Those proceedings went on all the way through the Patent Office. There was a decision of the Examiner on Interference, and then it was appealed to the Commissioner, and then there was an appeal from the decision of the Commissioner to the Court of Customs and Patent Appeals.

Now, that runs into relatively expensive proceedings. But after all that was done there still had not been settled the question of whether this newcomer was entitled to use the mark. The only thing that had been determined by all of those proceedings was the right of registration.

The CHAIRMAN. Will you pardon me for an interruption?

Mr. GIESE. Yes.

The CHAIRMAN. How much time did it take from the time the proceedings started, after the examiner had made his decision and the appeal was taken to the Commissioner, and from there to the Court of Customs and Patent Appeals; how much time elapsed during all of that period?

Mr. GIESE. In that particular case-I do not recall exactly, but I would say through all the proceedings it was at least several years. There is involved first the question of the hearing before the examiner, with the ordinary delays to suit convenience of counsel.

The CHAIRMAN. Is that the customary period of time in proceedings of that sort; do they ordinarily extend over several years? Mr. FENNING. Three to five years.

The CHAIRMAN. Three to five years?

Mr. GIESE. I would not say that they all went as far as 3 years, but certainly 2 years would be a conservative estimate to go through the Patent Office and make the appeal.

The CHAIRMAN. Could not that time be shortened? I am thinking of its value to the client in getting the matter disposed of as quickly as possible.

Mr. GIESE. I think that will be the result of this provision in the concluding section of section 21.

I had not quite completed my illustration.

The CHAIRMAN. Go right ahead.

Mr. GIESE. You see, after all of this period that we are talking about-I was representing the owner of the first mark and the hope was that if we won a favorable decision that the other side would simply fold up and stop its use, and therefore it would not be necessary to go on with the action for an injunction. But after all of these Patent Office proceedings the newcomer went merrily along using the mark and therefore, following that, we had to bring an action in the Federal district court, and we did, to get our injunction. Now at that point the newcomer did abandon, but if he had not we would have had to go to the circuit court of appeals.

Mr. PLAUCHÉ. The effect of this last provisions then would permit you to disregard the Court of Customs and Patent Appeals and go to the Federal court?

Mr. GIESE. In many situations that is true now, because in many of these cases the question is identical; it is the confusing similarity, and we have litigation at the moment in which that is being done; an appeal was filed in a certain case under the present law; you can do that, but one of the principal effects of this provision would be that the

parties could avail themselves of the court to determine the whole question involved.

The CHAIRMAN. How much time would be saved by going that way? Mr. GIESE. I would say approximately a year.

The CHAIRMAN. You would save approximately a year?

Mr. GIESE. Yes; you would save considerable time.

The CHAIRMAN. Would it cost as much as going through 4915? Mr. GIESE. I would say that there is considerably less cost when you combine the two actions.

The CHAIRMAN. That is the point I had in mind.

Mr. GIESE. I would say so.

Mr. FENNING. May I ask, Mr. Chairman, if Mr. Giese would be inclined to go along with his suggestion by providing that if an interparty case arises in the Patent Office either party may transfer it to a district court, which may determine both the right to reject the claim or to proceed?

The CHAIRMAN. To the Court of Customs and Patent Appeals?

Mr. FENNING. Not to the Court of Customs and Patent Appeals; to the district courts immediately, before any proceedings in the Patent Office.

The CHAIRMAN. To avoid that?

Mr. FENNING. Avoid all Patent Office proceedings.

Mr. GIESE. That is a new thought to me, just coming out of the blue; but my present opinion is that I would object to that for this practical reason. I handle a great many of these interparty cases in the Patent Office, and a great majority of them end in the first tribunal, where it is determined at a minimum of expense, and certainly a great many of them never reach court, where the expense at least is more.

The CHAIRMAN. With the probability at times that the client may wind up under a 77-b proceeding.

Mr. GIESE. Well, as a practical matter, I think this, and I know of cases where clients have each had a lawyer and there has been a difference of opinion, and they have simply said, "Well, let us put it to a test by having an opposition proceeding in the Patent Office and there have an independent person handle it who will give us their views on the subject. You can do all that for relatively little expense, and for that reason I think I would not be in favor of Mr. Fenning's suggestion to take all the proceedings to the court and not have any Patent Office proceeding.

The CHAIRMAN. Why would not the district courts be in position, not only to shorten the time but also reduce the expense, because naturally, when you shorten the time you can save expenses. But if you must come before an examiner, or the Commissioner, or wherever it may be to which the matter is referred it involves delays and often travel, whereas in the district court you could bring the whole matter up at one time without the necessity of coming to the Patent Office. Mr. GIESE. Well, I think it might save some time, but I know that many of the cases will be disposed of without ever reaching court. Mr. PLAUCHÉ. Would this provision here have the effect of doing away with the Court of Customs and Patent Appeals?

Mr. GIESE. Oh, absolutely not.

Mr. PLAUCHÉ. They have other functions.

Mr. GIESE. Yes; they have other functions, and I might add this, that in many cases-from my practical experience-I know there are many cases where the parties would not avail themselves of this provision, because it often happens that the parties are content to take the proceedings through the usual channels and abide by the results. I think that is probably true in a large proportion of the cases.

We have a case now that might illustrate the effect of this language. I do not know whether your committee would be interested in the practical application to some case we now have.

The CHAIRMAN. We would be glad to hear it.

Mr. GIESE. We have a case at the moment in which Mr. Mead represents the Quaker Oats Co. and I am representing General Mills, and the controversy involves the name for a new cereal which the Quaker Oats Co. is going to put out.

