text:
    LOUIE LUNG GOOEY v. NAGLE, Commissioner of Immigration.
    No. 6367.
    Circuit Court of Appeals, Ninth Circuit.
    May 18, 1931.
    Joseph E. Isaacs and Alan H. Critcher, both of San Francisco, Cal., for appellant.
    George J. Hatfield, U. S. Atty., and William A. O’Brien, Asst. U. S. Atty., both of San Francisco, Cal., for appellee.
    Before RUDKIN, WILBUR, and SAWTELLE, Circuit Judges.
   SAWTELLE, Circuit Judge.

This is an appeal from an order of the District Court for the Southern Division of the Northern District of California denying appellant’s petition for a writ of habeas corpus. Louie Shaw Gim claimed admission to the United States on the ground that he was the son of Louie Lung Gooey, whose citizenship was established in 1909. Admission was denied by a Board of Special Inquiry, and the excluding decision was affirmed by the Secretary of Labor on appeal. To review that decision habeas corpus proceedings were instituted in the court below,

Appellant contends that Louie Shaw Gim was denied a fair hearing in that the personnel of the Board of Special Inquiry was changed during the course of the heaping. The Board is an administrative board and not a judicial tribunal, and such changes are within its powers and do not affect the validity of its decisions. Unfairness and arbitrariness do not necessarily follow from the fact that the membership was changed during the time the hearing of the applicant was in progress. “There is nothing in the petition in the present case to indicate that at the final hearing all the testimony taken in prior hearings was not considered by three members of the board in disposing of the question of the appellant’s right to enter the United States.” Hom Moon’Ong v. Nagle, 32 F.(2d) 470, 472 (C. C. A. 9). See, also, Dong Ting Fun v. Nagle, 5 F.(2d) 310 (C. C. A. 9).

Appellant contends that applicant was further denied a fair hearing in that the members of the Board, after examining the applicant and his alleged father together, asserted that there was some resemblance in the physical appearance of the two, but refused to make that a basis of admission. “Clearly resemblance does not necessarily establish the relationship here asserted, for not infrequently there is a strong resemblance between more distant relatives.” Wong Som Yin v. Nagle, 37 F.(2d) 893, 894 (C. C. A. 9).

Appellant maintains also that the Board of Special Inquiry acted arbitrarily in reaching its conclusions, but we find nothing in the record to support this contention. We cannot too often repeat that, in immigration cases of this character brought before us for review, the question is not whether we, with the same facts before us originally, might have found differently from the Board; rather is it a question of determining simply whether or not the hearing was conducted with due regai-d to those rights of the applicant that are embraced in the phrase “due process of law.” Tang Tun v. Edsell, 223 U. S. 673, 32 S. Ct. 359, 363, 56 L. Ed. 606. Even if we were firmly convinced that the Board’s decision was wrong, if it were shown that they had not acted arbitrarily, but had reached their conclusions after a fair consideration of all the facts presented, we should have no recourse. “The denial of a fair hearing cannot be established by proving that the decision was wrong.” Chin Yow v. United States, 208 U. S. 8, 28 S. Ct. 201, 203, 52 L. Ed. 369.

The record in the ease shows that the testimony of the father and that of the alleged son were in accord with regard to such matters as the names and birthdates of the children of Louie Lung Gooey, with regard to the parents of Louie Lung Gooey and their five children,' with regard to a description of the family village Leung On in China, and with regard to many of the details of family life on which applicants are usually questioned. But they disagreed in the following particulars: With regard to the last visit of the father to China in 1925-26, the petitioner testified that the two little girls slept in the girls’ house in the village, while Louie Shaw Gim said that no such house existed, and that the girls slept in the room with their parents; petitioner testified that on the last visit to China he made a few trips of several days’ duration away from home, while the alleged son testified that he did not; petitioner testified that the watch tower was finished before he arrived home, whereas Louie Shaw Gim testified that the watch tower was built while his “father” was at home; the petitioner testified that there were sockets in the threshold of the gates of the village m which to set poles, and the son testified that there were no such sockets. Another factor which may have influenced the mind of the Board was the fact that at the time the applicant applied for admission into the United States he had blood relatives living in San Francisco who knew of. the claimed relationship, but who Were not called as witnesses. When asked about this, the petitioner said that he had called his friend, and not his relatives, as a witness because the former had testified for him on a previous occasion and “we are very good friends.”

The record shows no overwhelming weight of evidence, no facts presented to reject which “would be equivalent to a refusal to hear them at all, and would be a flagrant disregard of the fundamental principles for the administration of justice.” Gung You v. Nagle, 34 F.(2d) 848, 850, (C. C. A. 9).

The question of decisions of Boards of Special Inquiry based on the development of discrepancies has been considered by this court so often that we deem it unnecessary to go into a more prolonged discussion. See Go Lun v. Nagle (C. C. A.) 22 F.(2d) 246; Gung You v. Nagle, supra; Hom Chung v. Nagle (C. C. A.) 41 F.(2d) 126; Louie Poy Hok v. Nagle (C. C. A.) 48 F.(2d) 753.

Judgment affirmed.

WILBUR, Circuit Judge, concurs.


source: Caselaw Access Project

author: BRYAN, Circuit Judge.

license: Public Domain

text:
    ARNOLD STONE CO., Inc., v. FEDERAL TRADE COMMISSION.
    No. 6139.
    Circuit Court of Appeals, Fifth Circuit.
    May 25, 1931.

      F. C. Hillyer, of Jacksonville, Fla., for petitioner.
    Robt. E. Healy, Chief Counsel, Federal Trade Commission, Martin A. Morrison, Asst. Chief Counsel, Federal Trade Commission, and Robert H. Winn, Sp. Atty., Federal Trade Commission, all of Washington, D. C., for respondent.
    Before BRYAN, SIBLEY, and HUTCHESON, Circuit Judges.
   BRYAN, Circuit Judge.

This is a petition to set aside an order of the Federal Trade Commission. The Arnold Stone Company, petitioner, is and for a number of years has been engaged in the business of manufacturing building materials composed of about 75 per cent, crushed natural stone, such as granite or marble, and about 25 per cent. Portland cement. These materials are cast in molds or forms, and after the mixture hardens it is subjected to .various surface treatments by hand or machinery. They are not kept in stock, but are made to order according to specifications for use in the construction of buildings. The principal product so manufactured is designated by petitioner in its advertisements, bids, and contracts as “east stone” or “cut cast stone.” Other products it designates by the terms “Kre-tex stone,” “Kre-tex east stone,” and “pink marble.” The commission filed its complaint against petitioner alleging that the terms it employed to describe its various products were misleading- and deceptive, and that the practice of using each of them constituted an unfair method of competition within the intent and meaning of section 5 of the ,Aet of September 26, 1914, 15 USCA § 45. It was shown by undisputed evidence that petitioner’s principal product was called and known as “cast stone” or “cut cast stone” by architects, contractors, builders, building-material men, chemical engineers, scientists, by several branches of the government, including the Treasury Department, the Bureau of Standards, and by manufacturers of similar products throughout the country. And the commission in its findings of fact said that there was no evidence of actual deception; that petitioner’s products were usually purchased by architects, contractors, and builders, who testified they were not deceived, and that “possibility of deception in such instances is remote”; but that the use of the word “stone” or “marble” in describing petitioner’s products “has the capacity and tendency to mislead, deceive or confuse the purchasing public, and particularly such secondary purchasers of completed buildings, or lessees of completed buildings or parts thereof» in which buildings respondent’s products have been used.” The commission also found that “Kre-tex” was a meaningless word taken from the two words “concrete” and “texture.” Upon these findings of fact the commission ordered petitioner to cease and desist from use of the words theretofore used by it to designate its manufactured products unless and until it qualified those words by prefixing the additional word “imitation,” “artificial,” or some other word equally explanatory.

There was no testimony which tended to show that the words “pink marble” or “Kre-tex stone” deceived anybody. Certainly, according to all the testimony ánd the commission’s finding of fact, none of the words employed by petitioner to describe any of its manufactured products or materials had the effect of misleading or deceiving architects, contractors, or builders who were the only classes of persons to whom petitioner sold or offered to sell any of such products or materials. It was made equally clear by undisputed evidence that petitioner’s competitors used the words “east stone” and “cut cast stone” to describe similar products and materials manufactured and sold by them. The sum and substance of all the evidence was that the words “cast stone” were understood by petitioner’s prospective customers and by its competitors to mean just such a product as petitioner manufactured and sold. None of them understood that by the use of these words it was intended to describe stone in its natural state. In the building trade, in which it is exclusively used, cast stone has come to mean a genuine manufactured article composed of crushed natural stone and cement; and to qualify it by the word “imitation” or “artificial,” as required by the Commission’s order, would convey the meaning that it was not a genuine manufactured article. But to sustain the commission’s order reliance is had on its finding that a purchaser or lessee of a completed building, in the construction of which petitioner’s products had been used, might be misled or deceived. That finding or inference is not supported by any testimony, and at best is founded upon a very remote possibility for the occurrence of which it is difficult to conceive that petitioner would be responsible. The commission is authorized to act only in the public interest, and to justify it in filing a complaint that publie interest must be specific and substantial. Federal Trade Commission v. Klesner, 280 U. S. 19, 28, 50 S. Ct. 1, 74 L. Ed. 138, 68 A. L. R. 838. The remote possibility or fanciful theory of private injury is not enough to authorize the commission to issue an order to cease and desist from a business practice which cannot reasonably be said to constitute an unfair method of competition.

