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cations for cancelation of said marks, the registrant brought the above-noted suit in the United States Court for the Southern District of New York against the Palestine Hebrew Wine Company, the applicant for cancelation, for infringement of the above and other marks of petitioner. In said suit a preliminary injunction restraining such company from using the registrant's marks was granted by the court on April 8, 1908, (161 F. R., 654,) in view of the decision rendered by the same court in the case of Jewish Colonization A88'n et al. v. Solomon & Germansky et al., (154 F. R., 157,) involving the Carmel Wine Company. Both the applications for cancelation and the defense in the above infringement suit set up that the registered marks are geographical names and are not therefore valid trademarks.
A motion to suspend the cancelation proceedings pending the determination of the equity suit or to dismiss the cancelation proceedings on the ground that they should not have been brought until after the determination of said suit was denied by the Examiner of Interferences upon the following grounds:
The motion for a suspension of proceedings or for a dismissal of the application for cancelation is denied for the reasons that the relief sought by this proceeding is different from that in the suit in the United States circuit court; that it is the evident intention of the statute to provide speedy and adequate rellef which should not be deferred pending action by any other tribunal; and that the matter here in issue is not as yet res adjudicata and that it is not certain that it will ever become so.
I agree with the Examiner of Interferences that the cancelation proceedings should not be dismissed, for the reasons stated by him; but I am convinced that whatever force they may have concerning the question of the suspension of said proceedings is outweighed in this case by other reasons hereinafter stated.
Petitioner contends, first, that the sole purpose of filing the cancelation petition was with the hope of in some manner undermining the jurisdiction of the court; second, that both the court case and the cancelation proceedings involve the single point that these marks are mere geographical names, and, third, that the decision of the court in the equity case would be persuasive, if not controlling, in the cancelation proceedings and that since the equity suit was instituted first such suit should be permitted to take its course undisturbed by any rulings of the Patent Office under the principle of comity.
In its brief in opposition to this petition the Palestine Hebrew Wine Company apparently admits the truth of the first contention, for it states :
The Palestine Hebrew Wine Company is endeavoring here to cancel various names as trade-marks, particularly for the reason that they have been restrained in the action of the United States circuit court upon a preliminary hearing, from using such of those names as are registered by the Carmel Wine Company. Therefore they are attempting to nullify if possible, that act upon which the decision in the United States circuit court is based. If therefore, we are successful here in canceling these trade-marks, the action in the United States circuit court must necessarily fail, and surely, the United States Patent Office where the registrant claims to have the right to register his marks is about the most competent authority to test the question of the validity or invalidity of these trade-marks under consideration.
The said company does not deny that the facts upon which the cancelation proceedings are based are also involved in the equity suit.
The opinions of the Court of Appeals of the District of Columbia in Brill v. Washington Electric & Railway Company (C. D., 1908, 377; 134 O. G., 1563; 30 App. D. C., 255; and in Scriven Company v. Towles Mfg. Co. et al. (post, 310; 140 O. G., 510) indicate that while the decisions of the Federal courts are not necessarily to be followed they should be given due weight in patent and trade-mark cases. It is thought to logically follow that the principle of comity under which one court suspends all action in a case when another court has assumed jurisdiction of the subject should be given proper recognition. This principle of comity is well stated in the case of Ryan v. Seaboard & Railway Co. (89 F. R., 397) in the following language:
But, after all, the question presented to the court on such a plea (pendency of a suit in a circuit court of the United States as a bar to a suit on the same subject matter between the same parties in another circuit court of the United States) is one of comity between courts. When a court has assumed jurisdiction of a subject, all other courts should refrain from interference. In no other way can be prevented unseemly conflicts between courts. In the present case, the pleadings having disclosed the fact that the important question of the validity, force, and effect of this pooling agreement has already been presented to the circuit court for the district of Maryland, this court will at least stay its hand, and, without dismissing the case from this court, suspend all action, until the circuit court of Maryland has made its decision, or until the pleadings in that court be determined, either by election on the part of the complainant to abandon them and proceed in this court, or in any other way.
This principle suggests that where this Office has once held a mark to be a good trade-mark and registered the same and where suit has been brought for the infringement of said mark this Office should ordinarily refrain from passing upon the validity of the registration pending the determination of the court suit. Especially is this thought to be proper where the applicant for cancelation admits, as in this case, that it is endeavoring by such proceedings to attack collaterally the validity of the registration in order to undermine the jurisdiction of the court.
The further contention of petitioner that much confusion and hardship will be entailed by the retaking of testimony and the necessity of using the same exhibits in a second case before the determination of the first case, while not controlling, is, however, not without force.
After a careful consideration and in view of all the circumstances of this case I am convinced that the cancelation proceedings should be suspended pending the determination of the court case, provided the latter is prosecuted diligently. Should it appear at any time that such suit is unduly delayed by petitioner, the applicant for cancelation may file its petition and showing to have this order of suspension set aside.
The petition is granted.
McQUARRIE V. MANSON.
Decided April 7, 1909.
142 0. G., 288.
INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.
The decision in Gold v. Gold (C. D., 1907, 377; 131 O. G., 1422) and Rockstroh v. Warnock (C. D., 1908, 10; 132 0. G., 234) construed and Held not to authorize the transmission, as a matter of course, of an amended motion to dissolve filled within the limit of appeal from a decision refusing to transmit a defective motion but only where it does not appear from the
record that such original motion wus not brought in good faith. APPEAL ON MOTION.
