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2. SAME-NON-TECHNICAL MARKS-TEN-YEAR PROVISO-EXCLUSIVE USE.

A non-technical mark is not entitled to registration under the ten-year proviso of section 5 of the Trade-Mark Act of February 20, 1905, unless it is shown that the applicant possessed and enjoyed an actual use of the mark for the specified period to the sole exclusion of all others, and if it appears that during such period another was using the same word as a trade-mark upon the same character of goods the use cannot be considered "exclusive" within the meaning of the statute.

Mr. L. W. Southgate for the appellant.

Mr. G. H. Maxwell for the appellee.

VAN ORSDEL, J.:

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In this case, the appellant, Worcester Brewing Corporation, filed its opposition to the registration in the Patent Office by the appellee, Rueter & Company, of the word "Sterling" as a trade-mark for ale. The opposition was dismissed by the Commissioner of Patents, (C. D., 1907, 151; 128 O. G., 1687,) and from that ruling appeal was taken to this court. The evidence in this case, we think, discloses that the appellee and its predecessors in business have used the word Sterling" as a trade-mark for ale, manufactured and sold by it, since 1882. There is some evidence extending the use back to 1869, but, we think, the evidence conclusively shows a continuous use since 1882. The president of the appellant company, who owns about three-quarters of its capital stock, was, until 1899, agent for sale of the ale produced by appellee bearing the mark "Sterling." In that year he organized the appellant company and became its president, at the same time conducting the business of a wholesale liquor dealer. He ceased to handle the goods of appellee in the year 1900, since which time he has sold exclusively the goods of appellant. It further appears that about May 1, 1900, the appellant company began to use the word "Sterling" as a trade-mark for ale of its own production. The mark has been used by appellant since that time. The device used by appellant, in which the word "Sterling" appears, is "Worcester Sterling Ale."

It is contended by counsel for appellant that the word "Sterling " is a descriptive word, and is for that reason not entitled to registration. We are of the opinion that the word "Sterling," when applied to any kind of goods, is descriptive of the quality of the articles on which it is used. It denotes that the article on which it is used is genuine, pure, and of superior quality. These meanings are applied to the word by the dictionaries, and we think they express what the public generally understands by the use of the term. Certainly, when the word "Sterling" is used in connection with merchandise or beverages, it will at once be understood to denote quality. Being a descriptive word, it is ineligible for registration as a technical trade-mark.

There is but one way left in which appellee is entitled to have its application for registration considered in this case, and that is under the proviso to section 5 of the act of Congress of February 20, 1905, which is as follows:

That nothing herein shall prevent the registration of any mark used by the applicant, or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations, or among the several States, or with the Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant, or his predecessors from whom he derived title, for ten years next preceding the passage of this act.

The record discloses an actual and continuous use by appellee of the word "Sterling " as a trade-mark for ale for more than ten years next preceding the passage of the act of Congress. If it appears, therefore, that this use has been exclusive, even though the word is descriptive and not susceptible of registration as a technical trademark, appellee would still, by reason of its actual and exclusive use for ten years next preceding the passage of the act, be entitled to the right to register it. In the case of In re Cahn, Belt & Co., (C. D., 1906, 627; 122 O. G., 354; 27 App. D. C., 177,) this Court said:

The last proviso of section 5, as amended and passed, was not intended to provide for the registration of technical trade-marks, for such marks had been cared for elsewhere in this act. The proviso admitted the registration of marks, not in either of the classes prohibited by this section, if such marks were in actual and exclusive use as a trade-mark for ten years next preceding the passage of the act. In respect of technical trade-marks, this proviso is absolutely useless. It was intended to save the right of registration to the marks described in the proviso. * The last proviso to section 5 was intended

to refer only to marks owned by the applicants, and in their actual and exclusive use for ten years.

It is clear that appellee, during the ten year period would have had no right to exclude appellant from the use of the word "Sterling" on the ground of its being a valid technical trade-mark. Not possessing this right, it is difficult to understand upon what theory its use can be said to be exclusive.

