author: DYER, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Raymond Paul GREEN, Defendant-Appellant.
    No. 72-1908.
    United States Court of Appeals, Fifth Circuit.
    March 13, 1973.
    Rehearing Denied April 9, 1973.

      Walter G. Arnold, Jacksonville, Fla., for defendant-appellant.
    John L. Briggs, U. S. Atty., John J. Daley, Jr., Asst. U. S. Atty., Jacksonville, Fla., Claude H. Tison, Jr., Asst. U. S. Atty., Tampa, Fla., for plaintiff-ap-pellee.
    Before GODBOLD, DYER and CLARK, Circuit Judges.
   DYER, Circuit Judge:

Green appeals his conviction of unlawful possession of twenty-nine copper plates made in the similitude of a plate from which genuine obligations and securities of the United States are printed, with the intent to use the plates to counterfeit obligations of the United States, or any part thereof, in violation of 18 U.S.C.A. § 474. Prior to trial, Green moved to suppress all twenty-nine plates, on the ground that they were illegally seized during an unlawful search of his apartment. After hearing evidence on this issue, the trial court denied the motion. Green and the government then stipulated to waive a jury trial, and the case was tried before the district court judge. Green was found guilty as charged and received a five year suspended sentence. We affirm.

. In the early afternoon of December 9, 1970, while Green was away, a fire broke out in his apartment on the ground floor of an apartment building in Jacksonville, Florida. Two fire trucks and a number of Jacksonville firemen responded to the alarm. Unable to determine the origin of the blaze, the Fire Chief requested the help of Henry Melzer, the Deputy Fire Chief and Deputy State Fire Marshal for the City of Jacksonville, whose principal duty was to investigate suspicious fires or fires of undetermined origin.

By the time Melzer arrived at the scene, the fire had been suppressed. No one occupying the apartment was present, and at this time the occupant’s identity was unknown. Melzer began examining the scene, to determine the cause of the fire, which had been confined to the kitchen. Some of the woodwork was smudged, but the principal damage was to a pasteboard box on the floor that had been virtually reduced to ashes. Melzer briefly inspected the box and then made a tour of the apartment, looking for “hot spots” or other areas in the apartment that might be afire.

After determining there were no other danger areas, Melzer returned to the kitchen to examine the box in which the fire seemed to have started in order to determine its cause. His procedure was to have a fireman remove each item in turn from the ashes for Melzer’s inspection. While engaged in this duty, fireman Lee discovered several metal plates and called Melzer’s attention to them. As one of the plates was removed others similar to it were disclosed underneath. The plate was some six to eight inches long and four inches wide, and Melzer noticed the image of a $20 Federal Reserve Note on it. Although Mel-zer was not an expert on counterfeiting, he had on previous occasions worked in cooperation with the Secret Service and was immediately able to tell that the plate was probably a counterfeiting plate. Wanting to alert the appropriate investigative agency, he called Secret Service Agent Varenholt. Melzer described the plate to Varenholt over the telephone and furnished him the address of the apartment.

Before going to the apartment to examine the plates, Varenholt discussed the matter with his superior, and they determined not to seek a warrant for seizure of the plates. Whether this decision was based on the belief that they did not possess a sufficient description of the plates to obtain a warrant or on the belief that a warrant was unnecessary because the plates were already properly in the custody of a State officer is unclear.

When Varenholt arrived at the apartment, the firemen and trucks were still on the scene. One of the firemen let him into the apartment. Entering the kitchen, Varenholt observed that several firemen were sifting through a large pile of ashes on the floor and placing them in a tub. Melzer handed Varenholt the plate that had already been removed from the ashes, and Varenholt determined on the basis of a quick inspection that it was capable of printing a counterfeit impression. After Varenholt half examined the first plate, the remaining twenty-eight plates were handed to him one by one, each being initialed first by fireman Lee as he removed it from the ashes and then initialed again by Varen-holt as he received it. In addition, a partial impression of the face of a $20 Federal Reserve Note was found amongst the plates.

After Varenholt had completed his examination of the twenty-nine plates, he waited for the tenant to return to the apartment. Green had previously come to the apartment, just after Melzer had called Varenholt, but he was told by a fireman at the door that he could not enter while firemen were inside, and he departed. After Varenholt had taken custody of the plates, and while he was waiting for the occupant of the apartment to arrive, Melzer completed his investigation. He concluded that the fire was a result of spontaneous combustion, caused by a chemical reaction between the metal of the copper printing plates, some rags that had been in the box, and possibly cleaning fluid that may have been placed on the plates to preserve them.

After Varenholt had waited in the kitchen for a short while, Green returned to the apartment. Varenholt advised him of his rights, and Green made a telephone call to his attorney. Varen-holt informed Green that he had probable cause to arrest him; however, because Green’s attorney assured Varen-holt that Green would surrender himself on the following morning, Varenholt did not arrest him at that time.

Green’s argument on appeal is twofold. First, he contends that the twenty-nine plates should have been excluded from evidence because they, were the product of a warrantless invasion of his apartment in violation of the Fourth Amendment. Additionally, he claims that the evidence was insufficient to prove that he had the requisite statutory intent to use the plates found in his apartment for counterfeiting. We disagree.

THE SEARCH OF GREEN’S APARTMENT AND THE SEIZURE OF THE COUNTERFEITING PLATES

The essential Fourth Amendment issues before this Court are (1) whether the initial warrantless intrusion by the firemen and Melzer was justified; (2) if so, whether the discovery and seizure of the plates were accomplished by actions within the limited scope of the justification for the initial intrustion; and (3) if so, whether a federal officer, who is expert in identification of the type of suspected contraband discovered, must himself secure a warrant before he may enter the premises to confirm that the plates are contraband and to take custody of them when the plates are already legitimately in the- possession of a State officer.

The fundamental facts determinative of the validity of the initial entry 'may be succinctly stated. Firemen entered an empty apartment in a multiunit apartment building to extinguish a fire and called the Deputy Fire Marshal when they, including the Fire Chief, could not determine its cause. Although Green concedes that an existing fire in an apartment building is an emergency of sufficient proportions to permit the prompt and warrantless entry of firemen to suppress it, he would require that Melzer have obtained a warrant before he entered to investigate the cause of the fire.

The Supreme Court has had occasion to consider a question peripherally related to this in Camara v. Municipal Court, 1967, 387 U.S. 523, 87 S.Ct. 1727, 18 L.Ed.2d 930, and in See v. Seattle, 1967, 387 U.S. 541, 87 S.Ct. 1737, 18 L.Ed.2d 943. Both eases involved the recurring issue of routine area inspections conducted in the interest of enforcing compliance with municipal building and fire safety codes without warrants. The Court concluded that such inspections were reasonable and consistent with legitimate governmental interest in the protection of the health and safety of the public, but required that any inspection of a particular premises as a part of such a routine area inspection be supported by a search warrant. However, the Court expressly limited this warrant requirement to the routine and general inspection of an entire area for the purpose of insuring general compliance with the safety codes involved- — i. e., in situations where no compelling reason exists necessitating the prompt inspection of a particular premises at a particular time.

Since our holding emphasizes the controlling standard of reasonableness, nothing we say today is intended to foreclose prompt inspections, even without a warrant, that the law has traditionally upheld in emergency situations. See North American Cold Storage Co. v. City of Chicago, 211 U.S. 306, 29 S.Ct. 101, 53 L.Ed. 195 (seizure of unwholesome food); Jacobson v. Massachusetts, 197 U.S. 11, 25 S.Ct. 358, 49 L.Ed. 643 (compulsory small pox vaccination); Compagnie Francaise v. Board of Health, 186 U.S. 380, 22 S.Ct. 811, 46 L.Ed. 1209 (health quarantine); Kroplin v. Truax, 119 Ohio St. 610, 165 N.E. 498 (summary destruction of tubercular cattle). On the other hand, in the case of most routine area inspections, there is no compelling urgency to inspect at a particular time or on a particular day. .

Camara v. Municipal Court, 1967, 387 U.S. 523, 539, 87 S.Ct. 1727, 1736, 18 L.Ed.2d 930.

Unlike the area inspection, which does not focus on a particular premises and is conducted without reference to knowledge of a fire hazard at a given location, the investigation of an actual fire is logically and factually inseparable from the fireman’s job of suppressing the blaze. The ordinary fireman is not an expert in the cause of fires. He cannot determine, after he douses the blaze, whether the danger is past or merely hidden, awaiting only a fresh supply of oxygen to set it off again with perhaps disastrous results.

A fire might have been caused by any of a myriad of conditions that would not be terminated by simply putting out the flame — e. g., a faulty appliance, defective or worn out electrical wiring, or careless storage of flammable materials. Where the existence of a gravely dangerous condition has already manifested itself in one fire, it would be the height of folly for the firemen to enter, suppress the flames, and leave the premises without assurance that they would not be required to return, perhaps within minutes, to do it all again.

Critical to the Supreme Court’s imposition of the warrant requirement in Ca-mara and in See was the recognition that there is nothing in the nature of a routine area inspection that requires immediate entry into a particular structure in the area at a specific time. There is, however, such a necessity in the case of a fire. Until someone expert in the cause of fires arrives, inspects the scene, and determines that the fire has been completely extinguished, the firemen cannot reasonably depart. The imposition of a warrant requirement in such circumstances would immobilize the entire apparatus of fire protection. The absurdity of requiring the fire investigator to secure a warrant in order to search for the fire’s cause is self evident.

In the case sub judice the district court correctly observed that “[ ascertaining the cause of the fire was necessary to assure that it was in fact totally extinguished and would not reoccur.” In short, Melzer’s entry was entirely reasonable and his search of the apartment necessitated by the exigencies of the circumstances. Clearly, this is not the type of investigation dealt with in Camara and See and, therefore, is not subject to the rule of those cases.

The facts of the ease sub judice present a classic situation for application of the well established plain view doctrine. Melzer was lawfully present in Green’s apartment for the purpose of investigating the cause of the fire. Although without a warrant, his presence was justified by the emergency created by the fire which required prompt action to ensure the safety of the building and of its occupants. The plates seized were unexpectedly uncovered during Melzer’s examination of the box where the fire had apparently started — a course of action distinctly within the scope of the justification for his presence in the first instance. Finally, upon removal of the first plate from the ashes, with the consequent exposure of the others underneath, it was immediately apparent to Melzer that the plates were evidence of the cause of the fire, and his initial judgment was that the plates were for counterfeiting. See Coolidge v. New Hampshire, 1971, 403 U.S. 443, 466-471, 91 S.Ct. 2022, 29 L.Ed.2d 564; cf. United States v. Allen, 5 Cir. 1973, 472 F.2d 145; United States v. West, 5 Cir. 1972, 460 F.2d 374.

