author: WOOLSEY, District Judge.

text:
    UNITED STATES ex rel. NG LIN SUEY v. DAY, Commissioner of Immigration.
    District Court, S. D. New York.
    April 27, 1931.
    M. Michael Edelstein, of New York City, for relator.
    George Z. Medalie, of New York City (Ernest Lappano, of New York City, of •counsel), for respondent.
   WOOLSEY, District Judge.

This writ is dismissed.

I. In 1922, when relator, Ng Lin Suey, was admitted, his evidence tallied with that of his citizen father, Ng Mun Pong.

On the present application, the evidence ■of relator tallied with that of applicant, but •did not tally with his own evidence and that •of his father in 1922, nor did it tally with his father’s report on his return here in 1927, after a three years’ absence in China, that he had two children, both sons, born in China whilst he was there.

The alleged father died in Bellevue Hospiial on August 5,1929, so there is not evidence from him on this application.

II. A careful reading of the evidence relied on by the Board of Review in arriving at the decision to exclude Ng Quoek Leung, relator’s alleged brother, satisfies me that the applicant has had a fair hearing. That being so, there is little more to be said, for the question is ultimately that of .credibility. Cf. U. S. A. ex rel. Wong Sai Chaam v. Day (D. C.) 41 F.(2d) 526, 528.

The point on which I put most emphasis in refusing to disturb the finding of the Department herein is the fact that, although when the alleged father, Ng Mun Pong, last returned from China, landing at Seattle on April 25, 1927, he reported, as the fruit of his three years’ stay in China, two sons, Wah See, then aged 3 years, and Chee Han, then aged 1 year, the present applicant and the relator both state that they do not know of any such children.

The applicant says that he had two younger brothers, one Ng Len Goy, now aged 6, born November 30, 1925, and another, Ng Len Toon, bom December 9, 1927, after his alleged father’s return to the United States in April, 1927.

III. This evidence leaves the alleged citizen father in the position of having made a false report on his return in April, 1927 — a curious circumstance which is due doubtless to a desire to lay the foundation for future admissions of other sons, and which throws justifiable doubt on this whole situation.

Obviously there is a lack of candor somewhere here. Consequently I would not be justified in disturbing the findings of the Department.

I think it quite probable that the relator and the applicant are brothers but that neither of them is the son of Ng Mun Pong. Whilst such suspicion, of course, cannot affect relator’s status as a duly admitted citizen,-it justifies my not interfering with the applicant’s exclusion.

IV. In eases of this kind mistakes and variances in names seem to be common and are sometimes given undue prominence. It must be remembered that these exotic proper names have to filter through at least two refractive media- — the minds of the interpreter and of the stenographer — and so have two chances of being distorted. I think, therefore, that mere variances in names of relatives, etc., should not be overemphasized, especially if they are substantially idem so-nans; but in this connection I venture the suggestion that Chinese witnesses be required in all examinations to write the proper names to which they refer in Chinese characters as a check on the difficulties of accurate transcription' above noted.


source: Caselaw Access Project

author: GIBSON, District Judge.

license: Public Domain

text:
    In re LEPRI.
    No. 16022.
    District Court, W. D. Pennsylvania.
    Feb. 26, 1931.
    Ben Paul Jubelirer, of Pittsburgh, Pa., for Domenie Lepri.
    Elmer A. Barehfeld, of Pittsburgh, Pa., for petitioning creditors.
   GIBSON, District Judge.

Upon trial to the court on the issue as to bankruptcy the following facts were developed:

On January 2, 1931, an involuntary petition was filed against Domenie Lepri, signed by the Clark Lumber Company, E. R. Robertson, and Sam Amadio. Pour acts of bankruptcy were alleged, each of which asserted, in substanee, that the alleged bankrupt, while insolvent, had suffered or permitted a certain preference through legal proceedings. Each of the claims of the signing creditors was based upon materials furnished or work done upon the premises at No. 1720 Stratmore avenue in the city of Pittsburgh, Pa. The contract under which the materials had been furnished or the woi’k done had been made with Herd Homes, Incorporated, by Harry H. Herd, general contractor for the repair of the building, and was not signed by Domenie Lepri, the alleged bankrupt. Domenic Lepri was the subcontractor for the brick work upon the building to be reconstructed. Prior to beginning work, he demanded some security, and, pursuant to his demand, the owner, John C. Simpson, deeded him the property upon contract that it should be redeeded upon Lepri’s being paid the amount due him for bis work.

Lepri, at the time materials and labor Were furnished by the petitioners, was not the aetual owner of the premises, but was the mere lienholder. This fact was known to each signer of the petition, if not at the be^ ginning of the reconstruction, at least before its completion, and before all the work and materials had been furnished. One of the signers of the petition, E. R. Robertson, had,, prior to furnishing material and labor, requested Domenic Lepri to sign the contract for his work, and had been refused. Lepri was engaged in the brick work upon the house-when the materials and labor were furnished by the petitioning creditors.

Domenie Lepri was not insolvent when the petition in the instant case was filed against him, nor at the time of hearing.

Conclusions of Law.

Under the foregoing findings of fact, the petition in bankruptcy must be dismissed.

Discussion.

Cases may exist where the owner of a-house may be personally liable for work and materials placed upon his property pursuant to contract between the materialmen and subcontractors with the general contractor. The instant ease does not present an exception to-the general rule, under which he is not so liable. See 9 Corpus Juris, 835, 836. There-was no privity of contract between Lepri and any one of the petitioning creditors; and, this-being true, no one of such creditors had a debt provable in bankruptcy against him.


author: PER CURIAM.

text:
    COMMERCIAL CASUALTY INS. CO. v. WILLIAMS.
    No. 3150.
    Circuit Court of Appeals, Fourth Circuit.
    June 17, 1931.

      S. Brown Shepherd, of Raleigh, N. C. (L. H. Adams, of Newark, N. J., on the brief), for appellant.
    Marsden Bellamy and E. K. Bryan, both of Wilmington, N. C., for appellee.
    Before NORTHCOTT, Circuit Judg’e, and McCLINTIC and ERNEST F. COCHRAN, District Judges.
   PER CURIAM.

This ease was before this court on question of ownership of the property here in controversy. Commercial Casualty Ins. Co. v. Williams, 37 F.(2d) 326. This court affirmed the decision of the judge below, holding that the property in question belonged to trustee, and reference was had to a referee to take evidence as to the value of the property used by appellant in the completion of the building, under the circumstances detailed in the former decision of this court above cited, and report to the District Court. Evidence was taken, and referee reported in detail as to the value of the property, filing the total sum at $20,191.11. Upon exceptions to the referee’s report, it was held by the judge below that the report should be confirmed, and j udgment was entered for the trastee for the amount found, with interest, from which action this appeal was taken.

It has been repeatedly held by this court that the District Court’s findings of fact, supported by evidence, will hot be reversed, unless clearly wrong. Chesapeake Lighterage & Towing Co., Inc., v. Baltimore Copper Smelting & Rolling Co. (C. C. A.) 40 F.(2d) 394, and cases there cited. This rule is at least equally applicable where the finding of the judge is based upon the report of a referee, for there we: not only have the judgment of the referee, who took the testimony and heard the witnesses, but the judg-, ment of the court.. Here, an examination of the record convinces us that the report of the referee was clearly right. Appellant took the property wrongfully, and certainly cannot be allowed to profit by its wrong. In re Schilling et al. (D. C.) 264 F. 357, and authorities there cited.

Affirmed.


text:
    UNITED STATES ex rel. LOUCAS v. COMMISSIONER OF IMMIGRATION.
    District Court, S. D. New York.
    May 5, 1931.
    Shorr, Brodsky & King, of New York City (Carol Weiss King, of New York City, of counsel), for relator.
    George Z. Medalie, U. S. Atty., of New York City (Vito Marcantonio, of New York City, of counsel), for respondent.
   WOOLSEY, District Judge.

This writ is dismissed, without prejudice, as premature.

I. The writ was inadvertently allowed by me in disregard of subdivision b of General Rule XIV of this court governing the allowance of writs of habeas corpus in exclusion and deportation eases, which reads as follows:

“(b) Writs will not be allowed unless the petition shows in exclusion cases that the alien has appealed from an order of exclusion of a board of special inquiry, and that the Secretary of Labor has affirmed the exclusion ■and ordered the' alien deported; or in deportation cases that the Secretary of Labor has issued a warrant of deportation.”

That rule embodies the normally appropriate attitude of the federal courts vis-a-vis the executive branch of the government.

II. Possibly the circumstances might in some ease be so exceptional as to justify intervention by a writ of habeas corpus at an earlier stage of the proceeding than Rule XIV indicates. For an instance, see Whitfield v. Hanges, 222 F. 745, 755 (C. C. A. 8). But ordinarily it would be insupportable for the courts thus to interfere ad interim with the enforcement of our laws fry the appropriate executive department. Administrative redress should always be exhausted before recourse is had to the Courts.