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We think that the Commissioner of Patents erred in holding that the word "exclusive,” as used in the proviso of section 5, means the right to exclude." It has no reference to any right possessed by the user. Since the word did not constitute a technical trade-mark, no right to exclude could be asserted. Inasmuch as the word is used in the statute in connection with the words “actual use" and both expressions are used to qualify the special right conferred by this provision of the act, we hold that an actual use must be shown to have been possessed and enjoyed by the applicant to the sole exclusion of all others. The use could not be exclusive if, during the period, it appears that another was using the same word as a trade-mark upon the same character of goods. It is not denied that, during five years

of this period prior to the act of 1905, appellant used continuously the word "Sterling" as a mark on the same kind of goods on which it was used by appellee. We are of the opinion that this is sufficient to prevent appellee from claiming such an exclusive use as would entitle it to register the word "Sterling" as a trade-mark.

It is unnecessary to consider the other questions raised in the record, and discussed in the briefs of counsel. The decision of the Commissioner of Patents is reversed and the clerk is instructed to certify this proceeding, as required by law. Reversed.

[Court of Appeals of the District of Columbia.]

UNITED STATES OF AMERICA, EX REL. THE NEWCOMB MOTOR COMPANY, v. MOORE, COMMISSIONER OF PATENTS.

Decided March 3, 1908.

133 O. G., 1680; 30 App. D. C., 464.

1. INTERFERENCE-RIGHT TO MAKE CLAIMS A QUESTION OF PRIORITY—APPEAL TO Court.

The right of a party to make a claim goes to the foundation of an interference, and a judgment of a Primary Examiner denying that right may be appealed to the Court of Appeals of the District of Columbia and that court will take jurisdiction to determine that question as an ancillary question to be considered in awarding priority of invention."

2. SAME SECTION 4904, REVISED STATUTES-COMMISSIONER MAY DELEGATE AUTHORITY.

Although section 4904, Revised Statutes, provides that whenever" in the opinion of the Commissioner" an interference exists notice shall be given to the parties, etc., the Commissioner is not obliged personally to determine in the first instance whether an interference in fact exists, but may delegate this duty to the Primary Examiner. The demands of the statute are fully met when it is provided that at some stage in the proceedings the personal opinion of the Commissioner may be invoked by either party.

3. SAME RIGHT TO HAVE CLAIMS TWICE REJECTED-INTER PARTES CASE.

The provisions of the statutes giving an applicant the right to have his claim twice rejected (secs. 4903 and 4909, R. S.) does not apply in inter partes cases.

4. SAME-MOTION TO DISSOLVE-EXAMINER'S DECISION FINAL UNLESS APPEAL

PROSECUTED.

Where a Primary Examiner on a motion to dissolve decides that one of the parties has no right to make the claims of an interference issue and such party, after filing an appeal from such decision, fails to prosecute the same and abandons it, such decision becomes final and binding upon the parties and precludes the subsequent ex parte consideration of the same question.

5. SAME-SAME-SAME-SUPERVISORY AUTHORITY OF COMMISSIONER.

Upon a motion to dissolve it was held that one of the parties had no right to make the claims in issue and the appeal from that decision was

abandoned; but subsequently in the ex parte prosecution of that party's case it was held by the Examiners-in-Chief that said party had a right to make the identical claims and the interference was redeclared. The Commissioner thereupon set aside the ex parte decisions and directed a rehearing of the case before the Examiners-in-Chief inter partes. Held that the decision in the interference was res adjudicata and that the Commissioner was without authority to direct the readjudication in such ex parte application of the question whether said party had a right to make the identical claims of the issue of the interference.

6. MANDAMUS-PROPERLY INVOKED FOR ENFORCEMENT OF DECISION OF PRIMARY EXAMINER.

Where a Primary Examiner on a motion to dissolve decides that one of the parties has no right to make the claims of an interference issue and such party, after filing an appeal from such decision, fails to prosecute the same and abandons it, such judgment becomes final and binding upon the parties, and mandamus is the proper proceeding to secure the enforcement of such judgment and a vacation of any subsequent ex parte or inter partes proceedings adjudicating the same question or based upon such an adjudication.

