistic merit, but were otherwise sufficient for the purpose of examination, would cause unnecessary expense and to that extent work undue hardship upon the applicant. Construing these rules together, it is believed that the objection to the drawing in this case is not one of the formal matters referred to in Rule 134 which must be settled before appeal can be taken to the Examiners-in-Chief.
It is therefore held that applicant's response was sufficient, that the application is not abandoned, and that the Examiner should forward the appeal.
The petition is granted.
HEZEL MILLING COMPANY V. WEIDLER.
Decided December 26, 1908
138 0, G., 258.
1. TRADE-MARKS-INTERFERENCE-APPLICANT REGISTRANT—" TEN-YEAR"
CLAUSE. The registration of a trademark is prima facic evidence of ownership, and the presumption is that the use of such mark has continued. In an interference between an applicant and a registrant involving a mark registrable only under the “ ten-years" clause of the Trade Mark Act of 1905 applicant was properly Held not entitled to registration in the absence of testimony showing that the registrant had not used the mark during the
ten years next preceding the passage of that act. 2 SAME_" UNITED STATES STANDARD" FOR FLOUR-DECEPTIVE—NOT REGIS
TRABLE The words “ United States Standard" Held not entitled to registration, as such registration would tend to indicate that the United States Government was guaranteeing that the flour on which the mark was placed was up to the standard required by the Pure Food and Drugs Act. APPEAL from Examiner of Interferences.
TRADE-MABK FOR WHEAT-FLOUR.
Mr. T'. W. Johnson for the Hezel Milling Company.
BILLINGS, Assistant Commissioner:
This is an appeal by the Hezel Milling Company from the decision of the Examiner of Interferences holding that it is not entitled to register the mark for which it has made application.
The interference involves the words “United States Standard” and “ Standard Mills,” used, respectively, by the Hezel Milling Company and Weidler as trade-marks for wheat flour.
Weidler, the senior party, took no testimony; but being a registrant he is entitled under the statutes to his registration of February 2, 1888, as prima facie evidence of ownership.
The Hezel Milling Company took testimony showing use of the mark during the period from 1895 to 1905. Its mark, consisting of the geographical term “ United States” and the descriptive word
Standard,” is registrable, if at all, only under the “ ten-years clause of section 5 of the Trade-Mark Act.
The Examiner of Interferences held that Weidler's registration was prima facie evidence of ownership and that as no evidence had been produced to show that Weidler was not using the mark between 1895 and 1905 the Hezel Milling Company had not shown that it was the sole user of the mark during that period, and therefore was not entitled to registration.
This holding was clearly right. Where a certain condition or state of things of a continuing nature is shown, the presumption of law is that such condition or state continues to exist. (American and English Encyclopædia of Law, p. 1238.) Weidler having registered his mark in 1888, the presumption of law is that he has continued to use it, and it was therefore incumbent upon the junior party, the Hezel Milling Company, to show affirmatively that Weidler had not used the mark during the period from 1895 to 1905 in order to be entitled to registration.
Furthermore, even if such non-use by Weidler had been shown, the Hezel Milling Company would not be entitled to registration, for reasons similar to those set out in the decisions in ex parte Alart and McGuire, (C. D., 1907, 409; 131 O. G., 2145,) ex parte Tennessee Brewing Company, (C. D., 1908, 227; 136 O. G., 1999,) and ex parte United States Sanitary Mfg. Company, (C. D., 1908, 230; 137 O. G., 227.)
The words “ United States Standard ” would clearly indicate to purchasers that the flour sold under this brand was of the standard required by the United States Government under the Food and Drugs Act. It is therefore not such a mark as can be registered in this Office, since the placing on this mark of words showing that it had been registered, as required by section 28 of the act of February 20, 1905, would tend to indicate that the Government was guaranteeing that the flour was up to that standard.
The decision of the Examiner of Interferences is affirmed.
EX PARTE STANFORD.
Decided December 18, 1908.
188 0. G., 527.
1. ASSIGNMENT—No REQUEST THAT THE PATENT ISSUE TO THE ASSIGNEE
assignee conveys only an equitable title. 2. ATTORNEYS–OWNER OF EQUITABLE INTEREST MAY NOT CONTROL APPOINTMENT
TO EXCLUSION OF APPLICANT. The assignee of an entire interest in the invention may not revoke a power of attorney given by the applicant and appoint one of his own selection where the assignment does not request that the patent shall issue to said assignee. Such an assignment conveys merely an equitable and not
a legal title. ON PETITION.
Messrs. Banning & Banning for the applicant. MOORE, Commissioner:
This is a petition on behalf of the assignee that a paper purporting to be a revocation of the power of attorney given by the applicant and the appointment of an attorney by said assignee be accepted and that action be taken in accordance with the direction by the assignee's attorney, and, further that the letter signed by the Chief Clerk refusing to accept the power of attorney given by the assignee be canceled.
It appears that the above-entitled application was allowed on August 27, 1908. On October 28, 1908, an assignment dated October 22, 1908, was recorded which purported to convey all the right, title, and interest in this application to the Rail Joint Company, a corporation of New York. This assignment contains no request that the patent granted upon this application shall issue to the assignee. Thereafter, however, on November 25, 1908, a final fee of $20 was tendered by the Rail Joint Company by D. P. Wolhaupter. On October 28, 1908, a power of attorney given by the Rail Joint Company to said Wolhaupter was presented. Thereupon Wolhaupter was advised that:
The assignment from the Rail Joint Company contains no request that the patent shall issue to the assignee; therefore, it is not regarded as a legal assigoment.
