[Court of Appeals of the District of Columbia.] IN RE MCNEAL. Decided April 1, 1918. 253 O. G., 955; 47 App. D. C., 600. PATENTABILITY-SAND-DISINTEGRATOR. The appealed claim for a sand-disintegrator compared with the cited art and Held to be unpatentable thereover. Mr. Edwin C. Crawford and Mr. Percy H. Moore for the appellant. Mr. T. A. Hostetler for the Commissioner of Patents. VAN ORSDEL, J.: This appeal is from the decision of the Commissioner of Patents rejecting the following claim: 1. In a disintegrator for sand, the combination of the hopper, two rollers secured in the frame work of the hopper, shafts upon which said rollers are mounted journaled in such frame work, two sprocket wheels different in diameter, mounted on said shafts, and a sprocket chain connecting said sprocket wheels, the hopper in which said shafts are journaled, and the belt connecting one of the shafts with the operating machinery of an engine, substantially as and for the purpose specified. Two references are cited-one a German patent (88,171) to one Gomez, and the other a patent (1,000,913) to one Hovendick. The elements of the claim are present in the Hovendick device. The claim, it will be observed, does not specify that the rollers revolve in the same direction, but, in his specification, appellant describes the rollers as "revolving in the same direction but at different velocities." The rollers in Hovendick's device revolve in opposite directions; but it was held, and properly so, that it did not involve invention to so arrange the sprocket-chain as to revolve the rollers in the same direction at different velocities. Indeed, the patent to Gomez was inserted to demonstrate the old expedient of so arranging the sprocket-chain as to drive the rollers in the same direction. The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed. [Court of Appeals of the District of Columbia.] WILLIAMS V. JOHN B. A. KERN & SONS. Decided March 4, 1918. 254 O. G., 866; 47 App. D. C., 441. 1. TRADE-MARKS-SIMILARITY OF GOODS. Self-raising pancake-flour and cornmeal Held to be goods of the same descriptive properties as flour. 2. SAME-SAME-TEST. The test is not whether a user would make the mistake of using the pancake-flour or the meal for the wheat-flour, but whether he would be likely to purchase the product of one manufacturer believing it to have been manufactured by another. Mr. J. R. Edson and Mr. Thomas G. Stewart for the appellant. VAN ORSDEL, J.: This is a trade-mark opposition. It appears that appellant applied for registration of the word "Success as a trade-mark for self-raising pancake-flour and cornmeal. Appellees opposed the registration on the ground that they and their predecessors have continuously, since 1873, used the word "Success" as a trade-mark for flour. They first registered the mark in 1902, and reregistered it in 1915. From the decision of the Commissioner of Patents sustaining the opposition and denying appellant right to registration this appeal was taken. The single question involved is whether the goods of the respective parties possess the same descriptive properties, and the use of appellees' trade-mark by appellant would be likely to create confusion in trade by leading purchasers to believe that appellant's goods were manufactured by appellees. It is on this ground that appellees urge they would sustain damage. The goods of the respective parties. belong to the general classification of flour, and are common in their source of manufacture. Each is a product of the milling business. Each can be readily associated with the product of one engaged in the milling business. The test is not whether a user would make the improbable mistake of using appellant's pancake-flour for appellees' wheat-flour, but whether a purchaser would be likely to purchase appellant's product believing it had been manufactured by appellees. The test here is not in the likelihood of confusing the products, but the source from which they come. The distinction is clearly stated in American Stove Co. v. Detroit Stove Works, (C. D., 1908, 407; 134 O. G., 2245; 31 App. D. C., 304) where the word "Jewel" as a trade-mark for gasolene or vapor stoves was involved. The word had been registered by the Detroit company as a trademark for coal and wood stoves. It was contended by the American Stove Company that there was a fundamental difference between vapor or gasolene stoves and coal or wood stoves and that there could be no possible room for confusion, in that no one could mistake a gasolene-stove for a coal or wood stove. On this point the court said: Gasolene or vapor stoves are used for the same purpose as coal and wood stoves and belong to the same genus. The structural differences existing between them are largely due to the character of the fuel used. We agree with the Commissioner that "to permit one manufacturer to use upon his vapor and gasolene stoves the mark upon which another manufacturer has built up a trade in coal and wood stoves would inevitably lead to mistakes and confuse purchasers." The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed. [Court of Appeals of the District of Columbia.] GREAT BEAR SPRING COMPANY v. BEAR LITHIA SPRINGS COMPANY. Decided March 4, 1918. 