EX PARTE WAYNE POULTRY TONIC Co.

Decided February 16, 1911.

164 O. G., 251.

TRADE-MARKS-DRAWING ELIMINATION OF ARBITRARY FEATURES.

An applicant will not be permitted to modify the mark originally shown in the drawing by the elimination of a fanciful, arbitrary, and salient feature thereof unless there shall be filed a disclaimer of such feature duly verified by the applicant.

ON APPEAL.

TRADE-MARK FOR POULTRY TONIC.

Messrs. Taylor & Hulse and Messrs. Stewart & Stewart for the applicant.

TENNANT, Assistant Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing to register the words "Little Red Hen" as a trademark for a poultry-tonic.

Registration is refused in view of the registered trade-mark of the Pratt Food Co. for a roup cure, No. 45,645, on August 25, 1905, which is described in the statement of the registration as consisting of

the pictorial representation of a hen against a serrated seal bearing the words Pratt's Roup Cure."

It is contended in behalf of the appellant, first, that the picture of a hen is not a trade-mark owned and in use by another; second, that the picture of a hen is not claimed as a trade-mark by registrant except in combination with other features and that it is probable that the picture of the hen could only be claimed in this combination, since the picture is merely descriptive of the goods; third, that the picture of the hen is not owned by the Pratt Food Co., because this picture is common property of every citizen and can be used by every manufacturer of poultry foods and should not be made the exclusive property of anybody.

It is to be noted at the outset that the mark now claimed consists merely of the words "Little Red Hen." The specimens, however, originally filed show the picture of a hen printed in red surrounded by a red circle upon which is printed the words "Little Red Hen Poultry Tonic." The drawing filed with the original application included the entire pictorial representation above described, and by amendment a description was inserted setting forth that the trademark adopted and heretofore used by the applicant and shown in the accompanying drawing

consists of the pictorial representation of a hen and the circular band printed in red.

Subsequently by amendment and apparently following the citation of references the representation of the hen and the circle which included the same were eliminated, the illustration of the mark as shown in the drawing being confined to the words "Little Red Hen." It is presumed that this amendment was incorporated by the Examiner under the practice announced by the Court of Appeals of the District of Columbia in the case in re Standard Underground Cable Company, (C. D., 1906, 687; 123 O. G., 656; 27 App. D. C., 320,) in which the court held that the Commissioner could not designate the essential features shown on the specimens furnished by an applicant, and which constitute the applicant's mark. The Court said:

It does not seem to us that it is to be presumed that the specimens are to be furnished in order that the Commissioner of Patents may pass upon the question as to how much of the matter which appears upon the specimens constitutes the mark. Nowhere in the act do we find any power vested in the Commissioner of Patents to decide for the applicant the scope of his claimed trademark. The Commissioner is vested with power to determine, in the first instance, whether the mark as described, shown, and claimed, is subject to appropriation by the applicant and may satisfy himself as to whether the trademark has been actually used in interstate or foreign commerce. When he finds that the mark as claimed has so been used, it is not for him to turn to the specimen, if one be required by him, and, seeing other matter than the mark claimed, shown on the specimen, require applicant to add any such matter.

The facts in the case in re Standard Underground Cable Company, supra, differ materially from those in the present case, for in that case the applicant asserted in its application as originally filed that its trade-mark consisted in the word "Eclipse," while the specimens filed by it showed the words "Eclipse" as printed upon a dark background representing a partial solar eclipse, whereas in the present case the applicant in its original application for registration asserted that the trade-mark adopted and used by it was shown in the accompanying drawing, in which the picture of the hen and the surrounding circle, both in red, were shown in addition to the words "Little Red Hen." The declaration of this application contains a statement under oath that—

the drawing truly represents the trade-mark sought to be registered and that the specimens show the trade-mark as actually used upon the goods.

The amendments canceling the circular band and the representation of the hen were directed by the attorney without any special authorization on the part of the applicant other than that contained in the formal power of attorney.

While it is not questioned that an applicant has the right, as stated in re Standard Underground Cable Company, supra, to designate the device shown in his specimens which he regards as his trade-mark, it is believed that a material modification of that mark, such as was made in the present case, should not be permitted unless under special

authorization by the applicant in the form of an affidavit setting forth facts showing that the modified mark is in fact considered by him to be his trade-mark.

In the case of John Rutgert Planten v. Canton Pharmacy Company (C. D., 1909, 408; 143 O. G., 1113; 33 App. D. C., 268) the Court of Appeals said:

The first question for determination involves the correctness of the Commissioner's ruling to the effect, that a party may segregate his trade-mark, and, by registering each of its features separately, thery prevent the registration by another of any particular part of the mark as actually used notwithstanding that such registration and use by another would cause no confusion to the trade and no prejudice to the first registrant. The statement of the proposition, we think, carried its own refutation. A firm may have one or a dozen marks, but, owing to the nature and object of trade-marks, it seldom happens that more than one mark is used by any dealer to designate a particular article. Thus the record shows that Planten has used the registered mark to designate the goods to which the mark of the application is said to apply. In contradiction of the statement in his application he filed with his application not the mark of the application but the mark previously registered. The Trade-Mark Act confers the right of registration upon "the owner of a trade-mark used in commerce with foreign nations, or among the several States, or with Indian tribes," providing the applicant complies with various requirements stated in the act and files a verified declaration that the conditions entitling him to the benefit of registration exist. Statutory use of the mark is a prerequisite to the right of registration. In the Cable Co. case it was merely held that for the purpose of registration the applicant may determine of what his mark consists; but, having described and shown one thing, he cannot, when the exigencies of the situation demand, limit his claim to a particular feature of the original mark. (Johnson v. Brandau, C. D., 1909, 298; 139 O. G., 732; 32 App. D. C., 348.)