The petition for review is granted, and the cause remanded for further proceedings not inconsistent with this opinion.


text:
    MUTUAL LIFE INS. CO. OF NEW YORK v. TABB et al.
    No. 6172.
    Circuit Court of Appeals, Fifth Circuit.
    May 25, 1931.
    J. Harvey Thompson, of Jackson, Miss. (Robert H. Thompson, of Jackson, Miss., and Frederick L. Allen, of New York City, on the brief), for appellant.
    Thomas L. Haman, of Houston, Miss., for appellees.
    Before BRYAN, SIBLEY, and HUTCHESON, Circuit Judges.
   BRYAN, Circuit Judge.

The Mutual Life Insurance Company of New York issued a policy of insurance on the life of Henry J. Bullard, payable to his estate. There was attached to the policy, and made a part of the’insurance contract, a written application signed by Bullard which provided: “The proposed policy shall not take effect unless and until delivered to and received by the Insured, the Beneficiary or by the person who herein agrees to pay the premiums, during the Insured’s continuance in good health and unless and until the first premium shall have been, paid during 'The Insured’s continuance in good health; except in case a conditional receipt shall have been issued as hereinafter provided.” The application was signed on February 15, 1929; and Bullard died on March 21 following. The policy was dated February 20,1929; and, for reasons hereinafter to be stated, was mailed by the district manager to one Fred Dulaney, who received it about March 10, at which time Bullard to his knowledge was not in good health, but was confined to his bed, suffering from a serious illness from which he never recovered. Within a day or two after receiving the policy, Dulaney mailed a check in payment of the first premium to the district manager of the insurance company, and on March 15 called on Bullard for the purpose of having the policy assigned to James P. Tabb to secure a debt. Dulaney testified that Bullard was so sick that Mrs. Bullard, at his direction, executed the assignment. This suit was brought by Bullard’s widow as administratrix of his estate, and by Tabb as assignee of the policy. In view of the admitted faet that the policy was not delivered and the first premium paid during Bullard’s continuance in good health, recovery was sought on the theory that the policy became effective from the date of the application under a conditional receipt clause contained in it which reads as follows: “$-in cash has bpen paid to the Soliciting Agent and a conditional receipt No.-, signed by the Secretary of the Company, and countersigned by the agent, has been issued making the insurance in force from this date, provided this application shall be approved.” In support of that theory, it was necessary to prove that Dulaney was the agent of the insurance company, and that as such it was his duty to issue the conditional receipt. At the close of the evidence, the district judge denied a motion for a directed verdict, and charged the jury that the proof was sufficient under the law of Mississippi to show that Dulaney was the agent of the insurance company, and as such, had received the first premium, with th'e result that the insurance was in force from the date of the application. Under that instruction, Bullard’s illness at the time the policy was delivered to Dulaney was not a defense to the suit. The trial resulted in a verdict and judgment for the plaintiffs in the action.

Bullard was induced by Tabb, to whom he was indebted,' to apply for the insurance and to pledge the policy when received as security for the debt. Tabb was vice president and Dulaney was cashier of a bank at Houston, Miss. Tabb instructed Dulaney to procure the insurance, to pay the first premium, and to charge the amount thereof to his account. Dulaney was not an insurance agent, but, acting under Tabb’s instructions, he got into communication with appellant’s district manager, who took Bullard’s application. The district manager did not ask or receive from Bullard the amount of the first premium, for the reason that Dulaney told him he would pay it; nor did Dulaney pay, or offer to pay, the first premium until after he had received the policy.

We are of opinion that under the circumstances developed by the evidence it was error to refuse to grant appellant’s motion for a directed verdict. The policy was not delivered while Bullard was in good health, and therefore, under the terms of the insurance contract, did not take effect, unless it was put in force from the date of the application by the clause thereof which provides for the issuance of a conditional receipt. That clause was not filled in, but the spaces provided for writing in the amount of cash received and the number of the conditional receipt were left blank; and quite naturally so, for the district manager who took the application received no cash and no conditional receipt bad been issued. It would not be argued, we assume, that the presence of that clause in the printed form of the application, left blank as it was, was intended to have or had any binding effect upon the insurance company, except for the contentions that Dulaney was appellant’s agent, and as suoh had available sufficient funds of Tabb to pay the first premium. Dulaney was not in faet appellant’s agent; in everything he did he was acting as agent for Tabb. He was not directed by Tabb to pay tbe first premium before he received the policy. As Tabb’s agent, he received the policy through the mail, and afterwards paid the premium and procured the assignment from Bullard. He did not solicit the insurance, deliver the policy, col-: lect the premium, or do any act or thing on behalf of appellant. He is therefore not to be deemed in law appellant’s agent by reason of any provision contained in section 5873 of Hemingway’s Code of Mississippi, the object of which is to preclude insurance companies from denying that persons aeting at their instance or request are their agents. The view we take of the ease on the question of agency renders it unnecessary to consider other assignments of error.

The judgment is reversed, and the cause remanded for further proceedings not inconsistent with this opinion.


author: WALKER, Circuit Judge.

text:
    MONROE v. PROPHET et al.
    No. 5944.
    Circuit Court of Appeals, Fifth Circuit.
    May 28, 1931.
    Geo. E. Holland, of Beaumont, Tex. (Geo. E. Holland, of Beaumont, Tex., Samuel Fine, of New York City, and Holland & Cousins, of Beaumont, Tex., on the brief), for appellant.
    J. Llewellyn, of Liberty, Tex. (J. Llewellyn and E. B. Pickett, Jr., both of Liberty, Tex., on the brief), for appellees.
    Before BRYAN, FOSTER, and WALKER, Circuit Judges.
   WALKER, Circuit Judge.

In 1889 Wesley Monroe acquired an undivided interest in a tract of land in Liberty county, Tex., in the partition of whieh in 1902 a described 213-acre tract was set aside to Wesley Monroe, who died in 1908. Thereafter it was discovered that that land contained oil. By his bill in equity in this case the appellant claimed that he was part owner of the last-mentioned tract and of the oil therein and which had been extracted therefrom, whieh claim was sought to be supported on the grounds that Wesley Monroe was appellant’s father, that at the time an undivided interest in the first-mentioned tract was acquired by Wesley Monroe the relation of husband and wife existed between him and appellant’s mother, whose maiden name was Georgiana Johnson, with a result that the interest acquired by Wesley Monroe was community property to one-half of whieh appellant’s mother became entitled, and that appellant, the only child of his mother, who died in 1898, was entitled by inheritance to her one-half interest in the last-mentioned tract, and to a share of the one-half interest therein of Wesley Monroe, who left surviving him other children by another marriage. The answer to appellant’s bill put in issue its allegations to the effect that Wesley Monroe was appellant’s father, and the claims asserted by the bill were resisted on the grounds that appellant’s mother was never the wife of Wesley Monroe either by the rule of the common law or under statutes of Texas, and that, if appellant in fact is a son of Wesley Monroe* he is an illegitimate child, and did not inherit any interest in said property from WesT ley Monroe. Upon the conclusion of the evidence, much of whieh was testimony of witnesses given in the presence of the presiding judge, he announced the conclusions that the evidence showed to his satisfaction that appellant is the natural son of Wesley Monroe, but that the evidence failed to show a marriáge relation between Wesley Monroe and appellant’s mother; and a decree rejecting the above-mentioned claims of the appellant was rendered.

Wesley Monroe and appellant’s mother were negroes. Prior to, and at the time of, appellant’s birth, Wesley Monroe, Georgiana Johnson, and her parents, Ben Johnson and his wife, lived on the same farm, Ben Johnson, his wife and children occupying one house on that place, and Wesley Monroe (who was also called Monroe Wes) occupying a smaller house located a few feet from the other one. No evidence indicated that there was any semblance of the existence of the marital relation between Wesley Monroe and Georgiana Johnson prior to the discovery by the latter’s parents before appellant’s birth that she was pregnant. As to whether after that discovery Wesley Monroe and appellant’s mother did or did not cohabit as husband and wife, did or did not hold themselves out as man and wife, did or did not treat each other as such, and were or were not generally reputed to be married, the evidence was greatly conflicting. It is not open to question that there was evidence, including testimony given orally in open court, some of it by witnesses examined in behalf of the appellant, which tended to prove the following: After Georgiana’s parents discovered that she was pregnant, they spoke to Wesley Monroe on the subject, and he acknowledged that he was responsible for her condition, and said he would take care of her and the child. * Thereafter he did contribute to the support of appellant’s mother and appellant, but Wesley Monroe and appellant’s mother were never married, never claimed to be man and wife, and were not reputed to be husband and wife by their relatives and acquaintances who were aware of their conduct towards each other. Georgiana did not adopt Wesley Monroe’s name, but continued to be known only by the name Georgiana Johnson until she married another man. The appellant was called Ilder Johnson. When he was married in 1914, he obtained a license for the marriage of Ilder Johnson and Hattie Sexton. When he was married a second time in 1920, the license obtained was for a marriage between Ilder Johnson and Beulah Woodrow. He did not call himself, and was not known as, Hder Johnson Monroe until after the discovery of oil in the land in question. While both Wesley Monroe and appellant’s mother were living, each of them, without any divorce, married another person, and they held themselves out, and were reputed to be, the marital spouses of the persons with whom they contracted marriages.

