the "Eureka" press-board was personally brought to the attention of mill-owners by a salesman in the employ of Murphey & Company; that trade was solicited by means of samples of this board with the mark plainly printed thereon; that orders were received and filled therefor, and correspondence had with respect thereto. So far, therefore, as the failure to mark the packages raises any presumption against Murphey & Company's intention to acquire a property right in the mark, as distinguished from a use of it as indicative of grade, it is overcome by other evidence in the case. This circumstance, however, has another important bearing on the case, and that is, having so failed to place the mark on the packages in which they sold the goods have they otherwise so associated the mark with the goods as to indicate to the users the origin or ownership thereof? This question will now be considered.

3. The usual definition of a trade-mark includes the limitation that it must be "affixed" to the goods. The limits of the conditions which will satisfy this requirement are not very clearly defined in the adjudicated cases which I have been able to find. A mark is very commonly applied or affixed to the goods themselves, as by printing, engraving, or embossing. In many cases it is impossible or inconvenient to affix the mark to the commercial article itself, as in the case of liquids, powder, etc., and in these cases it has been held sufficient ordinarily to affix the mark to the packages in which the goods are sold. It has also been held in a decision by Mr. Commisioner Duell in the case of Hay & Todd Mfg. Co. v. Querns Bros. (C. D., 1899, 25; 86 O. G., 1323) that it is unnecessary to attach physically the label containing the mark to the packages of goods, but that it is sufficient to place the label bearing the mark in the package containing the goods. On the other hand, it has been held that a mere advertisement of the goods associated with a mark is not such a use of the mark as will create a trade-mark right, (St. Louis Piano Mfg. Co. v. Merkel, 1 Mo. App., 305; Hazelton Boiler Co. v. Tripod Boiler Co., 142 Ill., 494; Hartshorn v. Philbrick, C. D., 1902, 427; 101 O. G., 2077,) nor the use of a mark in ordering goods or selling them to customers. (Thompson v. Montgomery, 6 R. P. C., 404.) In the case at bar the mark was not printed or impressed upon the goods sent out for use, for this would have rendered them unfit for the object intended, nor was the mark placed on the packages or on a label placed in the packages; but the mark was plainly printed on samples of the press-board identical in all respects with that furnished to customers except as to size. These samples could not be put into presses and used in the way press-boards are ordinarily used; but they could be otherwise tested as to color, thickness, quality, etc., so that persons who received them could determine the advisability of ordering press-boards of the quality exhibited, and when so ordered and the orders were filled

could determine whether the goods furnished were of the quality of the sample. Thus purchasers were able to definitely associate the particular mark with a particular class and quality of goods, and this is believed to be the vital requisite to the establishment of a property right in a mark. In Powell's case (66 L. J. Ch., 303) Bowen, L. J., said:

The function of a trade-mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market.

By placing in the hands of the public samples of goods with the trade-mark printed thereon it is believed that Murphey & Company have so associated the mark with the goods as to tell the public from what source they come and that they have for this reason exclusive right to the use thereof. Moreover, the record shows that these press-boards were ordered by the name "Eureka," that they were so billed to customers, and that correspondence was had in which the word "Eureka" was recognized as associated with a particular style or quality of board. Undoubtedly the customers of Murphey & Company by means of these samples, correspondence, personal solicitation, etc., had come to associate the word "Eureka" with a particular quality of goods, and the mark has thus come to be a valuable asset in their business.

While I entertain some doubt as to whether the use in this case has been sufficient under the law, it is believed that this doubt should be resolved in favor of the applicant, especially in view of the fact that the record appears to show that the "Eureka " press-boards have in fact acquired a reputation in the market and in view of the fact that, in any event, the registration of the mark gives only additional rights of procedure and does not confer a right of property therein.

The decision of the Examiner of Interferences is reversed, and priority of adoption and use is awarded to Murphey & Company.

GRAVES v. Gunder.

Decided August 20, 1908.

136 O. G., 227.

1. TRADE-MARKS-CANCELATION-USE OF MARK ON GOODS OF DIFFERENT DE

SCRIPTIVE PROPERTIES.

The use by the applicant for cancelation of a mark on a dyspepsia remedy furnishes no ground for canceling the registration of substantially the same mark for tooth-powder, since these articles are manifestly of different descriptive properties.

USE SUBSEQUENT TO THE PASSAGE OF THE TRADE-MARK ACT. Where a mark was registered under the “ ten-years clause of the TradeMark Act, the use of that mark by the applicant for cancelation after the passage of that act is no ground for canceling the registration.

3. SAME-SAME-MARK USED NOT SAME AS MARK REGISTERED-UNESSENTIAL FEATURES.

The mark registered was "Graves Tooth Powder." Held that no ground for canceling said mark would be established by showing that the mark actually used was "Dr. E. L. Graves Tooth Powder." (Standard Underground Cable Co., C. D., 1906, 687; 123 O. G., 656; 27 App. D. C., 320.) 4. SAME-SAME-PRIOR REGISTRATION BY SAME PARTY.

The fact that a party registered the words "Dr. E. L. Graves Tooth Powder" and "Dr. E. L. Graves Unequalled Tooth Powder" does not constitute a ground for canceling his registration of the words "Graves Tooth Powder." (Anheuser-Busch Brewing Association v. D. G. Yuengling et al., C. D., 1907, 232; 129 O. G., 3501.)

APPEAL from Examiner of Interferences.

TRADE-MARK FOR TOOTH-POWDER.

Mr. J. A. Rosen and Mr. W. S. Duvall for Graves. Messrs. Mason, Fenwick & Lawrence for Gunder. BILLINGS, Acting Commissioner:

This is an appeal by Graves from a decision of the Examiner of Interferences dismissing his application for the cancelation of the registration of a trade-mark for tooth-powder.

