TRADE-MARK FOR LUBRICATING-OILS, ETC.

Messrs. Davis & Simms for the applicant.

NEWTON, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks requiring applicant to restrict the use of its mark to a single class of articles.

Applicant states that its goods are—

oils used indiscriminately as lubricating oils, oils for finishing and dressing leather, as batching oils for softening jute and hemp fiber, and as wool oils for scouring, in Class No. 15, Oils and greases.

The Examiner states that lubricating-oils are classified in Class 15, Oils and greases; oils for finishing and dressing leather are classified in Class 4, Abrasive, detergent, and polishing materials, and other oils for softening jute and hemp fiber and wool-oils are classified in Class 6, Chemicals, medicines, and pharmaceutical preparations.

Applicant's contention is that

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the trade mark "Vacmul" is used by the Vacuum Oil Company as a trade mark brand for oil of a certain kind made according to a certain formula and process of manufacture. "Vacmul" oil is made in several different grades, and is branded Vacmul A," "Vacmul B," 'Vacmul X-35," "Vacmul X-40," etc. Primarily, the "Vacmul" brands of oil are cutting oils, and a cutting oil is, broadly speaking, a lubricating oil. Some of these oils are, however, suitable for and are sold for other lubricating purposes also: for example, "Vacmul F." Some of these oils are also suitable for and are sold as batching oils for softening jute and hemp fiber: for example, "Vacmul X-40" and "Vacmul X-35." Some of these oils are also suitable for and are sold as wool oils for scouring; for example, "Vacmul 40" and "Vacmul 35."

Section 2 of the act of May 4, 1906, is as follows:

SEC. 2. That the Commissioner of Patents shall establish classes of merchandise for the purpose of trade-mark registration, and shall determine the particular descriptions of goods comprised in each class. On a single application for registration of a trade-mark the trade-mark may be registered at the option of the applicant for any or all goods upon which the mark has actually been used comprised in a single class of merchandise, provided the particular descriptions of goods be stated.

The object of this statute was to require an applicant to pay a fee for the registration of his mark for every class of articles on which the mark is used, and to thus locate a mark, so that it can be readily found in case some one else applies for registration of the same or a similar mark for the same class of goods. Were it not followed, one would have to search through the entire list of trade-marks to find whether any particular mark has been registered; but by requiring registration for each class only that class need be searched to find it.

If applicant is allowed to register this mark for goods found in the three classes specified, a search would have to be made through the

three classes enumerated by the Examiner, and this is contrary to the intent of this statute.

Applicant contends that making it split up its registration in this country would necessitate doing likewise in case it files foreign applications; but, in the first place, it is questioned whether the foreign country would follow our classification, even if a single registration be allowed here, and, second, whether the foreign country would not require it to be split up, even if we allowed a single registration to include all the three classes here; but be that as it may, the statute is binding on the Office to require a separate fee for each class in which the mark is registered. The statute is based on sound reason-indeed, on a practical necessity—and the Examiner was right in his refusal to register the trade-mark in all three classes under one application and for one fee, and his action is affirmed.

EX PARTE BLOOM & MILLMAN.

Decided July 31, 1918.

253 O. G., 954.

TRADE-MARKS-SIMILARITY-" JACKIE" AND "JACK TAR."

The word "Jackie" refused registration as a trade-mark in view of the prior registration of the words "Jack Tar Togs" for the same class of goods (the word "Togs" being disclaimed).

ON APPEAL.

TRADE-MARK FOR WAISTS AND BLOUSES FOR MISSES AND LADIES.

Mr. Solomon K. Lichtenstein for the applicants.

NEWTON, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing registration of the word "Jackie " over the head of a sailor-boy, used on blouses and waists, on the prior mark of The Strouse-Baer Co., No. 112,329, for the words "Jack Tar Togs," used on several kinds of goods, including blouses and waists. The word "Togs" being disclaimed, the rejection is based on the similarity between the words "Jackie" and "Jack Tar" on the same kind of goods.

Funk & Wagnalls's dictionary, published in 1917, defines "Jackie " as meaning a sailor, and under the word “Tar” it gives " Jack Tar ” also as meaning a sailor. The words "Jackie" and "Jack Tar" have practically the same meaning, and although they vary slightly

in sound and appearance they are too near alike to allow the registration of one in view of the other, since the idea conveyed by the words is the same.

In considering infringement of marks, appearance, sound, and meaning must all be taken into consideration. If the words have the same meaning, even though they may appear very different or sound very different, they are held to infringe; as, for example, "Iwanta" was held to infringe "Uneeda," (95 Fed. Rep., 135); but the present words have not only the same meaning but are similar in sound and should clearly be refused.

The decision of the Examiner of Trade-Marks must be affirmed.

EX PARTE BRADY.

Decided June 10, 1918.

253 O. G., 954.

1. TRADE-MARKS-DESCRIPTIVE WORDS-" METALOID."

The word "Metaloid," as applied to a paste material for mending metal, Held to be not registrable, as it simply informs one that the paste is like a metal.

2. SAME-SAME-CORRECTNESS OF DESCRIPTION.

It makes no difference whether the mark actually describes the applicant's particular goods if it describes like goods of others.

