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same in operation in the month of July, 1813, and left that place in No. vember following, leaving it in the shop. This, in connection with the other circumstances above related, affords conclusive evidenco to my mind of the public use of Anson's invention for a period of more than two years prior to the filing of his application. While this preliminary statement would not be received as evidence against another, it is admissible as a statement or admission under oath against the party making it.
The discussion which was had respecting the grant of the Woodbury patent and its validity, I do not think necessary to notice here. The patent has been granted, and cannot now be affected by any decision of this Office. The case of Anson is clear. A patent, if granted to him, could not be maintained, and cannot, therefore, be granted.
It having been shown that Auson is not entitled to the patent he applies for, there is no necessity for the continuance of an interference proceeding.
I accordingly dissolve the interference, and direct the Examiner to notify Anson that his application stands rejected.
WILLIAM S. SMOOT.
0. G., vol. xi, p. 1010.
INTERLOCUTORY APPEAL FROM THE DECISION OF THE EXAMINER IN THE MATTER OF THE APPLICATION OF
WILLIAM S. SMOOT, FOR THE REISSUE OF LETTERS PATENT NO. 97,821, DATED DECEMBER 14, 1869, FOR AN "IMPROVEMENT IN REPEATING FIRE ARMS."_Division B.-Decided April 17, 1877.
The jurisdiction of the Board of Examiners-in-Chief is limited in ex-parte cases to the
adverse decisions of the Primary Examiners. If there appear reasons for refusing the patent other than those alleged by the Examiner, a statement should be made
to that effect to the Commissioner. The objection made to the application was want of novelty, and upon appeal to the
Board it reversed the decision of the Examiner as to three of the four claims, but one member of the Board giving it as his opinion that new matter was included, remanded the case to the Examiner for his further consideration : Held, that his remanding the case to the Primary Examiner for reconsideration on that point was entirely unauthorized, and without the additional approval of the Coinmissioner, the
reconsideration by the Primary Examiner was also unauthorized. The rules of the Office have the force of law so long as they remain unrepealed, and are
as binding upon its officials as they are upon the general public. The Commissioner is bound to take notice of an objection to the patentability of a case
whenever and however his attention may be called to the subject. Where, however, the matter is properly cognizable by a lower appellate tribunal, the
Commissioner will not interfere except in extraordinary cases, to prevent frand or remedy an action clearly opposed to some requirement of the law. An expression of opinion by one member of the Board does not constitute a decision DOOLITTLE, Assistant Commissioner :
of that tribunal. Examiners are admonished to be careful in making a thorough examination of all
questions affecting an application before final rejection. WARREN C. STONE for applicant.
Four claims of applicant were rejected by the Primary Examiner upou references, and an appeal was taken from his decision to the Examiners. in-Chief. They reversed the decision of the Examiner as to three of the claims, and affirmed hiin as to the fourth. But in addition to this action one of the Examivers-in-Chief, although regarding the references as to three of the clains not pertinent, yet expressed his opinion that the principal device therein was new matter in the reissue application. He accordingly remanded the case to the Examiner for further consideration and such other action as the Examinez' might deem proper.
Rule 43 provides thatThe Examiners-in-Chief will consider the case as it was when last passed upon by the Primary Examiner, merely revising his decisions so far as they were adverse to the appellant. If, however, they discover any reason not given by the Examiner why a patent should not issue, they should make a statement to that effect to the Commissioner.
The Primary Examiner not having alluded to the question of new matter, the Examiner-in-Chief should bave confined his action to the making of the statement to the Commissioner, as the rule provides. His remanding the case to the Primary Examiner for recop sideration on that point was entirely unauthorized, and, without the additional approval of the Commissioner, the reconsideration by the Primary Examiner was also unauthorized.
The rules of the Office have the force of law so long as they remain unrepealed, and are as binding upon its officials as they are upon the general public.