III. Here there is not any ground shown to take this ease out of the ordinary rule.

The only record submitted shows that the relator had asked for and been accorded the right to confer with counsel. There has not been any undue delay in his hearings. Indeed any delay which may have occurred appears to have been due to this premature and wholly inappropriate application. Settle order on one day’s notice.


text:
    SEIDEN v. CONCORDIA FIRE INS. CO. OF MILWAUKEE.
    District Court, S. D. New York.
    April 27, 1931.
    Denman, Bevier & Scotti, of New York City, for the motion.
    Davidson & Davidson, of New York City (Louis B. Davidson, of New York City, of counsel), opposed.
   WOOLSEY, District Judge.

This motion is denied in all respects.

I. The question here involves the .suppression of the deposition, taken under title 28, U. S. Code, § 639 (28 USCA § 639) formerly Rev. Stat. § 863, of a witness who is a state employee engaged in work as inspector of motor vehicles for New York State, with official headquarters at Albany, and temporary residence also in that city.

II. The fact that the legal residence of witness is in New York City is immaterial. The question is one of a witness’ place of temporary sojourn, not of his domicile. Cf. Frost v. Barber (C. C.) 173 F. 848; Bagdan Milk Co. v. Dairymen’s League Co-operative Association (D. C.) 44 F.(2d) 855. This is obvious because the civil subpcena does not run beyond 100 miles from the place of the trial. U. S. v. Southern Pacific Co. (D. C.) 230 F. 270, 272; Russell v. Ashley, 21 Fed. Cas. 33, 34, No. 12150, and note.

If witness is available at time of trial, of course, the deposition cannot be used. Objecting party must show availability. Russell v. Ashley, 21 Fed. Cas. 33, 34, No. 12150; Merrill v. Dawson, 17 Fed. Cas. 86, 97, No. 9469; Patapsco Ins. Co. v. Southgate, 5 Pet. 607, 617, 8 L. Ed. 243.


author: BYERS, District Judge.

text:
    In re ATLAS.
    No. 18708.
    District Court, E. D. New York.
    March 2, 1931.
    Louis B. Heller, of Brooklyn, N. Y., for the motion.
   BYERS, District Judge.

Motion by bankrupt to amend his schedules to include the name of a creditor not listed therein.

The petition is deficient in failing to set forth the various dates involved, but a memorandum in support of the motion, filed by the bankrupt’s attorney, is relied upon for that purpose.

The voluntary petition was filed and adjudication had March 15, 1930. The time for the filing of creditors’ claims therefore expired on September 15, 1930.

On August 12, 1930, the bankrupt was served with a summons in which judgment was demanded in the sum of $300.00, and that was delivered to his attorney, but the time of delivery is not stated. However, the bankrupt could have made this motion well in advance of September 15, 1930, so that, prior to. that date, the plaintiff in the action could have been afforded an opportunity to file its claim within the period provided in section 57n of the Bankruptcy Act, 11 USCA see. 93 (n).

This motion was not made until November 14, 1930, and, when it was called, the moving party was directed to give notice to all creditors. Proof that this was done has not been furnished.

Because the court doubted its power to grant the motion at all, the bankrupt’s attorney was requested to submit authority in support of the motion. No memorandum was filed in that behalf until about February 16, 1931.

The only ease therein cited which would he of direct assistance is In re Ingrao (D. C.) 40 F.(2d) 946. That decision does not discuss the question of whether a creditor added by amendment to the schedules could prove his claim if the six months’ limitation had expired.

In re Rose (D. C.) 43. F.(2d) 446, is a late decision to the effect that the time for filing a claim cannot be extended beyond the statutory period, and that resort to the general equity powers of the bankruptcy court may not be had to\ accomplish that which the statute forbids.

Motion denied. Submit order.


text:
    NEWTOWN CREEK TOWING CO. v. CITY OF NEW YORK.
    No. 11515.
    District Court, E. D. New York.
    March 28, 1931.
    Alexander, Ash & Jones, of New York City (Max Taylor, of New York City, of counsel), for libelant.
    Arthur J. W. Hilly, Corp. Counsel, of New York (William J. Leonard and Matthew J. Troy, both of New York City, of counsel), for respondent.
   BYERS, District Judge.

On July 26, 1929, libelant’s tug proceeded up-stream through the Grand Street bridge over Newtown Creek, at about 7:30 a. m.; the bridge having been opened for that purpose. The tug, having arranged a berth for a barge, sought to return through the bridge to tow the barge to the berth.

The return could not be made because the bridge could not be opened, due to the breaking of a concealed element in the hoisting gear.

The municipal authorities speedily (by 9:00 o’clock or thereabouts) proceeded to dismantle the machinery, and succeeded in releasing the affected member and in raising the bridge by hand power at about 5:30 p. m.

Damages are sought for the delay suffered by the libelant’s tug.

The break is thus described: “It was the key in the gear on the shaft that drives the end rests or the wedges, as we call them, that is, end rests on the end of the bridge. They were driven up and could not be drawn because the — in other words your'key would move around inside and the gear would not move.”

The break in the key was clean, i. e., the key was not worn out. Its condition could not have been discovered in advance, because no one could prophesy that such a key would break; the testimony is that it might have lasted for years, or a new one might break in six months.

To hold that the respondent has been shown to be guilty of negligence, actual or implied, would be to disregard the testimony.

The ease is not unlike Pettit v. Board of Chosen Freeholders of Camden County, New Jersey (C. C. A.) 91 F. 998, the decision in which will be followed.

The authorities cited by libelant are quite remote in point of the facts involved, and do not aid in the disposition of this cause.

Clement v. Metropolitan West Side El. Ry. Co. (C. C. A.) 123 F. 271 — failure of the bridge to open is not explained.

Great Lakes Towing Co. v. Masaba S. S. Co. et al. (C. C. A.) 237 F. 577 — delay in opening bridge, due to faulty operation by bridge tender, a contributing cause to passing vessel’s damage.

Piscataqua Nav. Co. v. N. Y., N. H. & H. R. R. Co. (D. C.) 89 F. 362—falling of draw stated to be negligent, but facts not discussed.

Donovan v. New York Central R. R. Co. (D. C.) 16 F.(2d) 611 — no fault found with railroad, and libel dismissed as to it.

Settle decree dismissing the libel with costs.

If the foregoing be deemed an insufficient compliance with Admiralty Rule 46% (28 USCA § 723), findings and conclusions may be settled on notice.


author: GRAHAM, Presiding Judge.

text:
    In re STAGG.
    Patent Appeal No. 2702.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Steward & McKay, of Washington, D. C. (C. 0. McKay and Melvin W. Sandmeyer, both of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

Appellant has appealed from a decision-of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner in rejecting claims 1 to 8, inclusive, of appellant’s application for a patent upon improvements in nailing strips.

Appellant’s product is a nailing strip-composed of a homogeneous mass of bituminous material, such as asphalt, and a filler preferably made of a fibrous material and a powdered or pulverant mineral material, compressed into a slab. The specification and drawings show that this strip is intended to be used to hold flashing strips in constructing roofs. It is proposed to build slabs of this material into walls as a part 'thereof, for the purposes above stated.

Claims 1 and 7 are illustrative, and are as follows:

“1. A nailing strip consisting of a preformed board like slab containing- a bituminous material and a filler.”
7. A nailing strip consisting of a form retaining plastic like homogeneous mass of asphalt, a fibrous material and a mineral material, compressed into a board like slab, and a non adhesive surfacing thereon.”

The claims were rejected on the following references: Johns, 76,773/ April 14, 1868; Henderson, 1,040,321, October 8, 1912; Mabie, 1,064,753, June 17,1913; Ban-well, 1,134,939; April 6-, 1915; Pomerantz, 1,161,79-1, November 23, 1915; Basham, 1,187,600, June 20-, 1916; Ryan, 1,269,649, June 18, 1918; Clapp, 1,379,590, May 24, 1921; Weiss, 1,387,219, August 9, 1921; Swenson, 1,428,457, September 5, 1922.

In discussing the references the Board of Appeals said:

“Several of the references disclose strips and elements into which nails may be driven. Mabie and Pomerantz disclose wooden nailing strips of the usual type. Henderson and' Basham disclose composition strips into-which nails may be driven. Henderson discloses a railroad tie and it may be assumed that spikes are driven thereinto. Basham discloses a nailing strip embedded in a concrete body and’ shows nails driven thereinto for the purpose of attaching other members.. Ryan discloses a composition which may be molded into monolithic structures or blocks and adapted to have nails driven there-into.
“Several patents have been cited showing that compositions similar to applicant’s and which anticipate the terms of the claims as to this feature are old. We believe Banwell is possibly the nearest to applicant’s composition, being a mixture of bitumen and a filler of fiber and granular material. However, Johns and. Clapp also disclose similar compositions.
“After careful consideration we are unable to agree that invention is involved in the selection of the particular type of composition as a nailing element. Basham’s composition is of tarred paper which is similar and is used as a nailing strip. It is held, therefore, that no invention is involved in constructing a nailing strip element such as shown by Basham from the composition disclosed by Banwell. This ground of rejection applies to all of the claims including claims 6 and 8 wherein a building structure is claimed.”

