In support of his position, Brokaw points out that Vogel did not file his application 3 until more than five years (1957 to 1963) after his actual reduction to practice and only six days before the expiration of the one-year period set by 35 USC 135 for an applicant to make a claim to the same subject matter as a claim of an issued patent. He also emphasizes that the testimony shows that the equipment through which Vogel's actual reduction to practice was effected was dismantled. Review of the aforementioned decisions, which Brokaw in oral argument characterized as on "all fours" with the present case, reveals significantly parallel bases for a holding of concealment or suppression here. Thus, in Mason v. Hepburn, Mason waited seven years to file his application after a unit embodying his invention, a clip to secure the magazine and barrel of a gun together, had been attached to a gun ready for sale and that gun had been stored with the clip attached to it. He had also, in the meantime, procured a patent for a gun and for a different clip to secure the magazine and barrel together. In concluding that Mason had forfeited his rights to a patent for the invention as against Hepburn, the court commented: Apparently the invention as a thing of value had passed out of his mind, to which it was recalled by seeing the publication of the patent to Hepburn in the OFFICIAL GAZETTE. In Woofter v. Carlson, Carlson filed an application on his invention, an electrical connector, some eight years after his reduction to practice. The evidence showed that AMP, Carlson's assignee, was spurred into filing by knowledge that GM, Woofter's assignee, was placing the connector in commercial use. The court there found that Woofter met the burden of proving his case because he had "established in the present record facts which establish a concealment or suppression of the AMP invention within the so-called 'forfeiture rule' of Mason v. Hepburn ***" In Engelhardt v. Judd, Englehardt, who was likewise held to have forfeited his right to a patent despite an actual reduction to practice two years prior to Judd's earliest date, conceded that he had "no plans" for further activities in connection with the subject matter, a chemical compound, at the time when he became aware of Judd's patent. In other words, the evidence justified the conclusion that knowledge of the Judd patent was the direct cause of Engelhardt's filing his application. On the other hand is Gallagher v. Smith, 41 CCPA 734, 206 F. 2d 939, 99 USPQ 132 (1953), relied on by Vogel and the board, but it can be distinguished on its facts from the facts here. In that case, 3 The Vogel application as filed included count 1 copied from Brokaw's patent and was accompanied by a letter requesting that the interference be declared. Smith delayed over six years after his actual reduction to practice before filing his application, which filing was also two years after Gallagher had reduced to practice. The forfeiture doctrine of Mason v. Hepburn was held not to be applicable because Gallagher had failed to show concealment or suppression, as distinguished from mere delay, by positive proof. Moreover, a substantial factual difference lies in Smith having been the first to file while here Vogel is the junior party. [1] The main facts weighing against Vogel are that he delayed more than five years in filing and that he obviously had knowledge of the Brokaw patent when he did file. Brokaw further points to the circumstance of the dismantling of the Vogel system which was reduced to practice as indicating an intention to take no further action on Vogel's invention. The evidence on the latter point is only that the equipment had been dismantled at some time before the testimony was taken in March of 1966, three years after Vogel filed. It is not seen that a dismantling, which may have taken place after Vogel's application was filed, proves by itself that Vogel intended to suppress or conceal his invention, particularly when it is recognized that the system embodied electronic components which might well have had more practical uses than lying dormant in experimental apparatus whose efficacy had already been fully established. However, it is not necessary to show that Vogel had a specific intent to suppress or conceal. Considering all the evidence, the board summarized its reaction thereto as follows: We are not convinced that disassembly of the Vogel device without more definite evidence as to the attitude at Shell towards the invention is sufficient to amount to abandonment or concealment under the Mason v. Hepburn doctrine. Further, although delay in filing the Vogel application for nearly a year after issuance of the Brokaw patent generates a strong suspicion that such filing was spurred by knowledge of that patent, we are not convinced that in the absence of more positive evidence a holding of spurring is justified. In