subject matter of the issue here, namely, a tapered sleeve construction for these meter connectors. In this conception and disclosure, he is sustained by the testimony of several of those who worked with him in the Eclipse Fuel Engineering Company, and there seems to be no doubt that he has proved conception at that time. It is further shown that, shortly after this time, at least one of these connectors was made according to the directions of McKee. The witness Statler, who was a machinist in the Eclipse Fuel Engineering plant, states that before delivering the connector with the tapered sleeve and nut connection on the bottom, to one Olsen, manager of the company, he, Statler, tested the new connector, the testimony being as follows: Q. 31. Before delivering that bar with the tapered sleeve and nut on the bottom to Mr. Olsen did you make any tests? A. Yes. All gas fittings are tested. First for leaks and then for machine accuracy. Q. 32. What was the result of that test? A. Apparently there were no leaks and the machine work was all right, because it was accepted by Mr. Olsen as being O. K. The witness Olsen testified: Q. 29. What was done with the meter bar which was made by Mr. Statler and delivered to you which embodied the tapered bushing? A. It was examined and tested by me. There is no further testimony in the record as to what further, if anything, was done as to the testing of this device by McKee. On the one hand it is argued by McKee that the test was sufficient to constitute reduction to practice; that this device was of simple character, and that it did not require a test by use under actual working conditions. On the other hand, it is contended by the appellee, and was so held by the tribunals below, that a test in actual use was required. Upon this feature, the result of the case largely depends. If such evidence is sufficient to prove a proper test, then the invention of McKee seems to have been reduced to practice prior to the date of Stevens' entry into the field. On the other hand, if it does not prove reduction to practice, other questions as to the actions and diligence of McKee must be considered. The burden of proof was upon the appellant McKee to establish that he had reduced the invention to practice, if he is to be awarded priority on the ground that he conceived and reduced the invention to practice before Stevens entered the field. [1] If this was a device which required a test under actual working conditions to reduce it to practice, then the burden was also upon McKee to establish that it was so tested. We are inclined to the belief that he did not maintain this burden. To prove by the testimony of witnesses that a device was tested, does not prove that it was tested under usual working conditions. It is argued by counsel for McKee that he did not need to do so because, on the strength of Brydle v. Honigbaum, 19 C. C. P. A. (Patents) 773, 54 F. (2d) 147, if a device was a familiar one, and had been long known to the art, a simple modification thereof need not be necessarily tested under actual working conditions. It is not shown, however, by the testimony, that the use of sleeves in these connecting devices was well known in the art prior to June, 1928, nor does it appear that McKee was so conversant with the use of such connectors, at that time, that he might be said to come within the rule of the decision in the case of Brydle v. Honigbaum, supra. Certainly, there is nothing in the record to show that the use of tapered sleeves and conical-shaped connections was known at that time, or that persons working on the device were able to test the same without trial thereof under usual working conditions. It would have been a comparatively easy thing for McKee to attach his connector to a meter in operation, and to have thus tested the connector. We may assume, however, in the absence of proof to the contrary, that this was not done, and that some shop tests only were applied, the nature and sufficiency of which are not disclosed, and that McKee chose to rest the matter on this. An inventor intent upon securing the benefit of his invention ought not to disregard such necessary precautions. If he does so, it is at his own peril. The nature of the device in issue here, coupled with its use in connection with inflammable and poisonous gases, seems to the court to plainly indicate that it should have been tested in such a way as to show that it would operate successfully under actual working conditions. It is not of the simple character of the device in question in the case of Olson v. Thompson, 22 C. C. P. A. (Patents) 1212, 77 F. (2d) 104, where lock washers were involved, and Sachs v. Wadsworth, 18 C. C. P. A. (Patents) 1284, 48 F. (2d) 928, where a lid to a switch box was in issue. This subject is exhaustively discussed by us in Payne v. Hurley, 21 C. C. P. A. (Patents) 1144, 71 F. (2d) 208, followed by Urschel v. Crawford, 22 C. C. P. A. (Patents) 727, 73 F. (2d) 510, and further discussion here is deemed unnecessary. [2] It being the conclusion of the court that there has been a failure to prove a sufficient test of the device in 1928, and no other proof of reduction to practice prior to the filing of Stevens' application being offered by the appellant, it follows that appellant must establish diligence on his part during the period from just prior to appellee's entry into the field to the date of appellant's filing, to be entitled to an award of priority. The appellee Stevens was the vice-president and general manager of the Lattimer-Stevens Company, of Columbus, Ohio, a company which was engaged in the manufacture of gas meter connections, stopcocks, and supplies, during the year 1928, and following. It seems, from the testimony, that Stevens conceived the invention involved here in the first part of August, 1928, and that disclosure to others was made during the same year. By the fall of 1929, several orders of considerable size had been taken by this company for the tapered sleeve connection, and the product was commercialized and fully advertised to the trade. From that time until the filing of Stevens' application in March, 1930, production was continued and many orders filled. Whether the appellant, McKee, was advised of the commercialization of this product is not shown by the record. However, it was not until May, 1930, that the appellant filed his application for a patent, several months after the Stevens' product was for sale on the market. After producing his samples in June, 1928, the record does not show any activity on the part of McKee. Evidently neither he nor his company were making any attempt to commercialize this tapered union construction during 1928 or 1929. McKee's company made no effort to produce