We have examined the references and concur with the Board of Appeals in its construction thereof and conclusions thereon. No element in the product of appellant is new to the art, even the nonadhesive surfacing as described in said claim 6, being anticipated by the reference Banwell. The use of nailing strips for fastening roof flashing, built into the wall, is shown in Mabie and Pomerantz. It is true none of the references show the use of a composition strip of this kind for fastening the flashing of a roof, but it would seem to be obvious to one skilled in the art to use such a composition strip when its adaptability for such use in holding nails' was well known to the prior art. If the application of such a well-known substance to one particular purpose were inventive and patentable, then its use for any other purpose might be likewise patentable, and the result would be a multiplicity of patents, only limited by the number of uses to which the product might be put.

We are of opinion no new and useful result has been accomplished, and that the disclosure of appellant lacks invention.

The decision of the Board of Appeals is therefore affirmed.

Affirmed.


author: HATPIELD, Judge.

text:
    In re GREEN.
    Patent Appeal No. 2705.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Arthur B. Marsh, of Boston, Mass. (Arlon V. Cushman, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C., for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATPIELD, GARRETT, and LENROOT, Associate Judges.
   HATPIELD, Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Primary Examiner rejecting claims 7, 8, and 9 in appellant’s application for a patent relating to a catch-basin trap, comprising a tubular sleeve, adapted to be imbedded in the masonry of the catch-basin, and an ell-shaped member connected with the tubular sleeve by means of a bayonet joint, the joint being so constructed that the ell-shaped member is capable of being rotated relative to the sleeve. The ell-shaped member is held in gas tight relation to the sleeve by a packing of plastic material such as heavy grease.

Claim 7 is illustrative. It reads:

“7. A catch basin trap comprising a tubular sleeve adapted to be fixed in the wall of a catch basin and having an exterior circumferential rib, intermediate its ends, which is shaped to form a groove internally of the sleeve, and a channel leading from said groove to the inner end of the sleeve, and an ell-shaped member telescopically related to said sleeve and provided with an exterior tongue adapted to pass through the channel in the sleeve and fit within the circumferential groove at the inner end thereof, for the purpose described.”

The references are: Holleran, 578,927 March 16, 1897; Pinch, 788,200 April 25, 1905; Johnson, 788,721 May 2, 1905; Beat-tie, 1,353,559 September 21, 1920.

The basic reference is the patent to Johnson. It discloses a catch-basin trap structure, comprising a tubular sleeve adapted to be fixed to the wall of the basin and an ell-shaped member attached to the sleeve.

In its decision, the Board of Appeals said:

“Johnson discloses the same combination broadly, but he employs a different type of joint between the ell and the off take pipe, namely, a flange on the ell retained in a depression in the end of the pipe by means of a covering ring fastened to the mouth of the pipe. Johnson’s ell is, however, made with a loose fit so that the ell can he rotated by means of a hooked rod.
“Claim 7 requires only the very broad substitution of a bayonet joint in place of Johnson’s plain flange joint. Finch has been cited to show stove pipe joints of the bayonet type, and clearly anticipates each detail of the joint itself. The sleeve 15 shown in Figure 2 of Finch is fully equivalent to the sleeve 1 of applicant, the lugs 19 being equivalent to the rib 5.
“It is considered that no patentable novelty is involved in the broad substitution of a joint like Finch’s for the joint shown by Johnson. The rejection of claim 7 is affirmed.
“Claim 8 requires that the joint’ of the bayonet type be of sufficiently loose fit to permit packing to be placed between the parts. In view of the general use of packing in most pipe joints as shown by Holleran and Beattie, no patentable novelty is thought to be involved in its use in a bayonet joint. The rejection of claim 8 is affirmed.
“Claim 9 positively includes the packing as an element but presents the same question of patentability as claim 8 and this claim also is therefore without patentable novelty over the citations.”

The patent to Finch relates to stovepipe joints of the bayonet type. It is argued by counsel for appellant that this reference is from a nonanalogous art, and is therefore not a pertinent reference.

We are unable to agree with counsel for appellant that the patent to Finch is not a proper reference. In our opinion, the applicability of the bayonet joint disclosed by Finch and the slight change required to adapt it to its new use would occur to a person of ordinary mechanical skill. Potts & Co. v. Creager et al., 155 U. S. 597, 15 S. Ct. 194, 39 L. Ed. 275.

The patents to Holleran and Beattie disclose that the use of a packing material in pipe joints is old.

We are of opinion that the conclusion reached by the tribunals of the Patent Office is right. Accordingly, the decision of the Board of Appeals is affirmed.

Affirmed.


text:
    In re HUGHES.
    Patent Appeal No. 2719.
    Court of Customs and Patent Appeals.
    April 29, 1931.
    Arthur E. Paige, of Philadelphia, Pa., for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    • Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   GRAHAM, Presiding Judge.

Appellant filed his application for an improvement in mechanism for trade-marking transfer webs. Fifteen claims were originally attached to the application, all of which were rejected by the éxaminer. The appellant appealed to the Board of Appeals of the United States Patent Office, which affirmed the decision of the examiner. The appellant has brought here, on appeal, claims 11, 12, 13, 14, and 15, having abandoned the others.

Claim 12 is typical of all the claims, and is as follows: “12. In mechanism for trade marking transfer webs, the combination with a rotary printing couple, one of which has an arcuate cameo alphabetical printing face, reading from left to right; of means arranged to direct such a web between said couple; means arranged to automatically repeatedly coat said printing face with a fugitive liquid film, capable of forming a superficial imprint upon said web substantially impervious to transfer material, and including a distributing roller, arranged to! contact with said face, and means arranged to supply said distributing roller with such a film, including a receptacle for the liquid to form said film, and a pick-up roller mounted to rotate in said receptacle and in contact with said distributing roller.”

The claims were rejected on the following references:

Kennedy, 1,010,635, December 5, 1911.
Stamm, 848,064, March 26, 1907.
Temple, 1,479,337, January 1, 1924.
Guthrie (Brit.), 970, April 18, 1864, Spec. Abridg.

The appellant seeks a patent on a. mechanism for printing trade-marks on carbon paper and the like, in such a way as to show the trade-mark on the back of the sheet, while the mark does not interfere in any way with the carbon coating on the front side of the paper. His-mechanism consists of using an arcuate soft rubber type plate inserted' in a roller, with typed matter thereon reading from left to right. This roller, having a number of such arcuate plates set therein, revolves, and the type faces are thinly coated by means of intervening rollers, from a fluid reservoir, with a film of volatile dye solvent or phenolic tar, and thereafter said arcuate type sections print upon .the front of a web of paper which is being drawn between the printing roll and a platen roll, on the front side of the paper. The volatile liquid passes through the paper, and thereafter, when the front side of the paper is coated with carbon or other similar coating, the letters impressed by the type appear upon the back of the sheet in lighter surfaces than the surrounding surface upon which no such impress was made, and reading from left to right.

Appellant’s claims involve several elements. Taking, for illustration, said claim 12, it will be observed that an attempted combination is made of the machine and the material or dye solvent used therewith. We have held in Re Smith, 36 F. (2d) 302, 17 C. C. P. A. 644, that a person may not patent a combination of a device and the material upon which the device works, nor limit other persons from the use of similar material by claiming a device patent. If the material which appellant uses here for printing is new to the art, then such material may be patentable; but he may not take advantage of this in applying for a patent upon a mechanism to apply it. Any feature of the mechanism which is particularly constructed for the use of such a fluid might be patentable in combination or otherwise. Appellant cannot, however, properly claim a combination of device and material worked upon. In fact, this is conceded in appellant’s brief, as we understand it.

We agree with the Board of Appeals that the references cited anticipate the claims in issue. Guthrie shows type cut in the reverse way, so that they may be read" through the paper upon which the printing is done. Yielding print rollers are shown by Stamm, and reversed type. As said by the examiner, rubber type is old in the printing trade, and there certainly can be nothing inventive in making an arcuate plate of such type. The system of rollers, fountain, and other mechanical arrangements of appellant’s device are those well known to the art of printing, as shown by the references.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: BLAND, Associate Judge.

text:
    In re PURDY.
    Patent Appeal No. 2704.
    Court of Customs and Patent Appeals.
    April 27, 1931.
    Owen & Owen, of Toledo, Ohio (Malcolm W. Fraser, of Toledo, Ohio, and Conway P. Coe, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for the Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This is an appeal from the decision of the Board of Appeals of the United States Patent Office, rejecting claim 9 of appellant’s application, which claim is as follows: “9. A valve gear for a locomotive having a valve stem, cross head and eccentric, said valve gear comprising a depending arm pivoted at its upper end, a combination lever pivoted to the valve stem .having a downwardly extending arm and a back set upwardly extending arm, means connecting the downwardly extending arm and the cross head, a link connected to the “upper end of said back arm in7 dining rearwardly and downwardly to the lower end of said depending arm, and means connecting said depending arm with the eccentric for oscillating said depending arm . between a vertical position and a forwardly inclined position.”

