There is some analogy between the position of the commercial label and that of the petty patent of the Germans, (Gebrauchsmuster.) This is a protection designed to fill the gap between the protection of artistic designs and the protection of inventions. The patent is granted only for true inventions. The design patent is for the protection of ornamental designs exhibiting taste and art, deriving their value mainly from their appearance. Between these two classes there exists a class of useful creations which are not important enough to warrant the issue of a patent, nor possess the esthetical feature required by the law of ornamental designs, and yet deserve 串 * protection. It is this class of inventions which the (Gebrauchsmuster) law is intended to protect. (Brandon Bros. Treatise on European Patents, 5th ed., Paris, 1910, p. 62.) Similarly commercial labels are protected under our law on the theory of encouraging that sort of bastard art which is used as an aid in advertising. It has been held in this Office that the degree of artistic merit in a label will not be inquired into. (Ex parte Park & Tilford, 114 MS. Dec. 310.) On the other hand, the registration is not to be granted as a mere ministerial function. (Allen v. United States, C. D., 1903, 615; 105 O. G., 747; 22 App. D. C., 271.) The Office has several times held that it is contrary to public policy to register a label containing the flag, because it detracts from the honor due the flag and is offensive to the citizen. (Ex parte Ball, C. D., 1902, 102; 98 O. G., 2366; ex part Steinecke Company, C. D., 1906, 230; 122 O. G., 3011; ex parte The Fishel Co., 120 MS. Dec., 229.) In ex parte Interboro Brewing Co. (112 MS. Dec., 114) there is the specific holding that there was nothing in the statute to prohibit the use of public insignia in a label to be registered, making no distinction between our own coat-of-arms and a foreign (in that case Prussian) coat-of-arms; but I think this does not reach the question whether for reasons outside the statute and inherent in the power to pass upon the question whether the thing is a registrable label the Commissioner may refuse to register public insignia. It happens that since the last-cited decision the Congress has indicated its views by the act of February 8, 1917, (Public 305; 39 Statutes at Large, 1, ch. 34, p. 900), prohibiting the use of the flag for advertising in the District of Columbia. In view of that act the Patent Office could not register a label whose use would thus be unlawful in any place. There is nothing to show that the Congress here considered the question of the use of a foreign flag in trade; but in the Trade-Mark Act of February 20, 1905, (sec. 5), there is indicated an intention to treat the foreign flag in the same way as our own, and this is in accordance with the principle of international comity and the spirit of the copyright law. In view of this I think this Office should re fuse to lend aid and encouragement to the use of the flag of any nation as an advertising device by registering a label employing such flag or insignia. The Examiner's action refusing the registration is therefore affirmed. HUDNUT V. PHILLIPS v. MACK. Decided August 24, 1918. 256 O. G., 822. 1. TRADE-MARKS-INTERFERENCE AND CANCELATION. The law of February 20, 1905, applies to all registrations, and a registration under the law of 1881 may be canceled as an incident to an interference decision. 2. SAME-SAME-ON DECISION ADVERSE TO A REGISTRANT INTERFERANT HIS REGISTRATION MAY BE CANCELED. An interference between an applicant and a registrant necessarily involves both the question of right to register and the question of right to remain on the register, or validity of the existing registration, for it is necessary to remove an interfering registration from the register in order to make apparent and effective the award of right of registration to the applicant, and where the final decision in a trade-mark interference necessitates a holding that a registrant was not entitled to his registration and the prevailing interferant in effect moves for cancelation Held that an order of cancelation will be forthwith entered. 3. SAME REGISTRATION OF A FOREIGN TRADER-RIGHTS DEPENDENT ON HIS SUBMISSION TO THE JURISDICTION. It is a condition of a foreign registrant's mark remaining on the register that he have an agent in this country on whom service may be had. and without this his mark involved in an interference may be held to have been abandoned and his registration may be canceled in his absence. APPEAL from Examiner of Interferences. TRADE-MARK FOR TOILET ARTICLES. Messrs. Redding, Greeley & Goodlett for Hudnut. Mr. Robert Deissler for Mack. CLAY, Assistant Commissioner: Phillips appeals from an award of priority to his rival, Hudnut, in an interference over a trade-mark consisting of the word "Nara " in the case of Phillips and "Nyra " in the case of Hudnut, for toilet powder, perfumes, etc. The senior and third party to the interference is Mack, the registrant of the word " Myra," for the same goods. Mack was and apparently is a subject of the Emperor of Germany, having no agent in this country, and at the final hearing the Examiner considered the case as if Mack were not a party and neither his registration nor that of Phillips was a bar to Hudnut's registration. The questions raised make advisable a statement of all the essential facts in chronological order. The application of Mack was filed and prosecuted direct from Germany by a German attorney and under the law of 1881. It was registered April 1, 1902. There was never any agent or attorney in the United States appointed, as required by section 3 of the TradeMark Act of 1905. Phillips filed his application in 1914, saying he was "doing business" at the address of Borgfeldt & Co., New York. The previouslyregistered Mack registration was not found by the Examiner. The Examiner objected that the applicant was apparently not the owner, since the samples filed stated that the goods were made in France. by "Philippe et Cie.," at Paris. Phillips replied that his name on the label was the title under which the applicant does his business in France, and has no reference to any other person; whereupon the application was allowed, and without opposition registry was had in 1914. When Hudnut filed in 1915, his application was rejected as anticipated by the registrations of Phillips and Mack. In reply he alleged by proper affidavit that Phillips had never acquired any rights, had not done any business for himself, and had in fact registered before going into business, and that Mack had not used the mark on any goods in this country. Hudnut's application was thereupon allowed and published April 3, 1917. No opposition