Examiner on the ground that "the word in question is, in a certain sense, descriptively used by the applicant; or the objection may be stated in another form, that the word is not distinctly an arbitrary designation, and hence would not serve the purpose of indicating the origin and ownership of the articles to which it is designed to be affixed." It is undoubtedly a well-settled rule of law that words that are merely descriptively used are not proper subjects for trade mark registration. This is thus distinctly stated by the Supreme Court in the case of the Canal Company v. Clark (13 Wall., 311). "Nor can a generic name, or a name merely descriptive of an article of trade, of its qualities, ingredients, or characteristics, be employed as a trade-mark, and the exclusive use of it be entitled to legal protection." Amoskeag Manufacturing Company v. Spear, 2 Sand., 599; Hauthaway & Sons, C. D., 1871, 97; Alden, 15 O. G., 388; The Safety Powder Company, 16 O. G., 136. The use of descriptive words as trade-marks appears from the decisions to be objectionable for two reasons: first, because the public will be apt to understand the words as merely descriptive, and will therefore not associate them with the origin or ownership; and, second, because others can employ a merely descriptive word upon their wares with equal truth, and consequently with an equal right. A distinction should be made between words which are the legitimate accepted terms in describing "the qualities, ingredients, or characteristics of an article" and words which are but inferentially or remotely descriptive. In the one case the words will be understood by the public as indicating some peculiarity of the article itself, and not as pointing to origin or ownership; in the other, they will be regarded rather in the light of words fancifully and arbitrarily used, and will consequently serve the purpose of a trade-mark. This appears to me to be the proper test. If the words employed (as the word "Safety" in connection with gunpowder and the words "System-Renovator" in connection with medicines, in the cases cited by the Examiner) are so obviously indicative of some peculiarity or quality of the article that the public will be apt to consider them mere descriptive terms, then it is clear that they are not proper subjects for trade mark registration, since they can neither indicate origin nor ownership, nor can they be the exclusive property of any one. If, however, the descriptive character that might attach to a word is so very remote as to be but secondary, so that the word will be understood by the public not as a descriptive but as a fanciful term, it will then accomplish the office of a trade-mark, and to the use of a word which in connection with a particular article is primarily fanciful an exclusive right can exist. Indeed, it is common to find words, either newly coined or arbitrarily selected, the validity of which as trade-marks has been sustained by the courts, which contain a suggestion more or ess remote of some peculiarity, real or supposed, of the article to which they are attached. An example of this is afforded by the case of Davis v. Kendall (American Trade-Mark Cases, 112), where the term "Pain killer" was held to be a proper trade-mark as applied to a medical compound. I do not think that the word "Invigorator" stamped upon spring bedbottoms could be regarded as merely descriptive. It is true, perhaps, that by a process of logical deduction it may be resolved into a description in one sense, since a spring, bed-bottom may be conducive of sleep, and sleep invigorates; but, in my judgment, the primary signification which the public would attach to this term would be a fanciful one. The decision of the Examiner is reversed. EX PARTE OLIVER ET AL. Decided May 22, 1880. 18 O. G., 923. A geographical name, although also the name of an historical personage, is not a proper subject for trade-mark registration: APPLICATION of R. W. Oliver and J. E. Robinson filed March 3, 1880. Messrs. Myers & Co. for appellant. MARBLE, Commissioner: Applicants in this case seek to register the word "Raleigh" as a trade-mark for manufactured tobacco, whether such word be accompanied by a portrait of Sir Walter Raleigh or not. The Examiner holds the word alone to be geographically descriptive when used upon tobacco, it being the name of a leading city of a tobacco-growing State, and he has accordingly refused the registration. In It is contended on behalf of the applicants that the word as here used is the name of an historical personage, and that it would be more likely to be associated with the person than with the place of that name. this statement of counsel I cannot concur. Situated, as the city of Raleigh is, in the center of a tobacco-growing region, the