The relation between Wesley Monroe and appellant’s mother confessedly having been illicit in its inception, and there being no evidence that they were formally or ceremonially married, the conclusion that they became husband and wife by a common-law marriage could not properly be reached, unless it is supported either by direct evidence that they mutually agreed to be husband and wife during the remainder of their lives, and thereafter lived together as husband and wife, and so held themselves out to the public, or by evidence that they lived together as man and wife, recognizing and treating each other as such, and were generally reputed to be husband and wife in the society or neighborhood of which they were members. Clayton v. Haywood, 63 Tex. Civ. App. 571, 133 S. W. 1082; Schwingle v. Keifer (Tex. Civ. App.) 135 S. W. 194; Whitaker v. Shenault (Tex. Civ. App.) 172 S. W. 202; Edelstein v. Brown, 35 Tex. Civ. App. 625, 80 S. W. 1027; Maryland v. Baldwin, 112 H. S. 490, 5 S. Ct. 278, 28 L. Ed. 822; Travers v. Reinhardt, 205 U. S. 423, 27 S. Ct. 563, 51 L. Ed. 865; 38 C. J. 1316, 1318, 1341. A phase of the evidence, including testimony of witnesses examined in the presence of the presiding judge, distinctly negatived the conclusion that the relation of husband and wife existed at any time between Wesley Monroe and appellant’s mother. This being so, though there was other evidence tending to prove the existence of the marital relation between Wesley Monroe and appellant’s mother, the conclusion of the court below that the evidence failed to show the existence of that relation between them is not subject to be set aside, the record by no means indicating that the preponderance of the evidence was against that conclusion. Erom that conclusion it followed that the claims asserted by appellant’s bill were not sustained.

The decree is affirmed.


author: BINGHAM, Circuit Judge.

text:
    ACEVEDO v. UNITED STATES.
    No. 2478.
    Circuit Court of Appeals, First Circuit.
    May 28, 1931.
    ANDERSON, Circuit Judge, dissenting.
    Benieio Sanchez, of San Juan, Porto Rico, for appellant.
    A. Chesley York, Asst. U. S. Atty, of Boston, Mass. (John L. Gay, U. S. Atty., and Jose Ramon Quinones, Asst. U. S. Atty., both of San Juan, Porto Rico, on the brief), for the-United States.
    Before BINGHAM, ANDERSON, and WILSON, Circuit Judges.
   BINGHAM, Circuit Judge.

This is an appeal from a judgment of the Eederal District Court of Porto Rico sentencing the defendant, appellant, to imprisonment for a year and a day in the penitentiary at Atlanta, Ga.

The defendant was tried on an indictment charging that, on the 14th day of November, 1928, he was duly adjudged a bankrupt on an involuntary petition and that later, on the 16th day of January, 1928, Rafael Dominguez was appointed trustee of his estate, qualified as such, and entered upon his duties as trustee. The indictment contained three counts.

In the first count it was charged that the defendant, having been adjudged a bankrupt as aforesaid and the trustee having been duly appointed, knowingly and fraudulently concealed while a bankrupt from the trustee a Chrysler automobile, license No. 961, belonging to his estate in bankruptcy, and that, after the appointment and qualification of the trustee he continued to fraudulently conceal the automobile, with intent to defraud his creditors, etc.

In the second count he was charged in like manner with knowingly and fraudulently concealing the sum of $630, more or less, it being a part of the assets of his estate, as a merchant.

In the third count the charge was the concealment of certain goods, wares, and merchandise of the aggregate value of $2,500, more or less, being a part of a stock of goods held by him as a merchant.

The jury returned a verdict in which they found “the defendant guilty as charged in the indictment” and the court entered judgment thereon sentencing the defendant as above stated.

The errors assigned are that the court erred in the admission of certain evidence; in refusing to strike from the record certain evidence; in not directing a verdict for the defendant; in denying his motion in arrest of judgment; and in entering judgment upon the verdict.

The only exception to evidence here relied upon, and which it is claimed the court erroneously admitted and afterwards refused to strike from the record, was given by one Quintana, a witness for the government, to the effect that, during the month of October, 1928, he saw the defendant and had a conversation with him at a meeting of his creditors in the Chamber of Commerce at San Juan; and that, at that time, the defendant stated to the witness that he had a branch store on Comerio street in Bayamon; that he had a sufficient supply of merchandise in that store; that two brothers of his were in charge of this branch store; and that, at times when the witness was present at the defendant’s main store in Bayamon, he had seen part of the merchandise that would arrive there sent to the branch store on Comerio street.

The defendant takes nothing by this assignment of error, either as to the reception of the evidence or the refusal to strike it from the record. It was all competent upon the question of whether or not the defendant owned the store and the stock of goods at Comerio street, which concerned the charge in the third count of concealing his goods.

The ground relied upon in the assignment that the court erred in denying defendant’s motion in arrest of judgment is that the indictment is duplicitous — that in it are joined three distinct offenses. It is true that the offenses charged in the indictment are distinct, but it is not true that all three offenses are charged in a single count. There are three counts, and each count charges a distinct offense. The transactions were all of the same class of crimes and were properly joined in one indictment as separate counts. Rev. St. § 1024 (18 ÜSCA § 557).

The main question in the ease is whether there is any substantial evidence from which the jury could fihd the defendant guilty on any one or all of the counts. We think there was no evidence to warrant a verdict of guilty upon either the first or second count.

The first count charged the unlawful concealment of a Chrysler automobile. The evidence as to that tended to prove that in September, 1928, the defendant made a conditional sale of the automobile to one Jose Pares; that he returned it in the schedule of his property to the bankruptcy court; and that, on the request of the trustee, he caused it to be turned over to the trustee.

The second count charged the defendant with concealing $630 belonging to the estate in bankruptcy. There was evidence that there was due his estate an account receivable for about $630, for goods sold by the defendant as a merchant to another merchant; but the evidence from a witness introduced by the government was that this account had not been paid the defendant and was still owing. It is true that there was evidence that while the bankruptcy proceedings were pending and after the trustee had been appointed, a brother of the defendant had collected $10 of this account, but there was no evidence that the defendant knew of this or that he ever received any of the money. There was no count charging ,the concealment of accounts receivable.

But, as to the third count, charging the defendant with concealing merchandise, the evidence showed that the defendant, shortly before he was adjudged a bankrupt, stated that the branch store with its stock of goods at Comerio street was his, and that it was in charge of his two brothers. There was also evidence that, on the arrival of the goods at his main store in Bayamon, some of the goods so arriving would be sent to the branch store on Comerio street; also, that the trustee in bankruptcy, after he was appointed, instituted a proceeding against the brothers in charge of the branch store to show cause why they should not turn over the merchandise to him as a part of the bankrupt’s estate; and that they turned it over. By what right these brothers were withholding the merchandise in the Comerio street store from the trustee was not disclosed; they were not called and did not testify. The only evidence in relation to that was given by an attorney, acting for the brothers in the 'order to show cause proceeding. In his testimony he stated no ground of claim in behalf of these brothers. The substance of what he testified to was that after hearing the testimony before the referee on the motion or proceeding to show cause, he advised the two brothers to turn over the property, which they did, and that they could then proceed by a plenary bill. There was also evidence that the defendant did not return the merchandise in the store at Comerio street in his bankruptcy schedules. The jury might find from this evidence that the merchandise at the Comerio street store belonged to the bankrupt’s estate and that the defendant, by not returning it in his schedules, was undertaking to conceal it from the trustee in bankruptcy.

There is nothing in the record on which to base the assignment that the court erred in entering judgment against the defendant on the verdict. The charge to the jury is not reported. It is, therefore, to be presumed that they were properly instructed; and, as the counts charged distinct offenses, that they were told to consider each count and the evidenee relating thereto separately. It is also to be presumed, there being nothing in the record to the contrary, that the jury, in their deliberations, passed upon each count separately in reaching their verdict. This being so, the sentence imposed was proper, if there was evidence to support a finding of guilt on any one of the counts. See Commonwealth v. Carey, 103 Mass. 214, 216.

