not in conflict with the use made by Whittemore Bros. Corporation, but appellant cannot extend the use to a mere element of its manufacture to the damage of appellee or to the confusion of the public. The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed. [Court of Appeals of the District of Columbia.] IN RE CROSBY STEAM GAGE AND VALVE Co. Decided February 4, 1918. 248 O. G., 769; 47 App. D. C., 382. TRADE-MARKS-DESCRIPTIVENESS. 66 'High-Efficiency" as a mark for valves is "more descriptive than suggestive and hence " not registrable. Mr. R. W. Foster for the appellant. Mr. T. A. Hostetler for the Commissioner of Patents. ROBB, J.: This is an appeal from a decision of the Patent Office denying registration of the words "High-Efficiency" as a trade-mark for safety relief-valves. We agree with the Patent Office that this mark is more descriptive than suggestive and hence that, under the numerous decisions of this court, it is not subject to exclusive appropriation. The decision is affirmed. Affirmed. [Court of Appeals of the District of Columbia.] F. P. KIRKENDALL & COMPANY v. F. MAYER BOOT & SHOE COMPANY. Decided January 7, 1918. 248 O. G., 769; 47 App. D. C., 245. TRADE-MARKS-SIMILARITY- "DRI-SHOD" AND 66 SHOES. "DRY-SOCKS," FOR BOOTS AND Registration of "Dri-Shod" as a trade-mark for boots and shoes canceled because too similar to Dry-Socks," previously used. These terms "not only sound alike but obviously are intended, when applied to shoes, to convey the same idea." Mr. W. F. Small and Mr. W. K. Small for the appellant. ROBB, J.: The Patent Office, upon the petition of appellee, canceled the word "Dri-Shod," which it previously had registered for appellant as a trade-mark for boots and shoes, and this appeal followed. From the petition for cancelation the following facts appear: Appellee is a corporation, with its principal place of business in Milwaukee, Wis. Since about 1898 it has sold shoes under the trademark "Dry-Socks." This mark appellee applied to have registered but the application was refused on the ground that it is descriptive. It is alleged that appellant's mark so nearly resembles that of appellee as to cause confusion in the public mind, to appellee's injury. To this petition appellant filed a general denial. Testimony was taken by appellee establishing the averments of its petition and that it had extensively advertised the "Dry-Socks" shoe in the West through the medium of newspapers, magazines, and trade journals. Appellant also is a corporation with its principal place of business at Omaha, Nebr., and the earliest date claimed for the adoption of "Dri-Shod" is 1915. We agree with the Patent Office that these marks are altogether too much alike to entitle appellant to registration. They not only sound alike but obviously are intended, when applied to shoes, to convey the same idea. It is the old story of an attempt by a rival firm to reap where it has not sown, and certainly such attempts ought not to be sanctioned by the Patent Office. The decision was right, and is affirmed. [Court of Appeals of the District of Columbia.] 248 O. G., 1004; 47 App. D. C., 428. 1. INTERFERENCE-RIGHT OF APPLICANT TO CLAIMS OF A PATENT-ESTOPPEL. The failure of an applicant during a period of more than a year following the grant of a patent to assert his rights to claims in that patent Held to estop him from making them at all unless he shall satisfy the Commissioner that the delay was unavoidable. (Rowntree v. Sloan, C. D., 1916, 192; 227 O. G., 744; 45 App. D. C., 207, construed.) 2. SAME JURISDICTION OF THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA. Held that the Court of Appeals of the District of Columbia has jurisdiction to consider, on an appeal from an award of priority in an interference involving an applicant and a patentee, the question of the applicant's laches in copying the claims of the patent. (For Commissioner's decision, see ante, 9; 248 O. G., 1003.) Mr. Paul Synnestvedt and Mr. H. L. Lechner for the appellant. Mr. John L. Jackson for the appellees. SMYTH, C. J.: This is an appeal from the decision of the Commissioner of Patents in an interference case. Appellant obtained his patent in 1913. In 1909 appellees filed an application for a patent which disclosed the invention of the issue but did not claim it. On July 6, 1915, twenty months after the granting of the Wintroath patent, and more than six years after the filing of their parent application, the appellees filed a divisional application embracing the claims of the issue. An interference having been declared, appellant asserted that because appellees were remiss in making their claims, they were barred. In support of this, appellant points to our decision in Rowntree v. Sloan (C. D., 1916, 192; 227 O. G., 744; 45 App. D. C., 207), where it was held that, in analogy to the time allowed by the statute for amendments to applications (Rev. Stats., sec. 4894), a failure for more than one year to make a divisional application amounted to laches and barred its allowance. The Commissioner refused to follow the decision on that point, saying it was obiter and ruling that in his judgment the time should be two years instead of one, on the analogy of the statute which gives an inventor that length of time after a patent has emerged to another for his invention before it is necessary for him to file his own application. (Rev. Stats., sec. 4886.) He therefore decided that the appellees were not chargeable with laches and awarded them priority. We do not think the decision in the Rowntree case on the point referred to is obiter. The delay in that case was for thirty-six months. It was necessary to decide whether or not it constituted laches and in doing so it was proper to indicate the limit-one year— beyond which delay would amount to laches. Nor do we believe that the two-year rather than the one-year period should prevail. True, there is some resemblance between the divisional application of the Chapmans and an application of an inventor whose invention has been patented to another, but it is