TYPE-WRITING AND COMPUTING MACHINE. Mr. Jacob Felbel for Barrett. Mr. Burnham C. Stickney for Hart. EWING, Commissioner: This is a motion by Barrett to dissolve the interference on the ground that Hart's application has no standing in the Office, or, in the alternative, to shift the burden of proof on the ground that Hart's application is not a continuation of his former application, No. 466,837, renewal No. 737,572. The motion to dissolve would be heard by a Law Examiner. If denied, the motion to shift the burden of proof would then be heard by the Examiner of Interferences. As a novel question is presented, I have heard these motions under my supervisory authority, with a view to expediting the proceedings. Hart's original application was allowed on June 17, 1912, forfeited, and renewed and again allowed on March 2, 1914. On March 26, 1914, a petition was filed for leave to enter therein the claim now in issue, taken from Barrett's patent. The petition was denied on a recommendation by the Primary Examiner, based on the statement that the claim presented did not read on the Hart disclosure. Thereafter [May 16, 1914,] Hart filed the application here in controversy. As filed it did not contain the claim now in issue. This was added September 2, 1914, the day on which the time for paying the final fee in the reallowed application expired. In the present application the Office wrote two letters. The letter of July 25, 1914, reads as follows: Applicant states that this is a continuation of application No. 466,837, now allowed. It is not clear what is the difference between these two cases, and applicant is requested to explain clearly what is the line of differentiation. The claims of this case apparently read on applicant's prior case, above referred to, and applicant had ample opportunity to put such claims in said case, and as there are claims in said case covering the same general subject matter as these claims, applicant will not be allowed to make these claims in this case. If applicant can show why he should be allowed to have these claims in this case, the above holding will be withdrawn. The second letter, dated September 23, 1914, reads as follows: In response to amendment of Sept. 2, 1914. This action is supplemental to the action of July 25, 1914. It was intended to inform applicant in the above-mentioned action that in the event of the earlier case being abandoned, either by formal declaration of abandonment or by any other method, this case would be properly a continuation of the earlier case, and any claims could be made in this case that the structure would warrant. This statement was in some way left out of the last Office letter when it was written, and this letter is now sent to applicant so that the last official action may be more clearly understood. The legal opinion expresssed in this letter has been considered; but I am not convinced that it is sound. As the reallowed application had become abandoned before it was written, this letter could not have induced the course which the applicant followed. In Weston Electrical Instrument Co. v. Empire Electrical Instrument Co. (131 Fed. Rep., 90), sustained an appeal (136 Fed. Rep., 599), the patent involved was a Weston patent, (original No. 381,305, Reissue No. 10,945.) The original application therefor was filed October 13, 1885, and allowed November 21, 1885. It was forfeited and renewed June 18, 1886, and allowed a second time on June 30, 1886. It was again forfeited and renewed on December 14, 1887. These two renewals were signed by the attorney and were clearly reapplications under section 4897 of the Revised Statutes. The patent was held to be void because granted upon a renewal filed more than two years after the allowance of the original application. The court of appeals said that the construction contended for by the appellant (the complainant) would permit an unlimited number of forfeitures and renewals and would nullify the policy of the law which requires diligence in the prosecution of applications for the issuance of patents. This comment is applicable to the case at bar if the present application is to be considered as a continuation of the former application. The form of renewal of an application which has been allowed and forfeited is not prescribed by the statute. The only difference noted in the statute between a renewed application and one in usual form, which may be an original application or may be considered a continuation, is that the petition for renewal may be executed by any one interested, whereas only the inventor can execute an original application. The legal effect of a renewed application and of an application in usual form which it is sought to have treated as a continuation is the same, excepting, possibly, with respect to the right of a second renewal. I am inclined to think that the right of renewal of an application filed as a continuation of a forfeited application is no greater than the right of renewal of a renewed application-that the two applications must be treated as one proceeding; but this broad question is not presented. All right to keep the reallowed application alive expired with the failure to pay the final fee within six months of the second allowance. To hold that the applicant by filing an application in the usual form before the expiration of the six months may through the doctrine of continued applications start the whole process over again and still relate back to the date of filing of the abandoned application would make it possible to nullify the policy of the law as to diligence in the prosecutions of applications. It seems to me clear both on principle and authority that this present application cannot be a renewal of the former application of Hart. The motion to shift the burden of proof therefore must be granted. The motion to dissolve the interference assumes that Hart has lost his right to a patent for two reasons. The first is that in his earlier application the right of renewal was exhausted and the application abandoned; but the present application is accompanied by the usual oath respecting invention, publication, public use, and foreign patenting. It is not seen on what ground it may be refused consideration. No authority is cited in support of the