Contrary to Green’s suggestion, the Fourth Amendment does not require that Melzer have halted his investigation once the first counterfeiting plate was uncovered and have obtained a search warrant before continuing. The activity that led to the discovery of the plates was within the scope of the justification for Melzer’s intrusion. Although Mel-zer, as we read the Florida law, had broad powers as a law enforcement officer to make arrests and seizures, his conduct in uncovering and seizing the plates did not exceed the necessary investigative procedures required for him to fulfill his duty as a fire marshal and to accomplish the limited purpose of determining the cause of the fire. Mel-zer’s procedures did not vary from the ordinary and necessary actions of the fire department in such emergencies. In the course of his investigation, it was incumbent upon him to sift the ashes of the box in which it was evident that the fire had been concentrated. In performing his duties as fire marshal, Melzer inadvertently found the metal plates which he determined had partially contributed to causing the fire. Unfortunately for Green, the plates also happened to be contraband.

Nor was it necessary for Secret Service Agent Varenholt to have obtained a warrant before he entered the apartment to confirm that the plates were of such quality as to be suitable for printing counterfeit obligations and to take custody of them. As explained above, the apartment had already been lawfully entered and searched. Once Melzer unexpectedly came upon the contraband, he had the authority as a law enforcement officer to seize it. Moreover, he had the duty as a fire marshal to seize all evidence relevant to his investigation of the fire’s cause. Melzer certainly could have carried the plates to the fire station and sent them to the State crime laboratory or to the F.B.I. for chemical analysis. Likewise, he surely could have removed the plates and carried them to the Secret Service’s headquarters, or have handed them to Varenholt outside of the apartment.Thus, Varenholt cannot be constitutionally tripped up at the threshold that he stepped across to make his confirmation and to take custody of the plates from Melzer.

The evidence is uncontroverted that this is all that Varenholt did. His conduct inside of the apartment demonstrates that he recognized and accepted the limited mission for which he was legitimately present. Varenholt never left the kitchen area, except once to use the telephone. The situation presented numerous unanswered questions to which a general exploratory search may have provided answers. Nevertheless, Varen-holt opened no doors and examined only the evidence given him by fireman Lee and marshal Melzer.

The purpose of a search warrant is to ensure judicial authorization, in advance, of intrusions into constitutionally protected privacy. Where a lawful intrusion has already occurred and a seizure by a State officer has validly taken place as a result of that intrusion, the invasion of privacy is not increased by an additional officer, albeit a federal officer, who is expert in identifying the type of contraband discovered, to enter the premises to confirm the belief of the State officer and to take custody of the evidence. Once the privacy of a dwelling has been lawfully invaded, to require a second officer from another law enforcement agency arriving on the scene of a valid seizure to secure a warrant before he enters the premises to confirm that the seized evidence is contraband and to take custody of it is just as senseless as requiring an officer to interrupt a lawful search to stop and procure a warrant for evidence he has already inadvertently found and seized. Terry v. Ohio, 1968, 392 U.S. 1, 88 S.Ct. 1868, 20 L.Ed.2d 889; Harris v. United States, 1968, 390 U.S. 234, 88 S.Ct. 992, 19 L.Ed. 1067. The apparent conflict between the Constitution and common sense which the plain view doctrine has reconciled is the same misconception which we here seek to dispel. See Mapp v. Ohio, 1961, 367 U.S. 643, 647, 81 S.Ct. 1684, 6 L.Ed.2d 1081.

THE EVIDENCE OF UNLAWFUL INTENT

Green also argues that there was no substantial evidence that he had the unlawful intent to use the plates found in his apartment for counterfeiting. We find this contention frivolous. Green completely ignores the fact that a partial impression of the face of a $20 Federal Reserve Note was found amongst the plates. Additionally, 18 U.S.C.A. § 474 only requires that one have the intent to use the plates to counterfeit “any part” of an obligation or security of the United States. While this evidence is circumstantial, by its very nature evidence of intent is virtually always circumstantial. Moreover, a careful review of the record convinces us that the evidence was more than sufficient to justify and support the district court’s guilty verdict.

Affirmed.

      . In a technical sense, the State of Florida has not had any Deputy Fire Marshals since 1969, when, in a comprehensive revision of the State Code, the Florida legislature transferred fire prevention duties from the State Treasurer to the newly created Department of Insurance and abolished the title “Deputy Fire Marshal.” “Deputies” thenceforth became known as “agents” of the Department of Insurance but retained all the powers and duties of their former offices, Fla.Laws 1969, ch. 69-106 and Chiefs of fire departments are ex officio agents of the State Fire Marshal. Fla.Stat.Ann. § 633.121.

      . Fla.Stat.Ann. § 633.14 provides:
      Agents of the state fire marshal shall have the same authority to serve summonses, make arrests, carry firearms and make searches and seizures, as the sheriff or his deputies, in the respective counties where such investigations, hearings, or inspections may be held; and affidavits necessary to authorize any such arrests, searches or seizures may be made before any magistrate having authority under the law to issue appropriate processes.

      . Fla.Stat.Ann. § 633.03 provides:
      The state fire marshal shall investigate the cause, origin, and circumstances of every fire occurring in this state wherein property has been damaged or destroyed where there is probable cause to believe that the fire was the result of carelessness or design. Report of all such investigations shall be made on approved forms to be furnished by the fire marshal.


source: Caselaw Access Project

author: MULLIGAN, Circuit Judge:

license: Public Domain

text:
    BROADVIEW CHEMICAL CORPORATION, Plaintiff-Appellant, v. LOCTITE CORPORATION, Defendant-Appellee.
    No. 383, Docket 72-1955.
    United States Court of Appeals, Second Circuit.
    Argued Feb. 20, 1973.
    Decided March 13, 1973.
    See also, D.C., 53 F.R.D. 353.

      Granger Cook, Jr., Chicago, Ill. (David A. Anderson, James P. Hume, Hume, Clement, Hume & Lee, Ltd., Chicago, Ill., of counsel), for plaintiff-appellant.
    Walter D. Ames, Washington, D. C. (James H. Marsh, Jr., Watson, Cole, Grindle & Watson, Washington, D. C., and J. Rodney Reck, Newington, Conn., of counsel), for defendant-appellee.
    Before FEINBERG, MULLIGAN and TIMBERS, Circuit Judges.
   MULLIGAN, Circuit Judge:

This is an appeal by Broadview Chemical Corporation (Broadview) from a judgment of the United States District Court for the District of Connecticut, M. Joseph Blumenfeld, Chief Judge, filed on May 10, 1972, declaring that certain anaerobic sealant compositions developed by Broadview do not infringe certain patents owned by the appellee, Loctite Corporation (Loctite). The judgment of the district court is affirmed.

Although Broadview commenced this action under the Declaratory Judgment Act, 28 U.S.C. § 2201, and succeeded in obtaining an adjudication of non-infringement, its appeal urges that the judgment entered below was erroneous since it was unnecessarily limited in failing to specify why there was no infringement and also in failing to adjudicate that the Loctite patents in question were invalid. We are advised that an understanding of the precise mechanism by which anaerobic sealants function, is not important to the issues on appeal. This of course is a source of deep regret and disappointment but we shall proceed in any event to the non-chemical aspects of the appeal.

I

The parties to this litigation are hardly strangers to the judicial process. On June 1, 1964 Broadview first filed an action in the District Court of Connecticut seeking a declaratory judgment that the Loctite patents in question were invalid and not infringed by some 32 separate compositions manufactured by Broad-view functioning as anaerobic sealants. This action was terminated by a settlement and the parties thereafter entered into a Consent Decree filed on February 15, 1967, in which Broadview admitted that the Loctite patents were valid and that it had infringed them. On September 21, 1967 Loctite moved to punish Broadview for contempt for violating the Consent Decree by manufacturing and marketing another line of sealant compositions. After trial, Chief Judge M. Joseph Blumenfeld found Broadview to be in contempt for infringing certain Loctite patents. On appeal this Court affirmed the District Court’s finding of contempt for all but two of the Broad-view formulations and remanded the case for further proceedings. Broadview Chem. Corp. v. Loctite Corp., 406 F.2d 538 (2d Cir.), cert. denied, 394 U.S. 976, 89 S.Ct. 1472, 22 L.Ed.2d 755 (1969). Judge Blumenfeld then filed an order on May 10, 1969 enjoining Broad-view from infringing the Loctite patents in suit and further providing that for each violation of this order or the Consent Decree of February 15, 1967, the violator would be bound to pay Loctite $2000.00.

Even before the injunction issued, Broadview instituted the present declaratory judgment action seeking an adjudication that certain new anaerobic sealant compositions (KBK) did not infringe the Loctite patents. Judge Blu-menfeld dismissed the cojnplaint and this Court reversed (Broadview Chem. Corp. v. Loctite Corp., 417 F.2d 998 (2d Cir. 1969), cert. denied, 397 U.S. 1064, 90 S.Ct. 1502, 25 L.Ed.2d 686 (1970)) finding that there was an existing justiciable controversy and not a moot or academic dispute. This assessment of justiciability by Judge Waterman based in part on the prior history of litigation between the parties, has been more than justified by subsequent events. On'remand Broadview filed an amended complaint on May 11, 1970 seeking a judgment of non-infringement not only with respect to the KBK compositions but also with respect to new (Manaka) compositions. At this point a rash of motions ensued with Broadview arguing that Loctite was unnecessarily delaying an opinion on infringement and Loctite urging that Broadview had added still another formulation (Manaka II) not within the amended complaint. We see no reason to detail the bitter legal exchanges which transpired. Suffice it to say that Loctite gradually, albeit grudgingly, admitted to the non-infringement of its patents as evidenced by a judgment in part entered on June 30, 1971, a judgment in part entered on March 1, 1972 and a final judgment entered on May 10, 1972. In sum, the judgments declare that specified KBK and Manaka sealant compositions of Broadview do not infringe the Loctite patents in suit. It would seem to be undisputed that the entire KBK and Manaka lines submitted by Broadview have been held not to be infringing and that at long last total victory had been achieved.

