125, to say that this Rule 125 should be followed so far as it is applicable, and then cited the case of Outcault v. The New York Herald (C. D., 1908, 204; 136 O. G., 437) as a guiding authority. He said that should the present proceeding be dismissed and it be found necessary to republish the applicant's mark, (the opposer) could again oppose registration and thereby not only work a hardship on the applicant but also add an unnecessary burden to the work of the Patent Office. It is contrary to the policy of the Patent Office to encourage the institution of proceedings of this character which not only result in an injury to the applicant for registration but also place an unnecessary burden upon the Office. It will be noticed that in effect this is a holding that the defendant has already been injured and corresponds to the case in equity where the court would allow the defendant his costs upon the dismissal of the bill at the plaintiff's motion. (I presume the Assistant Commissioner meant that it was contrary to the policy of the Patent Office to encourage useless oppositions, for certainly it is not against the policy of the Office to encourage oppositions, since the law provides for and the Office makes every invitation to the filing of oppositions.) But I cannot escape the conclusion that the Assistant Commissioner was misled as to the parallelism between The Cravenette Co. v. Rogers & Thompson case and that of Outcault v. New York Herald above. In the latter case the Herald Company had registered "Buster Brown" as a trade-mark for comic sections of newspapers and Outcault had applied for cancelation of the registered mark. He took proofs, and after proofs taken and the case was in condition for a judgment on the merits he undertook to terminate the proceedingswithout prejudice to his right to file a new application for cancelation. This corresponds to the case in equity, which is an exception to the general rule. The character of these exceptions is perhaps best defined by Judge Colt in Western Union Tel. Co. v. American Bell Tel. Co. (50 Fed. Rep., 662): These exceptions are based upon the principle that a complainant should not be permitted to dismiss his bill when such action would be prejudicial to the defendant. But this does not mean that it is within the discretion of the court to deny the complainant this privilege under any circumstances, where it might think such dismissal would work a hardship to the defendant, as, for example, where it might burden him with the trouble and annoyance of defending against a second suit; but it means that if, during the progress of the case, the defendant has acquired some right, or if he seeks or has become entitled to affirmative relief, so that it would work an actual prejudice against him to have the case dismissed then, the complainant will not be permitted to dismiss his bill. In City of Detroit v. Railway (55 Fed. Rep., 569) Judge Taft reviewed the cases, showing that the right of plaintiff to dismiss his bill when the case is ready for trial is sometimes denied and gives various reasons. On examination it will be found that in that case there was, in effect, a cross-bill and that in all the cases of exception there is a condition where the defendant has acquired some right or would be clearly damaged by the dismissal of the bill. Where such proceedings have been taken as to entitle the defendant to a decree, and especially in a case where it appears from the record that the plaintiff had merely realized his failure to make out a case and was seeking to avoid the consequence of failure, justice would require a refusal of the motion. (Georgia v. Bilfinger et al., 129 Fed. Rep., 131.) Probably if this opposition proceeding was in such a condition that a full judgment on the merits could be given and that the defendant (applicant) would be substantially injured by dismissal without prejudice the opposer should be forced to go to proofs or else have a judgment by default; but when there has been nothing filed except pleadings I do not see how it can be in accordance with practice in equity to force the plaintiff to final judgment when he does not ask for judgment and has not proceeded to a point where judgment could be given. With the conclusion reached by the Commissioner in Outcault v. New York Herald I coincide; but I think that conclusion was based on the practice in equity, and I do not think that Patent Office Rule 125 can be applied at all to a case like the present. To do so would be to hold that one who opposes the registration of a trade-mark does so at his peril of losing all remedy against an improper registration if he should make some mistake in his pleadings or should move prematurely within the short time allowed for filing an opposition. Therefore I feel constrained to overrule the decision in The Cravenette Co. v. Rogers & Thompson (102 MS. Dec., 127.) The petition is granted and the Examiner's refusal to grant the opposer's motion to dismiss his opposition without prejudice is reversed. EX PARTE THE BIDDLE CORPORATION. Decided March 4, 1918. 256 O. G., 821. LABELS-LABEL CONTAINING PUBLIC INSIGNIA-NOT REGISTRABLE. Held that it is against public policy to register a label including public insignia. ON APPEAL. LABEL FOR GAME. Mr. Rudolph M. Hunter for the applicant. CLAY, Assistant Commissioner: The applicant for registration of a label entitled "The Neutral Game of War, Peace and Indemnity" appeals from a refusal of registration based on the fact that the label shows the national flags of a great many foreign countries. The label is marked with red and white horizontal stripes and a central blue field; but it does not exhibit specifically any insignia of the United States. The ground of the refusal is a general objection to aiding in the commercial use of the flag of foreign nations. As this particular label does not use the flag in a way which is offensive, and, moreover, the use of the flags together is more or less descriptive of the goods bearing the label, this case raises the broad question whether this Office ought in any case to register a label which employs any national flag as a device for ornamental advertising. The applicant correctly states in argument that the copyright law, like the patent law, omits to specifically interdict the use or registration of reproductions of public insignia. The refusal, if justified, must be based on broader principles and on the distinctions between the copyright in works of art as such and the registration of commercial labels, in which the art, if any, is applied to the utilitarian purpose-perhaps it may be said the base purpose of promoting the sale of merchandise. Copyright was intended to promote the arts by encouraging authors, which encouragement was to be effected by securing them in their right to reproduce and copy their work. The term "author" includes the artist, and properly copyright only subsists in work which may properly be said to be the work of an author or artist. That work is reproduced and sold per se and for its own intrinsic value. It is not a mere instrument for making more attractive and therefore advertising goods in commerce. The label is registered in a different way and in a different place, and there is a decided distinction based upon the use of the supposed art involved. For this reason it may be quite proper to refuse registration to labels including public insignia when it would not be proper to refuse copyright on a work of art containing them. The wording of the statute of 1874, under which labels are registered, is that— no prints or labels designed to be used for any other articles of manufacturethan pictorial illustrations or works connected with the fine arts— shall be entered under the copyright law, but may be registered in the Patent Office. Notwithstanding this sharp distinction the Commissioner is to control the entry or registry * * * as to copyright or prints * in conformity with the regulations provided by law No court decisions have been found which deal with this apparent inconsistency or with the question whether the registration of labels is purely on the principle of encouraging art. 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 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, |