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conceded by appellant to be “broader than the claims originally submitted with the appellant's timely filed application for a broadened reissue patent.”

Thus, the issues presented for determination in this appeal are:

[1] (1) Whether claims presented in a reissue application filed within two years of the original patent grant are barred by 35 USC 251 when such claims are not submitted until more than two years after the grant and are broader in scope than both the original patent claims and the broadening reissue claims originally submitted, and

(2) Whether the reissue oath originally filed with the reissue application is adequate to support the newly submitted claims.

As a corollary to (2) above, appellant contends that an issue before us is whether the board erred in refusing to consider, on petition for reconsideration, whether the original reissue oath can be supplemented after the two-year statutory period prescribed by 35 USC 251.

The essence of the Patent Office's position is set forth in the opinion of the board as follows:

The fourth paragraph of 35 U.S.C. 251, which reads as follows:

“No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent." makes no direct mention of an application. Thus, it seems to us that the language could just as well mean that no reissue patent shall be granted enlarging the scope of the claims of the original patent, unless said claims are applied for within two years of the grant of the original patent.

Patent Office Rule 175 requires the reissue oath to particularly specify the errors relied upon, which appellant has done in this case by referring particularly to Fig. 4 in his oath, and the fact that he had failed to claim the invention in the breadth set forth in claims 20 to 31, inclusive. Thus, it appears that the two-year period in which to file for broadened reissue claims is granted for the purpose of enabling the patentee to discover particular deficiencies in the breadth of the claims as originally granted, and not as a period in which to decide whether or not he should spread a net to catch any broad subject matter which he may later decide should have been captured.

(Claims 32–35, 42 and 43] are drawn essentially to the uphole mechanisms shown in Figs. 4 and 5, and nowhere do they require the specific instrumentalities set forth in the reissue oath and the device covered by claim 20. Therefore, these claims stand without an adequate reissue oath, and as claims broader than the patent claims for which no reissue claim was made within the two-year period allowed by the statute.

In support of this position, the solicitor contends, are the decisions in La Maur, Inc. v. DeMert & Dougherty, Inc., 265 F. Supp. 961 (N.D. Ill. 1965), 148 USPQ 59, aff’d at 152 USPQ 163 (7th Cir. 1966) and Stohr et al. v. Brenner, 157 USPQ 675 (D.D.C. 1968), affd at 162 USPQ 73 (D.C. Cir. 1969). Among the district court's 23 "Conclusions of Law” in La Mauris:

19. The reissue claims are also invalid because they are broader than the original claims and broader than the reissue claims originally presented and the doubly broadened subject matter was not claimed until more than two years after the original patent had been granted. Title 35 U.S.C. Sec. 251.

To similar effect is the court's conclusion and holding in Stohr, involving "doubly broadened" claims presented in a reissue application filed more than four years after the original patent grant, such application alleged to be, however, a continuation of a reissue application filed within two years of the issue date of the patent. Neither appellate court made any reference to the above ground in their respective affirmances.

We agree with appellant that the above-cited decisions are of little assistance to us in deciding the issues squarely presented to this court. Neither opinion does more than acknowledge the issue and state a conclusion. No analysis pertinent thereto is set forth. In La Maur the conclusion of law is but one of many conclusions drawn in the main from those submitted by the prevailing party, and in Stohr other factors, possibly relevant, are present.

Although the language of 35 USC 251 appears to us free of ambiguity, the above decisions, despite the absence of logic or rationale justifying the courts' interpretations of 35 USC 251, have prompted us to consider the legislative history pertaining to the enactment of 35 USC 251 to ascertain whether there was any intent contrary to the apparent meaning of the language therein.

Senate Report No. 1979 on H.R. 7794, the patent bill, 1952 U.S. Code Cong. & Adm. News 2394, 2419, repeats in substance House Report No. 1923 (p. 26) and explains the fourth paragraph of section 251 merely as follows (Report, p. 26):

A two year period of limitation on applying for broadened reissues is added, codifying the present rule of decision with a fixed period. P.J. Federico, in his Commentary on the New Patent Law in 35 USCA following page 1, states (page 44 of commentary): The new statute enacts a fixed period of two years from the grant of the original patent, within which to apply for a reissue “enlarging the scope of the claims of the original patent.” Such a reissue cannot be obtained on an application filed more than two years after the date of the original patent, and presumably is timely if applied for within two years as far as the reissue requirements are concerned.

We are unable to ascertain from the above any intent similar to the interpretation placed on section 251 by the board. To the contrary, it appears clear that the language "applied for” refers to filing of an application. The solicitor further makes reference to rights of the public. We have considered that argument but believe it unnecessary to comment thereon in detail in view of our interpretation of section 251 except to note, as does appellant, that 35 USC 252 provides safeguards for the public by virtue of its intervening rights provisions.

With respect to the rejection based on lack of an adequate reissue oath, it appears to us from the language employed by the board in its opinion that the affirmance of that rejection was based substantially on the view that the claims were barred by 35 USC 251. While Patent Office Rule 175 sets out requirements for reissue oaths, including that the applicant make a statement "distinctly specifying the excess or insufficiency in the claims,” we do not see where there has been a lack of compliance therewith in this case. The original reissue application oath specifies: None of the patent claims affords for the embodiment of Fig. 4 patent coverage of the scope possessed by claims 20–31, inclusive, which form part of the foregoing specification, nor were claims of comparable scope ever presented during the pendency of the original application on which said Letters Patent were granted. If the claims on appeal are broader in scope than claims 20–31, originally presented, as all agree, it is clear that none of the patent ciaims afforded patent coverage of the scope of claims 32–35, 42 and 43 either. We are unable to perceive any other objections by the board to the oath in question. No particular defect has been singled out or commented upon by the board. On this record, we agree with appellant that the oath is adequate.