II

Broadview claims however that its victory here is Pyrrhic and urges that the court below committed error in failing to include in its judgment that the Broadview formulations do not infringe because they do not employ monomers, inhibitors, initiators and accelerators of the type covered by the claims of the Loctite patents in suit. Broadview now seeks a remand instructing the District Court to enter a judgment detailing the reasons why the patents in issue are not infringed by Broadview’s manufacture or sale of anaerobic sealants made in accordance with either the KBK or Manaka formulations. Appellant cites no authority for the proposition that greater specificity is required in a judgment of this character. The evaluation of non-infringement made by Loctite which Broadview had sought by motion and strenuously sought to expedite was eventually accepted by the Court and vindicated the Broadview formulations. Broadview’s real concern here in our view is that Loctite has sent a letter to its dealers in which it states that although Broadview has submitted certain products which were non-infringing, they were laboratory samples and “we do not know whether they can be used commercially.” The Loctite letter further indicated that it would monitor the Broadview sealants to determine whether their commercialized products infringe the Loctite patents. The letter is authored by Lo'ctite’s Market Manager and its tenor is typically sales oriented exhorting its dealers to stand fast and remain loyal to the Loctite product. It is undisputed that the principal purpose of a declaratory judgment is to clarify and settle disputed legal relationships and to relieve uncertainty, insecurity and controversy. E. Borchard, Declaratory Judgments 299 (2d ed. 1941). The judgment herein our view did clarify and determine the disputed jural relationship. Although the declaratory judgment is a highly commendable and civilized remedy having its genesis in the equitable writs of Quia Timet and Bills of Peace, it is not a panacea and it cannot effectively terminate business frictions any more than it can harmonize personal relationships. See Baumann v. Baumann, 250 N.Y. 382, 165 N.E. 819 (1929). The non-infringement of the formulations in question has been adjudicated but the competition between the parties continues in the market place and it should not be the province of the federal court to act as a continuing monitor or arbiter of the sales claims which either may make. In view of the acrimony which has marked the relationship between the parties for the past nine years, it is questionable whether any declaratory judgment no matter what its contents, will eliminate the ill will which permeates the relationship here. We see no reason to disturb the judgment in the form adopted by the trial court.

Ill

Broadview’s second argument on appeal is that the court below erred in refusing to hold the Loctite patents invalid. Broadview sought no declaration of invalidity in the complaint or amended complaint below. Broadview simply sought a declaration of non-infringement. There was a motion made to amend the complaint to challenge validity “in the event that Loctite charges that any of such patents are infringed.” However there was no charge of infringement. While the Supreme Court has indicated that it is the better practice for lower courts in infringement suits, to inquire into the validity question, Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945), this has not been construed as a peremptory direction but rather a matter of the trial court’s discretion. Thus, where there has been a disclaimer of infringement and the trial court has not adjudicated the issue of validity, this Court need not rule on the question. See McCurrach v. Cheney Bros., 152 F.2d 365 (2d Cir. 1945). Broadview’s sole basis for urging invalidity is the difficulty Loctite encountered in determining whether or not there had been infringement. Assuming arguendo that this is a proper basis upon which invalidity may be established (see Corning Glass Works v. Anchor Hocking Glass Corp., 253 F.Supp. 461 (D.Del.1966), rev’d, 374 F.2d 473 (3d Cir.), cert. denied, 389 U.S. 826, 88 S.Ct. 65, 19 L.Ed.2d 80 (1967)) (a proposition we express no view upon) there is nothing here to establish that the delay or difficulty was of such character. Surely this must depend upon the intricacies and inherent complexities of the invention as well as the number of formulations submitted for analysis and report. Appellant indeed sought a declaration of invalidity as a sanction for Loetite’s alleged dilatory tactics in making the requested evaluation. We cannot determine how much the delay was due to the difficulty in making the tests and how much was prompted by Loctite’s reluctance to finally admit defeat.

We finally are faced with the Consent Decree of February 15, 1967 in which the parties to this appeal solemnly agreed that the patents in issue were valid and had been infringed. Does this decree estop Broadview from questioning the validity of the Loctite patents? This question has been decided in this Court in Addressograph-Multigraph Corp. v. Cooper, 156 F.2d 483, 485 (2d Cir. 1946), where we said:

[W]e think on grounds of public policy we ought to rule that in a decree, at least in one entered by consent, either an adjudication of infringement, or a grant of some relief from which infringement may be inferred, is essential before any effect of res judica-ta can be given to it on the issue of validity.

In that case there was no adjudication of infringement and no res judicata effect was given to the decree. Here of course infringement was adjudicated and the decree recited that Broadview had made a monetary payment for infringement.

Appellant urges that Addressogrwph is no longer good law in view of the holding of the Supreme Court in Leaf, Inc. v. Adkins, 395 U.S. 653, 670-671, 89 S.Ct. 1902, 23 L.Ed.2d 610 (1969), that a licensee is not estopped from questioning the validity of a patent which he recognized in the license agreement. Appellant cites no authority for this extension of Lear to the consent decree cases where there has been a prior adjudication of infringement.

Business Forms Finishing Serv., Inc. v. Carson, 452 F.2d 70 (7th Cir. 1971), relied upon by appellant does not repudiate Addressograph but relies on the distinction made there and where there was no finding of infringement, it was held that there was no estoppel to challenge validity. The only other post Lear appellate case we have found is Schnit-ger v. Canoga Elec. Corp., 462 F.2d 628 (9th Cir. 1972), which squarely holds that a prior decree finding infringement and validity is res judicata in a subsequent declaratory judgment action.

In light of the record before us which fails to establish any pleading or proof of invalidity, we see no warrant here to extend Lear or to overrule Addresso-graph.

We would conclude with the hope that the parties, who have been locked in almost continuous litigation for nine years with four appeals to this Court, will return to their laboratories instead of their lawyers’ offices so that more and better anaerobic sealants might be made available to the public. We have grave doubt, however, that any Pax Anaerobia will ensue.

Affirmed.

      . We do note, however, that on September 16, 1971 this Court affirmed without opinion a determination by the District Court that the Manaka II compositions were within that court’s jurisdiction. A petition for rehearing was denied on October 13, 1971 and the Supreme Court denied a petition for writ of certiorari on February 22, 1972 (405 U.S. 920, 92 S.Ct. 949, 30 L.Ed.2d 790).

      . On the other hand we recognize that district courts have broad discretion in moulding their decrees to fit the circumstances of the particular case. See E. Borchard, Declaratory Judgments 296 (2d ed. 1941).


author: PER CURIAM:

text:
    UNION WATER SUPPLY CORPORATION OF GARCIASVILLE, a Texas non-profit corporation, et al., Plaintiffs-Appellants, v. O. F. DENT and Joe D. Carter et al., Defendants-Appellees.
    No. 72-2833.
    United States Court of Appeals, Fifth Circuit.
    March 7, 1973.
    Rehearing Denied April 11, 1973.
    Ed Idar, Jr., Mexican-Am. Legal Def. & Educational Fund, San Antonio, Tex., John A. Pope, Jr., Rio Grande City, Tex., Anthony Ching, Loyola School of Law, Los Angeles, Cal., Howbert A. Steele, Tex. Rural Legal Aid, Inc., Pharr, Tex., George J. Korbel, San Antonio, Tex., B. R. Stewart, Edinburg, Tex., for plaintiffs-appellants.
    Crawford C. Martin, Atty. Gen., Houghton Brownlee, Jr., Roger Tyler, Asst. Attys. Gen., Timothy L. Brown, Chief Examiner, Tex. Water Rights Commn., Milford Lee Hall, Asst. Chief Examiner, Austin, Tex., for defendants-appellees.
    Neal King, Mission, Tex., for Cameron County Water Control & Improvement Dist., No. 19, etc., amicus curiae.
    Before JOHN R. BROWN, Chief Judge, and WISDOM and AINSWORTH, Circuit Judges.
   PER CURIAM:

Appellants Union Water Supply Corporation and others suing individually and on behalf of the class they represent appeal from an order entered in the United States District Court for the Southern District of Texas dismissing their claims and lifting a temporary restraining order formerly imposed by the Court. The lower court found the issues sought to be adjudicated by appellant Union Water Supply res judicata and that the individual Appellants lacked standing to question the constitutionality of the Wagstaff Act.

After carefully reviewing the record we perceive no error and therefore affirm based upon the lower court’s opinion. Union Water Supply Corporation v. Vaughan, 355 F.Supp. 211 [S.D.Tex.].

Affirmed.


text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. LARDNER ELEVATOR COMPANY, Respondent.
    No. 72-2005.
    United States Court of Appeals, Sixth Circuit.
    March 5, 1973.
    Peter G. Nash, General Counsel, Patrick Hardin, Associate General Counsel, Marcel’ Mallet-Prevost, Asst. General Counsel, John D. Burgoyne, Jane P. Schlaifer, Attys., N. L. R. B., Washington, D. C., for petitioner-appellant.
    Cotiechio, Zotter & Sullivan, by W. J. Zotter, Detroit, Mich., for respondent-appellee.
    Before PHILLIPS, Chief Judge, and PECK and LIVELY, Circuit Judges.
   ORDER.

This case came on to be heard before a panel appointed pursuant to Rule 3(e) of this Court.

The case is before the Court on the application of the National Labor Relations Board for enforcement of its order, issued June 26, 1972, against the respondent company. Reference is made to the Board’s decision and order, reported at 197 NLRB No. 145, for a detailed recitation of the facts.

The Court concludes that it is manifest that the questions on which the decision of the Court depends are so unsubstantial as not to need further argument within the contemplation of Rule 8 of the rules of this Court.

We find that the decision of the Board is supported by substantial evidence on the record considered as a whole. Universal Camera Corp. v. NLRB, 340 U.S. 474, 71 S.Ct. 456, 95 L.Ed. 456 (1951).

It is ordered that enforcement be granted.

