SUITS FOR INFRINGEMENT-Continued. injunction perpetual, and awarding only nominal damages, was rendered upon a stipulation which provided that such decree should not be a bar to the recovery of substantial damages in a subsequent suit. Held that the decree was conclusive as to the validity of the patent, the stipulation only affecting its force as an adjudication on the subject of damages. *Id. 6. SUIT BY ASSIGNEES FOR INFRINGEMENT-CROSS-BILL BY ASSIGNORS-On a bill by the assignee of a patent against the assignors for infringement, praying for an accounting, defaults of the assignee in not complying with conditions of the assignment and other wrongs on his part, which do not authorize a forfeiture by the terms of the contract, are not grounds for a cross-bill by the assignors to cancel the assignment or to remove the cloud on their title to the patent arising therefrom or for other affirmative relief where all the matters complained of may be pleaded as defenses to the original bill and damages therefor may be considered on the accounting. *E. C. Atkins Company v. Parke et al., 484. 7. EFFECT OF ADMISSION IN INTERFERENCE PROCEEDINGS IN THE PATENT OFFICE-Where a party to an interference practically withdrew by means of a stipulation by which he agreed that the preliminary statement of the other party should be accepted as evidence, that no additional evidence should be received, aud that priority should be decided on this evidence, and without argument, and where, a patent having been issued to his opponent, he accepted a license thereunder, Held that the stipulation amounted to an admission of priority sufficient, as evidence in a suit for infringement, to show, prima facie, that the successful party in the interference was the first inventor. *Shoemaker et al. v. Merrow, 494. SUITS FOR INFRINGEMENT AGAINST THE UNITED STATES. SUITS IN EQUITY. See Answer to Bill; Assignments, 1, 2, 3, 4, 5; Suits for Infringement. SUITS UNDER SECTION 4915, REVISED STATUTES. See Priority of Invention, 1. SUPREME COURT OF THE DISTRICT OF COLUMBIA. See Patentability, 2. 1. ESTOPPEL-Where an applicant in the Patent Office withdrew claims which were rejected and substituted others with the statement that they were the ones on which he would want a final decision, Held that such action was a waiver by the applicant of his right to assert title to the withdrawn claims in a bill in equity under section 4915. *Durham v. Commissioner of Patents, 547. 2. SECTION 4915-JURISDICTION OF SUPREME COURT, DISTRICT OF COLUMBIA, THEREUNDER-The jurisdiction of the Supreme Court of the District of Columbia to proceed in a suit under section 4915 can arise only in case of refusal of an application by the Commissioner of Patents or the Supreme Court on appeal from him. *Id. TECHNICAL TERMS. See Construction of Specifications and Patents, 23; Construc tion of Statutes; Reissues, 7. CARBONACEOUS ANODE-CONSTRUCTION OF CLAIM 2-The words "carbonaceous anode” in claim 2 cover both anodes made partly of and wholly of carbon. *Pittsburgh Reduction Company v. Cowles Electric Smelting and Aluminum Company, 637. TERM OF PATENT. See Limitation of United States Patent by Foreign Patent Preriously Granted. TESTIMONY. See Interference, 17; Priority of Invention, 2; Suits for Infringement, 4; Witnesses. TORT. See Jurisdiction of the Court of Claims; Suits for Infringement Against the United States. TRADE-MARKS. See Affidavits. 1. DUTIES IMPOSED UPON COMMISSIONER OF PATENTS BY ACT OF MARCH 3, 1881, ARE NOT MINISTERIAL AND CANNOT BE CONTROLLED BY WRIT OF MANDAMUS-The duties imposed upon the Commissioner of Patents by the Trade-Mark act of March 3, 1881, are not ministerial, but their discharge requires the exercise of judgment and discretion, and his action in refusing to issue a certificate of registration of a Trade-Mark cannot be controlled by a writ of mandamus. *United States ex rel. the State of South Carolina v. Commissioner of Patents, 174. 2. COMMISSIONER MAY MAKE REGULATIONS AND REQUIRE APPLICANTS TO COMPLY WITH THEM-The authority to make regulations and requiring applicants to comply with them seems to imply that the Commissioner is left free to institute the necessary inquiry in his own mind. *Id. 3. MANDAMUS-WRIT OF ERROR-Mandamus will not lie save in a plain case and where there is no other legal remedy, and under no circumstances can the writ of mandamus be made to operate as a writ of error. *Id. 4. SAME-ACTION OF HEAD OF DEPARTMENT NOT CONTROLLED BY-The action of the head of a Department in construing the law for his guidance is not subject to revision by maudamus. *Id. 5. ACTION OF TRADE-MARK EXAMINER-The action of the Primary Examiner of Trade-Marks is but the report of a partial examination made by a subordinate. *Id. 6. COMMISSIONER'S POWER IN DETERMINING THE RIGHT TO REGISTRATION-The decision of the Commissioner goes to the question of the lawful use of the Trade-Mark in commerce with foreign nations or the Indian tribes, and whether the applicant has actually