Tbe Primary Examiner in bis reconsideration of the case held the ob. jection of new matter well taken, and accordingly again rejected the application. The applicant now takes an interlocutory appeal based upon the above points of practice, and asks that, in view of the fact that the Examiner was reversed in bis decision upon the references, and that the subsequent action upon the question of new matter having been unauthorized, the patent now issue.
The Commissioner cannot rightfully ignore an objection to the patentability of a case whenever bis attention is called to the matter by an Examiner, or the Examiners-in-Chief, before the issue of the patent, althougb the objections may be made in an irregular manner.
It is hardly necessary, however, in cases of this kind, where the ob. jections go to the merits of the case, and constitute proper matter for appeal from one tribunal of the Office to another, and from thence to the courts, that the Commissioner should take the matter into his own hands and overlook the regular remedy of appeal. Such a course would appear necessary only in extraordinary cases, to prevent fraud, or where, in the Commissioner's opinion, an affirmative action of a lower tribunal was clearly opposed to some requirement of the law.
One member only of the Board having passed upon the question of
new matter, it may be said that the expression of bis opinion does not constitute a decision by that tribunal, and this not being a case requiring the extraordinary interposition above alluded to, it is preferred that the applicant should pursue the regular course of appeal.
This is another instance illustrating the necessity of a careful observation, on the part of Examiners, of the rules requiring the thorough examination of all questions before final rejection.
THE GOODYEAR RUBBER COMPANY.
Interlocutory Appeal. 0. G., vol. xi, p. 1062.
APPEAL FROM THE DECISION OF THE EXAMINER OF TRADE-MARKS IN THE MATTER OF THE APPLICATION
OF THE GOODYEAR RUBBER COMPANY FOR REGISTRATION OF A TRADE-MARK, FILED DECEMBER 28, 1876.—Decided April 25, 1877.
A trade-mark consisting of words which are merely descriptive of the quality of the
goods to which the mark is to be applied will not be registered. “Crack-proof,” as a trade-mark for rubber goods, held to be descriptive of quality and
not entitled to registration. POLLOK & BAILEY for appellant. DOOLITTLE, Assistant Commissioner :
Applicant desires to register the term “Crack-Proof," applied to rubber goods. When found on a pair of rubber shoes, or a rubber coat, the term would indicate to purchasers generally a very desirable quality, viz, that the articles are proof against cracking, in the same sense that the term water-proof would indicate that the goods to which it should be applied were impervious to water. If, after a trial, it should be discovered that the goods actually did crack, it would very naturally be inferred that the term was deceptive. But it cannot be presumed that applicant intends to deceive the public by applying to his goods a term denoting a quality it does not possess.
Before the process of vulcanization invented by Goodyear, the difficulties which rendered the use of caoutchouc, or India rubber, unsuccessful in the arts were chiefly that in hot weather the rubber became soft and clammy, and in cold weather hard and stiff. These objections were overcome; but whether the article was also rendered proof against cracking does not appear in Goodyear's patent. I cannot doubt, how. ever, that the latter quality would be allotted it, in language at least, by the adoption as a trade-mark of the term "Crack-Proof.” If it does indicate a quality actually possessed in a greater or less degree, all other manufacturers of rubber goods have the same right to use the term; and the doctrine of the courts, as above čited, is that no manufacturer can monopolize words denoting quality.
6 The trade-mark must therefore be distinctive in its original signification, pointing to the origin of the article, or it must have become such by association. And there are two rules which are not to be overlooked. No one can claim protection for the exclusive use of a trade-mark or tradename which would practically give him a monopoly in the sale of any goods other than those produced or made by himself. If he could, the public would be injured rather than protected, for competition would be destroyed. Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protection. As was said in the well-considered case of The Amoskeag Manufacturing Company vs. Spear, 2 Sandford's N. Y Superior Court, 599:
6. The owner of an original trade-mark has an undoubted right to be protected in the exclusive use of all the marks, forms, or symbols that were appropriated, as designating the true origin or ownership of the article or fabric to which they are afixed; but he bas no right to the exclusive use of any words, letters, figures, or symbols which have no relation to the origin or ownership of the goods, but are only meant to indicate their names or quality. He has no right to appropriate a sign or a symbol which, from the nature of the fact it is used to signify, others may employ with equal truth, and therefore have an equal right to employ for the same purpose.'*—(Canal Company vs. Clark, 13 Wal- . lace, 311.)