      . “(e) Docket Control. In the interest of docket control, the chief judge may from time to time, in his discretion, appoint a panel or panels to review pending cases for appropriate assignment or disposition under Rules 7(e), 8 or 9 or any other rule of this court.”


text:
    Thomas E. PAINE et al., Plaintiffs-Appellees, v. BOARD OF REGENTS OF the UNIVERSITY OF TEXAS SYSTEM et al., Defendants-Appellants.
    No. 72-2871.
    United States Court of Appeals, Fifth Circuit.
    March 9, 1973.
    Crawford C. Martin, Atty. Gen. of Tex., W. 0. Shultz, II, Asst. Atty. Gen., Austin, Tex., for defendants-appellants.
    James R. Weddington, Austin, Tex., for plaintiffs-appellees.
    Before JONES, GODBOLD and IN-GRAHAM, Circuit Judges.
   PER CURIAM:

We are in agreement with the well considered memorandum opinion of the district court, Paine et al. v. Board of Regents of University of Texas System et al., 355 F.Supp. 199 (W.D.Tex., 1972), and its judgment is affirmed.


text:
    BAY SOUND TRANSPORTATION CO. et al., Plaintiffs-Appellants, v. UNITED STATES of America, Defendant-Appellee.
    No. 72-3208.
    United States Court of Appeals, Fifth Circuit.
    April 12, 1973.
    Rehearing and Rehearing En Banc Denied June 28, 1973.
    John A. Bailey, Houston, Tex., Benjamin W. Yancey, New Orleans, La., for plaintiffs-appellants.
    Scott P. Crampton, Asst. Atty. Gen., William S. Estabrook, Charles Barnett, Attys., Tax Division, Dept, of Justice, Washington, D. C., James R. Gough, Asst. U. S. Atty., Anthony J. P. Farris, U. S. Atty., Robert G. Darden, Asst. U. S. Atty., Houston, Tex., Myron C. Baum, Chief, Refund Trial Section No. 2, Meyer Rothwacks, Chief, Appellate Section, U. S. Dept, of Justice, Tax Division, Washington, D. C., for defendant-appel-lee.
    Before BELL, INGRAHAM and RO-NEY, Circuit Judges.
   PER CURIAM:

We affirm on the basis of the well reasoned memorandum opinion of the district court, Bay Sound Transportation Co. v. United States of America, 350 F.Supp. 420 (S.D.Tex., 1972). The case received comprehensive treatment in the district court and we are unable to perceive error.

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Joseph Eugene VENABLE, Defendant-Appellant.
    No. 72-3162
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    April 9, 1973.
    Harry H. Root, III, Tampa, Fla. (Court-appointed), for defendant-appellant.
    John L. Briggs, U. S. Atty., Jacksonville, Fla., Ronald H. Watson, Asst. U. S. Atty., Tampa, Fla., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

       Rule 18, 5 Cir.; Isbell Enterprises, Inc. v. Citizens Casualty Company of New York et al., 5 Cir. 1970, 431 F.2d 409, Part I.

   PER CURIAM:

The defendant, Joseph E. Venable, appeals from his conviction for interstate transportation of a stolen motor vehicle and for selling a stolen motor vehicle in interstate commerce in violation of 18 U.S.C. §§ 2312, 2313, and 2.

The appellant’s trial counsel, having concluded that there is no meritorious basis for the appeal, has moved to withdraw as counsel on appeal and has supplemented his motion with a brief, in compliance with Anders v. California, 1967, 386 U.S. 738, 87 S.Ct. 1396, 18 L.Ed.2d 493. The appellant has been advised by the Court of his right to respond to counsel’s motion by raising any points he contends are appealable. The appellant has failed to raise any such points.

Having carefully reviewed the entire record, which includes the full trial transcript, we find no arguable merit in the appeal. Accordingly, we grant counsel’s motion to withdraw and dismiss the appeal under Local Rule 20. United States v. Mills, 5 Cir. 1971, 446 F.2d 1397; United States v. Minor, 5 Cir. 1971, 444 F.2d 521; Lemus v. Government of the Canal Zone, 5 Cir. 1971, 443 F.2d 23.

Dismissed.


text:
    In re Willie Mae Anderson, Bankrupt. Willie Mae ANDERSON, Appellee, v. UNIVERSITY OF TENNESSEE, Appellant.
    No. 72-2022.
    United States Court of Appeals, Sixth Circuit.
    Argued April 2, 1973.
    Decided April 4, 1973.
    Francis W. Headman, Knoxville, Tenn., for appellant.
    Harry J. Bryant, Knoxville, Tenn., for appellee.
    Before PECK, McCREE and LIVELY, Circuit Judges.
   ORDER

This appeal having come on to be considered on the record on appeal and on the briefs and oral arguments of counsel for the parties, and the Court having been fully advised in the premises having concluded that the case was correctly decided for the reasons set forth in the opinion of District Judge Robert Taylor (345 F.Supp. 840),

It is ordered that the judgment of the District Court be and it hereby is affirmed.


text:
    Vivien KELLEMS, Appellant, v. COMMISSIONER OF INTERNAL REVENUE, Appellee.
    No. 402, Docket 72-2122.
    United States Court of Appeals, Second Circuit.
    Argued April 13, 1973.
    Decided April 4, 1973.
    David R. Shelton, Washington, D. C., for appellant.
    Stephen Schwartz, Tax Div., Dept, of Justice, Washington, D. C. (Scott P. Crampton, Asst. Atty. Gen., Meyer Roth-wacks, Leonard J. Henzke, Jr., Tax Div., Dept, of Justice, Washington, D. C.), for appellee.
    Before KAUFMAN, ANDERSON and OAKES, Circuit Judges.
   PER CURIAM:

The judgment is affirmed on the basis of the Tax Court’s opinion below, 58 T.C. 556. We find Moritz v. Commissioner, 469 F.2d 466 (10 Cir. 1972), cited to us by appellant, to be inapposite.


text:
    Janell GUERRA et al., Plaintiffs-Appellants, v. Preston H. SMITH et al, Defendants-Appellees.
    No. 71-2857
    United States Court of Appeals, Fifth Circuit.
    April 10, 1973.
    Mario O bledo, Mexican American Legal Defense & Educational Fund, San Francisco, Cal., Pete Tijerina, San Antonio, Tex., Alan Exelrod, Michael Men-delson, San Francisco, Cal., for plaintiffs-appellants.
    Stephen D. Sugarman, Los Angeles, Cal., Arthur Gochman, San Antonio, Tex., for amicus curiae.
    Crawford C. Martin, Atty. Gen. of Tex.; Pat Bailey, Asst. Atty. Gen., Austin, Tex., for defendants-appellees.
    Before GEWIN, AINSWORTH and SIMPSON, Circuit Judges.
   PER CURIAM:

Affirmed. See San Antonio Independent School District v. Rodriguez, -U.S.-, 93 S.Ct. 1278, 36 L.Ed.2d 16, decided March 21, 1973.


text:
    Kenneth KELLNER, Appellee, v. Leonard R. SAYE, Appellant.
    No. 71-2571.
    United States Court of Appeals, Ninth Circuit.
    April 2, 1973.
    Morton Galane (argued), Miriam Shearing, Las Vegas, Nev., for appellant.
    R. L. Gilbert (argued), Morrill, Neb., John H. Pilkington, Morris, Walker & Pilkington, Las Vegas, Nev., for appel-lee.
    Before CHAMBERS and BROWNING, Circuit Judges, and KELLEHER, District Judge.

       Honorable Robert J. Kelleher, United States District Judge, Central District of California, sitting by designation.

   PER CURIAM:

This jury case is here on appeal from a judgment entered after the granting of motions for directed verdicts.

We are satisfied that the trial judge applied the proper rule and had before him a proper record upon which to take the case away from the jury and to decide in appellee’s favor. See Kellner v. Saye, 331 F.Supp. 846, 851 (D.Nev. 1971).

The judgment is affirmed.


text:
    UNITED STATES of America, Appellee, v. John Francis HOLLY, Appellant.
    No. 71-1870.
    United States Court of Appeals, Fourth Circuit.
    Submitted Feb. 23, 1973.
    Decided April 9, 1973.
    Norman N. Yankellow, Baltimore, Md., on brief for appellant.
    Stephen H. Sachs, U. S. Atty., and Francis S. Broeato, Asst. U. S. Atty., on brief for appellee.
    Before BOREMAN, Senior Circuit Judge, and WINTER and CRAVEN, Circuit Judges.
   PER CURIAM:

This appeal comes before us on a motion by the Government to dismiss or, in the alternative, for summary affirmance.

Upon consideration of the record and the brief filed by the appellant we find no error sufficient to warrant or command reversal. Therefore, we dispense with oral argument and grant the motion of the Government to dismiss the appeal.


author: ALMOND, Senior Judge.

text:
    TORO MANUFACTURING CORPORATION, Appellant, v. The GLEASON WORKS, Appellee.
    Patent Appeal No. 8918.
    United States Court of Customs and Patent Appeals.
    March 29, 1973.
    Thomas A. Lennon, Minneapolis, Minn., attorney of record, for appellant.
    William K. West, Jr., William T. Bul-linger (Cushman, Darby & Cushman), Washington, D. C., for appellee; Morton A. Polster, Rochester, N. Y., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, and LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board dismissing the opposition of the Toro Manufacturing Corporation to an application of The Gleason Works to register “TOROID” for gears, gear cutters and blades or blade segments for such cutters, asserting first use as July 15, 1966. 167 USPQ 315 (1970).

The record reveals that Toro Manufacturing Corporation, appellant-opposer, is the owner of a plurality of registrations of “TORO” for grass cutting machinery, such as engines for power lawn mowers, self-propelled power plants for pulling lawn mowers, hand mowers, and self-contained power mowers, automo-tive vehicles, namely, turf tractors, golf cars, utility cars, and motorized golf carts and snow plows.

Inasmuch as appellant’s pleaded registrations antedate appellee’s date of first use, the sole issue for determination is whether or not appellee’s mark so resembles that of appellant as to be likely, when applied to its goods, to cause confusion or mistake or to deceive within the purview of 15 U.S.C. § 1052(d).

The Trademark Trial and Appeal Board, one member dissenting, held that:

* * * “TORO” and “TOROID”, both of which are words of the English language, do not look or sound very much alike, and the several meanings thereof are not the same. While it is true, as stressed by opposer, that applicant’s mark includes the word “toro”, it is in no way emphasized therein, and, under the circumstances of this case, it is our opinion that this factor is not calculated to cause confusion or mistake or to deceive were these marks to be used for the specified goods. [Citations omitted.]

We affirm. In so doing, it is pertinent to point out that the goods of the parties are distinctly different and noncompetitive. TOROID is for gears, gear cutters and blades used in consonance therewith, while TORO covers grass cutting machinery, automotive vehicles and snow plows. The respective goods, therefore, are entirely dissimilar and commercially unrelated. There is no indication of record that the TORO mark is used on gears and, although appellant contends otherwise, we are not persuaded that there is likelihood of confusion merely because appellant’s lawn mowers and other goods sold under the TORO mark contain gears.