INTERCOMMUNICATING TELEPHONE SYSTEM.
Messrs. Barton, Tanner & Folk and Mr. De Witt C. Tanner for McQuarrie.
Messrs. Brown & Williams for Manson.
BILLINGS, Assistant Commissioner:
This is an appeal by Manson from the decision of the Examiner of Interferences granting McQuarrie's motion to transmit a motion to dissolve the above-entitled interference.
The record shows that on January 16, 1909, McQuarrie filed a motion to dissolve, which was denied transmission on January 23, 1909, on the ground that this motion was not sufficiently definite, and the time for amendment or appeal was set to expire January 30, 1909. On January 28, 1909, McQuarrie filed an amended motion, the transmission of which was granted by the Examiner of Interferences in a decision rendered February 16, 1909. In this decision the Examiner of Interferences said:
Where a motion is denied transmission because the same is not sufficiently definite, an amended motion curing this defect is permissible as a matter of course if the same is filed within the time for appeal from the decision denying transmission of the prior motion. (Gold v. Gold, C. D., 1907, 377; 131 O. G., 1422 ; Rockstrok v. Warnock, C. D., 1908, 10; 132 O. G., 234.)
Counsel for Manson contends that the Examiner of Interferences erred in transmitting this motion, and in his brief he contends that the practice such as outlined in the above quotation from the Examiner of Interferences' decision is susceptible of abuse in that an attorney by filing a motion which he knows is not sufficiently definite can thereby gain time within which to file a proper motion.
The decision in Gold v. Gold, supra, was rendered November 7, 1907, and was published in the OFFICIAL GAZETTE December 3, 1907, more than a year ago. No such abuse of the practice as apprehended by counsel for Manson has been observed.
The two principal reasons for requiring motions to be specific are, first, to require motions to be made in good faith, and, second, to inform the other party of the reasons why, in the opinion of the moving party, the interference should be dissolved. It would clearly be inequitable to rule that an amended motion cannot be transmitted in those cases where the moving party shows good faith but has not succeeded in making his first motion sufficiently specific to fully inform his opponent of the grounds relied upon for dissolution of the interference. In both of the decisions Gold v. Gold, supra, and Rockstroh v. Warnock, supra, it is distinctly pointed out that amended motions should be transmitted only where the record indicates good faith on the part of the moving parties. While the Examiner was right in transmitting the amended motion in this case, his statement that an amended motion “is permissible as a matter of course” was a little inapt. It is not believed that the Examiner meant to rule that an amended motion to cure a defect is permissible as a matter of course where it is clear on the face of the first motion that it was filed in bad faith. To so rule would permit the moving party to file almost any kind of a motion to dissolve, in order to save time, if he knew that a second motion made specific would be permitted as a matter of course. It was not intended in the decisions cited to permit such practice, for in each it is held that good faith on the part of the moving party must be apparent from the record.
In the decision in Pickard v. Ashton and Curtis (C. D., 1908, 241; 137 O. G., 977) it is stated that
the question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.
No such abuse of discretion has been shown in this case, and for that reason the decision of the Examiner of Interferences will be affirmed.
FALK TOBACCO COMPANY v. KINNEY TOBACCO COMPANY.
Decided March 12, 1909.
142 0. G., 567. TRADE-MABK8-INTERFERENCE-MOTION FOR DISSOLUTION BASED ON TESTIMONY
TRANSMISSION. A motion to dissolve a trade-mark interference based on the ground that the labels introduced during the taking of testimony contain certain decep
tive statements should be denied transmission. APPEAL ON MOTION.
TRADE-MARK FOR CIGARS AND CIGARETTES.
Mr. Arthur Falk and Mr. Edward W. Cady for Falk Tobacco Company.
Messrs. Meyers, Cushman & Rea for Kinney Tobacco Company. MOORE, Commissioner:
This is an appeal from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve this interference upon the ground that, motions for dissolution do not lie where based upon the testimony.
This interference is between a registered trade-mark of the Kinney Tobacco Company and the application for registration of the Falk Tobacco Company. Interference was declared on September 22, 1908. No motion for dissolution was filed within the time provided for by Rule 49 of the Trade-Mark Rules. It is alleged on behalf of Kinney Tobacco Company that during the examination of witnesses Moses Falk, Arthur Falk, and Robert E. Lane it appeared that the labels bearing the trade-mark sought to be registered by the Falk Tobacco Company contain certain deceptive statements, and it is stated in the motion for transmission that the reason why this motion was not brought earlier is thatthe flagrancy of the deception was not realized with the force which comes from the testimony because the testimony shows that the deceptive guise of the label was deliberately and intentionally entered upon by the designer of the label.
The reasons given are clearly not sufficient to excuse the delay in bringing the motion for dissolution of the interference. The alleged deceptive matter referred to at the hearing appears upon the labels filed as specimens in the application for registration of the Falk Tobacco Company.' The Kinney Tobacco Company has had access to that application at all times since the declaration of this interference. Furthermore, for reasons similar to those stated in the decision in Ellis v. Schroeder v. Allen (C. D., 1908, 146; 134 O. G., 1803) and cases cited therein, a motion for dissolution should not be transmitted where it is based upon facts brought out in the testimony