In striving to put myself in applicant's place, and imagine the term a fanciful arbitrary symbol when applied to the articles in question, I find it necessary to do violence to the plain meaning of the two words wbich are here compounded.
That the term has been coined adds nothing to its value, invention not being necessary in the adoption of a trade-mark, and the coined term having no unusual signification.
The decision of the Examiner of Trade-Marks is affirmed.
WILLIAM S. KIMBALL.
0. G., vol. xi, p. 1109.
APPEAL FROM THE DECISION OF THE EXAMINER OF TRADE-MARKS IN THE MATTER OF THE APPLICATION
OF WILLIAM 8. KIMBALL FOR THE REGISTRATION OF A TRADE-MARK UPON CIGARETTES.-Decided May 3, 1877.
The law is complied with if but one fac-simile mode of using a trade-mark is illustrated. To multiply illustrations that simply show various modes of applying the mark, differ
ent arrangements of non-essential, arbitrary matter, &c., is not only unnecessary, but incumbers the Office, records and tends to confuse the public as to the scope of the registration.
* Vide Wolf vs. Goulard, 18 Howard's Reports, 64; Fetridge vs. Wells, 4 Abbott's Practice Reports, 144; Town vs. Stetson, 5 id., N. S., 218; Phalon vs. Wright, 5 Phillips, 464; Singleton vs. Bolton, 3 Douglas, 293; Perry vs. Truefitt, 6 Beavan, 66 ; Canham vs. Jones 2 Vesey & Beames, 218: Millington vs. Fox, 3 Milne & Craig, 388.
DOOLITTLE, Acting Commissioner :
The trade-mark desired to be registered by applicant consists of the words “ Vanity Fair,” applied to packages of cigarettes. The applicant, in order to comply with the requirements of the statute, as he thinks, files eight different prints or arrangements of fanciful matter, figures, &c., in counection with, or on which, he uses his trade-mark, to show the modes in which it has been applied and used. The Examiner contends that one fac-simile is sufficient to illustrate the mode of using the mark, and that it only incumbers the records of the Office and renders the description of the mark unnecessarily prolix to allow these many different forms of labels or prints to be described and filed.
I understand the law, in requiring ari applicant to describe the mode in which he has used or intends to use a trade-mark, to mean siinply the manner in which he has placed or intends placing it upon the goods to whic it is to be applied, as whether stamped on the articles themselves, or on packages containing them, or relatively located with respect to some arbitrary matter, &c., and not that he should be compelled to describe every actual and possible matter that can be used in connection with the mark.
The thing of value in the matter of registration is the trade-mark itself. No protection is afforded for the use of scrolls, fanciful figures, or other words which are not an essential part of the mark; and a full description of them in an application of this kind is not only unnecessary, but it would tend to mislead and confuse the public as to the scope and nature of the registration.
If the law required an applicant to show the different modes in wbich he had used or intended to use his trade-mark, there would be good grounds for the present appeal, but I cannot believe it to be the intention of the law that the Office should register as many different modes of applying the same trade-mark as the fancy of an applicant might dictate. If that were so, a third party might use the same trade-mark with impunity, if he could still devise a different mode of applying it. This would be giving to the shadow great value, and to the substance none at all.
The decision of the Examiner is affirmed.
A. D. ELBERS.
APPEAL FROM THE DECISION OF THE PRINCIPAL EXAMINER IN THE MATTER OF THE APPLICATION OF A.
D. ELBERS FOR LETTERS PATENT FOR "IMPROVEMENT IN THE TREATMENT OF MINERAL WOOL."Decided May 5, 1875.
Where claim was made in the same application to a process of manufacture, the article
produced, the mechanism employed, and also to certain additional steps in process