vast majority of persons, and especially of the inhabitants of that section of the country, as well as many elsewhere whose historical knowledge is defective, would, I think, regard this word as indicative of the place of manufacture. The mere circumstance that the name of a place is also the name of a person cannot alter the fact that any manufacturer of tobacco in Raleigh, and there are doubtless such there, would have a perfect right to use this mark upon his wares, thus destroying the exclusiveness of the right of user-an essential feature in a lawful trade-mark-nor the fact that many, and I think most, persons would understand the mark as geographically descriptive. The authorities are numerous and conclusive upon the point that, as a rule, geographical names are not proper subjects of trade-marks. Ex parte Knapp, 16 O. G., 318; Marsching & Co., 15 O. G., 294; Cornwall & Bros., 12 O. G., 312. There have been, it is true, exceptions to this rule, where the geographical words employed were obviously fancifully used, and were of such a character that they could not be misunderstood as indicating the locality in which the goods were made; but this cannot, in my judgment, come under the excepted cases. The decision of the Acting Examiner of Trade-Marks is affirmed. EX PARTE STRAITON & STORM. Decided May 26, 1880. 18 O. G., 923. 1. A band or ribbon of such shape and so attached to the wares of a manufacturer as to enable them to be readily distinguished in the market may properly be allowed registration as a trade-mark. 2. The mere fact that such strip or ribbon may also be the vehicle of other matter cannot detract from its efficiency as a means of distinguishing the goods upon which it is placed. TRADE-MARK. APPLICATION of Straiton & Storm filed August, 20, 1879. Mr. A. v. Briesen for appellant. MARBLE, Commissioner: Applicants in this case seek to register as a trade-mark for cigars A waved band or ribbon of rectilinear form longer than it is wide, which is fastened to the two ends of a cigar-box, and so placed with reference to the cigars within the box as to be below some of said cigars and above the remaining cigars. The Examiner denies the registration for the reason, as he states in answer to applicants' appeal, that The matter sought to be registered does not amount to an arbitrary symbol, the band or label serving the office of a mere label, which, besides the descriptive matter contained thereon, may also contain matter indicative of origin and ownership, and thus serve as the vehicle of a lawful trade-mark. A contrivance, design, device, name, symbol, or other thing, to be a lawful trade-mark, must be of such a character that its employment in connection with a particular commodity will indicate the origin and ownership of that commodity. In support of his position he has cited the following cases: Ex parte Gordon (12 O. G., 517); Harrington v. Libbey (Ibid., 188); and Ex parte Kane & Co. (9 O. G., 105). I fail to see the pertinency of these references to the present case. In the case of Gordon the alleged trade-mark consisted of a narrow strip of leaf-tobacco placed as a wrapper arcund the mouth-piece of a cigarette. The acting Commissioner refused the registration upon the ground that the prime office of this wrapper was a useful one and its function as a trade-mark was but merely incidental. I shall have occasion, however, to revert to this decision. In the case of Harrington v. Libbey the court merely decided that the complainant could not enjoy the exclusive right to a decorative tin pail as a collar-receptacle, although he had used the same and had registered it as a trade-mark. The Commissioner, in Ex parte Kane & Co., denied registration of an alleged trade-mark consisting of "galvanized-iron hoops placed upon liquorbarrels of dark color" upon the ground that their use was not in the particular instance an original appropriation, as such hoops had long been used on other barrels, and if new as applied to whisky-barrels were not sufficiently distinguishable from the same mark on other barrels to indicate ownership. It is not pretended that the device employed by applicant in this case has any mechanical function whatever, nor is it an old form of receptacle applied to a particular use. Indeed, no references whatever are given to show that strips or ribbons have been attached to boxes of any description in a manner resembling this. is simply a waved band or ribbon of rectilinear form of greater length than width arranged in connection with the box and contained cigars in a certain way. There have been numerous definitions of a trade-mark, the difficulty seeming to be to find one sufficiently comprehensive to embrace the many means which a manufacturer may employ to distinguish his wares. The Acting