States Patent Office, which dismissed appellant's opposition and held that the Wolverine-Empire Refining Company, appellee, was entitled to the registration of a trade-mark for which it had filed application. The Examiner of Interferences sustained the opposition and adjudged that the applicant was not entitled to the registration for which it had filed application and the commissioner reversed this decision.

The registered mark of appellant, upon which the opposition was predicated, is for use on lubricating oils and greases and consists of coloring the upper and lower one-third of the oil drum green, and the central one-third white. It is stated in argument that oil drums in which both parties and others engaged in a similar business market their products are so constructed that there are two convex bands, integral with the lateral walls of the drum, extending circumferentially around the same, which divide the outside surface of the sides of the barrel into three approximately equal divisions, and that the said bands or ridges separate the said colors.

The mark sought to be registered by appellee is used on lubricating oils and is identical with that of appellant except that in its drawing it shows the upper one-third painted red instead of green. Appellee made an amendment to its original application and provided in part as follows:

The trade-mark consists in a design formed by placing circumferentially of the lateral surface of the drum or barrel containing the goods, a band of red at one end, a band of green at the other end, each color covering about onethird and a band of white between them, of such lateral surface. No claim is made to the representation of the drum or barrel.

The Examiner of Interferences stated that the resemblances between the marks involved were deemed to be at least as great as that found to exist in the marks under consideration in A. Leschen & Sons Rope Co. v. The American Steel & Wire Co., 19 C. C. P. A. (Patents) 851, 55 F. (2d) 455, and accordingly sustained the notice of opposition and held that the appellee was not entitled to the registration for which it made application.

The commissioner held that the likelihood of confusion was too remote to govern the decision, reversed the decision of the Examiner of Interferences, dismissed the opposition, and adjudged that the applicant, appellee, was entitled to the registration of the mark.

It has been frequently held that a mark is not registrable if color alone is its distinguishing characteristic. A. Leschen & Sons Rope Co. v. The American Steel & Wire Co., supra; In re General Petroleum Corporation of California, 18 C. C. P. A. (Patents) 1444, 49 F. (2d) 966; In re Sun Oil Co., 18 C. C. P. A. (Patents) 1421, 49 F. (2d) 965; In re Walker-Gordon Laboratory Co., 19 C. C. P. A. (Patents) 749, 53 F. (2d) 548.

It will be noticed that in the decisions of the tribunals below, the validity of the registered mark is not questioned and that the conclusion in each instance rested respectively upon the confusing similarity and the lack of confusing similarity between the marks.

In our jurisdiction in this kind of case, a registered mark is presumed to be valid, and we do not concern ourselves with any question concerning its validity. Lufkin Rule Co. v. Master Rule Mfg. Co., 17 C. C. P. A. (Patents) 1227, 1230; 40 F. (2d) 991; A. Leschen & Sons Rope Co. v. The American Steel & Wire Co., supra. It is also well settled that the commissioner has the right to reject the application for registration as a matter of ex parte consideration, and is not confined to the issues raised by the opposition proceeding. California Cyanide Co. v. American Cyanamid Co., 17 C. C. P. A. (Patents) 1198, 40 F. (2d) 1003; Etablissements Rene Beziers, etc. v. Reid, Murdoch & Co., 18 C. C. P. A. (Patents) 1340, 48 F. (2d) 946; California Canneries Co. v. Lushus Products Co., 18 C. C. P. A. (Patents) 1480, 49 F. (2d) 1044; Blackstone Products Co., Inc. v Green Brothers Co., 21 C. C. P. A. (Patents) 1065, 70 F. (2nd) 271. We think we can dispose of this case upon the same theory as that upon which the tribunals below proceeded. It is not necessary for us to consider the question as to whether or not applicant's mark which it seeks to register is invalid, and therefore not registrable, upon the ground that color alone is its distinguishing characteristic. or upon the ground that the subject matter of the mark is an integral part of the article and is publici juris, or upon the ground that it is descriptive of the goods upon which it is used, as was held in the so-called heating boiler case, Weil-McClain Co. v. American Radiator Co., 19 C. C. P. A. (Patents) 1137, 57 F. (2d) 353.

We agree with the decision of the Examiner of Interferences that the appellee has sought to distinguish its mark, and the goods upon which it alleges use, from those of the appellant only by the use of a red color on either the top or bottom of about one-third of the drum where appellant had used a green color. It is obvious that appellee therefore seeks to distinguish its mark from the mark of appellant only by change of color at an indeterminate place of about one-third of the side wall of the drum.

It has been suggested in argument, as well as in the decision appealed from, that in the use of appellee's mark, the red portion of the drum might be placed downward and concealed by obstructions and that confusion would result. The commissioner held that this matter was immaterial. While this may be a matter to which consideration might be given under certain circumstances, it seems to us that it is wholly immaterial here and that regardless of how the

two marks were used, with respect to that consideration, confusion would be likely to result to the purchaser of lubricating oils if the two marks were concurrently used as is proposed by appellee.

It is shown in the record that the appellee, before registration was applied for, marked its barrels with white in the middle and green at both top and bottom, and that upon complaint by appellant, it changed its mark to that which is described in its application here involved. As the issue is presented here, we cannot see how this matter is of importance.

It is our view that the differences between the two marks here involved will not distinguish the goods of appellee from those of appellant, as is contemplated by the trade-mark registration statute, and that appellee is not entitled to register its said mark. The decision of the Commissioner of Patents is reversed.

466 O. G. 244; 23 C. C. P. A. 830; 81 F. (2d) 242

IN RE BALL (No. 3522)

PATENTS-APPEAL AND ERROR-ASSIGNMENTS OF ERROR.