It is contended in behalf of the assignee that the assignment which was recorded in the Patent Office constituted an assignment of the entire interest in the invention and that it is sufficient under the provisions of Rules 5 and 20 to empower the Rail Joint Company to re
21895-H. Doc. 124, 61-22
voke the power of the attorney of record and substitute an attorney of its own selection who is entitled to prosecute the case to the exclusion of the applicant. This contention is not well founded. Section 4895 of the Revised Statutes provides in part:
Patents may be granted and issued or reissued to the assignee of the inventor or discoverer; but the assignment must first be entered of record in the Patent Office.
In the case of Gaylor v. Wilder (10 How., 480) it was held that where a written assignment contained a request that the patent issue to the assignee such assignment upon the granting of the patent vested the legal as well as the equitable title to the patent in the assignee.
Rule 26, which is in accordance with this decision, provides in
In case of an assignment of the whole interest in the invention, or of the whole interest in the patent to be granted, the patent will, upon request of the applicant embodied in the assignment, issue to the assignee.
In the case of Harrison v. Morton (C. D., 1896, 675; 76 0. G., 1275) the Court said in respect to the provisions of the statute and of this rule:
As we have seen, it is required when letters are to be issued to an assignee that the assignment must contain that request, (Rule 26, p. 9;) but it was suggested that such a rule is a mere regulation for the convenience of the Patent Office and was not binding; but the rules established by the Commissioner of Patents "are, until abrogated, as binding as the law itself, not only upon him and his inferior officers, but upon persons doing business with his Department, provided such rules are not in contravention of any statute.” (R. S., 1874, sec. 483; 1 Rob. on Pats., p. 84 and note.)
It follows from what Chief Justice Taney says in Gaylor v. Wilder, supra, that prior to the issue of Letters Patent to the inventor he has an imperfect inchoate right to its exclusive use, which he may perfect and make absolute by taking the steps required by law, and especially by having Letters Patent issued to him; or he may by an assignment of this inchoate right, coupled with a request to issue letters to his assignee in compliance with Rule 26 of the Patent Office, transfer to such assignee a legal title to such invention. The legal title passes to the assigner under such an assignment, because he has under it, as the inventor had by law, the right to secure letters in his own name. But the only way in which such letters, which are the evidence of a perfect legal title, can be secured by the assignee is by the request of the inventor first, and of his assignees, as the case may be, expressed in the asignment.
It is therefore apparent that the assignee of an equitable interest, although it appears to be an entire interest, cannot exclude the inventor who retains the legal title from the control of the application. The practice of refusing to permit the equitable assignee to prosecute the invention to the exclusion of the inventor has for many years been uniformly recognized by this Office. In the case of ex parte McTammany (C. D., 1900, 168; 93 O. G., 751) Commissioner Duell said:
Where two instruments are recorded in this Office both of which purport to esign the invention disclosed in an application and only one contains a request that the patent issue to the assignee, the Office under the authorities should recognize only the right to prosecute the case of that assignee to whom it is requested that the patent issue, and this to the exclusion of the other assignee.
And, further, that:
In any case where there is an assignment of a whole interest in an inven. tion disclosed in an application or of an undivided part thereof, whether accompanied by a request or not, the assignee may be permitted to be represented by an attorney of his own selection for the purpose of having access to the ap plication, but not of prosecuting it.
This principle has been further applied in the cases of ew parte Graham (C. D., 1904, 436; 112 O. G., 1752) and ex parte Hertford, (C. D., 1904, 487; 113 O. G., 851,) and in the latter case it was said:
The records of the Office show that there is an instrument recorded purporting to transfer all the right, title, and interest of the applicant in the above application to the petitioning company. This Instrument, however, lacks the request that the patent be issued to the assignee, (Rule 26,) and it therefore does not convey the legal title, which still remains in the applicant, Hertford. At most this company has but an equitable interest, which does not permit it to prosecute the application through its own attorney.
It is obvious from the reasons above stated that in order to permit the prosecution of an application by an assignee or the attorney of such assignee without the authority of the inventor it is necessary that the complete legal title to the invention and to the patent which is to be granted be transferred to such assignee and that unless such an assignment is recorded the right remains in the applicant to prosecute his application.
The refusal, therefore, to enter the power of attorney presented by the Rail Joint Company revoking the power of the attorneys of record in the case and also the refusal to apply the final fee presented by this company were right.
The petition is denied.
EX PARTE THE BANNER CIGAR MANUFACTURING COMPANY.
Decided December 30, 1908.
138 0. G., 528.
1. TRADE-MARKS-PICTURE AND FACSIMILE-SIGNATURE OF GROVER CLEVELAND FOR
trable as a trade-mark for cigars. 2. SAME-SAME-PUBLIC POLICY.
To use the names of ex-Presidents of the United States as trade-marks tends to detract from the dignity of the high office which they have held, and for that reason it is believed that it is against public policy for the Patent Office to encourage such use of their names by allowing them to be registered as trade-marks.