providing for copying patent claims within one year from the issue date of the patent Congress imposed no limitation with respect to the filing of an application in which such claims could be copied. We think that it would be improper to in effect impose such a limitation by an award of priority as here urged by Brokaw in the absence of more positive proof than has here been presented. The board felt that this case was more like the Gallagher case than the cases relied on by Brokaw, Woofter and Engelhardt, and said that it failed to find here the positive evidence which Gallagher calls for and which was present in Woofter and Engelhardt. In the Gallagher case it would appear that Smith was almost continuously active in 4 This evidence was elicited by Brokaw in the cross-examination of Vogel's witnesses and Brokaw might well have pursued the point to determine the approximate date of the dismantling. pursuing the commercialization of his invention in various ways, in addition to being the first to file. An unusual feature of that case was that Gallagher's assignee was a licensee under two earlier Smith patents and also under the very patent involved in the interference from which the counts came. Smith was not one to leave his reduced-topractice inventions locked in the cupboard. There has been discussion in the briefs here as to whether it was incumbent on Brokaw to prove that Vogel was incited or "spurred" to activity by knowledge of Brokaw's patent but even in Gallagher this court made it clear that such evidence is not a prerequisite to application of the Mason v. Hepburn doctrine. (See the penultimate paragraph of the opinion.) While it may have been trite to say so, we pointed out in Englehardt that "the cases are in full accord that each case of alleged suppression and concealment must be considered and decided on its own facts." We then applied the forfeiture doctrine of Mason v. Hepburn to a fact situation in which the delay in filing after an actual reduction to practice had been only two and a quarter years where the inventor testified that only one compound had been made and tested and that he had "no plans" to go forward with the work and where he did not in fact file until after seeing his rival's patent on the same compound. Here the delay between Vogel's reduction to practice and filing date is very much longer-more than five years-and there is nothing to show that any step was ever taken by Vogel during that time to make the invention available to the public and nothing tending to excuse Vogel's inaction. It is also reasonable to infer from the record here that it was knowledge of Brokaw's issued patent that led Vogel to file his application when he finally did. What is involved here is a policy question as to which of two rival inventors has the greater right to a patent. We fully discussed this policy question in our recent opinion in Woofter. For reasons there stated, we feel that the public interest here requires that Brokaw be adjudged the prior inventor in law as against the de facto first inventor Vogel on the ground that Vogel "suppressed and concealed" his invention within the meaning of section 102(g). In other words, on the facts here, Brokaw has the better right to a patent because he is the one who was the first to start the invention on its way to being disclosed to the public and because, so far as the record here shows, the public would never have gained knowledge of it through the efforts of Vogel. [2] Vogel's brief urges that the question of suppression and concealment is a question of fact and we should not reverse the board on this point in the absence of a convincing showing that the board was wrong. We disagree that it is a question of fact. We consider that whether there was suppression of concealment under the statute is an ultimate conclusion of law, based on other facts of record, just as "priority" is an ultimate conclusion of law. Another point made by Vogel is that he was of the opinion that an earlier-filed application on which he tried to rely contained a disclosure of the invention of the count. The primary examiner agreed with him on this but was reversed by the board. So Vogel can take nothing from this except, possibly, support for a contention as to his state of mind during the period of inaction. [3] We also disagree with Vogel's contention that the Mason v. Hepburn principle "is only to be invoked in extreme cases." It is a very healthy rule to be invoked in the public interest whenever the fact situation warrants it. While the law may abhor a forfeiture, the Mason v. Hepburn principle is not a forfeiture in the true sense; rather, it is a rule according to which the patent right goes to the most deserving. Realistically, it is a forfeiture by the de facto first inventor of the right to rely on his earlier reduction to practice. The decision of the board is reversed. TRADEMARKS 1. IN GENERAL. 