The well established rule is that where the Board of Appeals has affirmed a decision of the Examiner, which decision rejected the claims of an applicant on certain grounds and upon certain named references, which grounds and references are also cited by the Board in its decision, the affirmance should be held to have the legal effect of a rejection upon all of the grounds and references cited by the Examiner except those expressly reversed by the Board.

United States Court of Customs and Patent Appeals, January 27, 1936

[Affirmed.]

APPEAL from Patent Office, Serial No. 505740

J. Bernhard Thiess and A. Arnold Brand for appellant.

R. F. Whitehead (Howard S. Miller of counsel) for the Commissioner of Patents.

[Oral argument January 6, 1936, by Mr. Brand and Mr. Miller] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges

LENROOT, Judge, delivered the opinion of the court:

This appeal brings before us for review a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the examiner rejecting claims 29, 30, 32, 35, 36, 37 and 38 of appellant's application. Certain claims were allowed by the examiner, and certain other claims were also rejected by the examiner, which re

jection was affirmed by the Board of Appeals, but which claims are not included in the appeal before us.

The claims involved in this appeal were copied by appellant from a patent to Wilms et al., No. 1,804,729, issued May 12, 1931, and the grounds of rejection of the claims were that they are unwarranted by appellant's disclosure.

Claims 29 and 30 are illustrative of the claims in issue and read as follows:

29. A device for limiting destructive arcing between the contacts of an electric switch, comprising a hood formed of insulating material closed on all sides except its bottom to form a confining chamber substantially encasing the contacts, and means readily removably mounting the hood.

30. The combination with an electric switch having a stationary contact, a movable contact and means mounting the stationary contact, of an arc suppressing hood closed on all sides except its bottom to form a confining chamber encasing the contacts, and cooperating means carried by the hood and the stationary contact mounting means for readily detachably mounting the hood, said cooperating means having a free sliding engagement and enabling the hood to be lifted to expose the contacts.

The nature of the involved invention is sufficiently set forth in the above-quoted claims.

The examiner assigned seven different grounds of rejection, each based upon lack of disclosure in appellant's application, some of which applied to all of the involved claims, and other grounds to only a specified number of them.

One of said seven grounds of rejection applicable to all of the claims was that appellant's application does not disclose that the hood therein described is closed on all sides except its bottom to form a confining chamber encasing the contacts.

Another ground of rejection by the examiner was that the hood shown in appellant's application does not limit destructive arcing. The Board of Appeals in its decision set out the different grounds of rejection of the involved claims by the examiner, and stated:

* The disclosure in the application refers to the hood device thereof as a protective device which may be positioned over the stationary contacts in a switch and that these stationary contacts remain substantially protected since the apertures therethrough are so small that it is impossible for ordinary workmen to come into contact with the live portions of the stationary switch contacts. It is further stated in the specification that the applicant found that such protective covers add greatly to the safety of switches and at the same time do not interfere with the normal operation of them. There is nothing in the original disclosure to indicate that these protective covers or caps were provided with a space or openings so limited as to have the effect of preventing arcing as called for in many of these claims copied from the Wilms-Loock patent. Nowhere in the disclosure is there any expressed intention that applicant's device shall perform the function of suppressing an arc. Whatever the devices may be which have

been constructed and tested or observed by experts in this art, it seems apparent that these covers may be of sufficient size and space to be ineffective as arc suppressors and at the same time to act as protection for workmen to prevent them from coming into conjunction with live contacts.

*

Claims 29, 30, 32, 35, 36, 37, and 38 of the copied claims are in some manner or another limited to the matter of means for limiting destructive arcing and since we have determined that applicant's disclosure was not limited to any such means or to a structure which necessarily produced such function, we are in agreement with the position of the examiner to the effect that these claims are unwarranted by applicant's disclosure.

The decision of the Board of Appeals, affirming the decision of the examiner with respect to the involved claims, reads as follows: For the reasons indicated herein the rejection of the examiner is affirmed. Appellant filed but one reason of appeal which reads as follows: The Board of Appeals erred in finding that applicant's disclosure was not limited to means for exerting, or a structure which produced, limitations of destructive arcing, and on this basis alone holding that claims 29, 30, 32, 35, 37, 37, and 38-because of being in some manner limited to the matter of such means are unwarranted in by applicant's disclosure.

It will be noted that in this reason of appeal appellant has referred to two claims as 37, and claim 36 is not listed at all; this is manifestly a clerical error, and it is obvious that the first claim 37 set out in said reason of appeal, and italicised by us, should have been 36, and we will so regard it.

The Solicitor for the Patent Office contends that, there having been a general affirmance of the decision of the examiner by the Board of Appeals, and the reasons of appeal not assigning error on the part of the board in affirming the decision of the examiner upon six of his grounds of rejection, under the well-established rule the decision of the Board of Appeals must be affirmed by us irrespective of the question of whether or not the device shown in appellant's application does suppress destructive arcing.

In appellant's brief we find the following statement:

It is settled practice that, where the Board of Appeals rests its decision upon one sharply defined rejection in affirming the Primary Examiner—and thereafter appeal is taken to this Court because of such rejection,-the Court will consider only that particular rejection upon which the Board based its decision, even though there may have been other rejections assigned by the Primary Examiner when he finally refused the claims. (In re Twiss, 74 F. [2d], 124.)

The foregoing statement is not in accord with the established rule and is not supported by the cited case, In re Twiss, 22 C. C. P. A. (Patents) 825, 74 F. (2d) 124. In that case the examiner rejected the claims upon two references. The Board of Appeals