The indictment was seasonably brought. Section 29d of the Bankruptcy Act of 1898, as amended by Act May 27, 1926, § 11 (11 USCA§ 52(d).

The judgment of the District Court is affirmed.

ANDERSON, Circuit Judge, dissents.


author: FOSTER, Circuit Judge.

text:
    COLQUITT et al. v. ROXANA PETROLEUM CORPORATION et al.

    No. 5676.
    Circuit Court of Appeals, Fifth Circuit.
    May 23, 1931.
    James Cornell, of San Angelo, Tex., W. A. Keeling, of Austin, Tex., J. G. MeGrady, of El Paso, Tex., L. W. Elliott, of Sonora, Tex., T. W. Gregory, of Houston, Tex., and Brian Montague, of Del Rio, Tex. (Le Grand J. Woods, of San Angelo, Tex., on the brief), for appellants.
    Chas. A. Holden and J. H. Maxey, both of Tulsa-, OkL, Guy A. Thompson and W. K. Koemer, both of St. Louis, Mo-., Henry G. Russell, of Pecos, Tex., Esmond Phelps, of New Orleans, La., Truman Post Young and John M. Holmes, both of St. Louis, Mo. (Thompson, Mitchell, Thompson & Young, of St. Louis, Mo., and Spencer, Gidiere, Phelps & Dunbar, of New Orleans, La., on the brief), for appellees.
    Before FOSTER, Circuit Judge, and HUTCHESON and SIBLEY, District Judges.

      Rehearing denied July 7, 1931.

   FOSTER, Circuit Judge.

Appellee filed a bill in equity to remove a cloud on its title to certain oil and gas leases, to quiet its title thereto, and to enjoin future interference therewith. From a decree granting the relief prayed for this appeal is prosecuted. The contentions of the parties and the facts are extensively reviewed in the opinion of the District Court. Roxana Petroleum Corporation v. Colquitt, 34 F.(2d) 479. We refer to that opinion with approval and very little in addition need be said.

Briefly stated, it appears that Mrs. M. A. Smith, widow of John Monroe, was the owner of a considerable tract of land in Pecos county, Tex., over 21,009 acres, known as the Monroe ranch. She was married to Smith in July, 1917, and thereafter she made oil and gas leases of a large part of the property including those after acquired by appellee. In proceedings in a state eo-urt her children alleged that she was insane when she made the conveyances of her land and prayed for the setting aside of the conveyances. Colquitt was appointed receiver of Mrs. Smith’s property by the state court and he brought some seventy-odd suits to set aside various conveyances made by her. He did not bring suit against appellee. However, a notice of lis pendens was recorded, as were also two powers of attorney to James Cornell, authorizing him to bring such suits, to compromise claims, and execute new leases. A number of settlements were made in these suits.

In the ease at har a special master was appointed and in due course he filed his report, finding that Mrs. Smith was not non compos mentis at the time the various conveyances were made and that appellee had • good and valid title to the leases in question. After a hearing on this report the District Court affirmed the master. The report of the master is supported by the evidence in the record and, having been affirmed by the District Court, must be given effect. Mason v. United States, 260 U. S. 545, 43 S. Ct. 200, 67 L. Ed. 396.

There is no doubt that the proceedings in the state court, coupled with the filing of record of the notice of lis pendens and powers of attorney, constitute a cloud upon appellee’s title, seriously affecting its merchantable character, and the District Court had jurisdiction in equity to grant relief. Sharon v. Tucker, 144 U. S. 533, 12 S. Ct. 720, 36 L. Ed. 532; Blair v. City of Chicago, 201 U. S. 400, 26 S. Ct. 427, 50 L. Ed. 801; Hopkins v. Walker, 244 U. S. 486, 37 S. Ct. 711; 61 L. Ed. 1270, Other decisions to the same effect might be cited, but it is unnecessary to do so.

The record presents no reversible error.

Affirmed.


author: CHASE, Circuit Judge.

text:
    THE JAMES McWILLIAMS. NEW JERSEY SHIPBUILDING & DREDGING CO. (MERCHANTS MARINE INS. CO., Limited, et al., Interveners) v. JAMES McWILLIAMS BLUE LINE, Inc.
    No. 378.
    Circuit Court of Appeals, Second Circuit.
    May 18, 1931.
    Leo J. Curren, of New York City, for appellant.
    Alexander, Ash & Jones, of New York City (Edward Ash, of New York City, of counsel), for libelant-appellee.
    Barry, Wainwright, Thacher & Symmers, of New York City (Earle Farwell and Joseph M. Brush, both of New York City, of counsel), for interveners-appellees.
    ' Before MANTON, L. HAND, and CHASE, Circuit Judges.
   CHASE, Circuit Judge.

This appeal relates wholly to costs in the District Court. The libelant had a decree there which was, on appeal, reversed with half costs to the appellant. See The James MeWilliams (C. C. A.) 42 F.(2d) 130. The original decree had contained an item allowed for detention which was held to have been improperly proved. An opportunity was provided for the libelant to offer proof in the District Court in support of its detention claim in accordance with the principles held to be applicable to such proof. It did not see fit to avail itself of this opportunity, but delayed until that court entered an order dismissing its claim unless it proceeded to prove it within a time fixed. As the libel-ant did not comply with the terms of this order and offered no proof within the time limited, its claim was finally dismissed. Thereafter such, proceedings were had that a final decree was entered for the libelant awarding to it only the damages to which it had been held to have been entitled on the evidence originally introduced. This decree, however, provided that it recover the same costs that were allowed to it in the original District Court decree which had contained as a substantial part of the award the item for detention that eventually was disallowed in toto. Thus it appears that, although the, libelant was defeated in the District Court in respect to a substantial part of its claim, it has nevertheless been there awarded in full the costs occasioned by its first and only' unsuccessful attempt to prove detention damages.

The matter of the allowance of costs in actions in admiralty rests in the sound discretion of the court, and furthermore the District Court is not deprived of its discretionary power, on remand in the absence of anything in the mandate to the contrary. The Ada (C. C. A.) 255 F. 50; Romeike v. Romeike et al. (C. C. A.) 251 F. 273. It is impossible on this record to comprehend the basis of the allowance of full costs in the decree below. However that may be, it is certain that this is nothing but an appeal from a decree for costs. No other question is before us. In The Ada, supra, the actual decision was put upon another ground, but, as the denial of costs to the prevailing party on the dismissal of the libel had been the incentive for the appeal, it was said, perhaps obiter, that, if it had pertained to costs alone, it would likewise have been dismissed. At any rate, the law was correctly stated. Canter v. American Ins. Co., 3 Pet. 307, 319, 7 L. Ed. 688; Harmony v. United States, 2 How. 210, 11 L. Ed. 239; Sizer v. Many, 16 How. 98, 14 L. Ed. 861; City Nat. Bank v. Hunter, 152 U. S. 512, 516, 14 S. Ct. 675, 38 L. Ed. 534; Du Bois v. Kirk, 158 U. S. 58, 15 S. Ct. 729, 39 L. Ed. 895.

Appeal dismissed.


text:
    LUCAS, Commissioner of Internal Revenue, v. WOFFORD.
    No. 6009.
    Circuit Court of Appeals, Fifth Circuit.
    May 20, 1931.
    G. A. Youngquist, Asst. Atty. Gen., Se-wall Key and Norman D. Keller, Sp. Assts. to Atty. Gen., and C. M. Charest, Gen. Counsel, Bureau Internal Revenue and R. N. Shaw, Sp.' Atty. Bureau Internal Revenue, both of Washington, D. C. (J. Louis Monarch and J. P. Jackson, Sp. Assts. to Atty. Gen., on the brief), for petitioner.
    Geo. W. Yancey, of Birmingham, Ala. (London, Yancey & Brower, of Birmingham, Ala., on the brief), for respondent.
    Before BRYAN, SIBLEY, and HUTCHESON, Circuit Judges.
   BRYAN, Circuit Judge.

This is a petition by the Commissioner of Internal Revenue to review a decision of the Board of Tax Appeals allowing the respondent taxpayer, in computing his net income for the year 1920, to deduct an amount which he paid as a fee to his attorney for services in connection with certain proposed legislation designed to fix standards of motor fuel for the state of Alabama based on tests of high-grade gasoline. 15 B. T. A. 1225.

G. T. Wofford, the respondent, during the taxable year was engaged in the state of Alabama in the business of buying and selling gasoline, oils, greases, etc., and also of selling a motor fuel known as Woeo Pep which contained benzol as well as gasoline. The selling of Woeo Pep, because of its ingredients, would have been prohibited in Alabama by the proposed legislation. Wofford employed an attorney who prepared a bill under which Woeo Pep could be sold without being subjected to the standard test proposed for high-grade gasoline. The attorney appeared before the Governor, Attorney General, and various committees of the Legislature, explained and advocated the passage of the bill which he had drawn, and that bill was enacted into law. He was not employed or expected to do more than he did.