The references are:

Allfree, 1,002,112, August 29,1911.
Wiggins, 1,025,175, May 7, 1912.
Graham, 1,219,549, March 20, 1917.

The alleged invention is described in the decision of the Board of Appeals in the following language: “This application discloses a valve gear for locomotives. It is of the type employing the combination lever which lever derives movement from the piston cross-head at its lower end and from a supplemental crank on one of the drive wheel axles and through the reversing mechanism at its upper end and actuates the valve stem by a resultant of these two movements. This application is based mainly on the detail of employing a combination lever in which the upper end is inclined backward or away from the valve chamber so that it will stand in a symmetrical position with respect to the reciprocating pitman-like rod which is connected to that end and which actuates it.”

Appellant claims that the novelty of his invention rests in a structure having a downwardly extending arm in combination with a lever of which the upper end is inclined backward or away from the valve chamber. Appellant urges, without convincingly pointing out the underlying reason for his conclusion, that there is something about his combination of old elements which brings about a new and useful result, and, while not contesting that Wiggins shows the downwardly and backwardly inclined arm, contends 'that Wiggins should be eliminated as a reference because the mechanism of that patent as a whole is inoperative.

Concerning the inoperativeness the board said: “ * * * While applicant appears to demonstrate that some of the parts of Wiggins’ mechanism, as shown in the drawings are not of correct proportion, we do not agree that the principle of the mechanism is inoperative. Patent drawings are not necessarily working drawings and it is considered that it is within the skill of machine designers to so proportion the dimensions of the Wiggins’ mechanism as to make it accurate. However, Wiggins is considered to be a valid reference as to the feature for which it was applied aside from the question of operativeness of the dimensions of other parts as shown.”

In discussing the applicability of the references, the board’s decision reads: “No patentable novelty is found in the broad substitution of this backwardly inclined end of the combination lever of Wiggins for the upper end shown by Graham in Pig. 3 of combination lever 15. Having Graham’s structure it is considered merely an obvious mechanical feature for the above reasons, and especially in vie-tf of Wiggins, to incline the upper end of the combination lever backwardly if the actuating pitman-like bar is' inclined downwardly, so as to bring its are of oscillation symmetrical to the line of reciprocation of the bar.”

We have examined with care the references and the models presented during the argument of this case, and no useful purpose could be served by here discussing at length the different features shown in the references and appellant’s disclosure. We agree with the reasoning of the board and the conclusions reached, and its decision is affirmed.

Affirmed.


author: HATFIELD, Associate Judge.

text:
    LANGFIELD v. SOLVIT-ALL CORPORATION.
    Patent Appeal No. 2715.
    Court of Customs and Patent Appeals.
    April 29, 1931.

      Edward S. Rogers, Allen M. Reed, and William T. Woodson, all of Chicago, 111. (Browne & Phelps and Thomas L. Mead, Jr., all of Washington, D. C., of counsel), for appellant.
    Ward & Crosby, of New York City (Joshua Ward, of New York City, of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal in a trade-mark opposition proceeding from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences dismissing the opposition of appellant, and holding that appellee was entitled to the registration of the trade-mark “Solvit-All” for use on sanitary solvents for cleaning, disinfecting, and deodorizing toilet bowls and similar articles.

In its application for registration filed March 29, 1928, appellee alleged that it had used its trade-mark since November 17, 1927.

It appears from the record that appellant has used its trade-mark “Solvite” since 1924 on a cleaning preparation, used, when mixed with gasoline, for cleaning garments, draperies, fabrics, rugs, carpets, automobile seats, and other articles from which it is desired to remove “greasy and other substances”; that appellant’s product is in the’ form of paste, and is sold throughout the United States in small cartons to drug stores, grocery stores, department stores, hardware stores, hospitals, garages, corset companies, and other concerns; and that appellant has expended large sums of money in advertising its product and its trade-mark. It also appears from the record that appellee’s product is sold to grocery and department stores, and that appellee has made some effort to sell it to drug stores.

Appellee’s product is in liquid form, is sold in small containers, and is applied with a brush to the surfaces to be cleaned and deodorized.

The tribunals below concurred in holding that appellant was the first to adopt and use its mark, that the goods of the parties were not of the same descriptive properties, < and that the involved marks were not confusingly similar.

It is true that the goods of the parties do not possess, entirely, the same essential characteristics. Nevertheless the purposes for which they are used are of the same general nature, and are closely associated and related. They are both used for cleaning purposes by the general public, are sold in the same stores, and, although a purchaser would not confuse the two products, confusion as to their origin would probably result should the parties use their trade-marks concurrently!

We. are of opinion, therefore, that the goods are of the same general class and possess the same descriptive properties within the principles heretofore announced by this court. California Packing Corporation v. Tillman & Bendel, 40 F.(2d) 108, 17 C. C. P. A. 1048; B. F. Goodrich Co. v. Hockmeyer (Zipon Mfg. Co., Substituted), 40 F. (2d) 99, 17 C. C. P. A. 1068; Sun-Maid Raisin Growers of California v. American Grocer Co., 40 F.(2d) 116, 17 C. C. P. A. 1034; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 40 F. (2d) 106, 17 C. C. P. A. 1103; Cluett, Peabody & Co., Inc., v. Hartogensis (Arrow Emblem Co., Inc., Substituted), 41 F.(2d) 94, 17 C. C. P. A. 1166; Kotex Co. v. McArthur, 45 F.(2d) 256, 18 C. C. P. A. -; Revere Sugar Refinery v. Joseph G. Salvato, 48 F.(2d) 400, 18 C. C. P. A.-.

That the marks are confusingly similar is evident, and requires no discussion.

For the reasons stated, the decision of the Commissioner of Patents is reversed.

Reversed.


text:
    In re CARLSON.
    Patent Appeal No. 2712.
    Court of Customs and Patent Appeals.
    April 29, 1931.

      Howard L. Fischer, of St. Paul, Minn. (A. Ponack, of Washington, D. C., of counsel), for appellant.
    T. A. Hostetler, of Washington, D. C. (Howard S. Miller, of Washington, D. C., of counsel), for Commissioner of Patents.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   BLAND, Associate Judge.

This is an ex parte appeal from a decision of the Board of Appeals of the United States Patent Office rejecting claims 1, 2, 3, and 4 in appellant’s application for an invention relating to a child’s bib, the lower front part of which contains a tray construction.

The application discloses a child’s bib containing at the bottom a pocket or tray which is for the purpose of catching particles of food dropped by the child when eating. The exhibit of the goods which appellant is merchandising is made in accordance with) her application disclosure, and is made from a light-colored cloth, which is starchy and more or less stiff. The body of the bib lies flat against the child’s chest, and the lower edge is arcuated so that a crescent-shaped pocket or tray member stands out from the flat portion of the bib. The character of standing out and forming a pocket is brought about by the more or less stiff character of the cloth and the fact that the pocket member contains more cloth and is longer from side to side than the distance between the two sides when measured in a straight line. The particular structure which causes the pocket to project, we think, is aptly described in the claims, and it is the one feature of the claims which appellant earnestly urges is not disclosed in any of the references cited.

. Claim 3 is illustrative, and reads as follows:

“3. ' A child’s bib formed of liquid resisting material including, a body portion, an arcuated edge formed along the lower side of said body portion, a tray portion having arcuated edges of different radiuses, each of which are greater than the radius on said body portion, said edges converging into each other to form pointed ends, and means for attaching one of said areuated edges of said tray portion to the areuated edge of said body portion to cause said tray portion to project in an areuated formation throughout its entire length from said body portion.”

The rejection was based upon the following references: Clayton, 193,077, July 17, 1877; Spies, 358,367, February 22, 1887; Small, 636,462, November 7, 1899’; Newlin, 704,206, July 8, 1902.

The “liquid resisting material” feature of the claim is old, and it is not seriously contended that it is new.

We think the Board of Appeals was correct in its conclusion that the references clearly anticipated the disclosure of appellant’s application, and the claims were properly rejected.

Appellant urges that no reference, except Clayton, discloses the curved pocket effect, and that Clayton is in a nonanalogous art, being a patent for a bathing shoe.

We think Spies anticipates the projecting pocket feature of appellant’s, disclosure. The drawing and specification in Spies shows that, if the top of the pocket should be wider than the body of the bib, the pocket would project. The drawing shows, and the specification recites, that, if the bottom, which is wider than the body of the bib, is drawn up and fastened to the body, a projecting pocket will result.

The decision of the Board of Appeals is affirmed.

Affirmed.


author: BLAND, Associate Judge. HATFIELD, Associate Judge

text:
    MODEL BRASSIERE CO., Inc., v. BROMLEY-SHEPARD CO., Inc.
    No. 2648.
    Court of Customs and Patent Appeals.
    April 29, 1931.