The decision of the board is affirmed.

Affirmed.

      . Reg.No.529,845 issued August 29, 1950.

      . Reg.Nos.755,846 and 755,847, both issued September 3, 1963.

      . Reg.No.808,442 issued May 17, 1966.


text:
    CONSOLIDATED CIGAR CORPORATION, Appellant, v. M. LANDAW LIMITED, Appellee.
    Patent Appeal No. 8888.
    United States Court of Customs and Patent Appeals.
    March 29, 1973.
    William R. Liberman, New York City, of record, for appellant.
    J. W. Gipple, Fleit, Gipple & Jacobson, Washington, D. C., of record, for appel-lee.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, 167 USPQ 372 (1970), involving the application of M. Landaw Limited, appel-lee, to register “LITTLE DUTCHMAN” for cigars, asserting first use in 1963, and the opposition thereto by Consolidated Cigar Corporation, appellant, registrant of marks consisting of or comprising the term “DUTCH MASTERS” for cigars.

Inasmuch as appellant’s registrations long antedate appellee’s application and the goods of the parties are identical in kind, the board considered the sole issue to be whether or not the resemblances between the marks in issue are such as would be likely to cause confusion or mistake or to deceive within the purview of 15 U.S.C. § 1052(d).

In dismissing the opposition, the board held that the contemporaneous use of the marks is not likely to cause confusion or mistake or to deceive inasmuch as LITTLE DUTCHMAN and DUTCH MASTERS do not look or sound alike and create different mental impressions.

Appellant argues, with merit we think, that the board erred in deciding that if the mark LITTLE DUTCHMAN were to be used on products identical with those on which DUTCH MASTERS Has been used for more than forty years, confusion, mistake or deception was “not at all likely.” A weighty aspect is the undisputed fact that appellant alone owns and has used a mark incorporating the word “Dutch” in the cigar field. We think this long, uninterrupted use must have made a strong impression on the cigar-smoking public. To those who habitually call for DUTCH MASTERS, the appearance of LITTLE DUTCHMAN cigars at the vending source would more than likely connote and convey the impression that they derive from the same source, thus causing confusion, mistake or deception.

It is to be observed that the more prominent part of appellant’s mark is the word “DUTCH.” Similarly, the word “DUTCH” forms, in our view, the most prominent part of appellee’s mark. When DUTCH MASTERS is compared with DUTCHMAN, we think there is little doubt that the conclusion most likely to be drawn is that they designate different cigars from the same source. The inclusion of the word “LITTLE” in appellee’s mark does not alter this view. The word itself is descriptive and alone has no trademark significance.

Therefore, the composite mark LITTLE DUTCHMAN viewed in its entirety, we think, suggests that it designates a cigar, perhaps a small or mild one, emanating from the same source as the DUTCH MASTERS cigar. This is a sufficient basis for denying registration of appellee’s mark. See Mead Johnson & Co. v. American Home Products Corp., 461 F.2d 1381, 59 CCPA 1082 (1972).

In light of the facts and circumstances revealed by this record, we are of the opinion that the board committed reversible error in holding that the contemporaneous use of the marks in issue is not “at all likely to cause confusion or mistake or to deceive.” In our view, contemporaneous use would be likely to cause confusion, or to cause mistake, or to deceive. The decision of the board is reversed.

Reversed.

      . Reg. Nos. 232,114 issued August 30,1927 and 502,797 issued October 12, 1948.


text:
    AMF INCORPORATED, by change of name from American Machine & Foundry Co., Appellant, v. AMERICAN LEISURE PRODUCTS, INC., assignee by merger and change of name of Goldfish Sailboat Co., Inc., Appellee.
    Patent Appeal No. 8920.
    United States Court of Customs and Patent Appeals.
    March 22, 1973.

      Walter Lewis, Chicago, Ill., atty. of record, for appellant. Dos T. Hatfield, Washington, D. C., of counsel.
    Howard E. Moore, Dallas, Tex., atty. of record, for appellee.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Associate Judges.
   ALMOND, Senior Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board dismissing opposition to the application by American Leisure Products, Inc., to register the mark reproduced below for sailboats based on use since October 6, 1967.

Appellant’s opposition was based on its ownership of the registered marks for sailboats SAILFISH SPORTABOUT and fish design, ALCORT SUNFISH, ALCORT CATFISH, FLYING FISH, and the following design mark:

Appellant asserts that there is actual and likelihood of confusion between its marks, considered individually or as a family of fish names and fish design marks for sailboats, and that sought to be registered by appellee. Both parties took testimony and introduced various exhibits into evidence.

On this appeal there is no issue as to priority and appellee conceded that the sailboat sold under the trademark GOLDFISH is similar in appearance and design to appellant’s SUNFISH boat. The question to be resolved is whether, within the meaning of § 2(d) of the Trademark Act (15 U.S.C. § 1052(d)), appellee’s mark so resembles those registered by appellant as to be likely to cause confusion, mistake or to deceive. We believe the answer to that question should have been an affirmative one and, therefore, reverse the decision of the board.

The board first concluded from the record that appellant had failed to establish that it had a family of “fish” name trademarks for sailboats. Its reasoning was:

* * it is a common practice in the sailboat trade to use names and designs of fish, either alone or in combination, on sailboats as a means of identification therefor. Under such a circumstance, it is difficult to perceive how opposer could possibly acquire a family of marks in either “fish” names or in its composite marks.

The board then considered the individual marks owned by appellant relative to that sought to be registered and concluded:

->:• ->:• * applicant’s composite mark does not so resemble “SAILFISH”, “SUNFISH”, “CATFISH” or “FLYING FISH”, and the respective silhouette designs of these fish as to lead to a likelihood of confusion or mistake.

We find in the record insufficient evidence to support the conclusion that appellant has failed to establish a family of marks for sailboats in which the word “fish” appears as part of the mark. From the record it appears that appellant has sold more than 50,000 sailboats under its trademarks and total sales have reached millions of dollars. One of appellee’s own witnesses testified that appellant’s SAILFISH and SUNFISH type boats are the largest selling classes of boats in the country. By contrast, sales of appellee’s GOLDFISH, which is a craft similar to the SUNFISH, had not reached 600 units when the pertinent testimony was taken.

The record also supports appellant’s contention that it advertised its products as a family. For example, advertising brochures usually describe two or more of the products together. The board apparently agreed, for it said “ * * * there is no doubt but that opposer has advertised its marks as a family of ‘fish’ trademarks.” In its brochures appellant combines its registered trademarks with a fish silhouette corresponding in shape to that of the particular fish name in the mark being promoted. The boats themselves carry on their sails a silhouette of the fish for which they are named.

The record against appellant was assessed by the board in the following way:

Applicant’s record additionally shows that in past years there has been a “fish” class of sailboats both on the Gulf Coast and in New England and that some of these boats, which picture a fish on the sail, are still in use for sailing purposes. Additionally, there are of record seven third-party registrations for marks which include the word “fish” for sailboats and/or boats. In addition, recent trade publications list various trademarks including “BARRACUDA”, “BONITA”, “PIRATE FISH”, “PORPOISE”, “PUFFIN”, SAILFISH”, “STARFISH”, “STINGRAY” and “SKATE” for sailboats. Pictures of these boats in such publications as “One-Design & Offshore Yachtsman” and the “Sailboat Directory” frequently picture the design of a fish on the upper part of the sail.

We do not think the evidence relied upon by the board is sufficient to rebut that of appellant tending to establish its claim that it has a family of marks. Appellee’s own witness testified that the so-called “Fish” classes of sailboats have not been manufactured for at least 20 years. The Gulf Coast variety, once used as an interclub racing boat, has been superseded by another craft. It appears that the New England variety has not been made since the 1930’s and a newer version is now known as the “Marlin” class. At any rate, we do not feel that a class of boats referred to as “Fish” boats diminishes the trademark distinctiveness of fish names having as a part thereof the word “fish” when applied to sailboats.

It appears that the board relied heavily upon the existence of third-party trademark registrations in reaching its decision. We have frequently said that little weight is to be given such registrations in evaluating whether there is likelihood of confusion. The existence of these registrations is not evidence of what happens in the market place or that customers are familiar with them nor should the existence on the register of confusingly similar marks aid an applicant to register another likely to cause confusion, mistake or to deceive. In re Helene Curtis Industries, Inc., 305 F.2d 492, 49 CCPA 1367 (1962); J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 52 CCPA 981 (1965); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 367 F.2d 324, 54 CCPA 1295 (1967); In re Belgrade Shoe Co., 411 F.2d 1352, 56 CCPA 1298 (1969); Clar-iol, Inc. v. Roux Laboratories, Inc., 442 F.2d 980, 58 CCPA 1170 (1971).

We think the listing of trademarks for boats in various trade magazines should be treated in a similar manner as are third-party registrations. They give no indication as to actual sales, when the mark was adopted, customer familiarity with the marks, etc. Their evidentiary scope and effect is merely to show promotion of the listed item in the particular issue of the trade publication where the listing appeared. Gravel Cologne, Inc. v. Lawrence Palmer, Inc., 469 F.2d 1397, 60 CCPA - (1972).

The board obviously felt that the multiplicity of fish names used to designate a variety of boats, including' sailboats, weakened any distinctiveness of appellant’s marks. However, we note that most of these marks appearing in the record adopt names of fish which do not include the word “fish” as part of the mark. Yet, it is clear that appellant’s entire advertising effort and marketing scheme is designed to have the public associate with its products only those fish names where the word “fish” forms part of the mark. We see no reason to believe that such a scheme cannot be successful and that words such as SAILFISH, CATFISH and the like cannot be distinguished as a class from fish names such as Barracuda, Puffin, Bonita and the like.

It is our view that the evidence compels the conclusion that appellant has established a family of marks made up of fish names having the word “fish” common thereto by virtue of extensive use and advertising. This conclusion is not affected because other parties have also used “fish” as a part of a trademark for boats to an undisclosed extent. Motorola, Inc. v. Griffiths Electronics, Inc., 317 F.2d 397, 50 CCPA 1518 (1963).