255 O. G., 162; 47 App. D. C., 434. TRADE-MARKS-CANCELATION-IN VIEW OF ADVERSE DECISION IN INTERFERENCE. Record reviewed and Held that in view of a trade-mark interference decision adverse to the registrant, G., it was proper, on motion of B., to cancel G.'s mark. Mr. E. S. Beach for the appellant. PATENT appeal No. 1,139. SMYTH, C. J.: The Patent Office, on the application of the appellee, canceled a registered trade-mark of the appellant. To the application, appellant filed an answer, the material parts of which were stricken out upon the motion of the appellee on the ground that the issues presented by them had all been adjudged against the appellant in an interference involving like subject-matter between the same parties, and thereupon cancelation was ordered. In the interference referred to, it was decided by the Patent Office, and the decision was affirmed by this court, (Great Bear Spring Co. v. Bear Lithia Springs Co., C. D., 1916, 217; 229 O. G., 613; 45 App. D. C., 305,) that the marks were alike; that the appellee had shown a prior use and, implicitly albeit not expressly, that the goods to which the marks were applied were of the same general nature. The Great Bear Spring Company, appellant here, urged in that proceeding, which was disposed of by the Patent Office in 1914, that the present appellee was estopped from asserting a right to the mark as against the appellant by reason of certain decisions of New Jersey equity courts rendered in 1906 and 1907, respectively, (Bear Lithia Springs Co. v. Great Bear Spring Co., 71 N. J. Eq., 595; Same v. Same, 72 N. J. Eq., 871), and on other grounds. Profert of these decisions was made by appellant in con nection with a motion to dissolve the interference. The Patent Office held that they had no bearing upon such a motion but might be presented on the final hearing. When that was reached, the profert was not renewed. Appellant's answer in this proceeding denies the similarity of the marks and the identity of the goods; alleges that appellee's mark is invalid because, as asserted, it indicates quality and not origin; and is a geographical term as well as a personal name. It further avers that the appellee is estopped by the New Jersey decisions. At a glance it appears that every one of these matters was material in the interference. If appellant had established there all or one of them, it would have defeated its opponent. Certainly they were proper for consideration, and if not presented, they might have been. Therefore they are by force of the decision in that case res judicata. (Bluthenthal v. Bigbie Bros., C. D., 1909, 411; 143 O. G., 1346; 33 App. D. C., 209, and cases there cited; see also in re Herbst, C. D., 1916, 113; 222 O. G., 727; 44 App. D. C., 203; Cromwell v. County of Sac, 94 U. S., 351.) The right to cancelation depends upon that judgment. It determined that appellee was "entitled to have its trade-mark registered," (sec. 6, act of 1905), and as a corollary of this appellant's registration of the same mark must be unlawful; hence it should be erased. To succeed here, appellant must destroy the effect of that judgment-by having retried questions which inhere in it—and this, indeed, is what it seeks to do. But the judgment is unassailable in this proceeding, which resembles somewhat a creditor's suit to set aside a conveyance. Usually such a suit cannot be maintained until the creditor has established his debt by a judgment at law. In the creditor's suit it would not be permissible for the defendant to retry the defenses asserted, or which might have been asserted, by him in the law action, for the judgment in that action would be conclusive as to all such things. (Mattingly v. Nye, 8 Wall., 370.) And so it is here with respect to the decision in the interference. Appellant attempts to differentiate between the interference and the present case. It says that in the former the claim was as to the right to register, while here it is with respect to the right to have the registration canceled. A creditor's bill seeks different relief from that sought by the law action which must, precede it, but that does not permit a reëxamination of the matters inhering in the law judg ment. It would be unreasonable to hold that appellee had the right to register the trade-mark and then say it could not have canceled the wrongful registration given to appellant for the same mark. If this was done, the first judgment would be an empty thing "signifying nothing." No, it having been adjudged that the right to register the mark belonged to the appellee, the latter is entitled, as an inevitable consequence, to have appellant's registration canceled. Neither is there any merit in the contention that the appellee is not injured within the meaning of section 13 of the act of 1905, and therefore has no standing to ask for cancelation. The invasion of appellee's right implies damage. (H. Wolf & Sons v. Lord & Taylor, C. D., 1914, 176; 202 O. G., 632; 41 App. D. C., 514.) The decision of the Commissioner was right and it is affirmed. [Court of Appeals of the District of Columbia.] FULTON WATER WORKS COMPANY v. BEAR LITHIA SPRINGS COMPANY. Decided March 4, 1918. 255 O. G., 163; 47 App. D. C., 437. 1. TRADE-MARKS-CONSTITUTIONALITY OF THE STATUTE-STANDING OF APPELLANT DENYING SAME. Where an appellant urges that the statute is unconstitutional, Held that in appealing under the provisions of the statute it is, in effect, asserting that the statute is valid. 2. SAME SAME-REGISTRATION CREATES NO VESTED RIGHTS. Held that registration creates no vested rights and is essentially different from a patent, which creates a monopoly in the patentee. 3. SAME-CANCELATION-SECTION 13 OF THE ACT OF 1905 APPLIES TO REGISTRATIONS UNDER THE ACT OF 1881. Section 13 of the act of 1905, giving to the Commissioner the power to cancel registrations in certain cases, applies to registrations under the act of 1881, and represents a valid exercise of Congressional power. Mr. E. S. Beach for the appellant. Mr. Fritz v. Briesen for the appellee. PATENT appeal No. 1,140. SMYTH, C. J.: This is a companion of the appeal in No. 1,139, just decided. (Ante, 203; 255 O. G., 162.) The trade-mark involved is the same. It was registered by the appellant in 1894 under the act of 1881, is claimed by the Great Bear Spring Company, appellant in No. 1,139, and was embraced by the interference mentioned in that case. Appellee asked for the cancelation of the registration upon the same grounds as those stated in No. 1,139, and the answer of appellant, with the exception of the name of the registrant and the date of registration, was, so far as the facts were concerned, similar. These exceptions do not require a different ruling from that made in the prior appeal concerning identical facts. 84150°-19-16 |