appeared; but the interference was declared June 5, 1917, between Hudnut's pending application and the two registrations of Phillips and Mack. Hudnut on petition was allowed to proceed notwithstanding no notice could be served on Mack, who had no American agent. Thereupon proofs were taken and filed by Phillips and Hudnut. Phillips then moved for an order on Mack to show cause why judgment should not go against him; but the Examiner dismissed the motion on the ground that Phillips had no interest in a judgment against Mack, who was already a registrant. Phillips then prayed permission to take proofs to support Hudnut's prima facie showing that Mack had abandoned. This was refused, because the Examiner considered there was no contest between the two registrants, but that the only question was whether Hudnut might register. He referred to Carr v. Schollhorn v. Warren, etc. (104 MS. Dec., 449), wherein the Assistant Commissioner had in 1912 held that in an interference of this sort the only question was the right of the applicant to register and the rights of the registrants as between each other was immaterial. At final hearing the Examiner held that the marks were the same; that Hudnut's use dated from September, 1914; that Phillips was not in position to do business until May, 1916, and that when in May, 1914, he made a few boxes of powder and had them forwarded, without any order therefor, and through Borgfeldt & Co., to certain customers and received five cents for the boxes (which were worth fifty cents) this was not a bona fide business transaction, was not doing business on Phillip's part, and was a mere laying basis for the filing of his application for registration and created no trade-mark rights in Phillips. He referred to the case of Swift & Co. v. Hudnut (117 MS. Dec., 379), wherein the Commissioner held that an incidental sale of a questionable nature was not such a use as to establish a right to registration and affirmed an award of priority to an applicant as against the registrant, whose right was based on that use. The Examiner also found that Phillips's labels were fraudulent in stating that the goods had been made in Paris by "Philipe et Cie." His essential conclusion was simply that Phillips's registration was not a bar to Hudnut and Hudnut might register. After the decision Hudnut moved for a specific judgment that Phillips was without right to register, stating that although this would be, in effect, a ruling that the Phillips registration ought to be canceled it was yet a mere necessary consequence of the award; but the Examiner disagreed with this and held that when Hudnut elected an interference proceeding rather than a cancelation proceeding he was bound by his election and that he was not entitled herein to an additional judgment which would render res adjudicata the question of Hudnut's right to have the Phillips registration canceled. He refused to enter the additional judgment or to rule as to whether the judgment asked for would be "sufficient" for cancelation. It will be observed, however, that the Examiner had already and necessarily ruled that Phillips had no right to register his mark at all, and the trade-mark statute provides in section 13 that if there is such a finding then "the Commissioner shall cancel the registration," although this provision is not in the section providing for interferences, but is in section 13, which provides for formal cancelation proceedings. In the briefs and argument for Phillips on this appeal it is insisted that Phillips must prevail because Hudnut is barred of registration by the existence of the Mack registration, which cannot be canceled or attacked for the two reasons that it was registered under the old law of 1881, and therefore not subject to cancelation at all, and further that no action can disturb Mack's rights when he is not in court. It is also contended that a registration cannot be canceled except on specific formal proceedings therefor under section 13 of the trade-mark statute of 1905. I agree with the Examiner that Phillips never acquired any right to the trade-mark in issue before Hudnut's use and had no right to register the mark at the time of his application. As to Mack, if his case is governed by the present law he must be held to have abandoned. It is a condition of his mark remaining on the register that he subject himself to the jurisdiction of this Office and the courts of the country, and he has not done so. Under the laws of all countries the right to sue must be accompanied by a submission to the jurisdiction to be sued. (See the German law of May 12, 1894, sec. 23.) The essential questions remaining in the case are two questions of law-viz., (1) are registrations under the trade-mark law of 1881 subject to cancelation and other provisions of the new law of February 20, 1905, and (2) may an order of cancelation be entered in an interference proceeding? Although there have been negative rulings on both these questions, I think that on a fuller consideration of the authorities and reasons they ought both to be answered in the affirmative. As to cancelation of registrations under the old law, it will at once. appear as a very anomalous condition if we have a register of trademarks half of which may be taken off the register when it is found that they do not belong there and the other half of which are immune to attack and must remain whether they ought to be on the register or not, and if this immunity to attack depends not upon any rights in the marks themselves or their use or time of adoption, but upon the mere accident of the date of registration, the anomaly is more glaring. An officer charged with keeping a correct register of trade-marks must have power to correct his register. The law of 1881 itself contemplated no such thing as an inviolate registration. At the end of section 3 it provided that in any dispute between an applicant and a previous registrant (the Commissioner) shall follow as far as the same may be applicable, the practice of courts of equity of the United States in analogous cases. That meant that he should, in effect, annul an improper registration by registering the mark to another. Again, section 5 not only provided for the automatic ending of the effect of registration in thirty years, but provided for its ending at any time in case a foreign. trade-mark"ccased to be exclusive property elsewhere." When the trade-mark act was revised in 1905, the Congress adopted in many respects the minority report of the commission appointed by Congress to suggest revisions, (p. 126, report of the commission under the act of June 4, 1898, Washington, 1902); but it did not follow this report on the matter of cancelation. Mr. Greeley was 84150°--19-8 |