Having concluded that appellant has established that it possesses a family of “fish” marks, we believe that appellee’s mark GOLDFISH and fish design, used on sailboats similar to those sold by appellant, would appear to many to be a member of appellant’s family of marks. Aside from its rights arising from its registered trademarks, appel-

lant has established a practice of employing an appropriate fish silhouette with each fish name it adopts to identify different sailboats. It is precisely such a combination that appellee seeks to register. The board stressed that the actual marks involved can be distinguished and would be distinguished by purchasers. However, the question is not whether people will confuse the marks but whether the marks will be likely to cause confusion, mistake or deception. In re West Point-Pepperell, Inc., 468 F.2d 200, 60 CCPA — (1972). The near identity of the products and the similarity of the marks applied convince us that a likelihood of confusion exists. The decision of the board dismissing the opposition is reversed.

Reversed.

      . 167 USPQ 372 (1970).

      . Serial No. 284,190 filed November 6, 1967.

      . Reg. No. 532,849, issued October 31, 1950 to a predecessor-in-title.

      . Reg. No. 674,879, issued March 3, 1959 to a predecessor-in-title.

      . Reg. No. 774,866, issued August 11, 1964 to a predecessor-in-title.

      . Reg. No. 706,912, issued November 8, 1960 to a predecessor-in-title.

      . Reg. No. 671,114, issued December 16, 1958 to a predeeessor-in-title.

      . One of appellant’s own trademarks.


author: WINTER, Circuit Judge:

text:
    Francis M. ROGALLO and Gertrude S. Rogallo, Appellees, v. UNITED STATES of America, Appellant.
    No. 72-1496.
    United States Court of Appeals, Fourth Circuit.
    Argued Nov. 1, 1972.
    Decided March 6, 1973.

      Paul M. Ginsburg, Atty., Tax Div., Dept, of Justice (Scott P. Crampton, Asst. Atty. Gen., Meyer Rothwacks and John M. Scott, Jr., Attys., Tax Div., Dept, of Justice, and Brian P. Gettings, U. S. Atty., on brief), for appellant.
    Herbert V. Kelly, Newport News, Va. (Jones, Blechman, Woltz & Kelly and F. O. Blechman and E. D. David, Newport News, Va., on brief), for appellees.
    Before HAYNSWORTH, Chief Judge, and WINTER and RUSSELL, Circuit Judges.
   WINTER, Circuit Judge:

In a suit by Mr. and Mrs. Francis M Rogallo for a tax refund, the district court entered judgment for the taxpayers. It held that a $35,000 “contribution award” which the Rogallos received from the National Aeronautics and Space Administration (NASA) pursuant to § 306 of the National Aeronautics and Space Act, 42 U.S.C.A. § 2458 (1970), qualified as a prize or award primarily in recognition of scientific achievement and was therefore not includable in the Rogallos’ gross income under IRC § 74(b), 26 U.S.C.A. § 74(b). Appealing, the government contends that § 306 “contribution awards” are primarily compensatory in nature and are therefore includable in gross income. IRC §§ 61(a), 74(a), 26 U.S.C.A. §§ 61(a), 74(a). We are persuaded that the Rogallos’ § 306 award did not meet the stringent tests of § 74(b), and accordingly reverse.

I.

Francis Rogallo, an aeronautical engineer, was employed by the government at the Langley Research Center, formerly a predecessor and now part of NASA. During his spare time, Mr. Rogallo and his wife pursued their hobby of flying and designing kites. In 1948, the pursuit of this hobby led to the development of the Rogallo Parawing, a flexible kite with the structural characteristics of a parachute and the aerodynamic characteristics of a wing. The Rogallos asked the government to obtain a patent for them, but the government expressed no interest. The Rogallos then patented the parawing at their own expense. By 1963, the government recognized the parawing’s military and space potential and had begun to invest large sums in its development. The Rogallos received no royalties or other compensation from the government.

On July 18, 1963, NASA presented the Rogallos with a monetary award having a face amount of $35,000, which, less taxes withheld, was divided equally between them. The award recited that it was made “for the technical contribution entitled ‘flexible kite’ which represents a significant value in the conduct of the aeronautic and space activities of the United States.” The award was made pursuant to § 306(a), which, in pertinent part, provides:

[T]he Administrator is authorized, upon his own initiative or upon application ... to make a monetary award, in such amount and upon such terms as he shall determine to be warranted, to any person . . . for any scientific or technical contribution to the Administration which is determined to have significant value in the conduct of aeronautical and space activities . . ..In determining the terms and conditions of any award the Administrator shall take into account—
(1) the value of the contribution to the United States;
(2) the aggregate amount of any sums which have been expended . for the development of such contribution;
(3) the amount of compensation previously received by the applicant for or on account of such contribution by the United States; and
(4) such other factors as the Administrator shall determine to be material.

The Rogallos executed a royalty-free non-exclusive irrevocable license of their patent in favor of the government. They did so as required by § 306(b), which provides:

No award may be made under subsection (a) of this section with respect to any contribution—
(1) unless the applicant surrenders, by such means as the Administrator shall determine to be effective, all claims which such applicant may have to receive any compensation . for the use of such contribution . . . by . . . the United States.

The taxpayers and the government have stipulated these facts: NASA selected the Rogallos for the contribution award without any action or application on the Rogallos’ part; NASA did not require the Rogallos to render substantial future services as a condition to receiving the award; NASA did not make the award “for an accomplishment in connection with [Mr. Rogallo’s] employment but was developed by the Rogallos on their own time;” and the parawing is in the scientific field of aeronautics.

II.

IRC § 74(b) excludes from gross income:

amounts received as prizes and awards made primarily in recognition of . scientific ... or civic achievement, but only if—
(1) the recipient was selected without any action on his part to enter the contest or proceeding; and
(2) the recipient is not required to render substantial future services as a condition to receiving the prize or award.

IRC Regulation § 1.74-1 (b) restates the tests of the statute and adds another: an award is includable if it is from an employer to an employee in recognition of some achievement in connection with his employment. The Regulation further explains that the award must be made in recognition of “past achievements” and'cites the Nobel and Pulitzer Prizes as the type of award that would qualify for exclusion. The legislative history refers to the same examples. See ELR.Rep.No.1337, 83d Cong., 2d Sess. (1954) and S.Rep.No.1622, 83d Cong., 2d Sess. (1954), reprinted in 3 U.S.Code Cong. & Admin.News, pp. 4163-64, 4813 (1954). These references to the Nobel and Pulitzer Prizes indicate Congress’ intent that the exclusion be available only where the award was gratuitous, rather than compensatory.

The stipulated facts establish that the Rogallos’ § 306 award satisfied all the requirements of § 74(b) and Reg. 1.74-1(b) but one, leaving still at issue the requirement that the award be made “primarily in recognition of” rather than in compensation for the Rogallos’ scientific contribution. We turn to resolution of this issue.

III.

The language, legislative history, and operation of § 306 all indicate that NASA presents the awards not primarily for an act of invention per se, but primarily for the act of contributing an invention or scientific or technical improvement to NASA. Section 306 is entitled “contribution awards.” By its terms, § 306 authorizes the Administrator to make an award “for any scientific or technical contribution to the Administration.” (emphasis added). The conditions enumerated in § 306(a) for determining the amount of the award also implicitly embody the concept of quid pro quo. Thus, the statute instructs the Administrator to consider the value of the contribution to the government, the aggregate amount of the contributor’s expenses, and the “compensation previously received” by the contributor from the United States. § 306(a)(1)-(3). The statute’s emphasis on the value of the contribution to the government and on monies previously received by the contributor tends to rebut the notion that the award was intended primarily to provide gratuitous honorific recognition of achievement.

Moreover, § 306(b) imposes a condition precedent to presentation of the award: the inventor or developer must contribute his invention or scientific or technical improvement to the government and must surrender all claims to compensation for its use by the government. This provision stands in sharp contrast to the sheerly gratuitous nature of the Nobel and Pulitzer Prizes which exemplify excludable awards.

The legislative history of § 306 supports the conclusion that the- NASA award' is not made primarily to salute scientific achievement. One Congressman, speaking in support of § 306, characterized it as providing “cash incentive awards . . . given to the inventors or firms which make significant technical contributions to the National Space Program.” 104 Cong.Rec. 13988 (1958) (remarks of Congressman Keating). The Conference Report states that § 306 “provides for making awards for scientific and technical contributions.” Conf.Rep.No.2166, 85th Cong., 2d Sess. (1958), reprinted in 2 U.S.Code Cong. & Admin.News, pp. 3199-3200 (1968) (emphasis added).

The minutes of the NASA Inventions and Contributions Board, the body which determines the recipients and the amounts of § 306 awards, reveal that notions of quid pro quo and bargain were prominent in its consideration of the Rogallo award. Moreover, the checks which NASA presented at the awards ceremony were not for the $35,000 face amount of the award, but for $28,700, the difference representing federal income tax which NASA evidently considered appropriate to withhold. On the other hand, NASA’s public pronouncements do stress the honorific nature of the award.

The taxpayers vigorously urge, and the district court held, that Simmons v. United States, 308 F.2d 160 (4 Cir.1962), forbids consideration of NASA’s motives and thereby renders much of the preceding discussion irrelevant and improper. In Simmons, we were concerned with a prize allegedly for civic achievement. We held that the taxpayer could not exclude a prize presented to him by a brewing company for catching a specially marked fish, under § 74(b), because catching the fish did not qualify as a civic achievement. We went on to hypothesize:

But even if a civic purpose could be discerned in the company’s campaign, . it is not the motivations of the donor that are legally relevant. The statute and its legislative history speak only of the character of the recipient’s achievement, and the crucial test is the nature of the activity being rewarded. For example, if Simmons’ achievement cannot be considered one of those enumerated in section 74(b), the exclusion provided in that section would not apply even if the prize were given by the state of Maryland to further a promotional campaign of its facilities. Conversely, if the recipient’s achievement were “civic” in the sense of the statute, he would be entitled to its benefits even though the donor had a commercial purpose in making the award.

308 F.2d at 163.

But Simmons is distinguishable from the instant case and the quoted language is not directly applicable. Simmons arose in a context where the prize was obviously gratuitous. It was not given where, as here, a statute made quid pro quo an essential part of the award. Since the brewery neither required nor received anything of value directly from the prize-winner, its motivations for presenting the prize would have been immaterial, even if the prize had been awarded for a bona fide civic achievement. Thus, when we said, “if the recipient’s achievement were ‘civic’ in the sense of the statute, he would be entitled to its benefits even though the donor had a commercial purpose in making the award,” we meant that if the brewery was gratuitously honoring a generally beneficial civic achievement, an ulterior commercial motive such as incidental popularization of its product would be irrelevant. But we did not bar such inquiry where the fact of quid pro quo suggested that the award was not made primarily in recognition of, but primarily in compensation for, the achievement. To hold otherwise would encourage attempts to exclude from gross income, under the aegis of § 74(b), commercial payments disguised as awards made to compensate the putative award-winner for his contribution, or effective sale, of his scientific achievement to the grant- or.