      HATFIELD and LENROOT, Associate Judges, dissenting.
    Briesen & Sehrenk, of New York City (Louis Alexander, of New York City, and Conway P. Coe, of Washington, D. C., of counsel), for appellant.
    Geo. P. Kimmel, of Washington, D. C. (Samuel Bogorad, of Washington, D. C., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges. .
   BLAND, Associate Judge.

This is an appeal in a trade-mark cancellation proceeding from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences sustaining appellee’s application for the cancellation of the registration of appellant’s trade-mark “Ensemble” for use on “garter-brassieres.”

Appellant’s trade-mark, No. 197,197, was registered April 14, 1925, on an application filed December 26,1924.

In its petition for cancellation, appellee alleged that it was engaged in the manufacture and sale of ladies’ “undergarments and garments” which “might be designated as garter-brassieres”; that in the year 1924, it adopted and began the use of the word “Ensemble,” not as a trade-mark, but as a term descriptive of a certain type or style of combination undergarment for ladies, comprising what “might be termed as a brassiere, chemise, and step-in”; that it has continuously used said name on, and in advertising, its goods from the year 1924 to the present time; that the term “Ensemble” is descriptive; that immediately after appellant had registered the word “Ensemble” as its trademark, it challenged the right of appellee to use that term to describe its combination garment; that, on or about October 6, 1926, appellant filed a suit against appellee in the United States District Court, Southern District, New York, and alleged in its bill of complaint that appellee was guilty of trademark infringement by reason of its use of the word “Ensemble”; that, on December 7, 1926, appellee’s motion to dismiss the bill of complaint was denied by the court; that on February 18, 1927, the court granted appellee’s motion for the filing of a bill of particulars by appellant as to the charge of unfair competition; that counsel' for appellant, although frequently requested to do so, never filed a bill of particulars, but, on October 7, 1927, dismissed the bill of complaint without prejudice; and that appellee deemed itself injured by the registration of the word “Ensemble” to appellant.

. In its answer, appellant admitted that it had requested appellee to discontinue using the involved trade-mark in connection with merchandise like that covered by appellant’s registration; that appellant filed suit against appellee on or about October 6, 1926; that appellee filed a motion to dismiss the suit; that said motion was heard on December 7, 1926, and denied by the court; and that the bill of complaint was withdrawn without prejudice and without cost to either party, in accordance with a stipulation entered into by counsel for the parties and filed in the District Court on October 24, 1927. All other allegations contained in appellee’s application were denied by appellant. It was alleged in the answer that, at the request of appellant, appellee agreed to discontinue the use of the word “Ensemble” on goods similar to those covered by appellant’s registration; and that, when appellee subsequently made some further use of the word “Ensemble” in violation of its agreement, appellee apologized to appellant and claimed that §uch use was inadvertent and would not be repeated.

Appellant submitted no testimony.

The only testimony submitted by appellee is that of its counsel of record, George P. .Kimmel, who testified that he was attorney for appellee, and that the word “Ensemble” was commonly used :by merchants and others to describe combination garments pri- or to, and since, appellant first used “Ensemble” as a trade-malrk. Thereupon, the witness identified and introduced in evidence copies of a newspaper, the Evening Star, Washington, D. C., dated, respectively, September 14,16,17, 20, 22, 23, and 26, October 7, 10, 13, 14, 17, 18, and 26, and November 4, 6, 7, 13, and 18, 1924, .eight, copies of “Vogue” magazine published during various months of the year 1924, and a copy of the Corset and Underwear Review, dated January, 1925, in each of which, appeared an advertisement by others showing .the use of the word “Ensemble” to describe various ladies’ garments. The witness then testified as follows :

“Q. 9. What name has Petitioner used on any of its garments? A. SnugglebandEnsemble. * * *
“Q. 10. Have you a specimen of Petitioner’s garment? A. I have and hand you a specimen of the same the label which was on the same having been removed by me.”

Thereupon, the garment identified by the witness was offered in evidence as Appellee’s Exhibit No. 7.

The witness then testified in detail regarding the suit filed by appellant against appellee in the District Court, Southern District, New York, which, in a general way, substantiated the allegations in regard thereto contained in appellee’s petition for cancellation. Certain correspondence between counsel for the parties, relating to the suit in the District Court, together with certain affidavits filed in that ease with appellee’s motion to dismiss, were offered in evidence. The witness then testified as follows:

“Q. 12. Are there any other statements you wish to make in connection with this ease and if so, please make them. A. I find among my papers a folder published by Bromley-Shepard Company, Inc. which on the fifth page shows the manner of use for advertising of the word “Ensemble” by Petitioner. Also a clipping from the Corset and Underwear Review on which the date does not appear, but which shows the same thing as shown in the folder.”

The documents referred to in the answer of the witness were introduced in evidence as Appellee’s Exhibits Nos. 9 and 10. Neither of these exhibits shows the date of its publication or use.

Counsel for appellant objected to all of the testimony of the witness on the ground that it was hearsay, and that the witness had not shown any knowledge of the facts to which he directed his testimony. Objection was also made to each of the exhibits introduced in evidence.

Upon this record, the Examiner of Interferences sustained the petition for cancellation.

Upon appeal, the commissioner, after referring to the allegations contained in appellee’s petition for cancellation, said:

“This is clearly such a statement of facts from which, if true, it may reasonably be inferred that the petitioner will be damaged unless the mark is cancelled.
“The petitioner having established legal standing in the cancellation proceeding it may properly challenge the validity of the registrant’s registration.”

He held that, as applied to garter-brassieres, the word “Ensemble” was descriptive; that it had been used by others in connection with ladies’ garments before its adoption and use by appellant; and that appellant was not entitled to the exclusive use of the word as a trade-mark; and, accordingly, affirmed the decision of the Examiner of Interferences.

In his decision, the commissioner cited the ease of Andrews Radio Co. v. Timmons Radio Products Corp., 345 O. G. 798, 1926 C. D. 39, as authority for the proposition that one who seeks cancellation of a registration of a descriptive mark need not establish that he was using it at the time his application was filed; but that, on the contrary, it is sufficient that he “shall have used said mark in describing the article which he manufactures or owns.”

Section 13 of the Trade-Mark Act of 1905 (15 USCA § 93), under authority of which appellee' filed its petition for cancellation, reads, in part, as follows: “Whenever any person shall deem himself injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. The commissioner shall refer such application to the examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the examiner that the registrant was not entitled to the use of the ' mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner shall so decide, the commissioner shall cancel the registration. • a *» (Italics ours.)

In this court appellant makes two contentions :

First, that the commissioner erred in holding that the mark “Ensemble” is descriptive of the goods specified in the registration; that the registered mark is prima facie valid and that the record fails to show that it is invalid by reason of being descriptive.
Second, that the petitioner “has failed to establish by proper evidence that it was using at the time of. the filing of the petition for cancellation, the word Ensemble either descriptively or otherwise for garter brassieres, the goods covered by the registration sought to be cancelled or for merchandise of the same descriptive properties.” (Italics ours.)

We agree with-the decision of the commissioner that the word “Ensemble,” as applied to the merchandise of both parties, is descriptive and is, therefore, not subject to the exclusive ownership and use by any one, and that the same should not have been registered.

“Ensemble” is defined in Webster’s New International Dictionary (1925) as follows: “The whole; all the parts taken together. * « <Yt)f

The word “Ensemble” clearly describes and is applicable to ladies’ underwear which both partjes hereto manufacture and sell. The goods are referred to by the commissioner as “a combination undergarment for ladies, comprising what might be termed a brassiere, chemise and step-in.”

Section 5 of the Trade-Mark Act (15 USCA § 85) provides that no mark which consists merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods shall be registered. The Supreme Court of the United States, in the “Ruberoid” case, Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U. S. 446, 453, 31 S. Ct. 456, 457, 55 L. Ed. 536, has declared the settled rule to be that: “* * * . No. one can appropriate as a trademark a generic name or one descriptive of an article of trade, its qualities, ingredients, or characteristics, or any sign, word, or symbol which, from the nature of the fact it is used to signify, others may employ with equal truth.”

The statute provides a procedure for cancellation of an offending mark of this character, and the sole question remaining for decision is to determine whether or not appellant is right in its second contention that the petitioner has not proven sufficient facts to show that it is a proper party in interest, and that it will be injured by the registration of the mark.

It is clear to us that there is a distinction between the proof required to show the statutory authority to petition for cancellation and the injury or damage which would be resultant from an invalid registration in a case where the petitioner claimed to be the owner of a valid trade-mark, and a ease where he disputed the right of ownership in any one In the former it is clear that he should show such facts as would show his ownership and use at the time the petition was filed. In that case it would be important for him to allege and prove that he was making a trade-mark use of the mark at the time of filing the petition, since, if he was not using it at that time, it would be possible that he had abandoned its use altogether.

