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merits of the case and to be admissible under Rule 68 requires a verified showing of good and sufficient reasons why it was not earlier presented. (Ex parte Landsing, C. D., 1901, 129; 96 O. G., 2003; ex parte Downing, C. D., 1902, 317; 100 O. G., 2176; ex parte Novotny, C. D., 1904, 57; 108 O. G., 1327.) Petitioners have made no such showing.

The petition is denied.

EX PARTE PHILLIPS.

APPLICATION FOR PATENT.

Decided August 14, 1908.

135 O. G., 1801.

CLAIMS" ASBESTOS OR ITS EQUIVALENT”—ALTERNATIVE.

The expression "asbestos or its equivalent" occurring in a claim renders the claim objectionable as being alternative in form.

ON PETITION.

COMPOSITION OF MATTER AND THE METHOD OF MAKING THE SAME.

Messrs. Brown, Darby & Hopkins for the applicant.

BILLINGS, Acting Commissioner:

This case comes up on a petition that the Examiner be instructed to forward to the Examiners-in-Chief the appeal on the question of merits, including the question of the right of the applicant to retain the words " or its equivalent" in certain of the claims, or that he be instructed to withdraw his objection to the use of these words.

Applicant's invention is a composition of matter, and one of its constituents is stated in the specification to be asbestos or certain materials named as equivalents thereof. In certain of the claims. the expression "asbestos or its equivalent" is used. The Examiner objected to the use of the term " or its equivalent" and also rejected the claims as being anticipated by certain references. An appeal was taken to the Examiners-in-Chief, which the Examiner refused to forward, on the ground that all the preliminary matters of form had not been settled, as required by Rule 134.

This action of the Examiner was clearly right. The question of the use of the words which were objected to was not one affecting the merits of the claims, and therefore not one to be decided by the Examiners-in-Chief. Such being the case, the appeal should not be forwarded until this question is settled.

The objection to the use of the expression "or its equivalent" is believed to have been properly made. It is objectionable to use

terms which are alternative in form, and where possible some terms of description should be used which are generic, if it is desired to include all of several species. (Ex parte Cook, C. D., 1890, 81; 51 O. G., 1620, and ex parte Caldwell and Barr, C. D., 1906, 58; 120 O. G., 2125.) As stated in ex parte Cook, supra, an inventor is always entitled to equivalents, and if nothing more is desired than the benefit of the law of equivalents the expression "or the equivalent " is mere surplusage.

The petition is denied.

CASE BROTHERS v. E. W. MURPHEY & COMPANY.

TRADE-MARK INTERFERENCE.

1. TRADE-MARKS-PRIORITY.

Decided September 4, 1907.

136 O. G., 225.

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The evidence reviewed and Held to establish that M. & Co. were the first to adopt and use the word Eureka" as trade-mark for press-boards. 2. SAME-GRADE-MARK.

Where it was impossible from the nature of the goods to put the trademark thereon, the fact that the mark was not placed on the cases in which the goods were shipped and that M. & Co. sent out a circular describing four grades of press-boards, of which "Eureka " was one, Held insufficient to establish that this mark was used merely to indicate grade or quality. 3. SAME-USE OF THE MARK ON SAMPLES A TRADE-MARK USE.

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M. & Co. placed the mark Eureka on samples of press-boards which were distributed to the trade and which were identical with the boards furnished to customers in all respects except as to size. Held that this was such an association of the mark with the goods as to confer upon M. & Co. the exclusive right to the use thereof.

ON APPEAL.

TRADE-MARK FOR PRESS-BOARD.

Mr. Brainard H. Warner, Jr., for Case Brothers.

Mr. Philip C. Peck and Messrs. G. H. & W. T. Howard for E. W. Murphey & Company.

MOORE, Commissioner:

This is an appeal by each of the parties from a decision of the Examiner of Interferences holding that neither party is entitled to register the mark "Eureka" for press-boards.

Both parties to this interference proceeding are applicants. Upon the evidence adduced the Examiner of Interferences found that the mark in controversy had not been used in such a way as to secure to either party a trade-mark right, but that it had been used merely as a grade-mark.

The questions which I deem it necessary to consider on this appeal are, first, which of the parties was the first to adopt and use the mark; second, whether the evidence indicates that the mark was used as a grade-mark; third, was the mark affixed to the commercial article in such a way as to identify the same and associate the mark therewith in the mind of the user as an indication of the origin thereof?

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1. The mark in controversy is applied to what is known as a pressboard," which is a strong paper-board used in knitting-mills for pressing or ironing knit goods, the process of ironing being carried out by placing alternate layers of press-board and knit articles in a hot or cold press and applying pressure thereto.

Case Brothers are manufacturers of such a board, and Murphey & Company are engaged in selling the same to knitting-mills, together with other mill supplies.

Prior to August, 1902, Murphey & Company were furnishing to their customers three different grades of press-board, which they denominated "New Process," "No. 1," and "No. 2," the "New Process" board being the best of the three grades. Complaint was made to Murphey & Company by one of their customers that their pressboards did not give satisfaction in hot pressing. This complaint was made known to Case Brothers, and they were asked if they could get out a board that could be guaranteed, to which Case Brothers replied that they would furnish a board that they would guarantee to last as well as any other make of American boards which could be found, but that they would not guarantee it for any specified time.