429 F. 2d 466; 166 USPQ 431 IN RE BEATRICE FOODS Co. (No. 8294) REGISTRATION—EFFECT. Concurrent federal registrations do not, in and of themselves, create any new right to use trademark or to assert rights based on ownership of trademark itself; rights of trademark ownership, e.g., right to enjoin another from use of mark, must be based upon actual use and can be enforced only in areas of existing business influence (i.e., current use or probability of expansion); Lanham Act did not alter this aspect of prior law. 2. IN GENERAL. REGISTRATION-EFFECT. Rights appurtenant to ownership of federal trademark registration may be considered supplemental to those recognized at common law, stemming from ownership of trademark; federal registration gives procedural rights, such as right to invoke jurisdiction of federal courts and right to rely on evidentiary presumptions, but, more importantly, the constructive notice provision of section 22 of Lanham Act takes away from future users of the mark registered the defense of innocent appropriation; owner of federal registration has security of knowing that no one else may henceforth legitimately adopt his trademark and create rights in another area of country superior to his own; Congress intended to grant nationwide protection to expanding businesses; constructive notice provision was promulgated with hope of cutting down on the number of instances of concurrent use and uncertainty and confusion attached thereto. IN RE FAIRWAY FOODS, INC. 3. CONCURRENT USE PROCEEDINGS-IN GENERAL. Although leaving territory open in concurrent use proceeding would increase possibility of confusion and litigation, Patent Office is not required to issue registrations covering whole of United States in all circumstances; applicants may always request territorially restricted registrations; it may be that likelihood of confusion will be prevented only when each party is granted a very limited territory with parts of United States granted to no one. 4. ACQUISITION OF MARKS-CHARACTER AND EXTENT OF USE-IN GENERAL. CONCURRENT USE PROCEEDINGS-IN GENERAL. Requirements of section 2(d) of Lanham Act that parties be presently entitled to concurrently use the mark in commerce is primarily jurisdictional in nature; as with a single applicant, extent of such actual use is irrelevant so long as it amounts to more than a mere token attempt to conform with requirement of statute. 5. CONCURRENT USE PROCEEDINGS IN GENERAL. Touchstone of section 2(d) of Lanham Act is requirement that there be no likelihood of confusion as to source of goods resulting from continued concurrent use of trademark; once it is determined that both parties are entitled to registration, extent to which registrations are restricted territorially must also be governed by statutory standard of likelihood of confusion. 6. CONCURRENT USE PROCEEDINGS IN GENERAL. In concurrent use proceedings in which neither party owns a registration for mark, starting point for any determination as to extent to which registrations are to be territorially restricted should be conclusion that prior user is prima facie entitled to registration covering entire United States; such prior user, who applies for registration before registration is granted to another party, is entitled to a registration having nationwide effect no less than if there were no concurrent user having registrable rights; his rights and registration should be limited only to extent that any other subsequent user, who can establish existence of rights earlier than prior user's application for registration, can also prove a likelihood of confusion. 7. CONCURRENT USE PROCEEDINGS IN GENERAL. Patent Office may consider agreements worked out by parties to concurrent use proceeding, but agreements do not bind Office; however, if they are in good faith, there can be no better assurance of absence of likelihood of confusion than parties' promises to avoid activity leading to such likelihood; still, Office should not blindly adhere to parties' agreements, but should critically appraise them; they should be given effect when it is plain that they assure avoidance of confusion. 8. CONCURRENT USE PROCEEDINGS-IN GENERAL. Circumstances, short of actual use of trademark, may create rights in a territory sufficient to warrant inclusion of that territory in a geographically restricted registration; requirement of section 2(d) of Lanham Act may be less than actual use; thus, where party submits evidence sufficient to prove a strong probability of future expansion of his trade into an area, that area may be included in his geographically restricted registration; moreover, Patent Office should determine conditions with which marks are to be registered on basis of facts as they exist at time when issue of registrability is under consideration; this apparently means up to close of testimony period. 374-293-71- -40 |