The mark in question consists of the words "Graves Tooth Powder" and was registered by the party Gunder on February 12, 1907, registration being obtained under the "ten-years" clause of the Trade-Mark Act.

In his application for cancelation Graves alleges that at the time Gunder applied for registration and a long time prior thereto he had been engaged in the manufacture and sale of tooth-powder under the name of "W. E. Graves Tooth Powder." He further alleges that neither Gunder nor his predecessor in business at any time during the ten years preceding the passage of the Trade-Mark Act used the name "Graves" alone in connection with tooth-powder, but always used the same in connection with the initials "E. L." or "Dr. E. L.," the mark appearing as "Dr. E. L. Graves Tooth Powder."

Gunder took no testimony. Graves took the testimony of himself and one other witness, Milton Brown, and introduced in evidence certified copies of certain portions of the testimony of Gunder and Dr. E. L. Graves given in a suit brought by Gunder against W. E. Graves in the United States Circuit Court for the District of Kansas involving the right to use the mark here in controversy.

W. E. Graves testifies that his business is manufacturing toilet goods and medicines. He states that for sixteen years he has sold a

"dyspepsia cure" in packages marked "Graves Dyspepsia Cure." He also states that he has since April, 1906, been selling tooth-powder in cans marked "W. E. Graves Tooth Powder." Since tooth-powder and "dyspepsia cures " are manifestly goods of different descriptive properties and since W. E. Graves did not commence to sell toothpowder till after the passage of the Trade-Mark Act, it follows that there is nothing in this testimony to show that Gunder was not the sole user of the words "Graves Tooth Powder" in connection with tooth-powder during the ten years next preceding the passage of that

act.

It is argued that the testimony of Graves and the exhibits introduced in evidence show that Gunder has admitted that neither he nor his predecessor in business, E. L. Graves, ever used the words "Graves Tooth Powder" alone, but that all tooth-powder sold by them was marked "Dr. E. L. Graves Tooth Powder." Objection was made to the introduction of this testimony, which objection was, except as to certain parts of Brown's testimony, overruled by the Examiner of Interferences. The question of the admissibility of this testimony has been raised on this appeal; but it is not deemed necessary to consider it, for the reason that even if it be established that Gunder and his predecessor used only the words "Dr. E. L. Graves Tooth Powder" that would not, under the ruling of the court of appeals in the case of the Standard Underground Cable Company, (C. D., 1906, 687; 123 O. G., 656; 27 App. D. C., 320,) constitute a ground for canceling the mark "Graves Tooth Powder." In that case the Court said:

When an applicant presents his alleged mark for registry under the act approved February 20, 1905, who is to determine of what the mark consists? If, as in the present case, the mark is impressed upon a label, and, in addition to the matter claimed as the trade-mark by an applicant, certain accessories are shown, is the power vested in the Commissioner of Patents to say to applicant you must describe or show your mark not only as consisting of what you say it is, but you must include such portion of the accessories, or parts of the label as I think are a material portion of the mark, although you may think otherwise. The power is an autocratic one and its possession by the Commissioner of Patents cannot be presumed but must, we think, be set forth in the statute with reasonable clearness.

*

Nowhere in the act do we find any power vested in the Commissioner of Patents to decide for the applicant the scope of the trade-mark.

We repeat that we do not think that Congress intended to confer upon the Commissioner of Patents authority to say to an applicant how much or how little of the embellishments appearing in connection with what may be called the essential feature of a trade-mark, form an actual part of the trade-mark. Rather do we think that this right of selection and designation rests with the applicant. No general rule can possibly be applied, and where this is the case it is unwise to attempt to exercise a power not expressly vested in an executive officer. The proper forum for the decision of such questions is the courts, where each case can be passed upon as it arises.

On the cartons and cans which were submitted by W. E. Graves as showing the mark used by the registrant appear the words "Dr. E. L. Graves Unequalled Tooth Powder." It cannot be held, however, that the initials "Dr. E. L." and the word "Unequalled" form an essential part of the mark which should have been included in the mark registered. As the registrant was, under the decision above cited, entitled to register his mark as shown in the drawings, it follows that the fact that he used this with other words does not constitute a ground for cancelation of the mark.

Attention is also called to registration Nos. 59,250 and 59,251, issued to Gunder. The marks shown in these registrations are "Dr. E. L. Graves Tooth Powder" and "Dr. E. L. Graves Unequalled Tooth Powder." As pointed out in the decision in the case of Anheuser-Busch Brewing Association v. D. G. Yuengling et al., (C. D., 1907, 232; 129 O. G., 3501;) these registrations did not constitute a bar to the registration of the present mark, and therefore they offer no ground for the cancelation of the registration.

The decision of the Examiner of Interferences is affirmed.

OUTCAULT V. THE NEW YORK HERALD COMPANY.

CANCELATION PROCEEDING.

Decided August 1, 1908.

136 O. G., 437.

TRADE-MARKS-CANCELATION-WITHDRAWAL OF APPLICATION THEREFOR

After pleadings have been filed, proofs taken, and the case ready for final hearing an applicant for cancelation will not be permitted to withdraw his application without prejudice to his right to file a new application.

APPEAL ON MOTION.

TRADE-MARK FOR COMIC SECTIONS OF NEWSPAPERS.

Messrs. Mason, Fenwick & Lawrence for Outcault.

Mr. William A. Megrath for The New York Herald Company.

MOORE, Commissioner:

This is an appeal by Outcault from the decision of the Examiner of Interferences denying his motion for leave to withdraw his application for cancelation of the trade-mark registration of The New York Herald Company.

On February 6, 1906, the Patent Office issued certificate No. 49,499 to The New York Herald Company for the registration of the