used the Trade-Mark in such commerce, and then whether he has the right to the use of it at all. He must decide whether the alleged Trade-Mark is in itself a lawful Trade-Mark, or is identical with the Trade-Mark of another, or is a deceptive imitation, or is the property of the applicant. *Id. 7. FOREIGN COMMERCE-Whether an isolated sale in a foreign country for the purpose of giving foundation to the affidavit is foreign commerce within the meaning of the law, quære. *Id. 8. SAME-AUTHORITY FOR UNDER THE DISPENSARY LAW OF SOUTH CAROLINAThere is nothing in the dispensary law of the State of South Carolina intended to give authority for trade in liquors outside the limits of the State. It follows, therefore, that the sale of a case of State liquors in Canada by the State commissioner was not authorized by the law and was not the act of the State, but of the officer. *Id. 9. COMMISSIONER'S ACTION AFFIRMED-The Commissioner did not err in the conclusion that the Trade-Mark applied for had not been lawfully used in foreign commerce. *Id. 10. DECISION OF LOWER COURT REVERSED-Judgment reversed and the relator's petition dismissed. *Id. 11. TRADE-MARK—“ BULL'S COUGH SYRUP ”—DESCRIPTIVE WORDS-FRAUDULENT USE-Descriptive words, like "Cough Syrup," cannot be appropriated as Trade-Marks. Nevertheless they may be used for the purpose of perpetrating a fraud which affects the public, and in which cases a court will, as against the fraudulent party, afford relief to the party injured. (Coats v. TRADE-MARKS-Continued. Merrick Thread Co., C. D., 1893, 373; 63 O. G., 1531; 149 U. S., 866, and other authorities cited.) *Meyer v. Dr. B. L. Bull Vegetable Medicine Company, 197. 12. SAME-RIGHT TO USE ONE'S OWN NAME IN TRADE-While the right of no one can be denied to employ his name in connection with his business or with articles of his own production, so as to show the business or product to be his, yet he is not allowed to designate his article by his own name in such way as to cause it to be mistaken for the manufacture or goods of another already on the market under the same or similar name. (Brown Chemical Co. v. Meyer, C. D., 1891, 346; 55 O. G., 287; 139 U. S., 540; Lawrence Mfg. Co. v. Tennessee Mfg. Co., C. D., 1891, 415; 55 O. G., 1528; 138 U. S., 537.) *Id. 18. INTENTION TO ADOPT-Sales of medical preparations in this country by a foreign manufacturer, to a limited extent, npon special orders, to supply particular customers, do not amount to use in such circumstances as to publicity and to such length of use as show an intention to adept a symbol placed upon such preparations as a Trade-Mark. (Kohler Maanfg. Co. v. Beshore, ante, 277; 67 O. G.. 678; 59 Fed. Rep., 572, followed; Richter v. Anchor Remedy Co., 52 Fed. Rep., 455, affirmed.) Richter v. Reynoids et al., 260. 14. REGISTRY AS EVIDENCE OF INTENTION-The registry of a Trade-Mark under the act of March 3, 1881, may be evidence in a suit to restrain infringement of a common-law Trade-Mark used for the same article in domestic commerce to show what complainant really claimed. (Kohler Manufg. Co. v. Beshore, ante, 277; 67 O. G., 678; 59 Fed. Rep., 572, followed.) *Id. 15. SAME-The registry of a Trade-Mark, the essential feature of which is described a8 "the representation of a red anchor in an oval space," is not proof of intention to adopt a Trade-Mark consisting of the word "Anchor" and the symbol of an anchor, irrespective of color and surroundings. (Richter v. Anchor Remedy Co., 52 Fed. Rep., 455, affirmed.) *Id. 16. TREATY WITH GERMANY-CONSTRUCTION-The treaty of 1871, between the United States and Germany, (article 17, 17 Stat., 931,) which provides that, with regard to the marks of labels of goods or of their packages, the citizens of Germany shall enjoy in the United States the same protection as native citizens, does not give to a citizen of Germany who has acquired the right to a Trade-Mark in that country a similar right to the Trade-Mark in the United States. *Id. 17. INTENTION TO ADOPT-Sales of a few dozen bottles of a medicinal preparation, with written labels affixed, bearing a name different from that previously used for such preparation, do not amount to use in such circumstances as ro publicity and to such length of use as to show an intention to adopt the written words as a Trade-Mark. (C. D., 1893, 179; 62 O. G., 592; 53 Fed. Rep., 262, affirmed.) *Kohler Manufacturing Company v. Beshore, 277. 18. REGISTRY AS EVIDENCE OF INTENTION-Although registration of a TradeMark under the act of March 3, 1881, may not prevent the adoption of another device as a common-law Trade-Mark for the same article iu domestic markets, such registry may be evidence, in a suit to restrain infringement of such common law Trade-Mark, to show what complainant really claimed. *Id. 19. STATEMENT TO OBTAIN REGISTRATION –In such suit the statement fled to obtain registration and attached to the affidavits on motion for a preliminary injunction may be considered on the final hearing. *Id. 20. INFRINGEMENT—“One Night Cure,” used as a Trade-Mark for a cough remedy and for a corn remedy, is not infringed by the use of the words "Beshore's One Night Cough Cure," (C. D., 1893, 179; 62 O. G., 592; 53 Fed. Rep., 262, affirmed.) Id. TRADE-MARKS-Continued. 