have been introduced, must be reexamined and the prosecution before the Patent Office started all over again. A second notice of allowance is sent when the renewal application is found ready for issue, and the final fee of $30 is due within 6 months after this second notice.

The original intent of this procedure was to provide for issuing the patent when the time for payment of the final fee has been permitted to lapse through accident or unavoidable delay. Considered as a means for permitting the payment of a fee after it first falls due, the procedure is remarkably involved. It readily permits the deliberate postponement of the issuance of a patent and is resorted to mainly for this purpose, since additional matters may be deliberately introduced to cause further delays in reexaminations.

The proposed change eliminates renewals, consequently simplifying the practice and abolishing causes and opportunities for delays. In place thereof the bill provides simply that the fee may be accepted late, and the patent issued, in the discretion of the Commissioner, upon the payment of a small additional fee. The original intent of the statute is preserved and the procedure simplified, yet at the same time the opportunities for abuse are removed.

Earlier issuance of the patent is assured by this bill which merely forecloses opportunities for deliberate delay. The simplification of the procedure is shown by the following tabulation: [Tabulation omitted, the procedure recommended having been enacted in the present statutes] Report of the Senate Committee, supra.

The law as to continuing applications, as hereinbefore stated, was established by the decision of the Supreme Court of the United States in Godfrey v. Eames, supra, decided in 1863, prior to the enactment of Section 4897, and, as pointed out in the decision of Detroit Iron & Steel Co. v. Carey, 236 Fed. 924, 925, "The rule previous to the statute [Sec. 4897] was well settled that, where an application has not been abandoned, subsequent applications and amendments constitute merely a continuance of the original proceeding."

Congress, the Commissioner of Patents, and the leaders of the Patents Bar who participated in effecting a repeal of Section 4897 may be presumed to have known of the respective use and existence of both the continuing and renewal applications, and it may be gathered from the foregoing citations that in the repeal of Section 4897, Congress abolished the renewal application, but it did not abolish the continuing application. Furthermore, if it be assumed, as the decisions from time to time held, that a continuing application was involved in effecting the continuity of a renewal application, then it is obvious that in the repeal of Section 4897, Congress abolished not the use of a continuing application, but its abuse.

For the reasons hereinbefore stated, it is my opinion that no change in the procedure of the Patent Office relative to the use of a continuing application was effected by the repeal of Section 4897 and the amendment of Section 4885 of the Revised Statutes. Such procedure

is that after allowance, no amendment may be filed as a matter of right; nor will the examiner have jurisdiction over the application unless by an order of the Commissioner of Patents based upon a showing of good and sufficient reasons for the exercise of his supervisory authority.

Recourse to the record on appeal in the Febrey case discloses that the original application was filed September 28, 1938, and allowed June 20, 1940. On January 9, 1941, Febrey filed a second application for the purpose of amending and continuing the prosecution of his original application. At that time, all but a few days of the sixmonths period allowed for payment of the final fee after notice of allowance had expired; and more than two years and three months had then expired from the date upon which the original application had been filed.

The decision of the examiner and the concurring decision of the Board of Appeals held in effect that the claims in Febrey's second application could have been made in the first application and that the device described in the second application was substantially the same as the device described in the allowed claims of the original application. The board further held that a continuing application, such as Febrey's second application, was abolished by the repeal of Section 4897, and that the claims of such application were barred by public use and sale. For the reasons stated, Febrey's second application was rejected by the Patent Office.

This Court in a unanimous decision reversed the action of the Board of Appeals and held that the repeal of Section 4897 did not affect the right of an applicant to amend and continue the prosecution of an criginal application by means of a continuing application. With this conclusion, I agree. This Court erroneously held in effect, however, that Febrey could file a continuing application as a matter of right.

In order that the two applications involved in a continuing application may constitute one continuous proceeding under the law, the second application must contain the same invention that is disclosed in the original application. See, Globe Nail Co. v. Superior Nail Co., 27 Fed. 450. The mere fact that the two applications disclose the same invention, however, does not of itself confer the right to amend a pending application. Where the claims of the original application have been allowed and the claims of the second application are the same in effect as the claims that have been allowed and for which a patent is authorized to issue upon payment of the final fee, the right to file the second application will be denied for the reason that it does not constitute an amendment of the original application. Under these

circumstances, the applicant is continuously applying for a patent which he has been previously allowed. In other words, the second application cannot be considered as a continuation of the original application because the claims of the second application have been previously allowed and there is nothing to be continued. See, In re Application Filed April 17, 1940, supra.

In the language of the decision in the case of In re Roberts, supra, "It is perhaps unnecessary to add that a party who seeks to correct his own mistake must act with reasonable diligence, and also must assume the burden of establishing his good faith." In establishing the law as to continuing applications, the Supreme Court of the. United States in Godfrey v. Eames, supra, stated, "Both specifications are before us, and it is our duty to construe them."

The question of Febrey's diligence in discovering and correcting the mistake in his original application and the question of whether or not the subject matter contained in the claims of the second application constituted a bona fide amendment of the original application were not considered by this Court. It was the duty of the Court to do so.

For the reasons stated, it is my opinion that the decision in the Febrey case was erroneous and should be overruled.

