faculties to substitute the Bartow sleeve connection for the particular pivotal connection disclosed in the patent to Martin, and that such sleeve connection is not from a non-analogous art. See In re Lee J. Voorhees, 17 C. C. P. A. (Patents) 1162, 40 F. (2d) 773, 5 U. S. Pat. Q. 361; In re Christian L. Schneider, 18 C. C. P. A. (Patents) 1114, 47 F. (2d) 970, 8 U. S. Pat. Q. 554; In re Raleigh, 20 C. C. P. A. (Patents) 751, 62 F. (2d) 200, 16 U. S. Pat. Q. 42. We hold, therefore, that claim 15 is not patentable over the references of record. For the reasons stated, the decision of the Board of Appeals is affirmed. 572 O. G. 541; 32 C. C. P. A. 806; 146 F. (2d) 302; 64 USPQ 223 IN RE LA MONTE & SON (No. 4952) 1. TRADEMARK-GENERAL PRINCIPLES-MARKS AND NAMES SUBJECT TO OWNERSHIP FORM AND SUBSTANCE-UNFAIR COMPETITION-DESCRIPTIVE-IN GEN ERAL-DRESS OF GOODS AND IMITATION OF LABELS Registration is refused of "Basket weave" as applied to safety paper so lined as to have basketweave appearance; mark is descriptive of ornamental surface of paper and of goods or of character or quality of goods; basketweave design serves not only as ornamental feature of goods but is part of goods; although applicant may be entitled to protection from others copying ornamental design under law of unfair competition, it is not merely for that reason entitled to registration of design as trade mark; exclusive use of trade mark is to indicate origin; design which covers entire surface of article loses distinctive feature as mark and by repetition becomes nothing more than ornamentation or distinctive design of article and cannot be considered valid mark under 1905 Act. United States Court of Customs and Patent Appeals, December 11, 1944 APPEAL from Patent Office, Serial No. 428,558 [Affirmed.] Kenyon & Kenyon (Douglas H. Kenyon and Lee B. Kemon of counsel) for appellant. W. W. Cochran (R. F. Whitehead of counsel) for the Commissioner of Patents. [Oral argument November 16, 1944, by Mr. Douglas H. Kenyon and Mr. Whitehead] Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges HATFIELD, Judge, delivered the opinion of the court: This is an appeal from the decision of the Commissioner of Patents (58 USPQ 87) affirming the decision of the Examiner of Trade-Marks rejecting appellant's application for the registration of an alleged trade-mark under the Trade-Mark Act of February 20, 1905. The mark for which appellant seeks registration consists of the word "BASKETWEAVE," and is for use on so-called "safety paper" such as is used for bank checks, bank drafts, tickets, vouchers, and the like. It appears from the record that appellant is the manufacturer of safety paper, the surface of which is tinted and so lined as to give it a basketweave appearance. The design covers the entire surface of the paper, but apparently serves no utilitarian purpose. However, when an erasure is made on the paper, a white spot appears on the tinted surface, indicating that the check, draft, or the like has been altered. The tribunals of the Patent Office refused registration of appellant's mark on the ground that the term "BASKETWEAVE" is descriptive of appellant's safety paper. In his decision, the Commission of Patents stated that the mark is not used on appellant's paper in an arbitrary sense, but is merely descriptive of the design or ornamental finish of the surface of the paper, and that, owing to the fact that section 5 of the Trade-Mark Act of February 20, 1905 expressly prohibits registration of a mark which is merely descriptive of the goods on which it is used or of the character or quality of such goods, appellant is not entitled to register its mark. It is conceded by counsel for appellant that the term "BASKETWEAVE" is descriptive of the appearance or ornamental finish of the surface of the paper to which appellant's mark is applied. Counsel contend, however, that the surface design on the paper is in itself a trade-mark; that it was adopted and used for that purpose; that it indicates origin in appellant; and that, therefore, the term "BASKETWEAVE" is not in any sense descriptive of the goods on which it is used. It appears from affidavits of record that other manufacturers of so-called "safety paper" have used surface designs, consisting of various formations of lines, as trade-marks for the purpose of indicating origin in the manufacturer. [1] It is evident from what has been said that the basketweave design, made