In respect to this issue, we think it is sufficient, in this kind of case, for the petitioner to allege and show facts sufficient to establish the injury and his statutory right to file the petition. To do this, in our judgment, he is not required to show that he, on the date of filing the petition, was actually using the descriptive term on or in connection with his goods, as he would be required to do if he claimed ownership in a valid mark.

Appellant’s fifth paragraph of his answer admits and concedes appellee’s use of the term “Ensemble,” and reads as follows: “5. Further answering the petition for cancellation registrant alleges as an affirmative defense that petitioner for cancellation upon registrant’s request agreed to discontinue using the word Ensemble in violation of registrant’s trade mark rights evidenced by the certificate of registration herein sought to be canceled, and that petitioner, when it subsequently made some further use of the word Ensemble in violation of registrant’s said rights apologized to registrant claiming that said use was inadvertent and would not he repeated.”

Furthermore, it states that appellee continued to use the word “Ensemble” although it apologized to appellant for doing so and promised that it would not be repeated. Appellant sued appellee for using the word in connection with its goods, and the record shows that appellant was insistent that appellee desist from the use of .the same. It now bases its grounds of defense upon the faet that appellee was not using the word at the time it filed the petition. Although no definite dates were given, the testimony is positive that the petitioner used the term “Ensemble” on its goods.

We think the record sufficiently shows that appellee was a proper party in interest to file a petition, and that its allegation and proof show the injury contemplated by the statute.

According to the contention of appellant, in order for appellee to be in a position to cancel the illegally registered mark (which, of course, appellant contends is valid), it was necessary for the appellee to show that it had braved all the dangers of infringement suits and was using the mark at,the time it filed the petition.

This contention is entirely plausible, if applied to a valid mark, the ownership and use of which is in question, but, since we conclude, as the commissioner concluded, that the mark is descriptive within the meaning of the statute, appellant’s contention that it must be shown that appellee used the descriptive mark on the day it filed its petition is wholly untenable. Words merely descriptive of goods to be sold, not being subject to exclusive appropriation and ownership, do not have to be used in a trade-mark manner in connection with goods in interstate commerce in order to entitle anyone to their use, and one who desires to use the same obviously does not have to assert ownership or facts from which ownership may be determined.

As long as the word “Ensemble” is a registered trade-mark, it is a threat, not only against the party who manufactures and sells merchandise like that of the parties to this suit, but to all who buy of them for the purpose of resale. Its continuance as a registered trade-mark, which mark appellant urges is prima facie legal, thus has the tendency to interfere with and hamper the commerce of the country and the clearly defined rights of tradesmen. See Electro Steel Co. v. Lindenberg Steel Co., 43 App. D. C. 270, 5 T. M. R. 295.

That appellee was not required to show use on the date the petition was filed, and that the record shows injury to appellee, and its right to petition is supported by Andrews Radio Co. v. Timmons Radio Products Corp., supra; Elishewitz v. Leyser Green Co., 47 App. D. C. 193, 8 T. M. R. 34; Hydraulic Press Brick Co. v. Hocking Valley Products Co. (D. C. Sup.) 120 MS. Dec. 196, 7 T. M. R. 155; Electro Steel Co. v. Lindenberg Steel Co., supra. While we are of the opinion that the petitioner was not required to show that he used the term on the date the petition was filed, he is, of course, required to show a statement of facts from which it may he found that he was being injured at that time. He would have no right to complain about the registration of the offending mark if, at the time he filed his petition, he was not being injured by it. Elishewitz v. Leyser Green Co., supra.

In the Andrews Radio Co. Case, supra, it was held that it was sufficient for the appellant to show that he had used the mark in describing the article. ■

In the Elishewitz Case, supra, the Court of Appeals of the District of Columbia, in an opinion by Mr. Justice Robb, sustained the action of the commissioner in canceling' the registration of the mark and said: “* * * The petitioner for cancelation shows injury by the registration, though injury will be presumed to follow the improper registration of any descriptive word.”

In Hydraulic Press Brick Co. v. Hocking Valley Products Co., supra, the commissioner, in canceling the descriptive trademark “Rug” for bricks, held: * * Use by the petitioner in a descriptive sense is sufficient. ' It is enough that the petitioner may be injured by the claim of exclusive right and in faet the injury is sufficiently established in this instance, the petitioner having been sued in the supreme court of the District of Columbia for infringement.”

The ease most analogous to the case at bar is Electro Steel Co. v. Lindenberg Steel Co., supra, which affirmed the action of the commissioner in canceling the descriptive trademark “Electro” as applied to steel. The court, in a very well considered opinion by Mr. Justice Shepard, held the word “Electro” to be descriptive and said: “* * * Should registrants be permitted to retain their registration they would be in a position to prevent others from applying said mark to steel manufactured in the electric furnace, and would he in a position to institute expensive and troublesome litigation, basing their suits upon said registration, and attacking both the petitioner’s purchasing trade, as well as the purchasing public in general, and they would be in a position to threaten and intimidate the purchasing public. In this (way the business of petitioner would be seriously and permanently damaged ; its sales of ‘electro’ steel would necessarily fall off, and the purchasing public would be at a loss how to identify or designate the steel manufactured in the electric furnace, without circumlocution, if they wished to purchase such steel from other than registrants, and the trade and business of petitioner would be seriously injured were the registrants to be allowed to retain their registration of the word ‘electro.’ ” (Italics ours.)

The court further said:

“* * * It is contended that the petitioner fails to show that it has ever affixed on its goods the word ‘electro’ as a trademark or as a description of the goods, and has had, consequently, no such use of the word as would give it standing in this proceeding.
“It is quite true that to have a right to cancel or oppose the registration of a trademark is dependent upon a showing of interest. McIlhenny Sons Co. v. New Iberia Tobasco Pepper Co., 30 App. D. C. 337, 339 [133 O. G. 995; 1908 C. D. 325].
“It is not essential in all eases, however, that there should have been a strictly trademark use of the words by complainant. Injury to its business might be otherwise shown. Natural Food Co. v. Williams, 30 App. D. C. 348, 350 [133 O. G. 232; 1908 C. D. 320.]”

Appellant in support of its contention that the petitioner should show that it used the term at the time of filing the petition relies upon McIlhenny’s Sons Co. v. New Iberia Tobasco Pepper Co., 30 App. D. C. 337, which it styles /‘the leading ease.” We have no quarrel with the holding in the McIlhenny Case. In that ease we find the following, which is quoted in appellant’s brief:

“The right of the petitioner to intervene was dependent upon a showing of interest. The statute does not contemplate that anyone may petition the Commissioner to cancel a trade-mark regularly registered, but it does provide that anyone who ‘shall deem himself injured’ may do so. The petition, therefore, must contain a statement of fact on this jurisdictional question, sufficiently full to show that the petitioner has been injured by the registry of the mark he seeks to have canceled; and this fact must not be. left to conjecture, but must affirmatively appear. » * *
“The petition of the appellee does not contain an averment that it had used the word ‘Tobasco’ as a trademark for pepper sauce. The averment that it had used the word as a trademark is not sufficient, for the obvious reason that, unless the word had been used in the same business as that in which it was used by appellant, no injury contemplated by the statute would have resulted and no right to intervene would have followed.”

In the McIlhenny Case, supra, appellant was complaining about being damaged in the use of its trade-mark “Tobasco.” It claimed to have used the word “Tobasco” as a trade-mark. Therefore, since the petitioner in that ease claimed a trade-mark right, it was important to show facts to sustain such a right.

The commissioner’s decision in this ease has fully distinguished between the proof required in a ease where the petitioner claims a trade-mark right,, and the proof required in a ease where the trade-mark is descriptive, ■ and the petitioner seeks only to preserve its right to use same in a descriptive way, and his decision is sound.

The decision of the Commissioner of Patents is affirmed.

Affirmed.

HATFIELD, Associate Judge

(dissenting).

The majority opinion holds that, in a case of this character, although it is necessary that injury be established as of the date of the filing of the petition for cancellation, a petitioner need not establish that, at that' time, he was using the registered mark, nor one similar thereto, in a trade-mark sense or otherwise, nor that he was prevented from so doing by the registration of which he complains. If that is so, then a petitioner is not required to show legal injury. On the contrary, it is sufficient if he allege and prove that he thinks, or possibly imagines, that he has been, or may be, injured by the registration of an alleged trade-mark.

The doctrine upon which the court bases its decision is not only in defiance of the plain mandates of the statute—section 16 of the Trade-Mark Act of February 20, 1905, 15 USCA section 96, and this is a purely statutory action—but it is contrary to established procedure in all legal and equitable actions. It is never a matter of mere formality, which a court may waive in its discretion, to require a party to a suit, either in Taw or m equity, to establish facts essential to his right to relief. Of course, in a case where it is obvious, as in the ease at bar, that a registered trade-mark is descriptive, the decision can do no harm. However, in close eases, and in those where the marks are obviously not descriptive, an owner of a registered trade-mark may be harassed by petitions for the cancellation of trade-mark registrations.