For example, if one of the major auto manufacturers presented an award to an inventor who devised a method for limiting auto emissions, but required the inventor to execute a license favorable to the manufacturer as a condition to receiving the award, and if we concluded that the invention qualified as a bona fide scientific achievement, we do not think that Simmons would compel the conclusion that the award was excludable, regardless of the manufacturer’s evident intention to compensate the inventor. To the contrary, we think it reasonably clear that the award would not be excludable from the inventor’s gross income because it was primarily compensatory. The fact that the government presented an award under similar circumstances does not distort these operative principles of § 74(b).

Finally, it is urged that since the Rogados had no right of action against the government for use of their patent, and the government could therefore have infringed the patent without compensating the Rogados at all, the § 306 award must be deemed primarily honorific and gratuitous rather than compensatory. We reject this contention.

Whether § 1498 represents an assertion of sovereign immunity (so that the Rogados have a right but no judicial remedy), or an assertion that certain patent monopolies were not intended to be effective against the United States (so that the Rogallos have neither right nor remedy) presents an interesting question which we need not decide. See Strategical Demolition Torpedo Co. v. United States, 96 F.Supp. 315, 316-317, 119 Ct.Cl. 291 (Ct.Cl.) cert. denied 342 U.S. 825, 72 S.Ct. 46, 96 L.Ed. 624 (1951); Zimmerman v. United States Government, 422 F.2d 326 (3 Cir.) cert. denied 399 U.S. 911, 90 S.Ct. 2200, 26 L.Ed.2d 565 (1970). In any event, an inventor can attempt to negotiate compensation with the government, and the government may feel some moral compunction to compensate an inventor for its economic emasculation of his patent. Furthermore, § 1498 precludes only judicial relief; it does not preclude legislative relief in the form of a special bill. Finally, the fact that the Rogallos had no judicial remedy to compel compensation does not necessarily render gratuitous or honorific any amount which the government chooses to award them. An employee may have no right or remedy to compel his employer to award him a year-end bonus; but if the employer chooses to do so the award is clearly includable compensation nonetheless.

The award received by the Rogallos was an honor, and the Rogallos could well have perceived it solely as such, so that we are sympathetic to their claim. But we conclude that, in fact and in law, the award was not made “primarily in recognition” of their invention of the parawing. NASA made the award not primarily for their act of invention, but for their act of contributing the invention to NASA. Without this contribution and the royalty-free irrevocable license, there would have been no award. The award was not therefore gratuitous and should not be excluded from gross income under § 74(b).

Reversed.

      . 341 F.Supp. 998 (E.D.Va.1972).

      . The Internal Revenue Service has ruled that § 306 awards do not qualify for IRO § 74(b) exclusion. Rev.Rul. 69-129, 1969-1 Cum.Bull. 35.

      . § 61. Gross Income Defined.
      (a) General Definition. — Except as otherwise provided in this subtitle, gross income means all income from whatever source derived
      § 74. Prizes and awards.
      (a) General rule. — Except as provided in subsection (b) and in section 117 (relating to scholarships and fellowship grants), gross income includes amounts received as prizes and awards.

      . Pursuant to Act of July 19, 1952, ch. 950, § 1, 66 Stat. 811 (repealed 1965), the government could grant a patent to a government employee without the payment of fees if his department head certified that the invention was likely to be used in the public interest and if the employee granted the government a royalty-free license to practice the patent. Cf. 42 U.S. C.A. § 2457 (1970).

      . At oral argument, the government suggested that it had no obligation to pay royalties because it had not yet used the parawing, but was merely developing it. Whether or not the government would have paid royalties when it began to use the parawing, the Rogallos had no right to sue the government for royalties since Mr. Rogallo was a government employee and the parawing was related to his official functions. 28 U.S.O.A. § 1498 (Supp. 1, 1952), as amended, 28 U.S.O.A. § 1498 (Supp. 1, 1972). That section provides:
      This section shall not confer a right of action on any patentee . . . with respect to any invention discovered or invented by a person while in the employment or service of the United States, where the invention was related to the official functions of the employee, in cases in which such functions included research and development, or in the making of which Government time, materials or facilities were used.
      See infra pp. 5 n. 9, 6-7.

      . Were it not for this stipulated fact, the cases of Griggs v. United States, 314 F.2d 515, 161 Ct.Cl. 84 (1963) and Denniston v. Commissioner of Internal Revenue, 41 T.C. 667 (1964), would be highly relevant. These cases held that § 74(b) did not permit the exclusion of an award pursuant to the Government Employees Incentive Awards Act, 5 U.S.C.A. § 2123 (1958), as amended 5 U.S.C.A. §§ 4502-4505 (1967). However, both cases turned on a finding that the award was made in connection with the recipient’s employment. IRC Reg. 1.74-1 (b).

      . Cf. Bingler v. Johnson, 394 U.S. 741, 89 S.Ct. 1439, 22 L.Ed.2d 695 (1969), holding that the recipient of a fellowship cornpensatory in nature could not exclude it from gross income pursuant to IRO § 117, 26 U.S.C.A. § 117 (pertaining to the exclusion of scholarships and fellowship grants). Compare Rev.Rul. 57-19, 1957-1 Cum.Bull. 33 (college teacher ruled not taxable on award paid by charitable foundation for outstanding teaching, the ruling stating that the recipient had not “done any special work specifically designed to win the award”) with Rev.Rul. 57-460, 1957-2 Cum.Bull. 69 (college teacher ruled taxable on receipt of supplement to salary for one year in recognition of outstanding performance even though funds for award were given to employing institution by an individual).

      . In contrast, although not necessarily dis-positive, the Nobel and Pulitzer Prizes are flat sums irrespective of the achievement’s value, the recipient’s expenses, or prior compensation.

      . Admittedly, in this case, since the Rogallos had no right of action against the government for the use of their patent, 28 U.S.O.A. § 1498 (see n. 5 supra), they did not give up a judicially enforceable right by executing the royalty-free license. But, in cases not covered by § 1498, e. g., where the inventor is not a government employee, or where the invention is not related to his official functions, the surrender required by § 306(b) may represent a significant economic consideration.

      . NASA Inventions and Contributions Board Minutes:
      The problem confronting the Board was to balance an early award in the interests of acquiring rights for the Government as against waiting for results of full-scale tests to see if one had underestimated the value.
      [I]t would be necessary to determine from Mr. Rogallo whether he would accept this amount. Mr. Rogallo is aware of the stipulation contained in § 306 of the NASA Act requiring the recipient of an award to surrender all claims which he may have to receive any compensation
      [I]f the Board delayed too long, Mr. Rogallo would get into so strong a position that he would not be interested in giving the Government any rights.
      [B]oth tangible and intangible benefits were involved in the Rogallo invention, and that Mr. Rogallo is in an extremely strong position in case he does not wish to accept the proposed award.

      . For example, Dr. Dryden, the NASA official who presented the award, stated:
      I am able to affirm that the award was voluntarily presented ... in recognition of [the Rogallos] past accomplishments and not as consideration for the royalty-free license under the Rogallo patents.

      . 28 U.S.C.A. § 1498. See n. 5 supra. Myers v. United States, 177 F.Supp. 952, 147 Ct.Cl. 485 (1959); Stub v. United States, 119 F.Supp. 206, 127 Ct.Cl. 710 (1954).

      . For the legislative history, see H.R. Rep.No.1726, 82nd Cong., 2d Sess. (1952), reprinted in 2 U.S.Code Cong. & Admin. News, pp. 2322-24 (1952).

      . See the Minutes of the NASA Board, n. 10 supra, which graphically demonstrate NASA’s cognizance of and responsiveness to the position from which the Rogallos could have bargained.

      . A special bill for tax relief was filed on behalf of the Rogallos in Congress. H.R. 9566, 90th Cong., 2d Sess. (1969).

      . During oral argument, we asked the government to submit a post-argument memorandum indicating its views as to the applicability of the income-averaging provisions of IRC § 1302, 26 U.S.C.A. § 1302. The government responded, stating that certain conditions to the application of § 1302 were met but that the record did not permit any conclusion with regard to the remaining condition. The government also called attention to procedural difficulties in invoking § 1302 and the reasons why it concluded that taxpayers could not claim capital gain treatment under IRC § 1235, 26 U.S.C.A. § 1235. We express no view on these various points in this opinion.


author: TRASK, Circuit Judge:

text:
    UNITED STATES IMMIGRATION AND NATURALIZATION SERVICE, Respondent-Appellant, v. Marciano Haw HIBI, Petitioner-Appellee.
    No. 72-1562.
    United States Court of Appeals, Ninth Circuit.
    Feb. 8, 1973.

      Joseph Sureck, Regional Counsel (argued), I & NS, San Pedro, Cal., Stephen M. Suffin, I & NS, San Francisco, Cal., James L. Browning, Jr., U. S. Atty., William B. Spohn, Asst. U. S. Atty., San Francisco, Cal., Richard Kleindienst, Acting Atty. Gen., Dept, of Justice, Washington, D. C., for respondent-appellant.
    Donald L. Ungar (argued), Milton T. Simmons, of Phelan, Simmons & Ungar, San Francisco, Cal., for petitioner-appellee.
    Before BARNES and TRASK, Circuit Judges, and EAST, District Judge.

       Honorable William G. East, Senior United States Disti-ict Judge, District of Oregon, sitting by designation.

   TRASK, Circuit Judge:

This is an appeal from an order granting the petition for naturalization of Marciano Haw Hibi, a Philippine native, over the recommendation of the Naturalization Examiner of the Immigration and Naturalization Service that the petition be denied. The basis for the petition was Hibi’s service in the Armed Forces of the United States during its war with Japan.

The issues on appeal involve the discretion, if any, invested in the Commissioner of Immigration and Naturalization and the Attorney General under section 705 of the Naturalization Act of 1940. Also, whether the Immigration Service failed in its duty to carry into effect the purposes of section 702 of the Act, and thus should be estopped from asserting delay in filing as a basis on which to reject this petition for naturalization.