The amount of the fee charged and paid is conceded to have been reasonable, but the deduction of that amount is opposed by the Commissioner on the ground that it was not an ordinary and necessary expense of respondent’s business. The Revenue Act of 1918, § 234 (a) (1), 40 Stat. 1077, which is applicable here, allows as deductions in computing net incomes “all the ordinary and necessary expenses paid or incurred during the taxable year in carrying on any trade-or business.”

Respondent would not have been permitted to sell the motor fuel known as Woco Pep if it had not been exempted from"'the standard test prescribed for gasoline by the proposed legislation. It was reasonably necessary to employ counsel. The fee was directly connected with respondent’s business, and was therefore a business expense. Kornhauser v. United States, 276 U. S. 145, 48 S. Ct. 219, 72 L. Ed. 505. It is suggested by petitioner that the fee was not deductible-because it was spent for lobbying purposes. The attorney was employed, not to secure the passage or defeat of any legislation, but to represent, by argument in a public and legitimate manner, to the Governor and to the legislative committees the injurious effect the legislation first proposed would have upon the respondent’s business. Neither what was agreed to be done nor what was actually done constituted lobbying. Drummond v. Steele (C. C. A.) IIP. (2d) 595.

The petition for review is denied.


text:
    SOUTH VERNON OIL CO. v. HOPKINS, Collector of Internal Revenue.
    No. 5967.
    Circuit Court of Appeals, Fifth Circuit.
    May 16, 1931.
    L. E. Cahill and W. Leo Austin, both of Tulsa, Okl., and F. B. Walker, of Fort Worth, Tex., for appellant.
    Norman A. Dodge, U. S. Atty., of Fort Worth, Tex., and Wright Matthews, Sp. Atty., Bureau Internal Revenue, of Washington, D. C. (C. M. Charest, Gen. Counsel, Bureau of Internal Revenue, of Washington, D. C., on the brief), for appellee.
    Before BRYAN, FOSTER, and SIBLEY, Circuit Judges.
   BRYAN, Circuit Judge.

Appellant, after making a sale by assignment of its entire interest in an oil and gas lease, paid on demand its income tax on the profits realized from the sale without deduction being made for depletion of the lease. Upon its request for refund being refused, it brought this action, the trial of which resulted in a judgment for appellee, collector of internal revenue.

Appellant bases its claim to an allowance for depletion upon section 204 (e) (2) of the Revenue Act of 1926, 44 Stat. 16, 26 US CA § 935 (e) (2), which provides: “In the ease of oil and gas wells the allowance for depletion shall be 27% per centum of the gross income from the property during the taxable year.” This court has held, in construing section 214 (a) (10) of the Revenue Act of 1921 (42 Stat. 241), which provides that in computing net income there shall be allowed as deductions in ease of oil and gas wells “a reasonable allowance for depletion,” that the deduction is for the benefit of the lessor, lessee, or other person having an interest in the lease, but that no deduction was intended or authorized in favor of a taxpayer after he had sold his lease and m> longer had an interest in it. Waller v. Commissioner (C. C. A.) 40 F.(2d) 892; Herald v. Commissioner (C. C. A.) 42 F.(2d) 942. See, also, Pugh v. Commissioner (C. C. A.) 49 F.(2d) 76. We still adhere to those decisions; for one who has ceased to have any interest in property suffers no loss by reason of its depletion or depreciation in value. The principle of these decisions applies equally to the provision for depletion contained in the Revenue Act of 1926, which only substitutes a definite percentage of gross income for the “reasonable” allowance for depletion prescribed by the earlier revenue act.

The judgment is affirmed.


author: HATFIELD, Associate Judge.

text:
    LARSON et al. v. EICHER.
    Patent Appeal No. 2738.
    Court of Customs and Patent Appeals.
    June 1, 1931.
    Mock & Blum, of New York City (C. R. Allen, Asher Blum, and Hugo Mock, all of New York City, of counsel), for appellants.
    Wallace R. Lane, of Chicago, 111. (William S. Hodges, of Washington, D. C., and Louis A. Bisson, of Chicago, 111., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATPIELD, GARRETT, and LENROOT, Associate Judges.
   HATFIELD, Associate Judge.

This is an appeal in an interference proceeding ‘from the decision of the Board of Appeals of the United States Patent Office affirming the decision of the Examiner of Interferences awarding priority of invention to the senior party, Benjamin L. Eieher.

The invention relates to a method of forming a dry medicinal agent, containing active extracted ingredients of cod liver oil, and to cod liver oil tablets.

Counts 1 and 4 are illustrative. They read:

“1. A method of forming a dry medicinal agent containing active extracted ingredients of cod-liver oil, which consists in causing a solution of sai4 active ingredients to come into contact with a porous inert carrier which is insoluble in water, and allowing the solvent in said solution to evaporate at a temperature below 100° C.”
“4. A medicinal agent comprising a porous inert carrier insoluble in water and containing the absorbed residue from an evaporated solution of the active ingredients of cod-liver oil.”

Appellee, Eieher, the senior party, filed an application on May 12,1924, which matured ■ into patent No. 1,542,549, September 8,1925, involving the subject-matter of this interference. Thereafter, on January 15, 1926, appellee filed an application for reissue of his patent.

Appellants, Larson and Campbell, the junior parties, filed their application December 16, 1924.

Considerable evidence was submitted by the parties. In view of the fact that it has been carefully analyzed and considered by both the Examiner of Interferences and the Board of Appeals, we deem it unnecessary to enter into a detailed discussion of it here.

It appears from the record that, during the first six months of 1918 and the last six months of "1919, appellee was employed as superintendent and research chemist by the Standard Laboratories, Ine., of Chicago, 111., which company was engaged in the manufacture of pharmaceuticals; that in July, 1918, he left the Standard Laboratories, Ine., and joined the army; that he was in the army for a period of about nine months, during which time he was engaged as a chemist in a picric acid plant; that he was discharged from the army on or about March 4,1919, and again employed as a chemist by the Standard Laboratories, Inc.; that in December of that year he severed his connections with the Standard Laboratories, Ine., and organized the B. L. Eieher Company, for the purpose of manufacturing toilet articles and cosmetics for the Pearl La Sage Company of Chicago, 111.; that Alexander 0. Hupfeld and Walter S. Hupfeld, brothers, were the principal owners of the Pearl La Sage Company, and also owned practically all of the stock of the B. L. Eieher Company; that, in addition to manufacturing the Pearl La Sage Company’s products, appellee was engaged in making medicinal tablets of various kinds; that in March or April, 1920, appellee conceived the method of making the so-called cod liver oil tablets, and immediately disclosed his invention to the witness Carroll Cherry; that during March or April, 1920, he made a “batch” of about 3,500 tablets; that he gave some of them to a few physicians -and druggists, and received two or three favorable reports; that in December, 1920, or in January, 1921, he made a second “batch” of cod liver oil tablets for tbe purpose of having the Steams & White Company handle them in a commercial way; that> although the Steams & White Company was interested, it was in financial difficulties and was unable at that time to enter into any arrangement with appellee; that some of the tablets were given to physicians, but no reports were received from any of them; that in January, 1922, appellee entered the employ of the Steams & White Company as manager, and in January of that year made the third “batch” of cod liver oil tablets, consisting of from 21,000 to 28,000; and that a price sheet was prepared and published by the Stearns & White Company, and the tablets were manufactured and sold to the trade, at least, as early as September, 1923.

It dearly appears from the testimony of the witnesses Alexander O. Hupfeld and Walter S. Hupfeld that appellee was engaged in the manufacture of cod liver oil tablets in 1920. Neither of them, however, knew the formula used by appellee.

The witness Carroll E. Cherry testified that he was secretary of the B. L. Eieher Company from February 1 to June 1, 1920, and that, in March or April of that year, appellee made cod liver oil tablets composed of aetive extractives of cod liver oil, powdered charcoal, and other ingredients. The witness stated that he was sure of the time because he was then in an aneemic condition, and that appellee gave him some of the tablets for his personal use. In this connection, he said:

“A. Well, possibly the thing that fixes it in my mind more than anything else is the fact that I was suffering at that time from an anaemic condition and Mr. Eieher suggested that he was experimenting at that time with something that would largely .correct that condition in a person, asked me if I had ever taken cod liver oil, and I stated that I had not, it was so nauseating to me; and he said that was just what he was endeavoring to overcome, he was working on a preparation to contain cod liver oil in sufficient content and something that would make it less distasteful to a person taking it.
“Q. 34. Did he give you some cod liver oil tablets to take? A. - Yes.”

He further stated that he saw appellee make the cod liver oil tablets in March or April, 1920, and also described the process of manufacture and the appearance of the tablets.