by a distinctive formation of lines covering the entire surface of appellant's paper, serves not only as an ornamental feature of appellant's goods, but is, in fact, a part of such goods, and, although appellant may be entitled to protection from others copying its ornamental design under the law of unfair competition, it is not merely for that reason entitled to the registration of such design as a valid trade-mark. See Nims on Unfair Competition and Trade-Marks, 3rd Edition 509, § 191. As was stated in the case of Ex parte Root Glass Company, 151 Ms. D. 623, which was reviewed and approved in the case of In re Burgess Battery Co., 27 C. C. P. A. (Patents) 1297, 1299, 112 F. (2d) 820, 46 USPQ 39, the exclusive use of a trade-mark is to indicate origin, and a design which covers the entire surface of an article loses its distinctive feature as a trade-mark and by repetition becomes nothing more than an ornamentation or distinctive design of the article itself and, therefore, cannot be considered a valid trade-mark under the TradeMark Act of February 20, 1905. See In re Burgess Battery Company, 31 C. C. P. A. (Patents) 1039, 142 F. (2d) 466, 61 USPQ 367. In the case of In re Barrett Company, 48 App. D. C. 586, the court quoted with approval the commissioner's decision in the case wherein it was stated, among other things, that by applying the mark all over the surface, the mark ceases to be a mark on the surface and becomes the surface itself. The mark, if there was one, is entirely lost by the mere fact of uniform repetition over the whole surface. It is no longer capable of appealing to the beholder as a mark of origin, but would inevitably create the impression that it was something else. In the case of In re American Circular Loom Company, 28 App. D. C. 446, the court, in holding that a trade-mark consisting of "flakes of mica impressed in or otherwise applied to the external surface of an insulating tube or tubular coverings for electric wires" was not registrable as a trade-mark, quoted with approval the following from the commissioner's decision in the case: Custom and reason require that a trademark shall have an existence so distinct from the goods to which it is applied that it will be readily recognized by the public and by purchasers as an arbitrary symbol adopted to authenticate origin. The surface effect which the applicant calls his trademark is not so clearly distrinct from the article upon which it appears as to be readily recognizable as an arbitrary symbol for this purpose, and, in my opinion, it would not be so recognized by those not specially informed. Although the facts in the American Circular Loom Company case, supra, are somewhat different from the facts in the instant case, we think the quoted excerpt from the commissioner's decision is pertinent to the issues here involved. In the cases cited, as in the instant case, is was urged by counsel for the applicants for trade-mark registration that the ornamental surface of the goods was adopted and designed for the purpose of indicating origin of the goods in the applicant. We are in agreement with the Commissioner of Patents that the word "BASKETWEAVE” which appellant seeks to register as a trade-mark is merely descriptive of the ornamental surface of appellant's paper; that it is descriptive of appellant's goods or of the character or quality of such goods; and that, therefore, appellant is not entitled to the registration of its mark. For the reasons stated, the decision of the Commissioner of Patents is affirmed. 572 O. G. 351; 32 C. C. P. A. 809; 146 F. (2d) 284; 64 USPQ 235 COHEN ET AL. V. SPARROW (No. 4927) COHEN ET AL. v. GILLE (No. 4928) 1. PATENTS APPEALS IN GENERAL Court disposes of two patent interferences in one opinion since both relate generally to same subject matter, attorneys are same, and appeals were argued together. 