ON APPEAL.

DRY POWDER AND A LIQUID TO BE USED TOGETHER IN REPAIRING LEAKS OR CRACKS IN LEAD OR IRON PIPES, ETC.

On appeal the Examiner's refusal to register the word "Metaloid" as a trade-mark for a paste material for mending metal, on the ground of descriptiveness, is affirmed. I think there can be no question that the alleged trade-mark simply informs one that the paste is like a metal, and this any other has the equal right to do. If a trade-mark is descriptive of metal mending-paste generally, I do not see how it makes any difference if it in fact describes falsely the particular paste this applicant has. There is nothing in the record to show that this paste is not like a metal, and manifestly the applicant might make it "like a metal" to-morrow if he chooses to do so. The vice of such marks is that they describe like goods of others; wherefore their registry would curtail the rights of others to free

use of the language. In the case of Adams-Jewel Co. (120 MS. Dec., 374) it was considered that there was not and never had been any actual thing which was described by the term "Plastic Fire Brick." Affirmed.

EX PARTE KAUPMANN.

Decided April 19, 1918.

254 O. G., 451.

1. DESIGNS-PATENTABILITY-INVENTION NECESSARY.

A design for a doll simulating a child and not substantially different from an ordinary doll Held unpatentable, as it did not call for anything like invention to produce it.

2. SAME-SAME-MUST DIFFER FROM OTHER DESIGNS.

The primary consideration in determining patentability in a design is whether it possesses a sufficiently different configuration from other designs. APPEAL from Examiners-in-Chief.

DESIGN FOR A DOLL.

Mr. Percy B. Hills for the applicant.

NEWTON, Commissioner:

This is an appeal from a decision of the Examiners-in-Chief affirming an action of the Examiner of Designs finally rejecting the following claim:

The ornamental design for a doll, as shown.

There are no references. The drawings and the exhibits shown at the hearing represent a doll, which the Examiners-in-Chief admit is artistic, but hold that, being only an imitation of a living thing, it cannot be patentable.

They say:

In the present case, there is nothing below the head that may not represent any normal child. The hair is dressed in the prevailing fashion and, as stated, there is nothing in the face but the likeness of an ordinary child. If there had been some element of the grotesque or some deformity that would arrest and hold the attention, then we might find something patentable in the design; but as we find nothing but a clever and artistic representation of a child, with nothing to distinguish from the children one may see daily, we must hold the design to be lacking in invention.

This case raises the question what, if anything, is patentable as a design of a nude rubber doll in general shaped like a normal child? The Examiners-in-Chief call for something out of the ordinary in appearance

grotesque or with some form that would arrest and hold the attention.

They appear to follow that line of decisions holding, in effect, that imitation of any well-known thing cannot be patented as a

design. Hence a toy balloon shaped like a watermelon was held unpatentable. (Miller Rubber Co. v. Behrend, 242 Fed. Rep., 515. See also Denton et al. v. Fulda, 225 Fed. Rep., 537.)

The authorities hold, in effect, that there must be as much invention displayed in a design as in a mechanical patent. (Perry v. Hoskins, 111 Fed. Rep., 1002; ex parte Schraubstadter, C. D., 1906, 541; 120 O. G., 1167; 26 App. D. C., 331.)

This holding is vague, since the standard of measurement of invention in case of a design is entirely different from that of a mechanical case. For example, the invention displayed in a mechanical claim is frequently measured by the function performed; but this may be said never to be true in the case of a design. The soundrecord groove of Berliner, which was the same depth throughout, but cut with sidewise sinuations representing the variations of sound, was held patentable over the up-and-down record, varying in depth, of the Edison phonograph-record, (Victor Talking Machine Co. v. American Graphophone Co., 140 Fed. Rep., 860), because the needle would track the Berliner record without jumping out of the groove, whereas the Edison record required a feed-screw to keep the needle in the groove. The difference in the two inventions was a sidewise and equal-depth cut as distinguished from an up-and-down and varidepth gouged record; but the result was marked and practical, and it was on the result that the patentability was largely based.

In measuring patentability in a mechanical case we generally conclude, first, when the result is sufficiently new, even if the means are old, a claim should be granted; second, when the means are sufficiently new, even if the result is old, a claim should be granted; third, when the means and result both are new a claim should be granted; fourth, only when the means and result are old should a claim be refused; but no such considerations enter into the patentability of a design. The imaginative faculties of the mind produce designs, while the mechanical inventions are produced by the inventive faculties, and to compare the invention in a design to the invention in a mechanical case is similar to comparing the beauties of a picture to those of a machine.

But since the courts uniformly hold that under our design statute (sec. 4929, Rev. Stats.), there must be invention displayed to warrant patenting a design, how does this so-called "invention" manifest itself?

The so-called "invention "in a design is more similar to what might be termed the "invention” in a painting or statue than it is to the invention in a method or machine. Indeed, a statue or even a painting may be the subject-matter of a design patent, (Louis De Jonge & Co. v. Breuker & Kessler Co., 182 Fed. Rep., 150), and if a painting can be the subject-matter of a design patent why cannot a rubber doll,