In the case at bar, appellee, in filing his second application on June 6, 1940, which effected a resumption of the prosecution of his original application, filed December 9, 1937, two and one-half years before, offered no reason whatever why the claims embraced in his second application were not presented in his original application. As pointed out by appellants, so far as the record shows, Hayward's added improvement in his second application may have been in Hayward's possession since before he filed his first application, and was omitted for reasons best known to himself; or it may have been an improvement conceived as an afterthought, such as either he or anyone else could have made after the filing of his original application.

Moreover, so far as the issue of the present interference is concerned, the party Hayward has stated that the additional subject matter contained in the broader claims of his second application covers subject matter that is patentable over the subject matter disclosed in his original application.

Under Rule 165, supra, the time for amendment, as a matter of right, expires with the allowance of the application, and therefore Hayward's second application falls squarely within the law enunciated by the Commissioner of Patents:

No reasons whatever were given, when the first amendment (after allowance) was presented, why the same could not have been presented before the case was

passed to allowance, and therefore there was at that time no reason for withdrawing the case from issue. Ex parte Orndoff, 1909 C. D. 48, 49.

See also, Ex parte Stuart, 1904 C. D. 484, 486.

For the reasons assigned, the decision of the Board of Interference Examiners should be reversed.

580 O. G. 3; 32 C. C. P. A. 1074; 150 F. (2d) 439; 66 USPQ 111

FIRESTONE TIRE & RUBBER Co. v. MONTGOMERY WARD & Co., Inc.

1. TRADE-MARKS-IDENTITY

MARKS.

AND

(No. 4972)
SIMILARITY-How

DETERMINED -DISSECTING

In determining likelihood of confusion between similar marks on similar or identical goods, it is necessary to consider marks in entirety, but it is proper to analyze different features of marks and consider their appearance, sound, and meaning.

2. TRADE-MARKS IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERAL. It often is persuasive that goods are purchased only after careful observation and comparison, but instant goods (radios) are sold to general public, which is comprised not only of critical buyers but also of those who buy without stopping to analyze.

3. TRADE-MARKS-PRIOR ADJUDICATION.

It has often beend said that rarely, if ever, are identical facts presented in different registration cases, and stare decisis rule is seldom applied, but facts in instant opposition are so similar to facts in prior opposition by same opposer relying on same mark that prior case should be regarded as practically controlling of decision of issue of confusing similarity.

4. TRADE-MARKS-IDENTITY AND SIMILARITY-HOW DETERMINED IN GENERALIDENTITY AND SIMILARITY-WORDS.

Viewing marks as whole and considering “Air" in both marks, Court concludes that mark comprising "Firestone" and dominant "Air Chief" with winged figure standing on globe is not confusingly similar to dominant "Airline" crossed by zig-zag lightning symbol; "Chief" and "line" are so different in sound, appearance, and meaning as to lead away from any thought springing from commonly used "Air"; portions of marks other than "Air Chief” and "Airline" differ in appearance, suggestions, and meaning; over radio and in advertisement literature, goods will be referred to as "Air Chief” and “Airline" and many prospective customers would be unaware of features of marks, but "Air Chief" and "Airline," considered alone, differ so in meaning, appearance, and sound as to insure against probability of confusion.

United States Court of Customs and Patent Appeals, May 24, 1945 APPEAL from Patent Office, Opposition No. 20,339

[Reversed.]

Ely & Frye (Albert L. Ely, Bernard C. Frye, and Charles M. Thomas of counsel) for appellant.

F. P. Keiper (Earle D. Crammond of counsel) for appellee.

[Oral argument January 10, 1945, by Mr. Thomas and Mr. Keiper]

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges

BLAND, Judge, delivered the opinion of the court:

From a decision of the Commissioner of Patents, 59 USPQ 27, speaking through the First Assistant Commissioner, affirming that of the Examiner of Interferences, which sustained appellee's notice of opposition to the registration of appellant's trade-mark and adjudged that the applicant (appellant) was not entitled to the registration applied for, appellant has here appealed.

The goods of appellant (hereinafter referred to as Firestone) and those of appellee (hereinafter referred to as Montgomery Ward) upon which their respective marks are used are, in each instance, radios and radio supplies. The mark which Firestone seeks to register is a composite mark comprising the words "Air Chief." Interposed between these two words is an illustration consisting of a winged figure designed with heroic impressiveness, standing on a globe. Above the head of the symbolic figure and parallel to its outstretched arms and wings is the word "Firestone." To the left of the word "Air" are two stars. Montgomery Ward's registered mark, upon which it bases its opposition, consists of the word "Airline" beginning with a capital "A," a portion of which extends in the form of a line under the other letters of the word. Across the word is a zig-zag symbol idicative of a flash of lightning.

The record shows that Montgomery Ward's use of its mark on its goods in interstate commerce long antedated the use of the "Air Chief" mark of Firestone; that since the adoption of its mark in 1922, Montgomery Ward has distributed many millions of catalogues and has spent many millions of dollars in advertising its "Airline" radio goods; that its mark is registered in many foreign countries; and that it has an extensive business in foreign markets for its "Airline" goods.

The record also shows that Firestone does a large business and that it is selling and advertising its "Air Chief" radio goods in the same market, at least in part, as that of Montgomery Ward.

In order that the precise issues presented may be fully understood, it is deemed advisable to reproduce here the two marks as they appear in the record.