The witness Willis E. Black testified that he was a chemist residing in Baltimore, Md.; that, in the fall of 1920, and in the early part of 1921, he was employed as an assistant chemist by the B. L. Eieher Company, and assisted in the manufacture of pharmaceuticals, tablets, ete.; and that he assisted appellee in making cod liver oil tablets some time during the latter part of December, 1920, or the early part of January, 1921. He described appellee’s method of manufacture, and the resultant product, as follows:

“A. These tablets consisted of an absorbent material; the oils being dissolved in a volatile vehicle. This was then mixed with the absorbent material which was put aside to let the volatile matter volatilize. I don’t remember the other ingredients. These tablets were chocolate-coated.
“Q. 9. Do you recall what absorbent and what volatile vehicle was used? A. The absorbent was charcoal; and the volatile vehicle was ether.”

On cross-examination, he said that appellee had used cod liver oil and cod liver oil extract; that he knew he was working with a cod liver oil extract because the bottles in which the extract was contained were «so labeled; and that he left-the B. L. Eieher Company shortly thereafter and did not know what disposition had been made of the tablets.

In his decision, the Examiner of Interferences held that it was necessary, in order to reduce the invention to practice, to subject the tablets to actual tests to determine whether they possessed therapeutic value; that appellee was entitled to the date of March or April, 1920, for conception; that, as the tablets had been sold to the trade as,early as September 1,1923, it would be presumed that the invention had been reduced to practice prior to that time, and that appellee was entitled to a date as early as September 1,1923, for reduction to practice; that appellants had conceived the invention in May, 1921, and, as they had sold cod liver oil tablets to the trade as early as September, 1922, they were entitled to that date for reduction to practice; and that therefore appellee was the first to conceive and the last to reduce to practice. Then, after stating and -analyzing the testimony, he held that appellee was diligent from the time appellants entered the field, May, 1921, until he reduced the invention to practice, and accordingly was entitled to an award of priority.

The Board of Appeals disagreed with the Examiner of Interferences with respect to Ms holding that, in order to reduce the invention to practice, it was necessary to subject the tablets to a test to determine whether they possessed therapeutic value, and held that, in order to successfully reduce the invention to practice, it was necessary to determine whether the tablets “could be satisfactorily made to absorb a sufficient quantity of the cod liver oil extract, and this could be determined by quantitative experiments rather than by physiological tests.” The Board concurred in holding, however, that appellee was the first to conceive and the last to reduce the invention to practice; that he was diligent from the time appellants entered the field until he reduced the invention to practice, wMeh, it was said, might be presumed to have occurred, at least, at the time — September 1, 1923 — appellee’s tablets were sold to the trade; and that therefore appellee was entitled to an award of priority.

We are unable to agree with either of the tribunals below relative to the- requirements for a successful reduction of the invention to practice.

It appears from the record that, in the manufacture of Ms tablets, appellee used cod liver oil extracts known as “Gaduol” and “Jeecoral,” wMeh were in extensive use commercially and known to possess therapeutic properties. So the real problem confronting appellee was to put the active extractives of cod liver oil into the form of a dry medicinal agent. Having conceived tMs idea and having actually produced cod liver oil tablets, it was not necessary that any given number of the tablets contain a particular quantity of active extracted ingredients of cod liver oil. The counts are not so limited. Nor was it necessary that appellee exploit'Ms invention in order to complete it.

Appellee was an experienced chemist. He knew the therapeutic value of the ingredients in the tablets he manufactured, and, having successfully performed the involved process, and produced the involved product, which he did in March or April, 1920, he had reduced the invention to practice. Marion M. Harrison and Harold A. Morton v. Sydney M. Cadwell, 39 F.(2d) 704, 17 C. C. P. A. 1024, and eases therein cited; St. John et al. v. Schulze, 47 F.(2d) 798, 18 C. C. P. A.-. Holding these views, it is unnecessary for us to consider the many questions argued by counsel for appellants. .

The evidence of record clearly establishes that appellants conceived the invention in May, 1921, as held by the tribunals below. We think it has also been established that they reduced the invention to practice some time during the summer or fall of 1921. Accordingly, appellee was the first to conceive and the first to reduce the invention to practice, and is therefore entitled to an award of priority.

For the reasons stated, the decision of the Board of Appeals is affirmed.

Affirmed.


author: LENROOT, Associate Judge.

text:
    HOUSE OF TRE-JUR, Inc., v. COMBINE HOSIERY CORPORATION.
    Patent Appeal No. 2747.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Bair, Freeman & Sinclair, of Des Moines, Iowa (W. P. Bair, Will Freeman, and Bari M. Sinclair, all of Des Moines, Iowa, of counsel), for appellant.
    Spencer A. Studwell and Harry A. English, both of New York City, and William G. Henderson, of Washington, D. C., for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal in a trade-mark opposition proceeding in wMeh the Commissioner of Patents, reversing the decision of the Examiner of Trade-Mark Interferences, held that the opposition should be dismissed, and that the applicant, the appellee herein, is entitled to the registration for which it has applied.

Appellee seeks registration of a composite mark, comprising a representation of a ship, having at a masthead the representation of a flag upon which appears the word "Treasure”; across the picture of the ship appears the notation “TreZur,” the top of the “T” being extended over two of the letters and joined to the top of the “Z,” and the bottom of the latter letter extending beneath the two final letters of the notation. The mark is applied to hosiery.

Appellant is a large manufacturer of toilet goods, including cosmetics, perfumes, creams, lotions, etc., upon which it uses the trade-mark “Tre-Jur.” Appellant and its predecessor have used said trade-mark since 1923. Appellee has used its mark since 1927. Appellant was incorporated in the state of New York in 1924 under the name of “House of Tre-Jur, Ine.”

In its notice of opposition, appellant sets forth two statutory grounds of opposition:

1. The confusion-in-trade clause of section 5 of the Trade-Mark Act of February 20, 1905 (15 USCA § 85).
2. The clause in said section (hereinafter called the name-clause) winch provides that no mark which “consists merely in the name of a * * * corporation * * * not written, printed, impressed, or woven in some particular or distinctive manner” shall be registered'under the terms of the act, appellant contending that appellee has appropriated the name of appellant.

The appellant here relies only upon the second of said grounds, conceding, properly we think, that said eonfusion-in-trade clause is not a bar to appellee’s application for registration, in view of the difference in goods to which the two marks are applied.

Both parties took testimony. We think it is established by the testimony that appellee, in adopting its mark, had no intention of appropriating appellant’s corporate name or any part thereof, or of profiting by any similarity between such mark and the corporate name or trade-mark of appellant.

The Examiner of Trade-Mark Interferences held that the goods sold by the respective parties did not possess the same descriptive properties, but held that “Tre-Jur” is the distinguishing feature of appellant’s corporate name, and that purchasers, seeing the mark of appellee, would be likely to infer or assume that the goods to which such mark was affixed originated with appellant. He therefore held that the name-clause of said section 5, the clause here involved, was a bar to the registration applied for.

Upon appeal to the Commissioner of Patents, he concurred in the finding of the examiner as to the different descriptive properties of the goods of the parties. He further found, however, that appellee’s mark was not the complete corporate name of appellant, and .that the rule announced in the case of American Steel Foundries v. Robertson, Commissioner, et al., 269 U. S. 372, 46 S. Ct. 160, 162, 70 L. Ed. 317, was applicable, to wit, that “where less than the whole name has been appropriated, the right of registration will turn upon whether it appears that such partial appropriation is of such character and extent that, under the facts of the particular case, it is calculated to deceive or confuse the publie to the injury of the corporation to which the name belongs.” He then held, upon the authority of said case) that in determining such question it is proper to consider whether the articles upon which the mark is used by the opposer are not of the same descriptive properties as those put out by the applicant, since the probability of such confusion and injury in that situation obviously is more remote than where the articles are of like kind.

The commissioner thereupon held that, considering the difference between appellee’s mark and appellant’s corporate name, and the difference in character of goods sold by the respective parties, a denial of appellee’s application was not justified, and that appellee was entitled to the registration sought.

We agree with the commissioner that the entire name of appellant has not been' appropriated, and that if there be any appropriation at all, it is only of a part of such name.

Appellee contends that its mark “TreZur” does not constitute any part of the corporate name of appellant, and that the name clause of said section 5 does not purport to prevent the registration of marks which merely resemble a part of a corporate name.

Assuming, without deciding, that appellee’s mark may be considered to be a part of the name of appellant, we think that, considering the difference in character of the goods sold by the parties, and the difference between appellee’s mark and appellant’s corporate name, no confusion would result from the use of appellee’s mark, and that appellant would not be injured by such use. We do not think that any person purchasing hosiery bearing the mark “TreZur” would infer that such hosiery was manufactured and sold by the House of Tre-Jur, whose sole business is the manfaeture and sale of toilet goods such as cosmetics, perfumes, lotions, ete.

The decision of the Commissioner of Patents is affirmed.

Affirmed.


text:
    GEORGE H. RUTH CANDY CO., Inc., v. CURTISS CANDY CO.
    Patent Appeal No. 2762.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Cutting, Phillips & Hall, of New York City (Victor W. Cutting and Sylvester J. Liddy, both of New York City, of counsel), for appellant.
    Henry B. Floyd, of Washington, D. C. (Irwin N. Walker, of Chicago,-111., of counsel), for appellee.
    Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges.
   LENROOT, Associate Judge.