By the passage of the Trade-Mark Act Congress did not intend to confer upon any dealer the right to register fictitious marks for the purpose of limiting and restricting the field of registration of others. When, therefore, the Commissioner is satisfied that the applicant is attempting to register a particular featurę of a registered mark, he should require evidence that the mark of the applica tion has actually been used as a trade-mark. Not having limited his claims in his original application, the applicant cannot prove statutory use of the mark of the second application by showing such use of the registered mark. In other words, proof of the use of the words "Planten's C & C or Black Capsules," in a case where those words have been registered as a trade-mark, does not establish the use of the words "Black Capsules" as a trade-mark, for the words eliminated from the registered mark, are, under the prior application, an essential part of that mark.

There being no evidence in the record of statutory use of the words "Black Capsules" as a trade-mark by Planten, the Commissioner should have refused registration to Planten on that ground.

In the case of Johnson v. Brandau (C. D., 1909, 298; 139 O. G., 732; 32 App. D. C., 348) the same court held that while every feature of a mark shown in an applicant's drawing as filed is essential a descriptive word may be omitted and disclaimed. The Court said:

The applicant deliberately selected and carefully designated the trade-mark having the descriptive word printed in large letters across, and partly obscuring

the figure of the ass. He thereby made it an actual and prominent feature of his trade-mark, claiming the same as an entirety. He made all essential, and as we have seen, denied the Commissioner's right to determine that any one was the essential feature, and another accessory and subordinate. Under these conditions it was not for the Commissioner to say that the word "Asbestos" was an unessential feature, and to be regarded as mere surplusage. The registration, if granted, would show no such exception or qualification on its face, and the prima facie right accorded to registration would apply to the mark as an entirety as shown in the application and drawing.

When an applicant describes and illustrates his trade-mark and applies for its registration as so described, the Commissioner must likewise consider it in its entirety. We are of the opinion that, in this case, he should have denied registration as claimed, giving the applicant, at the same time, an opportunity to amend by disclaiming and omitting the word objected to.

For the reasons above stated it is believed that an applicant should not be permitted in cases like the present to modify the mark originally shown in the drawing by the elimination of a fanciful, arbitrary, and salient feature thereof unless there shall be filed a disclaimer of such feature duly verified by the applicant.

This case is remanded to the Primary Examiner for action in accordance with the views above expressed.

Decision upon this appeal is suspended pending the further consideration before the Examiner of Trade-marks.

EX PARTE E. B. PIEKENBROCK & SONS.

Decided February 25, 1911.

164 O. G., 507.

1. TRADE-MARKS-SIMILAarity—“ LadY LIKE "-" THE LADY LEE SHOE." The words "Lady Like" Held properly refused registration as a trademark for shoes in view of the prior registration of a mark consisting of the words "The Lady Lee Shoe."

2. SAME "LADY LIKE" FOR SHOES-DESCRIPTIVE.

The words "Lady Like" as applied to shoes Held descriptive of the character or quality of the goods, and therefore not registrable as a technical trade-mark.

ON APPEAL.

TRADE-MARK FOR LEATHER BOOTS AND SHOES.

Messrs. Brown & Hopkins for the applicant.

MOORE, Commissioner:

This is an appeal from the action of the Examiner of TradeMarks refusing to register the words "Lady Like " as a trade-mark for leather boots and shoes.

The registration was refused in view of the registered mark of Hollins Sons & Co., Certificate No. 63,730, July 2, 1907.

The mark of the applicant consists of the words "Lady Like." The registered mark consists of the words "The Lady Lee Shoe." As shown in the registration, the words "Lady Lee" appear in heavy black type and have the word "The " thereabove in smaller type and the word "Shoe" therebeneath also in smaller type.

The action of the Examiner in refusing registration on this ground is believed to have been entirely correct. The distinguishing features of the registered mark are the words "Lady Lee," and these words are clearly so similar in sound and appearance to the words "Lady Like," that their contemporaneous use upon goods of the same descriptive properties would be liable to cause confusion in trade. No importance can be attached to the word "The " appearing in the registered mark, since its signification is no wise changed by inclusion of this word.

There is, however, in my opinion another reason why the registration of this mark should have been refused-namely, that the mark is descriptive of the goods to which it is applied. The words "Lady Like" as applied to shoes could obviously mean but one thing— namely, that they were shoes suitable for ladies' wear or shoes having such an appearance that a lady would desire to wear them. They would therefore be descriptive of the character or quality of the goods to which they are applied. The mark is fully as descriptive as the words "The American Girl," of which, in the case of Wolf Bros. & Co. v. Hamilton Brown Shoe Co., (165 Fed. Rep., 413,) the Circuit Court of Appeals of the Eighth Circuit said:

We also think that the name, as applied to women's shoes is descriptive merely, viz., shoes manufactured in America and to be worn by women, and not an arbitrary or fanciful name to indicate maker; hence the name "The American Girl," applied to shoes, is not the subject of a valid trade-mark. The decision of the Examiner of Trade-Marks is affirmed.

WALKER AND WALKER v. GILCHRIST.

Decided February 3, 1911.

164 O. G., 507.

INTERFERENCE-MOTION TO AMEND UNDER RULE 109-DELAY In Bringing.

W. moved to dissolve the interference, and G. moved, under the provisions of Rule 109, to amend the issue. W.'s motion was granted, and the interference was redeclared as to certain of the claims presented by G. Thereupon W. brought a motion to add further counts to the issue. Held that in view of the record of the case this motion should have been transmitted.