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Messrs. C. A. Snow & Co. for the applicants.

SEYMOUR, Commissioner:

This is an appeal from the decision of the Examiner refusing to register a trade-mark for the reason, as stated by him, that neither the class of merchandise nor the particular description of goods is properly defined by the following statement:

The class of merchandise to which this trade-mark is applied is grocers' drugs, flavoring extracts, and coffee, and the particular description of goods comprised in said class on which it is used by us is extracts and essences of vanilla, lemon, peppermint, and Jamaica ginger, Bateman's drops, paregoric, castor-oil, sweet-oil, sewing-machine oil, glycerin, sirup of ipecac, sirup of squills, spirits of uiter, etc., and coffee.

It appears by the declaration on oath, or it should be made to appear to the satisfaction of the Examiner, that the applicants are domiciled and their business is located in New Jersey, and that they are dealing in all the articles named; that they have adopted the one trade-mark for them all, and that to these articles the trade-mark had been appropriated by them and actually and lawfully used by them on all the articles named before the filing of the application, and, in addition, that it had been used by them in commerce with Canada. If these things are so, then the sole question is whether a dealer in the articles named may have one registration for his trade-mark used on all these articles and alike on all or whether, on the other hand, he must apply separately for registration of the one mark upon his various essences, his oils, his spirits, and the like.

The Congress has not attempted in the present law to define classes of merchandise or to establish classes. The Federal legislation upon the subject of trade-marks takes trade as it finds it, having its origin in some State, with trade-mark rights appertaining to it, and if such trade extends in any case to foreign nations or to the Indian tribes then the trader may have the benefit of the Federal trade-mark law on complying with its perquisites. He must be the owner of a trademark used in such trade and have at the time a right to its use, and no other person have the right to such use. He must apply by specifying the class of merchandise and the particular description of goods comprised in such class to which the particular trade-mark has been appropriated. Whatever the range of goods to which the trade-mark may be applied by the law of the applicant's State, whether by the common law presumably in force or by the statute law, may be recited in the application for registration under the Federal law, provided only the trade-mark be lawfully used as such, to the extent recited, by the applicant in foreign commerce or commerce with the Indian tribes, and the owner of the trade-mark may have registration accordingly. There is no authority for requiring the subdivision of applications to accord with the Office classification of trades. Registration can be limited by

nothing narrower than the actual and lawful use of the mark in the place where the business is located.

It may be found that the applicant would be in conflict with another upon the use of this trade-mark as applied to one or some of the particular kinds of goods enumerated, but not on all. In such case it would be the duty of the Examiner to refuse registration as applied for and require the restriction of the application to the particular kinds of goods to which the same mark had not been appropriated by another. The abbreviation "Etc." in the statement should be canceled as indefinite. In other respects the specification of the class of merchandise and the particular description of goods to which the trade-mark has been appropriated is sufficient.

The decision of the Examiner of Trade Marks is set aside and the case remanded for consideration on the merits in conformity herewith.

PETERS v. HISEY.

Decided April 20, 1894.
67 O. G., 927.

1. INTERFERENCE-PRIORITY OF INVENTION.

Where the testimony is full, explicit, and satisfactory that P conceived the invention in September, 1888, reduced it to practice in November, 1888, and began to put it into extensive public use by March, 1889, and where the testimony of H, his opponent, to his own earlier conception is not corroborated save by the recollection of one witness as to a conversation four years and a half in the past, Held that P is the prior inventor.

2. EVIDENCE.

A disclosure on board a foreign ship in mid-ocean may be received on the question of conception of an invention.

APPEAL from the Examiners-in-Chief.

CARTRIDGE LOADING MACHINE.

Application of Gershom Moore Peters filed July 31, 1891, No. 401,292. Division of application filed September 28, 1889, No. 325,358. Application of Charles S. Hisey filed June 24, 1889, No. 315,308.

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This is an appeal taken by Ilisey from the decision of the Examinersin-Chief, affirming the decision of the Examiner of Interferences, awarding priority of invention to Peters upon the following issues:

1. In a cartridge-loading machine, the combination, with the shell-carrier, of the reciprocating tool-holder and a constantly revolving crimper located in the path of the tool-holder, whereby the tool-holder on its descent depresses the crimper.

2. In a cartridge-loading machine, the combination, with the shell-carrier, of the reciprocating tool-holder, a constantly revolving crimper located in the path of the tool-holder for depressing said crimper, and a spring for raising said crimper.

Peters conceived this invention in September, 1888, reduced it to practice in November, 1888, and put it to extensive public use, resulting in the regular sale of the product, beginning about the month of January, 1889, and not later than March, and continuing to the time of the taking of the testimony. His application was filed September 28, 1889, of which the application now in interference is a division. The evidence of these facts is full, explicit, and satisfactory, and the case does not require that it should be recited in detail.

Hisey reduced the same invention to practice in September, 1889, but alleges that he had a full conception of it in April, 1888, and therefore claims to be the prior inventor.

When it is considered that crimpers and cartridge-loading machines, both of the round-table type and of the endless-chain type, were in use before the two were combined to make the invention described in the issues in this interference, it will be apparent that a sketch of a crimper upon one piece of paper and a separate sketch of a cartridge-loading device upon another do not of themselves bear testimony to the conception of the combined crimper and cartridge-loading machine which is now under consideration. Nor does a sketch, like the Ligowsky sketch, of a cartridge-loading machine, with a blank space left upon it where a crimper might be put, but where an indenter might equally well be put, of itself bear testimony to the full conception of the combined cartridgeloading machine and crimper. Hisey has presented no exhibit which of itself shows the combination of a cartridge-loading machine and a crimper of an earlier date than the drawings in his German patent, or the photographs of drawings of his Canadian application, or the drawings of this application, and their history cannot be traced in this record. Hisey claims to have brought drawings and tracings with him from Germany on his return, about April 1, 1889, but they are not before me and it is not certain what they contain except as their contents may be inferred from secondary evidence. They were taken to Elliott S. Rice, of Chicago, and were attached by Hisey and Rice to a contract between them as exhibits. Mr. Hisey says that he had them traced from the Patent Office drawings which were prepared in Germany by Brydges & Co. before he left there. But supposing they were proved to be trac ings of drawings made in Germany, it is not revealed in the record when or by whom such German drawings were made. Hisey himself is silent as to directions to any German draftsman to prepare drawings of his invention.