This is an appeal from a decision of the Commissioner of Patents in a trade-mark opposition proceeding, reversing a decision of the Examiner of Trade-Mark Interferences, and holding that appellant is not entitled to the registration for which it has applied.

Appellant, on June 2, 1926, filed an application for registration of a mark comprising the words “Ruth’s Home Run” and the nanie “George H. ‘Babe’ Ruth”; the latter being stated to constitute the signature of George H. Ruth, who is well known as a baseball player. In the application it is stated that no claim is made to the exclusive use of the word “Ruth’s” apart from the mark shown. The mark is stated to be applied to candy.

The labels accompanying the application show, in addition to the mark claimed in the application, a picture of the head and shoulders of the ball player, at the lower edge of which appear the words, “Babe Ruth’s Own Candy.”

Appellee sets up adoption and use, through predecessors in business, of the notation “Baby Ruth” as early as 1919, and use continually since said year, upon th'e same class of goods, viz., candy. Ownership of registration of said mark “Baby Ruth” for chocolate coated candy bars is also set up by appellee, said registration having been issued on May 27, 1924.

Both parties took testimony. From such testimony it appears that appellee and its predecessors have continually used the notation “Baby Ruth” upon candy since 1919 ; that appellee’s goods bearing such mark are sold in large quantities in various parts of the country, such sales reaching as high as $1,000,000 per month; and that it has expended several million dollars in advertising its product under said trade-mark.

Appellant alleges no date of adoption and use of its mark prior to April, 1926.

Many questions have been raised by the parties which we find it unnecessary to consider, for the reason that if appellant’s mark so- nearly resembles the mark of appellee as to be likely to cause confusion or mistake in the mind of the public or to deceive purchasers, the decision of the commissioner must be affirmed.

The examiner held that, as the name “George H. ‘Babe’ Ruth” is written in a “particular or distinctive manner,” it is registerable undér the provisos of section 5 of the Trade-Mark Aet of February 20, 1905 (15 USCA § 85), which read as follows: “ * * * Provided, That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or 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, or merely a geographical name or term, shall be registered under the terms of this Aet. ” * * Provided further, That nothing herein shall prevent the registration of a trade-mark otherwise registerable because of its being the name of the applicant or a portion thereof.”

The commissioner held that while the name “George H. Ruth,” so written, would be registerable under said provision, the nickname “Babe” should not be regarded as a part of the name of the athlete George H. Ruth to the extent of permitting registration of it long years after another has used the quite similar word “Baby” in connection with the word “Ruth” as a mark for this common class of goods, and it was upon this ground that the decision of the examiner was reversed.

At the time these decisions were rendered by the Patent Office tribunals, this court had not decided the case of J. B. Williams Co. v. Ernest W. Williams, 48 F.(2d) 398, 400, 18 C. C. P. A. -, in which it was held that a mark “E. W. Williams,” presented in the form of a facsimile signature, used upon an after-shaving cream or lotion, was likely to cause confusion with a registration of the word “Williams,” used upon shaving soap and an after-shaving preparation prior to any use by the appellee, E. W. Williams, of his mark, and therefore its registration was barred by the first proviso of said section 5 (15 USCA § 85).

In that case, this court, after discussing and construing the provisions of said section 5, said: “It seems to us that where one elects to make a technical trade mark use of his own name, that name, for that purpose, becomes dissevered, as it were, from its owner’s personality, and when he seeks to register it under a statutory enactment, it must be tested by precisely the same rules and principles which apply to all other technical trade marks.”

In view of our construction of said section 5, expressed in the Williams Case, supra, it is unnecessary for us to consider whether the nickname “Babe” could be registered as a part of the name of George H. Ruth under said name-clause of section 5 (15 USCA § 85), for we are clear that, assuming that such nickname may be so registered as a part of the name, if such name were otherwise registerable, the name “George H. ‘Babe’ Ruth” is not registerable under the facts in-this case because barred by the first proviso of said section 5 (15 USCA § 85).

That confusion is likely between appellee’s mark, “Baby Ruth,” and appellant’s mark, “Ruth’s Home Run, George H. ‘Babe’ Ruth,” is apparent. It is clear from the testimony that the connection of George H. Ruth with appellant was for the purpose of capitalizing his nickname “Babe” Ruth, used upon candy. Assuming that he is a bona fide stockholder and officer of appellant company, the manner in which the mark was used, as shown by the labels, indicates that the words “Babe Ruth” constitute the part of the mark relied upon by appellant. Moreover, the testimony establishes actual confusion between the marks, and under the doctrine declared in Williams v. Williams, supra, we must hold that appellant’s mark is not registerable.

We would emphasize the fact that the proceeding before us is statutory, and the question of whether appellant has the right to use said mark is not before us. We simply hold, for the reason hereinbefore stated, that appellant’s mark is not registerable under the provisions of said section 5.

Appellant contends that, even though the two marks so closely resemble each other as to be likely to cause confusion in the mind of the public, appellee has not established facts from which damage may be inferred, and therefore the opposition should be dismissed.

We have repeatedly held that, in a trademark opposition proceeding, any question may be disposed of 'relating to the proposed registration that might properly arise in an ex parte ease. California Cyanide Co. v. American Cyanamid Co., 40 F.(2d) 1003, 17 C. C. P. A. 1198; Rose Nerenstone Bookman v. Oakland Chemical Co., 40 F.(2d) 1006, 17 C. C. P. A. 1213.

Upon the reeord before us, it is clear that appellant’s mark is not registerable for the reasons hereinbefore stated, regardless of whether appellee would be damaged by the registration of appellant’s mark. The statute itself forbids registration of a mark which so nearly resembles a registered mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers.

There remains but one other question requiring comment. Appellant charges appellee with unclean hands in the adoption of its mark. It is sufficient to say that this issue is not raised by appellant’s answer to the notice of opposition, and even had it been so raised, the rule is well settled that the validity of appellee’s registered trade-mark will not be considered in a proceeding of this character. Revere Sugar Refinery v. Joseph C. Salvato, 48 F.(2d) 400, 18 C. C. P. A.-, and cases cited.

The decision of the Commissioner of Patents, adjudging that appellant is not entitled to the registration for which it has applied, is affirmed.

Affirmed.


author: GARRETT, Associate Judge.

text:
    In re FARRAND.
    Patent Appeal No. 2760.
    Court of Customs and Patent Appeals.
    May 27, 1931.
    Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis and Dean S. Edmonds, both of New York City, 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.
   GARRETT, Associate Judge.

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner, rejecting six claims in an application for patent on alleged new and useful improvements in sound control apparatus. Two claims were allowed. Of those rejected, No. 14 seems fairly representative: “14. A loudspeaker comprising a support, a dia^ phragm mounted in said support, said diaphragm comprising a large direeUaeting cone and a flexible rim connecting the edge of the cone to the support and forming with the walls of the cone an abrupt bend, and electro-magnetic actuating means for the cone comprising a field magnet having opposed polar faces forming an air gap between them and an armature eo-axially connected with the cone and which is reeiproeable in said air gap in a path parallel with said polar faces.”

Three references are cited, to wit:

Hopkins, 1,271,529, July 2, 1918.
Hopkins, 1,271,527, July 2, 1918.
Siemens (Br.), 4,685, of 1877.

As stated and as shown by the claims, the application relates to sound control apparatus. A physical demonstration before us was of a device used in radio receiving sets. The drawings disclose a loudspeaker having a support-carrying ring to which is attached a conic diaphragm. The diaphragm is eleetro-magnetieally actuated by a coil, said coil being eo-axially connected with the cone or diaphragm by a rod. The coil is movable or floatable in the field of a magnet, produced by a winding of small wire, located in the air gap between a pole member and the core member. The circumferential flange of the diaphragm is rigidly clamped between clamping rings secured to each other by suitable means, as by screws. The diaphragm has a portion which forms, with the cone walls, a bend, thereby constituting a flexible rim for flexibly connecting the conical portion of the diaphragm to the support.

The essential elements of the combination are stated in appellant’s brief to be: “(1) The flexible support for the cone, (2) the large direct acting cone itself and (3) the floating coil or floating armature electrical driving mechanism.”

Claims Nos. 7 and 8 were allowed by the examiner. These had limitations to the floating coil as the electrical driving means, the claims stating the field magnet for said coil to be disposed on the concave side of the cone.

It is conceded that each feature or element of appellant’s combination is shown in the prior art.