21. INJUNCTION-QUACK MEDICINES-Query whether equity will intervene by injunction to protect the use of words claimed as a Trade-Mark between owners of quack medicines. *Id. 22. WORDS MAKING FALSE ASSERTION-It seems that an injunction should not be granted to protect the use of words as the Trade-Mark of a medicinal preparation which assert a manifest falsehood or physiological impossibility. *Id. 23. APPLICATION FOR REGISTRATION-DIVISION-ONE REGISTRATION MAY EMBRACE SEVEral DifferenT ARTICLES-There is no authority for requir ing division of an application for the registration of a Trade-Mark to accord with the subdivisions of the Office classification. Ex parte Silvers, 54. 24. TRADE-MARKS-RIGHT TO-ALIENS MAY SUE IN UNITED STATES COURTSCitizens of Canada who are engaged in the manufacture of trade-marked articles and who have a place of business in the State of New York, where they make and ship such articles for sale in the United States, are within the International Convention of March 20, 1883, for the protection of industrial property, and they may sue in the United States courts for the infringement of their Trade-Marks by its citizens. *Kerry et al. v. Toupin, 302. 25. SAME-WHAT CONSTITUTES-INFRINGEMENT-Complainants manufactured a medicinal compound under the name of "Syrup of Red Spruce Gum," and for some twenty years or more that name was placed conspicuously on the package in which the compound was sold, and in connection therewith appeared a cut of an Indian against a background of spruce-trees and a waterfall. Held that the adoption aud continuous use of this distinctive name and device entitle complainants to claim it as a Trade-Mark and to be protected against its infringement by persons making similar goods. *Id. 26. IN AN APPLICATION FOR the RegistrATION OF A TRADE-MARK THE VALUE OF THE REGISTRATION DETERMINES THE AMOUNT OF MONEY INVOLVED-The refusal of the Commissioner of Patents to register a Trade-Mark does not involve the right to the Trade-Mark, but the registration of the Mark, and it is the value of the registration and not the value of the Trade-Mark that determines the sum of money involved. *Cnited States ex rel. the State of South Carolina v. Commissioner of Patents, 318. 27 CONTROVERSY AS TO THE Extent of the AuthoRITY OF THE COMMISSIONER OF PATENTS UNDER THE TRADE-MARK LAW-DOES NOT INVOLVE THE VALIDITY OF AN AUTHORITY EXERCISED THEREUNDER-Where upon the refusal of the Commissioner to register a Trade-Mark a writ of mandamus was unsuccessfully sought against him, upon the ground that upon the facts submitted his duty was ministerial and not discretionary, no objection to the validity of the Trade-Mark law under which the Commissioner acted being made, nor the existence or lawfulness of his authority thereunder being drawn in question, and the only controversy upon the proceedings being as to the construction of the law as to the extent of the Commissioner's authority, Held that such controversy did not draw into question the validity of an authority exercised under the United States. *Id. 28. NUMERALS APPLIED TO SPECIFIC REMEDIES-Numerals used by a medicine company to identify specific remedies for various ailments are in effect descriptive terms, and their use will not be protected as a Trade-Mark. *Humphreys Homeopathic Medicine Company v. Hilton, 324. "BROMO-QUININE" - DESCRIPTION MISREPRESENTATION REGISTRATION REFUSED "Bromo-Quinine" is a compound word descriptive of the preparation to which it is applied, indicating that it contains bromine or a bromide and quinine. If it does not contain bromide, the description is false, and in either case the term is not a valid Trade-Mark. Ex parte Grove, 69. 30. INFRINGEMENT-SOCIAL REGISTER-The words "Social Register," as applied to a list of persons resident in a certain locality, compiled by its publisher 10693 PAT -48 29. TRADE-MARKS-Continued. with reference to the personal and social standing of such persons, consti- 31. TRADE-MARK-INFRINGEMENT-One who dresses up his goods to imitate the 33. SAME-COMPARISON OF DEVICES BY THE COURT-The court may compare 34. OWNERSHIP-When the complainants applied a name to a small lot of cigars 35. HOSTETTER'S BITTERS-INFRINGEMENT-Selling an imitation, as such, with- USE AND SALE OF PATENTED ARTICLES. See Apparatus and Product; Infringe- UTILITY. See Invention, 13. VALIDITY OF PATENT. Seo Assignments, 8, 9, 10; Construction of Specifications ABANDONMENT-The failure of a patentee for some years to manufacture his device VALIDITY OF PATENTS AFFECTED BY DELAY IN PROSECUTION. See Laches VALID PATENTS. See Construction of Specifications and Patents, 22; Particular Patents, 1, 2, 3, 4, 9, 12, 13, 14, 16, 24, 27, 28, 32, 40, 41, 42, 43, 45, 46, 47, 48, 49, 51, |