Accordingly, on August 9, 1902, Murphey & Company entered into a contract with the customer making the complaint guaranteeing for one year the board which should be furnished them, in which contract the board was referred to as "AA" board. It appears that this designation was used without consultation with Murphey & Company by one J. C. Hardy, a salesman for Murphey & Company, who personally came in contact with most of their customers and who transacted most of the business with Case Brothers which required personal attention. Murphey & Company, having decided to carry the new high-grade press-boards as a part of their regular line, felt that a new name should be adopted therefor. R. C. Payne, a member of the firm of Murphey & Company, testified that the mark now in controversy was suggested by one J. G. Carpenter, who was at that time their bookkeeper, and who died before the testimony in this case was taken. This testimony is corroborated by Leary, another employee. J. C. Hardy, whose interests are now with Case Brothers, does not admit the occurrence of all the events which Payne states took place in his presence, but Hardy does testify that a conversation

69025-H. Doc. 1349, 60-2--14

with respect to the selection of a mark took place, and in answer to question 11 (C. R., p. £6) he states:

When we had discussed this question for some little time we decided that these names should be shown to Mr. Stanley of Case Brothers and for me to visit them and suggest that the name "Eureka" would be the one we would prefer among the number, and as I stated in my previous testimony, Mr. Stanley spoke about the word "Eureka as being applied to packing and soap and did not know that any press-boards bore that name and that he thought under those circumstances we would adopt the name "Eureka."

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Mr. Robert N. Stanley, who is the manager for Case Brothers, in reply to the question how they came to adopt the name "Eureka " states as follows:

To the best of my recollection, Mr. Hardy came to our office in the late summer or early in September and talked with me regarding the name of the board. The name was suggested and was thought to be a good name for the board, and on an order from E. W. Murphey & Company later in the month, in making their first order for this board, exclusive of the sample lot referred to before, they used the word "Eureka." (C. R., p. 24.)

None of the witnesses for Case Brothers distinctly claim to have suggested the mark, nor do they deny that it was first suggested by Murphey & Company, in view of which and of the testimony above referred to I am of the opinion that the record clearly shows that the name originated with Murphey & Company. This conclusion is confirmed by the fact that there is record evidence showing that the mark was used by Murphey & Company in a letter to one of their customers, dated August 28, 1902, and that it was also used in a letter from this customer to Murphey & Company, dated August 30, 1902, while Stanley admits that at this early date no name had yet been chosen. (C. R., p. 26.) My conclusion is that Murphey & Company were the first to adopt the mark.

As to the use of the mark the record is very clear that Case Brothers never sold their press-boards to any one except Murphey & Company under the name "Eureka," that they never used the mark on the cases in which they packed the board for shipment to Murphey & Company or to others upon Murphey & Company's order, nor did they send out any samples of the board to the trade under this name. It is therefore clear that outside of the use of the mark by Murphey & Company they made no use of the mark which would give them a property right therein. Nor can Case Brothers claim the benefit of any use of the mark by Murphey & Company, since it is clear from the record that the latter adopted the mark for their own use, that many of their customers did not know who made the boards, and looked to them solely as the party responsible for the quality thereof. It is well settled that one may acquire an exclusive right to a mark which he has adopted and used to designate goods of his

selection, although not of his manufacture. (Menendez v. Holt, C. D., 1889, 344; 46 O. G., 971; 128 U. S., 514.) It is found, therefore, that Murphey & Company were the first to adopt and use the mark.

2. Does the evidence show that the mark was used by Murphey & Company as a grade-mark? The, record indicates that about eighty per cent. of the goods sold by Murphey & Company were sent directly to their customers from Case Brothers-the manufacturers-in accordance with orders from the former, and that the cases in which these goods were shipped were not marked except with the address of the consignee. The record further shows that when press-boards were shipped directly to Murphey & Company the cases containing them were not marked with the trade-name, but by an order-number only, and that upon receipt of such cases an employee of Murphey & Company would compare the numbers on the bills, in which the character of the goods was stated, with the number on the cases and label them "Eureka " or " New Process," as the case might be. This marking was not stenciled, but was put on with a pencil. This employee admitted on the stand that he so labeled the boxes in order to determine readily the contents thereof. The record also shows that in the fall of 1902 Murphey & Company sent out to the trade a circular describing their four grades of press-boards, "Eureka," "New Process," ‚” “No. 1," and "No. 2." Upon these facts the Examiner of Interferences held that the evidence indicated that the mark was used as a grade-mark and not as a trade-mark. With this view I do not agree. The word "Eureka" is not in itself indicative or suggestive of grade. It has not been held in any reported case, so far as I know, that a party cannot acquire property rights in different marks for the same class of goods, and it is well known that a large number of the trade-marks now in use are used in this way. For example, a manufacturer who puts out different grades of cigars ordinarily adopts different names for the different grades, and while these names might be indicative of grade to the manufacturer himself, they would not be so to the consumer, who generally does not know the manufacturer, but who associates only the particular name with the particular goods to which it is affixed. To the consumer, then, such a name is indicative of origin only. Nor does the fact that Murphey & Company failed to mark the cases in which they sent out the goods conclusively show that they regarded the mark or intended to use it solely as a grade-mark.

While the failure of Murphey & Company to use the mark in the way it is ordinarily used tends to indicate that they were not using it as a means to distinguish the origin of their goods, a contrary intention is indicated by the whole record of the case, which shows that

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