The patents to Hopkins show diaphragms and the other features appear in the patent to Siemens, the specification of which contains the following recitations relative to figures 5 and 6 of the Siemens- drawings:

“Instead of an iron diaphragm or a nonmagnetic membrane, having on it an iron disc, nonmagnetic membranes may be employed, as shown in Figs. 5 and 6.
“In the construction, shown by Fig. 5, the vibrating diaphragm is a thin sheet of brass or German silver, to the centre of which is fixed a light coil u, preferably of aluminum. This coil is in an annular magnetic field produced by a powerful horseshoe magnet. When the diaphragm, which is in equilibrium, vibrates, currents are induced in the coil which moves with it, and these currents conveyed to the distant station cause a similar coil there to vibrate with its membrane, reproducing the sound pulses which gave motion to the former coil.
“According to the construction shown by Fig. 6 the coil in the magnetic field is fastened to a membrane, of parchment or other material of trumpet form, to increase the effect of the sound pulses.
“Telephones, like those shown in Figs. 5 and 6-, without iron diaphragms, require powerful magnets, but they reproduce articulated sounds with great distinctness.”

The diaphragms of the Hopkins patents relate primarily to phonographic reproduction and the Siemens patent relates to telephone reproducers.

It is the contention of appellant that, by the combination which he has made of the old elements, he has produced a new and useful result which is patentable, in that (a) his loudspeaker is novel in construction, operation and results; that (b) neither reference discloses the structure, mode of operation, or results obtained by his apparatus; that (e) extensive and important changes would be necessary in the references to secure these; that (d) patentability was recognized by the Patent Office by the allowance of claims 7 and 8; and that (e) his device has proven a great commercial success, having virtually supplanted all others in the radio field. Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U. S. 428, 31 S. Ct. 444, 55 L. Ed. 527, is cited as an authority which should control in the decision of the case.

That appellant has produced an apparatus which is superior to the devices used for the purposes for which his was devised, is doubtless true, but mere improvement without invention is not patentable. The question is: Has he, by his rearrangement of elements, all admittedly old, created something which' gives a novel and useful result and did its creation require invention as distinguished from mechanical skill?

The particular result which is claimed as new and emphasized in appellant’s brief and argument before us, as well as in a brief filed as amicus curiae, under the court’s permission, by counsel for Atwater Kent Manufacturing Company, a licensee of appellant, is that the combination comprises an apparatus which reproduces or transmits low tones or bass notes to an extent and with a success never before attained in the art. Of course, decided improvement in the transmission of all tones or notes is claimed, but the emphasis is placed as stated.

That the contentions with reference to the claimed result as to the low tones received careful consideration by the tribunals of the Patent Office is evident from an examination of their decisions. The case was in the Patent Office for many years, the application was many times amended, and affidavits in support of the claims were filed as permitted by the Patent Office rules.

It- must be said that during the earlier consideration of the application the feature relating to the improved reproduction or transmission of low tones or bass notes as distinguished from the higher tones, or from the better transmission of tones generally, does not seem to have been emphasized as later it came to be.

The specifications do not single out this feature for definite mention, but do recite the following as claimed advantages produced: “The total elastic restoring force, localized in the diaphragm and its flexible rim, may be kept down to that small .and predetermined value that will cause the diaphragm to produce the sound waves directly in the surrounding air without sensible resonant distortion. In other words, the fundamental period of the tympanum will lie far down in the working range of frequencies. The armature by reason of its freedom from elastic restoring force of its own, adds nothing to the elastic restoring force of the diaphragm and does not upset or disturb the advantageous characteristics of the diaphragm.”

The claims, of course, contain no specific statements as to any particular result produced.

It may be further said that the specification, while reciting that the device is usable in the radio art, dwells moré upon its value in the telephone -field, which is the field to which the Siemens patent primarily relates.

The first specific mention of bass notes found in the record is contained in the “remarks” accompanying certain amendments, proposed on July 1, 1927, where it is stated that, following certain experiments by Far-rand : “The first attempts resulted in very weak responses. Moreover, the reproduction was lacking in bass tones.”

The fair inference from the remainder of the argument made in the “remarks” alluded to, is that the defects thus spoken of were remedied by subsequent experiments. We, however, find it stated in these rémarks: “Farrand knew that the paper cone disclosed in the Hopkins patent had been used commercially in phonographs with considerable success. He knew that Hopkins had succeeded in producing a phonographic reproduction of sound which was a marked improvement over anything which preceded him. Hopkins, by utilizing a large conical diaphragm, produced a sound regenerating device of the sounding-board type which regenerated the sound with greater efficiency than the sound-box horn combination, because the distortions inherent in the sound-box horn combination were eliminated. Far-rand sought to obtain a reproduction of sound in the radio art which constituted as much of an improvement in radio reception as the Hopkins sound-reproduction constituted an improvement in the phonograph art.” .

It was probably this statement, coupled with the brief before the Board of Appeals, which led it to say, in its first decision (the case was twice before the board): “He [Far-rand] also knew that the paper cone disclosed in the Hopkins patent had been used commercially in phonographs and realized that when actuated mechanically, as in a phonograph, it produced an adequate volume of sound over a wide range of frequencies such as to include very well the lower as well as the higher frequencies of recorded speech and music.”

In the second decision of the board, rendered January 31, 1930, upon the application which finally, after years of unexplained delay, had reached the form that it now has, the feature of low tone reproduction or transmission was discussed almost exclusively, and the board failed to find any result in appellant’s combination which entitled him to the patent sought upon the claims involved.

We have given the matter careful study in the light of the briefs and argument coupled with the demonstrations given in open court of the workings of the different devices. Had appellant shown satisfactorily that by his combination he had succeeded in evolving a device which reproduced or transmitted low tones and that this feature was lacking in the disclosures of the prior art, we should feel that he had accomplished a new and patentable result, but we are not convinced that such is the ease.

Appellant has doubtless improved the transmission of these low notes just as he has the transmission of the higher notes— perhaps more markedly in the ease of the former — but in both it appears to us to be merely a matter of degree, wrought by “actuating a large cone-shaped diaphragm electrically,” using means old in the art of sound reproduction or transmission, each element of which in its new environment, functions just as it did in its former environment and for precisely the same purpose. The modifications of these old elements requisite to produce appellant’s device were, in our opinion, merely a matter of mechanical skill.

These modifications necessary to produce the device do not so appear in the claims as to prevent them from reading on the prior art and the claims, not the device, ■ constitute the measure of invention. It seems to us that the combination is obvious to persons skilled in the art and, therefore, not nejw or novel in the patentable sense.

Such being the ease, we do not think the doctrine of the “Grant Tire Case,” Diamond Rubber Co. v. Consolidated Rubber Tire Co., supra, and of other eases cited by appellant, such as Webster Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177; and Expanded Metal Co. v. Bradford, 214 U. S. 366, 29 S. Ct. 652, 53 L. Ed. 1034, is controlling.

In the “Grant Tire Case,” supra, the court expressly held that: “ * * * A careful and painstaking study of the Grant patent increases the conviction that the skill and method employed in the selection and the new adjustment was not only intelligent, but that it resulted in something more than a contrivance of which -any skilled mechanic would be capable. Grant studied the correct principle, and he fashioned and adjusted the parts to allow the principle to operate to the best advantage.”

The same conviction does not result from the facts of the instant ease.

The authorities cited by the tribunals of the Patent Office and by the solicitor for the' office are more in point. Hailes v. Van Wormer, 87 U. S. (20 Wall.) 353, 368, 22 L. Ed. 241; Thatcher Heating Co. et al. v. Burtis et al., 121 U. S. 286, 7 S. Ct. 1034, 30 L. Ed. 942; In re Isherwood, 40 F.(2d) 987, 17 C. C. P. A. 1187, and eases therein cited; In re Bayer, 35 F.(2d) 66, 17 C. C. P. A. 614; In re Appleburg, 37 F.(2d) 620, 17 C. C. P. A. 820.

In the Hailes Case, supra (the “stove case”), it was said: “It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results each the complete product of one of the combined elements. Combined results are not necessarily a novel result, nor are they an old result obtained in a new and improved manner.”

Attention has been given to the argument that the Patent Office recognized invention on appellant’s part by granting claims Nos. 7 and 8, and to the insistence that these differ but slightly from the essential features of the pending elaims. The limitations contained in those, elaims have been stated, supra.

The presumption is that it was by rear-son of the limitations contained that the examiner found them patentable, otherwise, it is to be assumed, they would not have been allowed. Since we do not find invention in those in which the limitations are not present, we cannot properly hold that they should be allowed simply upon the basis of the allowance of Nos. 7 and 8.

. If, on the other hand, the limitations did not control and the allowed elaims are, in meaning, virtually identical with those not allowed, then appellant would seem to have practically all the protection which would be derived from an allowance of the elaims in issue.

The argument as to the commercial success of appellant’s device has likewise been given consideration, as has the fact that the “practical art” has taken licenses under the pending application and extensively manufactured appellant’s structure. These things, however, do not establish invention. The most that can be said for the latter is that it evidences the belief on the part of the licensee that the claims may be patentable. As for its wide commercial success, many elements may contribute to that. The fact that it is a successful device doubtless constitutes one of these elements, but trade success and invention are, of course, not synonymous terms in patent law. In re Kirke, 40 F.(2d) 765, 17 C. C. P. A. 1121; In re Lawson, 36 F.(2d) 525, 17 C. C. P. A. 743.

The decision of the Board of Appeals is affirmed.

Affirmed.