proposition that it may be rejected on his earlier abandoned application. So long as he can make the prescribed oath an applicant may file identical applications until the patience of the Office is exhausted. (Barratt v. Duell, Commissioner of Patents, C. D., 1899, 320; 87 O. G., 1075; 14 App. D. C., 255.) The second ground of attack is the principle enunciated in Rowntree v. Sloan (C. D., 1913, 94; 189 O. G., 1281) and in re Fritts (C. D., 1916, 188; 227 O. G., 742; 45 App. D. C., 211.) It will be noted that Hart first presented the claim from the Barrett patent in the present application on September 2, 1914, fourteen months after the Barrett patent was granted. He had, as above stated, attempted to enter the claim in his allowed application on March 26. This attempt was renewed on August 23, 1914. It must be admitted that the Office has changed its judgment as to the right of Hart to make this claim. The refusal of the Commissioner to admit it to the allowed application was without personal examination, for it is customary to accept the ruling of the Primary Examiner upon this question. If claims were admitted to allowed applications which the Examiner reported were inadmissible, the practice would result in reopening for prosecution applications which had been allowed. The proceeding is therefore necessarily somewhat summary. While it has been held that the later application is not a continuation of the former application, there is no room for doubt that proceedings by the applicant in attempting to have the claim inserted in his allowed application were taken in good faith and that when the claim was entered in the present application the applicant believed it to be a continuing application, a view which the Examiner evidently shared. I do not believe that any intention to omit the claim from the present application can be attributed to the attorney, unless it be upon the theory that he did not wish to do anything which might interfere with the granting of his petition to insert the claim in his allowed application. The steps taken to have the claim inserted in the allowed application therefore controlled and as the first petition was filed within nine months of the granting of the Barrett patent the ruling of Rowntree v. Sloan is inapplicable. The motion to dissolve the interference is denied and the motion to shift the burden of proof is granted. EX PARTE TAYLOR, CLAPP & BEALL. Decided May 21, 1918. 256 O. G., 451. 1. PRINTS AND LABELS-DESCRIPTIVENESS NECESSARY. Held that a print or label which does not describe the goods is not registrable in this Office. 2. SAME-SAME-MERE COLOR NOT SUFFICIENT. A print or label for cambric does not describe the goods merely because its color scheme is white. ON APPEAL. COTTON PIECE GOODS, Messrs. Munn & Co. for the applicant. CLAY, Assistant Commissioner: The applicant for registration of a "print used to advertise cambric" appeals from a refusal based on the two grounds that the picture presented is a label rather than a print and that it fails to identify the goods to which it refers. There is no error in either of these grounds. The applicant's contention that the Print and Label Copyright Act of 1874 does not provide that a print or label shall be descriptive of the goods is without force. Descriptiveness is the very essence of the meaning of the word "label" itself. A label has no other function but to inform of what is within; and the statute specifically deals with pictures, prints, and labels to be used for any articles of manufacture other than works of art per se. Of course this means that the art is not an end in itself, but is a mere means to name or advertise something else, and this it could only do by identifying and giving information about that something else. There has been considerable latitude as to how the print or label describes the goods, (Ex parte Ruppert, C. D., 1906, 142; 121 O. G., 2327); but there could be no reason or warrant for registering a copyrightable print or label which failed altogether to in some way describe the goods for which it is used. It cannot be seriously contended that the print or label in question describes cambric merely because its color scheme is white. I have noted the suggestion in De Jonge v. Breuker et al., 182 Fed. Rep., 150, that a design of holly, mistletoe, and spruce might be a print for Christmas boxes, supposedly on account of the plain suggestion of Christmas goods. The Examiner's ruling is sustained. STANDARD OIL COMPANY v. CREW LEVICK COMPANY. Decided July 31, 1918. 256 O. G., 647. TRADE-MARKS-OPPOSITIONS-EQUITY PRACTICE FOLLOWED-RIGHT OF OPPOSER TO WITHDRAW OPPOSITION. The practice in opposition proceedings should follow the equity practice rather than the practice in patent interferences, and an opposer may withdraw his opposition unless it is shown that the applicant has been damaged by reason of the opposition having been filed. (The Cravenette Co. v. Rogers & Thompson, 102 MS. Dec., 127 overruled.) PETITION from Examiner of Interferences. TRADE-MARK FOR ILLUMNIATING, LUBRICATING, AND BURNING OILS AND GREASES. Messrs. Britton & Gray for Standard Oil Company. CLAY, Assistant Commissioner: The opposer of registration of a trade-mark petitions for correction of a ruling by the Examiner of Interferences denying the opposer's motion to dismiss its opposition. A simple question of law is raised. The Crew Levick Company applied for registration of a trade-mark for oil, which is an elaborate design, including, among other things, the word "Empire," written on a bracket, which forms the pedestal of a spread-eagle mounted thereon. The registration was allowed and published November 13, 1917. The Standard Oil Company filed an opposition to registration, setting up, among other things, a prior use of the word "Empire" for the same goods and alleging probable confusion and consequent injury. The applicant and the opposer were notified in the usual way that answer must be filed before a certain date and that the practice of the United States equity courts will be followed in pleading and procedure. The time set for answering passed without answer, and an order. to show cause why the opposition should not be sustained was issued; but answer was filed, upon waiver of objection, two days late. |