Hibi, the petitioner, entered the United States on April 25, 1964, as a temporary business visitor. On September 13, 1967, he petitioned for naturalization under sections 701-705 of the Nationality Act of 1940, based upon his military service in the Armed Forces of the United States. The Naturalization Examiner found the petitioner to be ineligible under sections 701 and 702 of the Nationality Act of 1940.

The district court ordered that the petition be granted, finding the petitioner eligible under section 702 of the 1940 Act. The issue there, as here, concerned the timing of the filing of the petition, since it was filed long after the expiration of section 702 (December 31, 1946), and subsequent to the enactment of section 310(e) of the present Immigration and Nationality Act which precludes the naturalization of anyone except in accordance with present requirements.

Section 702 was a measure which offered American citizenship to non-citizens serving in the Armed Forces of the United States overseas during World War II who, by reason of their overseas service, were not free to appear before a regular naturalization court in the United States. The district court expressly found that the petitioner had never been advised of his right 'to be naturalized while he was on active duty with the United States Army, the only time during which he could have qualified under section 702, and that he would have applied had he known of the opportunity and were the means available for him to apply. The trial court concluded that the Immigration Service failed in its duty to effectuate the provisions of section 702, and thus deprived the petitioner of a fair opportunity to apply for naturalization. Acting on principles of equity, the trial court held that the government should be estopped from alleging that the filing deadline in section 701 has passed or that 8 U.S.C. § 1421(e) precludes this petition, and that therefore, the petitioner should not be barred from citizenship by the late filing of this petition. We agree.

Petitioner, a native of the Philippines, enlisted in the United States Army, Philippine Scouts, in 1941. The Scouts were always a part of the Army of the United States, as contrasted with the army of the Commonwealth of the Philippines, a much larger group organized by and under the control of the Philippine Government. The Scouts were dispersed during the Japanese occupation of the islands, but when the United States Army returned, petitioner rejoined and served until his discharge on December 6, 1945. After spending some time at his mother’s home in the outlying provinces, petitioner alleges that he first learned that he had missed any naturalization opportunity when he returned to Manila late in 1946 or early 1947. A letter of inquiry to the American Embassy produced a mimeographed answer informing him only that the quota on those born in the Philippines was heavily oversubscribed.

Due to the Japanese occupation of the island, naturalization under section 702 had been delayed until 1945. Following resolution of eligibility questions in early 1945, authorization was sent to an American vice-consul to commence naturalization proceedings. The Commissioner of Immigration, in a letter of September 13, 1945, indicated that this authority had not yet been exercised. Additionally, he noted political considerations that some officials of the Philippine Government were voicing in making objections to Filipino naturalizations. He suggested to the Attorney General that the situation might best be handled by revoking the authority of the then Naturalization Examiner and “omitting to designate” any successor. The result of this of course, was to render section 702 completely ineffective. Subsequently, revocation of authority was sent, and naturalizations ceased October 27, 1945. A naturalization examiner was later sent to the Philippines, in August of 1946, about a year after the war had ended and some eight months after petitioner’s discharge. This decision appears to have had some basis in the Service’s conclusion that members of the Philippine Commonwealth Army were no longer eligible for naturalization under section 702. The determination did not affect the much smaller number of Philippine Scouts, and many Scouts who had re-enlisted or who were still on active duty were then naturalized.

Petitioner alleges that at no time prior to his discharge was he ever made aware of his eligibility for naturalization under section 702. The Army had a regulation requiring that notice be given aliens, at the time of their induction or enlistment, of their rights to apply for naturalization, and requiring a notation to that effect in the alien’s service record. Petitioner had enlisted before this regulation took effect; it is not clear whether this notice was required to have been given when he rejoined the Army upon its return to the islands in 1945. It is not disputed that at no time were notices posted on his unit’s bulletin board, application forms distributed, announcements made to his unit, nor were any notations made in his service record to indicate that petitioner had been told about the law.

Section 705 was not discretionary but imposed a legal duty upon the Commissioner of Immigration to make the benefits of sections 701 and 702 available to all qualified applicants. The duty to this petitioner was to make a representative available to naturalize non-citizen applicants while they were still serving in the armed forces. As the district court found, by revoking the authority of the only representative who could have naturalized the petitioner while he was still in the army, the Service failed in its duty to carry into effect the purposes of section 702, and thus denied petitioner of a fair opportunity to apply for naturalization during the only time he could apply.

The government argues that a broad amount of discretion was invested in officials to effect the implementation of this Act. We have been cited to no statutory language, nor can we find any ourselves, that gave either the Attorney General or the Commissioner of Immigration the authority to revoke, on his own initiative, the authority of the only person designated to perform naturalizations in the Philippines. We thus reject the government’s contention that an official of the executive branch could unilaterally nullify this Act of Congress.

We agree with the district court that the government should be estopped from alleging, as to this applicant, that the filing deadline set forth in section 701 has passed, or that denial of the petition is required by section 310(e) of the present Immigration and Nationality Act. The petition should be granted.

This court has not hesitated to invoke equitable relief to permit one to obtain his rights of citizenship where those rights have been denied due to erroneous action on the part of administrative officials. Thus in Tejeda v. United States Immigration & Naturalization Service, 346 F.2d 389 (9th Cir. 1965), the plaintiff contended he had been a permanent resident but was denied re-entry because of misadvice of the American Consul. The court remanded for findings as to these asserted facts saying:

“If the properly developed factual findings reveal that petitioner made a bona fide effort to re-enter in 1947 or 1948 and failed to obtain reentry due to the misadvice of the American Consul, the respondents should be precluded from denying petitioner what was rightly his — reentry as a non-quota immigrant in 1947 or 1948 under 22 U. S.C. § 1281.” Tejeda v. United States Immigration & Naturalization Service, supra, at 394.

See also, Hetzer v. Immigration & Naturalization Service, 420 F.2d 357 (9th Cir. 1970).

The record shows that procedures were set up to notify noncitizens in a position similar to that of the petitioner of their right to apply for naturalization. The record shows further that these procedures were not effectively carried out, at least for this petitioner. This lack of notification was clearly prejudicial. Even if he had been notified, however, because of the conduct of certain officials, petitioner would probably have been denied the opportunity to apply for naturalization. Because the conduct of these officials was in derogation of their duty to carry out an Act of Congress, and because petitioner has been prejudiced by this conduct, the appellant is not entitled to immunity from equitable estoppel in this case. See Gestuvo v. District Director, Immigration & Naturalization Service, 337 F.Supp. 1093 (C.D.Cal. 1971).

The judgment of the district court is affirmed.

      . Pertinent portions of Sections 701, 702 and 705 of the Act are as follows:
      “Sec. 701. . . . [A)ny person not a citizen regardless of age, who has served or hereafter serves honorably in the military or naval forces of the United States during the present war and who shall have been at the time of his enlistment or induction a resident thereof and who (a) was lawfully admitted into the United States, including its Territories and possessions, or (b) homing entered the United States, ineluding its Territories and possessions, prior to September 1, 19Jf3, being unable to establish lawful admission into the United States serves honorably in such forces beyond the continental limits of the United States or has so served, may be naturalized upon compliance with all the requirements of the naturalization laws except that (1) no declaration of intention, no certificate of arrival for those described in group (b) hereof, and no period of residence within the United States or any State shall be required; (2) the petition for naturalization may be filed in any court having naturalization jurisdiction regardless of the residence of the petitioner; (3) the petitioner shall not be required to speak the English language, sign 1ns petition in his own handwriting, or meet any educational test; . . . ”
      “Sec. 702. During the present war, any person entitled to naturalization under section 701 of this Act, who while serving honorably in the military . . . forces of the United States is not within the jurisdiction of any court authorized to naturalize aliens, may be naturalized in accordance with all the applicable provisions of section 701 without appearing before a, naturalization court. The petition for naturalization of any petitioner under this section shall be made and sworn to before, and filed with, a representative of the Immigration and Naturalization Service designated by the Commissioner or a Deputy Commissioner, which designated representative is hereby authorized to receive such petition in behalf of the Service, to conduct hearings thereon, to take testimony concerning any matter touching or in any way affecting the admissibility of any such petitioner for naturalization, to call witnesses, to administer oaths, including the oath of the petitioner and his witnesses to the petition for naturalization and the oath of renunciation and allegiance prescribed by section 335 of this Act, and to grant naturalization, and to issue certificates of citizenship: . . . ”
      “Sec. 705. The Commissioner, with the approval of the Attorney General, shall prescribe and furnish such forms, and shall make such rules and regulations, as may be necessary to carry into effect the provisions of this Act.” (Emphasis supplied)

      . Section 310(e) of the present Immigration & Nationality Act, 8 U.S.C. § 1421(e) provides:
      “Notwithstanding the provisions of section 405 (a), any petition for naturalization filed on or after September 21, 1961, shall be heard and determined in accordance with the requirements of this subchapter.”

      . The War Department issued Circular No. 382, September 21, 1944, relating to procedures for naturalization, which instructed :
      “Commanding officers of all echelons will designate an appropriate individual, properly instructed, to inform non-citizens of their right to apply for citizenship, to assist such persons who desire to make application, and to expedite by all possible means completing action on the application.”


text:
    Dominador C. NICOLAS and Salome L. Nicolas, Petitioners-Appellants, v. DISTRICT DIRECTOR, UNITED STATES IMMIGRATION & NATURALIZATION SERVICE, Respondent-Appellee.
    No. 72-1042.
    United States Court of Appeals, Ninth Circuit.
    Feb. 8, 1973.
    Hiram W. Kwan (argued), Los Angeles, Cal., for petitioners-appellants.
    Rex Heeseman, Asst. U. S. Atty. (argued), Frederick M. Brosio, Jr., Asst. U. S. Atty., William D. Keller, U. S. Atty., Los Angeles, Cal., Henry E. Peterson, Asst. Atty. Gen., Dept, of Justice, Washington, D. C., Joseph Surreck, Atty., I&NS, San Pedro, Cal., Stephen Suffin, Atty., I&NS, San Francisco, Cal., for respondent-appellee.
    Before BARNES and TRASK, Circuit Judges, and EAST, District Judge.

       Honorable William G. East, Senior United States District Judge, District of Oregon, sitting by designation.

   ORDER OF REMAND

This case is remanded to the United States District Court for further consideration in the light of United States Immigration and Naturalization Service v. Marciano Haw Hibi, 475 F.2d 7 (9th Cir.), decided this day.