in certain years, invoices of shipments of dog and cat food to various wholesalers and retailers, newspaper advertisements, advertisements in various dog show programs and photographs of various advertising displays used for the display of PRINCE animal foods. A careful study of all these exhibits and the testimony relative thereto forces us to the conclusion that none of them in any way establishes use of the mark PRINCE on dog and cat food by petitioner prior to June 15, 1955. The labels are undated, the earliest dated shipment invoice is 1956, the newspaper ads are dated 1958 and 1959, the earliest date on the dog show programs is 1956 and the various photographs of advertising displays, etc. are undated.

The two letters from label printing concerns summarize the number of "PRINCE" labels ordered from each concern during certain years. The letter from the Schmidt Lithograph Company of San Francisco, addressed to Mr. C. W. Bueche, Jr. of the Prince Dog and Cat Food Company, states that from 1937 to 1941 a total of 1,705,600 labels were ordered. The other letter from the Louis Roesch Co. of San Francisco, addressed to the San Antonio Canning Company, to the attention of "Mr. Chas. Bueche, Jr.," states that from 1951 to 1959, approximately 73,000,000 labels were ordered. We do not think that these letters constitute sufficient proof of petitioner's use of the PRINCE mark prior to 1955 or at any time for the reasons discussed immediately below."

The testimony of petitioner's two witnesses fails to establish its use of the mark prior to June 15, 1955. Petitioner, as stated in its Petition for Cancellation, is a partnership. In said petition, filed October 6, 1958, it is this partnership which deems itself injured. Petitioner's Exhibit E is a Texas Certificate of Registration, No. 8113, registered February 11, 1938 in the name of C. W. Bueche, Sr. and an assignment of this registration dated June 3, 1959 from C. W. Bueche, Sr. to the petitioner/partnership.

The only evidence in the record as to when the petitioner partnership was formed is found in the oral testimony of witness C. W. Bueche, Jr. as follows:

Q32. Mr. Bueche, to your knowledge has the trademark "Prince" ever been registered? A. Yes, the trademark "Prince" has been registered in Austin. I believe we have a registration copy here.

Q33. Do you recall by whom the mark was registered? A. It was registered by C. W. Bueche, Sr.

Q34. Incidentally, when was the partnership organized, if you know? A. I believe it was formed in '48. That's when I resumed as manager of the company. [Emphasis added.]

[1] We have considered these letters despite the fact that as hearsay evidence they are of no probative value since they are at best nothing but unsworn statements of persons not available for cross-examination and are not shown to be records (invoices, shipping orders, etc.) kept in the ordinary course of business. Such records, presumably available, of the two printing concerns would be the best evidence, not a summary of these records made at petitioner's request by a party not available for cross-examination.

[2] A cancellation petitioner, under the Lanham Act, as well as its predecessors, must present evidence that it will be damaged by the existence of the registration sought to be cancelled. A person not entitled to use a mark which would be likely to be confused with the registered mark when applied to the goods of the registrant does not have a legal standing to allege damage under section 14 of the Lanham Act. Cf. Goheen Corp. v. White Co., 29 CCPA 926, 126 F.2d 481, 53 USPQ 52.

The present record establishes that petitioner, a partnership, had no legal right to use the Taxas State registered mark PRINCE in Texas earlier than 1959 when it was assigned by its owner, C. W. Bueche, Sr. Under Texas law, the "certificate of filing" of the mark owned by C. W. Bueche, Sr.,

3

*** shall in all suits and prosecutions under this chapter be sufficient proof of the adoption of such label, trademark, design, device, imprint or form of advertisement, and of the right of such person, association or union to adopt the same. *** (Vernon's Texas Statutes, 1948, Article 851.

Petitioner's testimony does not establish who used the mark "since 1937," or who was using it in 1958 when the Petition for Cancellation alleging damage to petitioner was filed. For all the present record shows, the mark may have been used by C. W. Bueche, Sr. in 1937 and subsequently abandoned by him, or it may have been retained by him for his own use when the partnership was formed.