The decision of the board is, accordingly, reversed.

419 F.2d 460; 164 USPQ 204

SOUTHERN ENTERPRISES, Inc. D.B.A. THE WHOPPER-BURGER SHOP v.

BURGER KING OF FLORIDA, INC. (No. 8227)

TRADEMARKS
1. IDENTITY AND SIMILARITY-WORDS-SIMILAR

"Whoppaburger" so resembles "Home of the Whopper" that confusion is likely. 2. EVIDENCE_OF CONFUSION

It is not necessary to demonstrate actual confusion in trade in order to establish a likelihood thereof.

United States Court of Customs and Patent Appeals, January 8, 1970

APPEAL from Patent Office, Cancellation No. 8,530

[Affirmed]

Goldman & Moller, G. Turner Moller, Edward L. Goldman, Robert N. Roley, attorneys of record, for appellant.

Irons, Birch, Swindler and McKie, John R. Swindler, for appellee.

(Oral argument December 3, 1969 by Mr. Goldman and Mr. Swindler)

2

3

Before Rich, ALMOND, BALDWIN, LANE, Associate Judges, and Rao, Judge, sitting by designation.

Rao, Judge, delivered the opinion of the court:

Southern Enterprises, Inc., d.b.a. The Whopper-Burger Shop, appeals from the decision of the Trademark Trial and Appeal Board 1 granting the petition of Burger King of Florida, Inc., brought under section 14 of the Lanham Act (15 USC 1064), to cancel Southern's registration 2 of "Whoppaburger” for sandwiches."

The board granted cancellation on the basis of Burger King's prior use of "Whopper” in connection with its sales of burger-type sandwiches in its Burger King restaurants as well as its service-mark registration : of "Home of the Whopper” for drive-in restaurant services, concluding:

In our opinion the use of "Whoppaburger" by respondent in connection with sandwiches concurrently with petitioner's use of "Whopper” and “Home of the Whopper" in connection with the sale of hamburger sandwiches is likely to cause confusion or mistake or deception. * * *

Southern does not-indeed, cannot-seriously question Burger King's priority of use of either “Whopper” or “Home of the Whopper" in connection with the sale of burger-type sandwiches. Nor does it question the board's conclusion that the goods are substantially the same. Rather Southern urges that the board erred in considering the use by Burger King of the expression “Whopper” at all. In Southern's view, Burger King did not prove the trademark usage of “Whopper" which it alleged in its petition for cancellation, and thus did not establish that the registration sought to be cancelled will cause Burger King any damage.

1 Reported at 153 USPQ 688.
2 Registration No. 791,918, issued June 29, 1965.
* Registration No. 782,990, issued January 5, 1965.
• The record supports the board's findings that:

The restaurants operating under the name "Burger King" are self-service restaurants specializing in a limited menu comprising hamburgers, fish sandwiches, hot dogs, french fries, milk shakes, soft drinks, coffee, and milk. The main item of sale is a hamburger which is sold under the designation "Whopper" and "Whopper" hamburger sandwiches have been sold in “Burger King" restaurants since 1958. And since that same time, “Burger King" restaurants have featured the service mark “Home of the Whopper."

Appellee's case here, however, does not depend on its proving that it made trademark use of the expression “Whopper.” It is sufficient if we find a likelihood of confusion between “Whoppaburger” and appellee's registered service mark "Home of the Whopper.”

[1] Turning to that question, we have considered Southern's arguments that “Whoppaburger” and “Home of the Whopper” differ in appearance, sound and meaning; that “Home of the Whopper” is a “weak” mark; and that it is somehow "significant” that no evidence of actual confusion has been adduced by Burger King. Those arguments, however, do not convince us of error in the board's decision. We are satisfied that purchasers familiar with appellee's drive-in restaurants operating under the service mark “Home of the Whopper” wherein "Whopper” burger-type sandwiches are sold would, on encountering appellant's "Whoppaburger” sandwiches, be likely to assume by reason of confusion, mistake or deception that a common [2] source or origin existed. It is not necessary, of course, to demonstrate actual confusion in trade in order to establish a likelihood thereof. Salem Commodities, Inc. v. Miami Margarine Co., 44 CCPA 932, 244 F. 2d 729, 114 USPQ 124 (1957).

The decision is affirmed.

5

419 F.2d 910; 164 USPQ 205
IN RE ALAN J. LEMIH (No. 8230)

PATENTS

PARTICULAR PATENTS—COMPOSITION

Composition and Process, Claims 6, 7, 9, and 11 of application allowed; claims 1 to 5, 8, and 10 refused. United State Court of Customs and Patent Appeals, January 8, 1970

APPEAL from Patent Office, Serial No. 430,483

[Modified]

Carl A. Randles, Jr., attorney of record, for appellant.
Eugene 0. Retter, George T. Johannesen, of counsel.

Joseph Schimmel for the Commissioner of Patents. Leroy B. Randall, Jack E. Armore, of counsel.

[Oral argument December 4, 1969 by Mr. Randles and Mr. Armore)

Before Rich, ALMOND, BALDWIN, LANE, Associate Judges, and Rao, Judge, sitting by designation.

ALMOND, Judge, delivered the opinion of the court:

6 As appears from an earlier decision of the board, appellee's service mark, which identifies its restaurant services and distinguishes them from those of others, has been construed to refer to the place where not only appellee's restaurant services are rendered but also where its goods-here “Whopper” hamburger sandwiches-are sold. See In re Burger King of Florida, Inc., 136 USPQ 396 (TTAB, 1963).

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