When the effort is made to construe the Ligowsky drawing into evidence of an early conception by Hisey, and this is the only original drawing in the Hisey record except the working drawing of a crimper. made by Hisey in Cincinnati after his return from Germany, it is found,

as before stated, that there is a blank space upon it where either an indenter or a crimper might be placed. In fact, an indenter and not a crimper was placed there in all the machines that were constructed in Germany. It was by means of this drawing that Hisey claims to have explained the invention to Spengel before his departure for Germany in April, 1888; but Spengel as a witness does not corroborate this. It is claimed by Hisey that he also explained the invention by means of this drawing and by means of a sketch in his pass-book to Ligowsky and to his sisters-in-law, Mrs. Miller and Mrs. Mullane, and to his wife. Ligowsky died before the testimony was taken. The wife was thought not to be a competent witness, and was therefore not called. The passbook has been lost; but Hisey's opponent called Mrs. Miller and Mrs. Mullane, and they failed to corroborate Hisey's alleged disclosure. At first Hisey did not produce the Ligowsky drawing and was of the opinion that it contained a crimper in combination with the cartridgeloading machine, and so testified, but afterward corrected his statement. The drawing was produced, however, with some reluctance, upon the cross-examination, when it appeared, as before stated, that there was a blank space but no crimper and no indenter upon it.

Drawings came over from Germany in a letter from Brydges & Co. to Richards & Co., under date of April 9, 1889; but I am unable to trace these drawings in this record, or to account for their absence, or to fix the date when they were made, or to be certain of their contents. The drawings connected with the German patent disclose the inven tion; but the patent bears date June 23, 1889, and by inference from the practice of the German Patent Office, and there is no other guide, it appears to have been filed the day before. There is nothing in Mr. Hisey's testimony showing when he gave the directions from which they were made. The photographs of a close reproduction of the German patent drawings and likewise of those in the application in this interference appear to be taken from drawings prepared for an appli cation for a Canadian patent, and contain a certificate signed by Hisey, by W. W. Canfield, his attorney; but the certificate bears date September 28, 1889; and there is nothing in the record that gives the drawings from which these photographs were made an earlier date than that of the German patent drawings.

It is claimed by Hisey's counsel that a contract made with Armin Tenner in Germany July 11, 1888, was inade with reference to this invention. An inspection of that contract shows that an earlier contract of February 17, 1888, between the same parties was before them when this was drawn. The earlier contract recited that Mr. Hisey had invented a certain novel and useful shotgun cartridge-loading machine and was desirous of securing patents thereon in European countries, and that Tenner was desirous of securing the right to introduce the said invention in the European countries; but it was made before Mr. Hisey claims to have had the conception of the invention in these issues, and it is certain, therefore, that it has no reference to such invention. The sec

ond and later contract recites that Mr. Hisey has invented a certain novel and useful automatic cartridge-loading machine, the principal feature of which consists in an endless chain, and which is adapted alike for pasteboard or metallic shells, regardless of gage and size, and for which invention he is desirous of securing patents in the United States of America, and the European countries. Although changed from the first contract in the specific recital of the invention, in it no reference is found to the combined cartridge loading machine and crimper, although Mr. Hisey claims to have fully completed the invention thereof before it was executed. On the 8th of September, 1888, Mr. Hisey made application for a patent upon his endless-chain cartridge-loading machine in this Office; but the drawings disclose no crimper or crimper attachment or place where such attachment could be located. There was, however, an ambiguous clause in the specification which might by possibility have reference to this combination, but it also might not.

So that part of the testimony which is indisputable fails in itself to carry back the date of conception or to afford corroboration to Mr. Hisey's statement.

Mr. Hisey sailed from New York for a German port on the 13th of June, 1888, upon the German steamship Aller. Three days out he had a conversation with Allison M. Stickney, a machinist and an inventor, in which Hisey showed him the Ligowsky drawing and the separate sketch of a crimper in the pass-book. It is considered that the testimony of this conversation, in which Mr. Hisey claims to have disclosed the combined cartridge-loading machine and crimper to Mr. Stickney, ought to be received upon the question of Hisey's conception; but Mr. Stickney testified to the details of the conversation four years and a half after it occurred and but one day after inspecting the four sheets of drawings which contain the illustration of the crimper and cartridge-loading machine combined. His cross-examination revealed the circumstances that he paid no great attention to the tracing exhibited to him on board the ship; that his attention was particularly drawn to the peculiar chain and wheel, and that he was not a close observer. The whole matter between them rested in oral discourse. I am unable to find in the fallible recollection of this witness a reasonably sure foundation for a disclosure of this invention as against the plain and certain case made out by his opponent.

Counsel directs attention to references-patents to Burdick, February 8, 1887, No. 357,457; Brittin, March 20, 1888, No. 379,853, and English Patent No. 2,958, of 1867—which are claimed to anticipate this inven tion; but as these were before the Primary Examiner when the question of novelty was before him, and appear to have been fully considered, the motion to remand the case to him for reconsideration of that question is denied.

Upon a careful review of the record it is considered that Peters is the prior inventor, and in adjudging priority to him the decision of the Examiners-in-Chief is aflirmed.

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