The facts, as presented in the record, leave the following questions unanswered. First, was petitioner, a partnership, in existence and using the mark PRINCE prior to June 15, 1955? We know from the record only that the partnership was believed to have been formed "in '48." Second, if the petitioner-partnership was formed and using PRINCE prior to June 15, 1955, was its use lawful? The 1959 assignment from C. W. Bueche, Sr. is inconclusive. Third, was the petitioner-partnership lawfully using the mark "PRINCE" in 1958 when it filed the Petition for Cancellation? As stated above, the mark was not assigned to petitioner until 1959 and there is no evidence of record as to whether it was the petitioner-partnership or C. W. Bueche, Sr. who used the mark prior to its assignment in 1959.

The record clearly establishes that the mark CROWN PRINCE has been used by respondent since June 15, 1955, the date stated in its trademark registration. [3] Cancellation of a valuable registration around which a large and valuable business goodwill has been built should be granted only with "due caution and after a most care

a While the written assignment of 1959 states that the mark is assigned "as of 1949," no reason is given in the assignment and none has been established in this record why the assignment should be given a retroactive effect. We may infer that the earlier date may refer to some partnership agreement, presumably oral. However, we cannot give such an assignment a retroactive effect on any basis established here since as stated in Article 849 of Vernon's Texas Statutes, 1948:

Any owner of a name or names, trade name, mark or design recorded as herein provided and who desires to convey or assign same shall do so by written assignment duly acknowledged, and filed with said county clerk, ***.

ful study of all the facts." Sleepmaster Products Co., Inc. v. American Auto-Felt Corp., 44 CCPA 784, 241 F.2d 738, 113 USPQ 63. Petitioner, to sustain its burden of proof, must leave nothing to conjecture.

As previously pointed out, the evidence submitted by petitioner leaves much to conjecture. There is no pertinent documentary evidence establishing use of petitioner's trademark prior to June 15, 1955. Petitioner's entire record fails to establish any date of lawful use by petitioner earlier than the date of first use by registrant. For example, petitioner could have submitted the Partnership Certificate as documentary evidence. Petitioner presumably could have called C. W. Bueche, Sr. as a witness." Petitioner did not establish by the testimony of the two witnesses it called, any use of the mark PRINCE by petitioner at any date prior to respondent's proven date of first use. Whether these omissions were intentional or merely oversights by petitioner, they result in a record which fails entirely to sustain petitioner's burden.

[4] While the Petition for Cancellation asserts damage to the petitioner, a partnership, in 1958, there has been a total failure of proof that such prior use of PRINCE by C. W. Bueche, Sr., as may be inferred from the record, enures to the benefit of petitioner-partnership. In the absence of such evidence and especially since the present record shows a legal right in the partnership to use the name "Prince," only since the 1959 assignment of the Texas State registration, we will not resort to conjecture to sustain the petition. See Breese v. Tampax Sales Corp., 26 CCPA 994, 102 F.2d 808, 41 USPQ 208. The decision of the Trademark Trial and Appeal Board, insofar as it dismissed the petition, is, therefore, affirmed.

The remaining issue to be decided is whether the Board correctly restricted the respondent's registration.

[5] Section 18 of the Lanham Act (15 U.S.C. 1068), gives the necessary authority to restrict a registration. It provides:

In such proceedings the Commissioner may refuse to register the opposed mark, may cancel or restrict the registration of a registered mark, or may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use, the Commissioner shall

Such a certificate was required in 1948 to be filed and acknowledged by a county clerk, Article 6117, Vernon's Texas Statutes, 1948, before "*** such partnership shall be deemed to have been formed."

5XQ135. Is your father out of town? A. No, he is in another business. He is running another business now.

XQ136 Is he in good health? A. Yes, in very good health.

We have noted the several references to fires in 1941 and 1956 which presumably destroyed certain of petitioner's business records. We do not regard this as a sufficient excuse for failing to produce evidence supporting the allegations necessary to proving petitioner's allegations. Such fires do not, for example, explain the failure to produce a copy of the recorded partnership certificate or copies of the earlier newspaper advertisements which presumably would be available in the offices of the newspapers in which such advertisements appeared, or through libraries in which copies of such papers are deposited.

determine and fix the conditions and limitations provided for subsection (d) of section 1052 of this title. [Emphasis added.]

This section gives the Commissioner (or the Trademark Trial and Appeal Board at his direction, 15 U.S.C. 1067), authority to restrict a registration only "as the rights of the parties hereunder may be established in the [cancellation] proceedings."