2. APPEALS-DISMISSING AND REMANDING PLEADING AND PRACTICE IN PATENT OFFICE-INTERFERENCE Board of Interference Examiners cannot reverse primary examiner's decision denying motion to substitute sole application for joint application in interference; appeal, alleging error for failure to substitute, to Court from Board's award of priority against joint applicants is dismissed on motion for lack of jurisdiction; under 35 U. S. C. 62, function of Court on appeal is to revise decision appealed from in summary way; revision is confined to points in reasons of appeal; if reasons are of such character that it is impossible to revise decision appealed from, Court should disregard reasons and dismiss appeal; Court will not direct Board to act contrary to its authority and contrary to law; Board is only tribunal in Office before which is tried issue of priority of invention; primary examiner retains jurisdiction until interference is declared; he determines motions made under Rules 109 and 122; determination is exclusively within his authority and cannot be reviewed by Board except as provided in last sentence of Rule 122 and in Rule 130; reasons of appeal seek to have Court direct Board to substitute sole application for joint application in interference, but Court cannot do this since it is exclusively within authority of primary examiner. 3. APPEALS-RECORD-DIMINUTION OF RECORD COSTS Court granted appellees' motion suggesting diminution of record subject to order that costs of printing additional matter be taxed on final decision; on dismissing appeal without considering merits, costs are taxed against appellees since additional matter was unnecessary to proper decision. United States Court of Customs and Patent Appeals, December 11, 1944 APPEAL from Patent Office, Interference Nos. 80,093 and 80,094 [Dismissed.] Theodore W. Miller for appellants. C. B. Spangenberg for appellee. [Oral argument November 14, 1944, by Mr. Miller and Mr. Spangenberg] Before GARRETT, Presiding Judge, and BLAND, HATFIELD, JACKSON, and O'CONNELL, Associate Judges JACKSON, Judge, delivered the opinion of the court: These are appeals in interference proceedings from decisions of the Board of Interference Examiners awarding priority of invention of the subject matter of the counts in Appeal No. 4927 to Sparrow, the senior party, and in Appeal No. 4928 to Gille, the senior party. [1] Both appeals relate generally to the same subject matter. The attorneys for the parties in each case are the same, and the appeals were argued together. Therefore they will be disposed of in a single opinion. The invention of both interferences pertains to an automatic burner control system. Further description is unnecessary for the reason that the only questions involved here are those of law. Both of the interferences involve an application of appellants, Serial No. 274,904, filed May 22, 1939. Appeal No. 4927 involves the patent to Sparrow, No. 2,245,730, granted June 17, 1941 on application Serial No. 142,115, filed May 12, 1937, and Appeal No. 4928 involves the patent to Gille, No. 2,231,420, granted February 11, 1941 on an application, Serial No. 232,607, filed September 30, 1938. In each of the interferences appellants copied claims from the respective patents. No testimony was taken by any of the parties. Appeal No. 4927 The interference was declared on April 15, 1942, and statements were required to be filed on or before May 18, 1942, which date was extended to June 15, 1942. No preliminary statement was filed by the joint inventors, but on June 15, 1942 Cohen, one of the joint applicants, filed what is entitled an Amended Preliminary Statement. In such statement he deposed and said that he was a party to the interference and that he alone made the invention set forth therein. On July 20, 1942, more than one year after the Sparrow patent issued (June 17, 1941), Cohen filed his sole application as an alleged division of the joint application. In his application Cohen alleged that he was the sole inventor of the claims which are the counts herein. On July 23, 1942 an order to show cause issued, in which it is stated that the joint inventors requested leave to withdraw their application and substitute that of Cohen. The Examiner of Interferences stated that the application of Cohen was not identical with the joint application and therefore it was desirable that the question of substitution be considered inter partes before the substitution was made, and accordingly the joint inventors were advised to bring a motion to substitute under Rule 109 during the motion period, which was set to expire August 24, 1942. Cohen would then be given an opportunity to file a new preliminary statement if his application were substituted. It was held by the Examiner of Interferences that, since no joint statement was filed on behalf of the joint inventors, they were restricted to their record date, which being subsequent to the filing date of Sparrow, notice was given that judgment on the record would be |