any tapered plugs on a commercial scale prior to the fall of 1929, reason therefor being given by the witness Olsen, as follows: the Q 61. When did you first have occasion to make any meter bars with tapered plugs on a commercial scale? A. In the year 1929. Q 62. Prior to that was there any demand for a bar with a tapered plug? A. We had learned of no demand for them prior to that time. On cross-examination, the witness Olsen, in giving a further reason why the tapered sleeve construction was not pressed, stated: We wanted to make the bar shown on Exhibit 1 and not the bar with the tapered sleeves, The bar known as Exhibit 1 was the old straight sleeve connector. While we are not prepared to agree that this record shows a concealment and suppression of McKee's invention under the doctrine announced in Mason v. Hepburn, 13 App. D. C. 86, we are in agreement with the conclusion of the Patent Office Tribunals that McKee has not established what he must establish to be successful here, namely, diligence during the critical period from immediately prior to the date of Stevens' entry into the field to his date of filing. This being our conclusion, he cannot be awarded priority. The decision of the Board of Appeals is, therefore, affirmed. BLAND, Judge, concurring: I concur in the above conclusion for the reason assigned by the board that upon the record what McKee did amounted only to an abandoned experiment. 462 O. G. 480; 23 C. C. P. A. 706; 80 F. (2d) 67 PENNSYLVANIA PETROLEUM Co. v. THE PENNZOIL Co. (No. 3549) 1. TRADE MARKS-CANCELLATION-SIMILARITY OF MARKS. On the facts before the court, the trade marks "Pennzoil" and "Pencoil" are held confusingly similar. 2. TRADE MARKS-CANCELLATION-NATURE OF PROCEEDING. A cancellation proceeding is not an action seeking to deprive the appellant of the right to use his trade mark. It is a statutory proceeding to cancel a trade mark registration which carries with it the prima facie presumption of the exclusive right to use the trade mark which has been registered. The decision of this court and the decision of the Patent Office goes no further than to determine that matter. Such common law rights as the appellant has to use its mark in the limited territory which it now claims, is a matter for another forum and is not within the jurisdiction of this court. 3. TRADE MARKS-CANCELLATION-LACHES. The delay of the appellee in asserting its alleged rights is not available as a defense in cancellation proceedings in the Patent Office. United States Court of Customs and Patent Appeals, November 25, 1935 APPEAL from Patent Office, Trade-Mark Cancellation No. 2025 [Affirmed.] Parkinson & Lane, Wallace R. Lane, William S. Hodges, and George Mankle for appellant. John S. Powers (Joseph W. Milburn of counsel) for appellee. [Oral argument November 11, 1935, by Mr. Milburn; submitted on brief by appellant] Before GRAHAM, Presiding Judge, and BLAND, HATFIELD, GARRETT, and LENROOT, Associate Judges GRAHAM, Presiding Judge, delivered the opinion of the court: On October 15, 1929, The Pennzoil Company, a corporation organized under the laws of the State of California, and having its principal place of business at Los Angeles, filed its petition in the United Patent. Office for cancellation of the appellant's trade-mark, under section 13 of the Trade-mark Act of February 20, 1905, as amended. U. S. Code, title 15, section 122. The mark sought to be cancelled was the word "Pencoil," which was duly registered by the appellant, Pennsylvania Petroleum Company, of Kansas City, Missouri, on August 21, 1923, No. 172,050, on an application filed August 19, 1921. The said registration application recited that the appellant had adopted and used the said trade-mark for motor lubricating oil continuously since about May 15, 1921. The petitioner alleged, as grounds for cancellation, that it had been originally incorporated under the laws of the State of California, in October, 1913, as Panama Lubricants Company, and that its name had been changed in September, 1921, to The Pennzoil Company; that it had been engaged, from its inception, in the manufacture and sale of motor lubricating oils and other hydrocarbon products; that on or about December 28, 1915, it had adopted the word "Pennzoil" as a trademark for lubricants, since which time the said trade-mark has been continuously used upon motor lubricating oils and greases, and other hydrocarbon products sold in interstate commerce; that, on the first day of August, 1916, certificate of registration No. 111,759 was issued by the United States Patent Office to appellee's predecessor in title for its said trade-mark "Pennzoil," as used for and upon motor lubricants; that the petitioner is now the owner of said registration and trade-mark, and has been continuously engaged in the sale of motor lubricants under said mark since said registration, and has not abandoned the said mark; that great sums of money have been expended by the petitioner for advertising its said mark and oil; that it has been, and is being, greatly damaged by the said registration No. 172,050, hereinbefore mentioned, to wit, the registration to the appellant, on August 21, 1923, of the alleged trade-mark "Pencoil." In connection with its proof, the petitioner has caused to be inserted in the record two trade-mark registrations, one to the Panama Lubricants Company, consisting of the word "Pennzoil," registered August 1, 1916, on an application filed January 12, 1916, for use on lubricants in Class No. 15, Oils and Greases, and a registration issued to The Pennzoil Company on October 23, 1928, consisting of the word "Pennzoil" superimposed upon a representation of a bell, alluded to in the record as a Liberty Bell, which said trade-mark was used upon motor fuel oils and lubricating oils and greases, and which it was alleged had been used continuously since December 28, 1915. In its answer to the petition for cancellation, the respondent denied damage generally, denied identity or confusing similarity of the marks "Pencoil" and "Pennzoil" and denied confusion as to origin caused by the use of said marks. It also denied any knowledge of the use by the petitioner of the trade-mark "Pennzoil" at the time respondent adopted its mark "Pencoil," alleged that both the marks "Pencoil" and "Pennzoil" included words of geographic and descriptive significance which all dealers might use alike, and further alleged that the petitioner had known, for many years, of the respondent's use of its trade-mark "Pencoil" and permitted it to use large sums of money in advertising, was informed of its registration of its mark, and made no protest against the same, and by its acquiescence had lost any right it had, because of laches, to maintain this action |