Mr. C. H. Duell, Mr. R. N. Kenyon, and Mr. W. F. Rogers for the appellant.

Mr. Melville Church and Mr. F. A. Tennant for the appellee. ROBB, J.:

This is an appeal from an order of the Supreme Court of the District of Columbia dismissing a petition for a writ of mandamus to compel the Commissioner of Patents to enforce a former decision made in the Patent Office and to vacate certain proceedings thereafter had involving what is claimed to be the same subject-matter. (C. D., 1907, 683; 130 O. G., 302.)

The facts, about which there is no controversy, are these: On July 15, 1902, two patents were regularly issued to E. C. Newcomb— one for an apparatus for generating steam and the other for the method of generating steam. Both were subsequently assigned to the relator, The Newcomb Motor Company. Newcomb's original application was filed June 7, 1901, and subsequently divided. Prior to this, on August 2, 1897, Elihu Thomson had filed an application for an apparatus for regulating and controlling steam production. No interference was declared between this and Newcomb's applications. After the issue of Newcomb's patents Thomson inserted in his application forty-seven claims copied from Newcomb's method patent and demanded an interference. Thereafter, on November 17, 1902, Thomson filed a divisional application setting up the same method claims and at the same time canceled said claims in his original application. February 28, 1900, Herman Lemp filed an application for automatic regulation of steam-propelled vehicles, and on November 3, 1902, another for the method of producing steam.

Both of these have been assigned to the General Electric Company. December 30, 1902, an interference was declared between Lemp's last application and the Newcomb patent, No. 704,908, (method,) involving an issue of fifteen counts. These counts consisted of fifteen claims of the Newcomb patent that were not claimed in Lemp's application as filed, but were added thereto after Newcomb's patent had issued. A second interference was declared January 13, 1903, between Lemp's first application and Newcomb's patent, No. 704,907. The twenty-one counts of this issue were claims of the Newcomb patent not claimed by Lemp until after the issue of the Newcomb patent. January 13, 1903, an interference was declared between Thomson's divisional application and Newcomb's patent, the fortyseven counts of the issue constituting the claims taken from Newcomb's patent. Another was declared January 27, 1903, between Thomson's original application and Newcomb's patent, No. 704,907. The issue in this contained forty-eight counts embracing forty-eight claims of the Newcomb patent not in Thomson's original application but inserted by him after the issue of the Newcomb patent aforesaid. Thereafter Newcomb filed in each case a motion, under Rule 122, to dissolve the interferences. Several grounds were assigned, the substantial one in each case being that the opposing party had no right under his application to make the claims in interference. The Primary Examiner, to whom the motions were referred under the rule, on January 11, 1904, made a decision in each case that the applicants had no right to make the claims, and thereafter dissolved the interferences. The limit of appeal from each decision was ordered to expire February 4, 1904. Lemp and Thomson filed motions before the Primary Examiner asking him to cancel the limit of appeal as contrary to law, because they were entitled to a second rejection of their claims, that after-proceedings in the interferences be suspended pending the motions, and that they be given thirty days within which to file affidavits regarding the right to make the claims. By stipulation the limit of appeal had been extended sixteen days, namely, to February 20, 1904. On that date the Examiner denied the motions. On the same day Lemp and Thomson entered appeals to the Examiners-in-Chief from the decisions dissolving the interferences, asking that hearings thereof be postponed until a decision by the Commissioner on appeals taken directly to the Commissioner from the decisions of the Examiner refusing to extend the limit of appeal. On March 11, 1904, the Commissioner affirmed the decisions denying the motions to extend the limit of appeal. September 28, 1904, the Commissioner denied motions for rehearing. Pending the above proceedings, on June 3 and 7, 1904, Thomson and Lemp petitioned the Commissioner to remand their applications to the Primary Examiner with instructions to reject or allow the same. This petition was denied.

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