not as intimate as that which exists between their application and one for leave to amend. Their application, if granted, would be in the nature of an amendment to their parent application and would date back to it, (Lotz v. Kenny, C. D., 1908, 467; 135 O. G., 1801; 31 App. D. C., 205), while there is no element of an amendment in the application of an inventor under the two-year statute. In the one case there is something to amend, in the other nothing. We therefore adhere to the ruling in the Rowntree case, but with this modification however:-The period should be one year unless the applicant shall satisfy the Commissioner that the delay was unavoidable. This brings the holding into closer harmony with the statute governing amendments (Rev. Stats., sec. 4894) than is done by the Rowntree case. Appellees assert that, however this may be, we have no right to consider laches in an interference proceeding, and they cite a number of decisions of this court to the effect that our jursdiction in such proceedings" is confined to a determination of the question of priority." Undoubtedly that is the law. But, what is meant by priority? Does it mean priority of conception; or of reduction to practice with diligence; or reduction to practice without diligence; or all of these things and more? In determining the question of priority we have considered which party procured from the other the idea of the invention, (Milton v. Kingsley, C. D., 1896, 420; 75 O. G., 2193; 7 App. D. C., 531;) whether there had been a reduction to practice, (Stevens v. Seher, C. D., 1897, 761; 81 O. G., 1932; 11 App. D. C., 245;) lack of reasonable diligence, (Paul v. Johnson, C. D., 1904, 610; 109 O. G., 807; 23 App. D. C., 187;) Wickers v. McKee, C. D., 1907, 587; 129 O. G., 869; 29 App. D. C., 4;) concealment, (Matthes v. Burt, C. D., 1905, 574; 114 O. G., 764; 24 App. D. C., 265;) existence of reasonable diligence, (Yates v. Huson, C. D., 1896, 278; 74 O. G., 1732; 8 App. D. C., 93;) the effect of constructive reduction to practice, (Sherwood v. Drewsen, C. D., 1907, 642; 130 O. G., 657; 29 App. D. C., 161;) that one party was the agent of another, (Milton v. Kingsley, C. D., 1896, 420; 75 O. G., 2193; 7 App. D. C., 531;) Huebel v. Bernard, C. D., 1900, 223; 90 O. G., 751; 15 App. D. C., 510;) and the right of a party to make the claims of the issue, (Podlesak v. McInnerney, C. D., 1906, 558; 120 O. G., 2127; 26 App. D. C., 399; Wickers v. McKee, C. D., 1907, 587; 129 O. G., 869; 29 App. D. C., 4.) Priority in an interference proceeding is the ultimate question for determination, but before it can be reached it may be, and usually is, necessary to decide one or more incidental or ancillary questions, as is shown by the decisions just referred to and others which might be cited. It is argued that, because we have also held that in an interference proceeding we would not decide whether there existed a statutory bar to the granting of a patent to the successful party, or whether either of the parties to the interference would ultimately have the right to a patent, we should not, if we follow the doctrine of those decisions, consider laches in this case. This does not follow. There is a clear distinction between those questions and laches as it arises in this case. It relates to a different purpose. The dispute in an interference case is in respect to which one of the disputants is entitled to priority concerning a given alleged invention. (Foster v. Antisdel, C. D., 1899, 413; 88 O. G., 1527; 14 App. D. C., 552; Prindle v. Brown, C. D., 1904, 680; 112 O. G., 957; 24 App. D. C., 114.) Let us suppose that A and B are the contestants. If it be held that as between them A conceived and reduced the invention to practice in 1915 but that B never thought of it until 1916, it would profit B nothing to show that A could not secure a patent for the invention, either because it was not patentable, or his right to a patent was barred by the statute of public use, or for any other reason. Therefore such a showing would be immaterial. These infirmities in A's situation would present questions between him and the Patent Office, in which B as an applicant would have no interest. whatever. They would arise in a proceeding different from an interference proceeding, and one in which the parties were not the same. Consequently our holdings that the bar of the statute of public use, lack of patentability, and similar questions are not justifiable in an interference proceeding, is in no way inconsistent with the holding that laches is. There is nothing in the record to show that the Chapmans' delay in presenting their application was unavoidable. In view of what has been heretofore said, the decision of the Com missioner is reversed, and priority as to all the claims of the issue is awarded to John A. Wintroath. Reversed. [Court of Appeals of the District of Columbia.] THE THOMAS MANUFACTURING COMPANY v. THE AEOLIAN COMPANY. Decided February 4, 1918. 249 O. G., 505; 47 App. D. C., 376. 1. TRADE-MARKS-SIMILARITY- -" ORCHESTROLA 66 "Orches 'Orchestrola," for phonographs, Held confusingly similar to trelle," for automatically operated organs. 2. SAME-SAME-USE OF ANOTHER'S REPUTATION. An opposition to registration of "Orchestrola " is properly sustained. where it appears that another had used "Orchestrelle" for automatically, operated organs and now also deals in phonographs. One familiar with the "Orchestrelle" organ would be likely to think that a phonograph marked "Orchestrola" was produced by the same maker. Mr. H. J. Jacobi and Mr. Parker Cook for the appellant. SMYTH, C. J.: The Thomas Company in 1916 adopted as a trade-mark for phonographs the word "Orchestrola," and soon thereafter applied for its registration. The Aeolian Company opposed the registration and asserted that in 1900 it registered the word "Orchestrelle" as a trade-mark; that the goods for which the Thomas Company was seeking to register "Orchestrola "-phonographs or talking-machines were of the same descriptive properties and were comprised 84150°-19- -13 |