Commissioner in the Gordon case before referred to, says: Thus a box, barrel, or wrapper containing merchandise, whatever its form, cannot per se, be a trade-mark, but a name, symbol, figure, letter, form, or device cut, stamped, cast, impressed, or engraved thereto, or in some other manner attached thereon or connected with the article itself, may be a proper trade-mark. This statement is fully sustained by the case of Moorman v. Hoge (2 Sawyer, 78), to which reference is there made. Surely under so broad a definition applicants' mark must find some place. It is a "device" "attached to the box and connected with the article itself" for the purpose of indicating the origin of the goods. Will it serve this purpose! An inspection of the illustration at such a distance that the printed matter contained on the band cannot be read shows at a glance that applicants have attached to their wares a device by which it can be readily distinguished from the wares of another. This is the purpose of a trade mark, and this purpose applicants have, in my judgment, accomplished by a means which is clearly comprehended under all the authoritative definitions of a lawful trade-mark. In the case of Gordon the following language occurs, which, although but a dictum, is here in point: Perhaps this objection (the useful functions of the mouth-piece of the cigarette) would not lie if, as in the case cited by applicants-that of Mommer, for which a trademark was granted for a silk band around a champagne-bottle-a silk band was attached to the cigarette, or a colored piece of paper or similar device connected therewith, for in such instance the device would answer no other purpose than that of a trade-mark-perform no mechanical function. This language would seem to recognize the propriety of granting registration for such marks as applicants'. The mere fact that applicants' strip can be made the vehicle of other matter which may constitute a trade-mark does not detract from the efficiency of the strip itself as a means or device for distinguishing the wares upon which it is placed. The same objection might be urged to a figure in the form of a star or crescent or other fanciful shape, for upon such, as upon applicants' strip, a trade-mark might be stamped, and yet these fanciful figures without any matter marked thereon would cer tainly be understood as distinguishing marks in the trade as trade-marks. The Office has repeatedly allowed the registration of strips, either of peculiar shape or attached in some distinctive manner to various articles, as appears by the numerous cases to which my attention has been drawn. The decision of the Examiner is reversed. BROWN v. La Dow. Decided October 23, 1880. 18 O. G., 1049. 1. Under the statute and rules the only question presented to the Board of Examinersin-Chief on an appeal from the Examiner of Interferences is which of the parties to the controversy is the prior inventor. 2. The Board, by undertaking in its decision to show that the inventions declared to be in interference were not the same, and treating the issue between the parties as a "fictitious one," and rendering a decision on such alleged fictitious issue, exceeded its jurisdiction. 3. The question of interference had been twice before the Commissioner on motion and each time decided affirmatively, and the Board was guilty of an impropriety in thus reopening the question in their decision. 4. If the Board, upon an examination of a case, is of the opinion that the devices do not interfere, it is its duty, under Rule 134, to call attention to that fact by a statement annexed to its decision, not a part of it. 5. It is sufficient always for an appellate tribunal to consider the questions before it in the form presented by the appeal, and although the Commissioner and Board may look beyond the questions so raised in considering the case, still no decision affecting the rights of the parties can be made upon any question not involved by such appeal. 6. If reasons are discovered by the appellate tribunal showing prima facie that a patent ought not to issue, the case must be returned to the Primary Examiner for his consideration, and the party to be affected thereby must have an opportunity to show, if he can, why such reasons should not operate against him. 7. Where the rules of practice have been clearly indicated and determined there is no reason why any officer of the bureau should fail to observe them. APPEAL from the Examiners-in-Chief. HORSE HAY-RAKE. APPLICATION of Thomas S. Brown for reissue of Letters Patent No. 174,113, dated February 13, 1876, filed January 17, 1879. Reissued Letters Patent No. 8, 157, to Charles La Dow, dated April 2, 1878; original Patent No. 168,648, dated October 11, 1875. Messrs. Strawbridge & Taylor for Brown. |