In the instant case the petitioner failed to show any legal or other interest in the registered trade-mark, but was content to submit the case upon the testimony of its attorney of record, who- apparently had but little, if any, knowledge of the issues raised by the petition for cancellation.

I have read the record with care, and, although it is alleged in appellee’s petition for cancellation that it had continuously used the word “Ensemble” to describe its goods since the year 1924 to the date of filing its application, in my opinion, there is absolutely no evidence, nor any admission by appellant, to establish that appellee was using the registered mark in a descriptive sense or otherwise at the time it filed its application.

It is argued by counsel for appellee, and agreed to by the majority of the court, that appellant is estopped to deny that appellee was using the registered mark at the time it filed its application, because of the suit commenced by appellant in the United States District Court, on or about October 6, 1926, and withdrawn by appellant on October 7, 1927, about three and one-half months prior to the filing of appellee’s application for cancellation.

It is sufficient to say in this connection that appellee’s application for cancellation was filed more than two years after appellant filed his bill of complaint in the District Court, and that, although it may be presumed that appellee was using the mark at the time the suit was instituted, there is nothing in the record to show that it used the registered mark at any tijne thereafter.

Only four of the eases cited in the majority opinion appear to have any bearing on the issues in this case.

In the Andrews Radio Co. Case, the Commissioner of Patents held that it was sufficient for a petitioner for cancellation of a registered descriptive mark to establish that he had used the mark, the time of such use apparently being immaterial.

In the case of Elishewitz v. Leyser Green Co., 47 App. D. C. 193, 8 T. M. R. 34, the court affirmed the decision of the Commissioner of Patents holding that the registered trade-mark “Leghornette” for use on hats was descriptive. In his decision, the commissioner, among other things, said: “The petitioner for cancelation shows injury by the registration, though injury will'be presumed to follow the improper registration of any descriptive word.” No authorities were cited in support of the commissioner’s holding, nor was the matter discussed in his opinion. The Court of Appeals gave no expression of approval of the quoted language, but concurred in the proposition that the- registered mark was descriptive. The question now before us was apparently not considered by the Court of Appeals. In any event, it was not discussed in the court’s decision.

In the case of Electro Steel Co. v. Lindenberg Steel Co., 43 App. D. C. 270, 5 T. M. R. 295, referred to in the majority opinion as the “ease most analogous to the case at bar” the Court of Appeals held that it was not necessary to establish on the trial in a trade-mark cancellation proceeding, involving a descriptive mark, that the petitioner had “ever affixed on its goods the word ‘Electro’ as a trademark or as a description of the goods,” and that it was “not essential in all cases” that “there should have been a strictly trademark qse of the words by complainant,” but that “Injury to its business might be otherwise shown.” (Italics mine.) The court cited the case of Natural Food Co. v. Williams, 30 App. D. C. 348, in support of its holding.

The court was obviously right. In such cases it is necessary only that the petitioner show that he was using the registered mark in a descriptive sense in connection with his goods. It is not necessary that he show a strictly trade-mark use or that the mark was affixed to his goods.

In the case of McIlhenny’s Son v. New Iberia Extract of Tobasco Pepper Co., Limited, 30 App. D. C. 337, the Court of Appeals of the District of Columbia held that the right of a party to petition for the cancellation of a registered trade-mark was dependent upon a showing of interest, and that he must allege in his petition, and establish by competent evidence on the trial, sufficient facts “on this jurisdictional question” to show that he has “been injured by registry of the mark he seeks to have canceled.” It is true that the court there said: “The petition of the appellee does not contain an averment that it had used the word ‘Tobaseo’ as a trademark for pepper sauce.”- (Italics ours.)

In the case at bar, the commissioner construed the decision in the Mcllhenny’s Son Case to mean that, if it is alleged in a petition for cancellation and established on the trial that the petitioner had used the registered mark at any time, the statutory requirements have been complied with, and he is not required to allege and establish use of the registered mark at the time of the filing of his petition.

As I understand the decision in that case, the court held that, unless a petitioner for cancellation of a registered trade-mark alleged in his petition and established on the trial that he had used the registered mark on goods of the same descriptive properties, and had an interest in the. mark not common to the general publie, the tribunals of the Patent Office had no authority to cancel the registration. If the decision in that case was sound, and I have no doubt that it was, a petitioner for cancellation must, in order to show an interest in the registered mark not common to the general publie, allege in his petition, and establish by competent evidence on the trial, that he was using the registered mark, or one confusingly similar thereto, on, or, under some circumstances, in connection with, goods of the same descriptive properties as those covered by the registration, at the time of the filing of his petition. In no other way could he show an interest in the mark not common to the general public or establish that he was “injured” within the statutory meaning of that term.

It is true that this court, in the case of Skookum Packers’ Ass’n v. Pacific Northwest Canning Co., 45 F.(2d) 912, 18 C. C. P. A.-, held, in accordance with the decisions of this eourt in eases therein cited, that, in an opposition proceeding, the Patent Office tribunals had authority to dispose of any question relating to the proposed registration that might properly be considered in an ex parte ease.

That decision was based upon the mandates of section 7 of the Trade-Mark Act of February 20, 1905,15 USCA § 87, which provides, in part, that the Commissioner of Patents + * shall direct the examiner in charge of interferences to determine the question of the right of registration to such trade-mark, and of the sufficiency of objections to registration. * * *” (Italics ours.)

Section 7, however, has no application to eases involving the cancellation of registered trade-marks.

Section 13 of that act (15 USCA § 93) reads as follows: “Sec. 13. That whenever any person shall deem himself ’ injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. The commissioner shall refer such application to the examiner in charge of interferences, who is empowered to hear and determine this question and who shall give notice thereof to the registrant. If it appear after a hearing before the examiner that the registrant was not entitled to the use of the mark at the date of his application for registration thereof, or that the mark is not used by the registrant, or has been abandoned, and the examiner shall so decide, the commissioner shall cancel the registration. Appeal may be taken to the commissioner in person from the decision of examiner of interferences.”

It will be observed that section 13 provides that, whenever a person deems himself injured, he may at any time apply to the commissioner to cancel a registered trademark; and that the commissioner shall refer the application to the Examiner of Interferences “who is empowered to hear- and determine this question.” (Italics ours.) Obviously, the first question to be decided is the question of injury to the petitioner by virtue of the registration of a trade-mark.

Furthermore, section 16 of that act (15 USCA § 96) provides that “the registration of a trade-mark under the provisions of this act shall be prima facie evidence of ownership.” Accordingly, the registration of a trade-mark descriptive or otherwise, is prima facie evidence of ownership, and, in a proceeding to cancel the registered mark, the statutory authority of the Patent Office tribunals is, in my opinion, limited to the disposition of issues properly raised inter partes.

In the case at bar, appellee properly alleged in its petition that it was using the registered mark at the time it filed its application. This allegation was denied in appellant’s answer and, as no evidence was submitted to substantiate the truth of that allegation, there was nothing under the law for the Patent Office tribunals to do but to refuse to cancel the registered mark.

For the reasons stated, I am of opinion that the decision of the Commissioner of Patents should be reversed.

LENROOT, Associate Judge, concurs in the above dissent.


author: LENROOT, Associate Judge.

text:
    VAN AUKEN v. CUMMINGS.
    Patent Appeal No. 2690.
    Court of Customs and Patent Appeals.
    April 22, 1931.
    Walter H. Pumphrey, of New York City (John.B. Brady, of Washington, D. C., of counsel), for appellant.
    Harry E. Seidel, of Washington, D. C., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENRO'OT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office in an interference proceeding. Said decision awarded priority of invention to appellee, reversing the decision of the Examiner of Interferences, who awarded priority of invention to appellant’s assignor, hereinafter called the appellant.

The invention relates to a gauge for indicating the volume of gasolipe in the fuel tank of an automobile. The issue is stated in three counts, which read as follows:

“1. In apparatus of the class described, a liquid holding tank, means forming an inclosed chamber, a connection for creating a partial vacuum in said chamber, means affording communication between said chamber and the liquid in said tank at the minimum level to be gaged whereby the liquid may be drawn into said chamber by the vacuum existing therein, a valve for regulating the degree of vacuum in said chamber, and means responsive to the rise of liquid in said chamber for controlling said valve.
“2.‘ A liquid gage including a tank, a float chamber above the liquid level in the tank, a liquid conduit having its lower end submerged in the liquid in the tank and its other end in communication with the float chamber and providing a constant communication therebetween, a vacuum connection whereby a condition of low pressure may be set up in the chamber, causing flow of liquid from the tank through the conduit and into the float chamber, a float in the chamber means actuated in accordance with the position of the float for regulating pressure within the float chamber, and means controlled by the float chamber pressure for indicating the liquid level in the tank, substantially as described.
“3. An apparatus for indieating the height of liquid in a tank, comprising the combination, with a tank adapted to contain liquid, of a chamber smaller in horizontal area than the tank and extending upward and downward throughout the range of levels to be indicated, said chamber having a liquid connection with said tank at a low level relatively to said range of levels, a vacuum connection whereby a condition of low pressure may be set up in the chamber, means controlled by rise of liquid in said chamber for limiting the degree of vacuum possible to be obtained therein, an indicator operable by difference between internal and external fluid pressures, and means whereby said indicator is coupled with that part of said chamber in which a vacuum is thus produced.”