[6] While respondent, in its answer, asked for restriction in lieu of cancellation, it was requested only as "alternative relief." Thus, dismissal of the petition to cancel for failure of petitioner's proof, did not put in issue respondent's request for relief in the alternative. Therefore, the decision of the Trademark Trial and Appeal Board is reversed, insofar as it orders restriction of respondent's registration. MODIFIED.

MARTIN, J., did not sit or participate because of illness.

U.S. Court of Customs and Patent Appeals

IN RE JOSEPH D. TURLAY

No. 6816. Decided July 25, 1962

[49 CCPA 1288; 784 O.G. 1126; 304 F.2d 893; 134 USPQ 355]
OF PATENT-WORD PHRASES—

1. PATENTABILITY-REFERENCE-CONSTRUCTION

"PAIR OF EXHAUST VALVES SHOWN AT 30 AND 31."

"Coming now to Moseley's specification, the significant part reads:

A pair of exhaust valves are shown at 30 and 31 controlling exhaust ports each leading to exhaust passages 32 and 33, leading oppositely.

We find that this wording is subject to different interpretations. It could mean, as the Board says, that there is one valve at 30 and one at 31 of FIGURE 1, but it might also convey the idea that there are two valves at each port."

2. SAME-ANTICIPATION-AMBIGUOUS REFERENCE.

"The preceding discussion all adds up to the fact that we cannot, with any degree of certainty, ascertain whether Moseley discloses one or two exhaust valves in each bank communicating with the transverse passage. Under these circumstances we cannot agree with the majority of the Board that Moseley anticipates applicant's appealed claim. It is well established that an anticipation rejection cannot be predicated on an ambiguous reference."

3. SAME PARTICULAR SUBJECT MATTER INLET MANIFOLD SYSTEM.

The decision of the Board of Appeals, refusing a claim in a reissue application for an inlet manifold system as unpatentable over the prior art, is reversed.

APPEAL from the Patent Office. Serial No. 677,811.
REVERSED.

Willits, Bailio, Burch and McGraw, Doonan Dwight McGraw (Frank J. Soucek of counsel) for appellant.

Clarence W. Moore (George C. Roeming of counsel) for the Commissioner of Patent.

Before WORLEY, Chief Judge, and RICH, MARTIN and SMITH, Associate Judges, and Judge WILLIAM H. KIRKPATRICK, United States Senior District Judge for the Eastern District of Pennsylvania MARTIN, J., delivered the opinion of the court.

This is an appeal from the decision of a majority of the Board of Appeals of the United States Patent Office affirming the Examiner's rejection of claim 11 of appellant's application Serial No. 677,811, filed August 5, 1957, for Inlet Manifold System. The application seeks reissue of appellant's Patent No. 2,725,047, issued November 29, 1955, on application Serial No. 320,519, filed November 14, 1952. In addition to the appealed claim, the reissue application includes claims 1 through 10 which correspond to the patent claims and stand allowed.

The appealed claim reads as follows:

11. In an internal combustion engine having oppositely arranged cylinder banks each including a cylinder head and an exhaust valve port for each cylinder thereof, and an intake manifold positioned intermediate said banks on said heads and having a hot spot; means for conducting hot exhaust gases to said hot spot comprising passage means extending crosswise of said heads and intake manifold connecting said hot spot with a single exhaust port of each bank of cylinders. [Emphasis added.]

The sole reference relied on below in the rejection of the claim is: Moseley, 2,603,199, July 15, 1952.

Other patents of record are:

Porter, 1,998,636, April 23, 1935.
Welch, 2,926,647, March 1, 1960.

Appellant's application discloses a V-type, eight-cylinder internal combustion engine having an inlet manifold structure which is positioned in the crotch of the V between the two banks of cylinders in communication with inlet ports in the cylinder heads. An exhaust manifold is provided on the outside of each cylinder bank in communication with exhaust ports in the corresponding cylinder heads.

Appellant provides hot spots in the inlet manifold to preheat the gas and air mixture as it passes through the manifold from the carburetor to the cylinders by means of two transverse passages extending between the cylinder heads. Two ports for exhaust gases are located at the inside of the cylinder head for each bank of cylinders and one exhaust port in each head communicates with an end of each transverse passage. Although the Examiner had questioned whether appellant discloses that only a single exhaust valve communicated directly with each of the aforementioned ports for exhaust gases, the Board ruled unanimously that he does.