Now, here is the way the thing has come up: Originally, so far as we could ascertain, the Quaker Oats Co. made virtually no use of the mark; it made technical shipments; and it filed application for patent-incidently this is a Commissioner proceeding—an application for trade-mark registration; they filed application and we opposed it. The examiner in interference dismissed the opposition and we took an appeal to the Commissioner of Patents, to Mr. Frazer, who is present here today. Mr. Frazer reversed the examiner of trade-mark interference and sustained the opposition.

Now, up until that stage of the proceeedings, so far as we are aware, and I am not trying to say these are the facts, because that is something that will have to be determined later-but up to that point, so far as we can ascertain, the Quaker Oats Co. had not made any material use of its mark; what it was trying to do was to find out what the commercial use might be for the mark, which was good sound business practice.

Notwithstanding that fact, the fact that of our opposition and our position being sustained by the Patent Office, they commenced actual commercial use of this mark and moved to have it tested in various parts of the United States and apparently it is their intention to nationalize this mark.

Now, in a situation like that it is obviously the best thing for all concerned to decide in one litigation both the question of the right of the Quaker Oats Co. to register that mark and the right of the Quaker Oats Co. to use that mark. But the Quaker Oats Co. did not proceed under 4915, which it had the right to do under the present law. It filed an appeal to the Court of Customs and Patent Appeals which would have determined only the question of registration. We thereupon filed an election, to have further proceedings under 4915, and having filed that election, the election was sustained, and now action has been filed in the United States District Court for the Northern District of Illinois. They filed their bill under 4915 asking for declaratory judgment; and we filed a counterclaim, claiming interference and unfair competition, with the hope of winding the whole matter up in that suit.

The CHAIRMAN. Was either party asked to put up bond for any losses that may be sustained as a result of either decision or for infringement?

Mr. GIESE. No; not at this stage; the request is for permanent injunction.

The CHAIRMAN. Has either party made use of the trade-mark? Mr. GIESE. Our mark is the most extensively advertised cereal mark in the United States.

The Quaker Oats Co. is putting out under its mark a cereal in certain sections of the country; for instance, at Peoria, and on the west coast, and at various parts of the country to determine its commercial use. I believe that is all, Mr. Chairman.

STATEMENT OF THOMAS L. MEAD, WASHINGTON, D. C.

Mr. MEAD. Mr. Chairman, may I supplement what Mr. Giese has just said?

The CHAIRMAN. Yes.

Mr. MEAD. By stating that I am in favor of this amendment, for this reason: We had to go to the Court of Customs and Patent Appeals on an application for a petition to hear our case and they turned it down.

Now it seems likely the statute as it is written now does not give the successful party the right to make an election and with such a provision we will know in the future which way to go.

The CHAIRMAN. Why was the application turned down?

Mr. MEAD. It was turned down because they felt that Revised Statute 4911 gave the right to opposer to go to court.

The CHAIRMAN. Is there anyone else who wishes to make a statement this morning? Are there any witnesses present who want to be heard in rebuttal, or any out of town witnesses who want to be heard this morning? If not I will adjourn the meeting today until Wednesday, a week from tomorrow at 10 o'clock.

(At 11: 15 a. m. an adjournment was taken until 10 a. m. Wednesday, November 12, 1941.)

TRADE-MARKS

WEDNESDAY, NOVEMBER 12, 1941

HOUSE OF REPRESENTATIVES,

SUBCOMMITTEE OF THE COMMITTEE ON PATENTS,

Washington, D. C.

The subcommittee met at 10 a. m., Hon. Fritz G. Lanham presiding. Among those present before the subcommittee were:

Mr. Jennings Bailey, Jr., chairman, committee on legislation, American Bar Association, Press Building, Washington, D. C.

Mr. Thomas Quinn Beasley, president, National Council on Business Mail, Inc., Second National Bank Building, Washington, D. C.

Mr. Robert W. Byerly, of Byerly, Watson & Simonds, 225 Broadway, New York City.

Mr. G. C. Callan, 624 Washington Loan & Trust Building, Washington, D. C. Associate of Mr. Charles R. Allen, former examiner of trade-marks, United States Patent Office.

Mr. Chauncey P. Carter, 3111 Foxhall Road, Washington, D. C. Dr. Walter J. Derenberg, United States Trade Mark Association, 522 Fifth Avenue, New York City.

Mr. Karl Fenning, editor, United States Patents Quarterly, National Press Building, Washington, D. C.

Mr. Leslie Frazer, First Assistant Commissioner of Patents.

Mr. S. Warwick Keegin, of Semmes, Keegin, Beale & Semmes, Investment Building, Washington, D. C.

Mr. C. E. Lancaster, of Lancaster, Allwine & Rommel, 815 Fifteenth Street NW., Washington, D. C.

Mr. Sylvester J. Liddy, chairman, committee on trade marks, Association of the Bar of the City of New York, of Munn, Liddy, Glaccum & Kane, 24 West Fortieth Street, New York City.

Mr. Wallace H. Martin, of Nums, Verdi & Martin, 60 East Fortysecond Street, New York City.

Mr. Thomas L. Mead, Jr., of Browne & Phelps, 850 Munsey Building, Washington, D. C.

Mr. Hugo Mock, representing Toilet Goods Association, Inc., 10 East Fortieth Street, New York City.

Dr. Karl Pohl, of Briesen & Schrenk, 49 Wall Street, New York City.

Mr. Louis Robertson, of Mann, Brown & Cox, 53 West Jackson Boulevard, Chicago, Ill.

Mr. Edward S. Rogers, of Rogers, Ramsey & Hoge, 41 East Fortysecond Street, New York City.

Mr. Thomas E. Robertson, former Commissioner of Patents.

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