Appellant filed Ms application on October 30,1919, and the application of appellee was filed on March 22, 1922. Appellant is, therefore, the senior party, and the burden was upon appellee to establish priority of invention by a preponderance of evidence.

Appellant took no testimony, and he is accordingly restricted to.his filing date for conception and reduction to practice.

Appellee took testimony, and established that on March 22, 1919, he filed an application in the Patent Office, which application disclosed the invention embodied in the counts here in issue. On December 6, 1920, the Primary Examiner held said application was abandoned on the ground that no full responsive amendment had been made within the period of one year from the office action of April 25, 1919.

Both tribunals of the Patent Office held that appellee was entitled to the filing d^te of his first application, March 22, 1919, for conception of the invention, but that such filing did not constitute a reduction to practice. No error is assigned upon the rilling giving appellee said date of March 22, 1919', for conception of the invention.

There are two questions before us for determination-:

(1) Did appellee reduce the invention to practice prior to appellant’s filing date?
(2) If the first question be determined in the negative, was appellee diligent in reducing the invention to practice at the time of appellant’s filing date, and thereafter until hereduced to practice?

With regard to the first question, there is no corroboration of appellee’s testimony that the invention was successfully operated by him prior to appellant’s filing date, October 30, 1919.

The Board of Appeals found that the evidence established that the invention was successfully tested by appellee at least as early as June, 1920, that he was entitled to this date for reduction to practice, and that appellee was chargeable with diligence from just prior to October 30, 1919, appellant’s filing date, to June, 1920.

As to appellee having reduced the invention to practice as early as June, 1920, this depends upon whether or not appellee’s téstimony to that effect was corroborated by the witnesses MeEwen and appellee’s brother.

The witness MeEwen testified that appellee disclosed to him a gasoline gauge for automobiles in the early part of 1919; that “it was essentially a hydrostatic principle rather than a mechanical one, and for the balancing of pressure and making indications of pressure”; that he saw parts of the apparatus in the laboratory; that he saw the complete invention in use on a car and saw it work at various times throughout the year 1920; that, the “visible part consisted of two glass tubes, exposed glass tubes, that were part of the manometer, contained liquid, partly filled with liquid,”

With regard to the operation of the device, the witness testified as follows:

“ * * * There were two manometer tubes, two glass tubes I suppose, one at a certain level, corresponding to the mark made, and then after a certain amount of gasoline had been used the liquid in the other tube would disappear and then return. There was a periodic pulsation corresponding to certain changes of level so that you could watch it, and, in fact, I did watch that, indicating that the level had changed by a certain amount since the previous tripping of the valve. During the time that I made these observations I noted that the device was m the process of development.” (Italics ours.)

He further testified as follows:

“Q. During this period covered by process of development, do you recall Mr. Cummings having experienced any material difficulty with some part or another? A. Yes; there was leakage, I recall particularly, and the float would stick at times, and that float was in process of further development.”

With regard to the devices constructed by appellee and placed by him upon his ear, appellee testified that: “I used them on my own car for experimental purposes and to find out all I eould about the best way in which to construct them.”

Appellee’s brother testified that in June, 1920, he visited appellee, who drove Mm about in his ear, in which appellee had installed his device; that the only part of the device that he saw was as it appeared on the instrument board, a calibrated glass tube with the liquid rising or falling with the fluctuation of the amount of gasoline in the tank; that appellee, however, explained the principle of the device to him by means of a rough drawing. The witness further testified that, in addition to seeing appellee in June, 1920, he saw him in December, 1920, in the fall of 1921, and in the early spring of 1922, that upon all of these occasions the witness discussed the invention with appellee, and that appellee stated to him that he had not been able to fully perfect the invention because of the condition of his health.

There is no testimony that either McEwen or appellee’s brother ever examined the quantity of gasoline in the tank to determine whether the device did, in fact, register even approximately the amount of gasoline therein. Both evidently assumed that the fluctuations of the liquid in the glass tubes indicated the fluctuations in the amount of gasoline in the tank, but, in view of the testimony of McEwen that there was leakage and that the float would stick at times, we do not think that such assumption is proper.

Appellee himself admitted that there was occasionally trouble caused by leakage and also with the float used in the device. The more serious trouble seems to have been with the float, and this was so serious that it caused appellee temporarily to abandon a material part of the invention embodied in the counts in issue, viz. the automatic principle of having the liqflid itself become the' means of regulating the vacuum.

In appellee’s letter to his patent attorneys under date of January 15, 1921, which is in evidence, he said:

a * * • j j^ve, however, found some difficulty in getting positive operation of the float in opening and closing the ports. Whether the difficulty could be remedied or not by better mechanical work than I have yet been able to procure I do not know, but I have decided, at least for the time being, to abandon the automatic principle, and to open and close the ports by hand, as may be required.”

He then explains in the letter his new idea, which, if carried to completion, would, it seems to us, have been a different invention than that here in issue, though having some common elements. He further states in the letter: “I have almost completed a model according to this new principle and believe I shall have determined its practicability within the next two weeks. * * * ”

Appellee testified that he experimented for several months in attempting to perfect this idea, but that he finally determined to go back to the idea of having the liquid itself become the means of regulating the vacuum, as embodied in the counts here in issue, and he finally devised the hinge type of float set out in his application filed on March 22, 1922.

We feel compelled to conclude from the evidence produced that appellee has not established by a preponderance of evidence a reduction to practice of the invention in issue prior to his filing date of March 22,1922. This conclusion is strengthened by the fact that, although his 19191 application was pending at the date of his claimed reduction to practice, he nevertheless failed to prosecute said application, and it therefore became abandoned; the application here involved being filed on March 22, 1922.

While it is true that reduction to practice does not require a device embodying the invention to be mechanically perfect, or a commercial success, its practical efficacy and utility must be demonstrated. Burson v. Vogel, 29 App. D. C. 388.

The purpose of the device here in question was to indicate upon the dashboard of an automobile, at least approximately, the amount of gasoline in the tank. In order to constitute a reduction to practice, the evidence must show that it was demonstrated that the device was operative for this purpose. Leakage or lack of operativeness of the float might well be destructive of the utility of the device. Apparently the improvement of the float used by appellee to secure the desired result was not merely a matter of mechanical skill because, according to appellee’s testimony, he worked for a period of two years upon this problem, and for a period of several months abandoned it entirely, and endeavored to perfect another device of a similar nature, but which was not automatic in operation. However this may be, it appears that the operation of the float in his experimental device presented such difficulty that he completely abandoned the device here involved for several months. This, to us, is very significant, and strongly indicates that the experimental device did not operate in such a way as to constitute a reduction to practice.

Having held that there was no reduction to practice of the invention established by appellee prior to March 22, 1922, the next, question is whether appellee was diligent in reducing the invention to practice from immediately prior to October 30, 19191, appellant’s filing date, to March 22, 1922, appellee’s filing date.

Appellee testified that his eyes were injured in 1918 in war work at the Edgewood Arsenal, Md.; that such disability continued during the entire period in question, and greatly increased in the early summer of 1919 to the fall of 1924, although there were intervals in which he could use them more than at other times; that it was necessary for him to continue work at the Seripps Institution in order to make a living, and for that reason he was unable to apply himself to perfecting the invention in issue for commercial use to the extent that he would have but for such disability. He testified as follows:

* * I could work slowly and in the course of several months could get as much done as I might ordinarily do in a very few weeks, of the type of work which did not pertain directly to my livelihood.”

He also testified to a disability of dysentery which was cured in September, 1922.

His testimony with regard to his eye disability was corroborated by the witness MeEwen and by' appellee’s brother, and we think it is established that such disability prevented him from proceeding as rapidly in perfecting the invention as he otherwise would have been able to do. We cannot, however, hold that he was diligent in reducing his invention to practice frpm immediately prior to October 19, 1919, to March 22, 1922, his filing date, a period of two and one-half years, especially in view of his own testimony that for a period of several months he abandoned the particular device responding to the counts here involved, and devoted himself to experiments with a device that required the opening and closing of the ports by hand, and did not have the automatic principle of having the liquid itself become the means of regulating the vacuum.

In the ease of Lotterhand v. Hanson, 23 App. D. C. 372, it was held that:

“ * * * To delay one invention for the sake of another projected invention to be used in connection with it, and which may never be realized, cannot in patent law be construed as an exercise of due diligence.”

We are of the opinion that the decision of the Examiner of Interferences, awarding priority of invention to appellant, was correct, and the decision of the Board of Appeals is reversed.

Reversed.