Lexington Club" are not identically the same, we are of the opinion that appellee is not entitled to the registration of its mark by reason of having used the same exclusively for ten years prior to the act of February 20, 1905. To hold that appellee is entitled to such registration because of the slight difference in the marks, would, at the same time, admit appellant to the registration of its mark under the same conditions. The registration of both marks by the Patent Office is, in our opinion, forbidden by the fifth section of the act of 1905, which provides: That trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered. There can be no doubt but what the use of the trade-mark "Old Lexington Club" would tend to mislead and confuse the public with the words "Lexington Club," which are shown to have been widely used by appellant for a long period of time. Confusion is not only forbidden between registered trade-marks, but between a registered mark and a mark known to be in use. Both of the marks in question have long been in general use, and the registration of either one would tend to confuse the public mind with the other. (In re Herbst Importing Company, ante, 383; 134 O. G., 1516.) Where two marks are so nearly identical as to tend to confuse and mislead the public, neither is entitled to registration, even under the ten-year clause of the act of 1905. We are, therefore, of the opinion that, under the statute, there has been no such exclusive use of the mark in question by appellee as would entitle it to registration. (Worcester Brewing Corporation v. Rueter & Co., ante, 329; 133 O. G., 1190.) The decision of the Commissioner of Patents is reversed, and the clerk is directed to certify these proceedings as by law required. Reversed. [Court of Appeals of the District of Columbia.] IN RE PEARSALL. Decided April 20, 1908. 135 O. G., 221; 31 App. D. C., 265. DOUBLE PATENTING-TWO APPLICATIONS BY SAME INVENTOR-ONLY ONE PATENT ISSUED. P. filed an application and assigned it to V. Later he filed a second application for the same invention and assigned it to W. A patent was issued on the latter application. Held that this patent is a bar to the issuance of a patent on the earlier application. Mr. E. H. Brown and Mr. C. E. Foster for the appellant. ROBB, J.: This is an appeal from the decision of the Commissioner of Patents refusing to allow the following claim: A piled or tufted fabric, having a three-warp, three-weft weave, in which the first weft is inserted below the back-binding warp and above the other warpthreads, the second weft is inserted reversely to this, the third weft is inserted below the upper binding-warp and above the other warp-threads, and the tufts are disposed around the second weft, whereby the pattern is visible on the back of the fabric. Pearsall filed this application in the Patent Office September 15, 1902, and assigned the same to Carl Vorwerk, of Barmen, Germany. On February 18, 1904, Pearsall filed a second application, which the Patent Office holds covers the same invention and which he assigned to Matthew J. Whittall, of Worcester, Mass. Both assignments were recorded in the Patent Office. On November 15, 1904, Patent No. 774,775 was issued on the later application. Whether this patent was issued inadvertently does not appear. Counsel for Vorwerk, upon learning of the issuance of the patent to Whittall, addressed a letter to the Commissioner in which they said: We are at a loss to understand how this Patent No. 774,775 could have been granted to Pearsall in view of this present application Serial No. 173,244 which is for absolutely the same thing. We feel sure that Pearsall's Patent No. 774,775 must have been inadvertently granted and we have to ask for an immediate declaration of interference between said patent and this pending application Serial No. 173,244. It will be obvious from inspection of the figure of the present application and Fig. 2 of the patent, that the fabric shown in each is absolutely the same. It is now contended that the invention claimed in this application is not the same as that of the patent. We find no merit in this contention. All the tribunals of the Patent Office have held that the inventions are the same, and an examination of the specifications and claims of each convinces us of the correctness of that conclusion. The structures shown and described in the two applications are almost identical. The Commissioner in disposing of the question said: The only difference between the construction of this application and that of the patent is that in the latter the filling-threads are doubled strands arranged in three horizontal planes while in the application the filling-threads are single strands in two horizontal planes. Neither of these distinctions is expressed in the claims of the patent or in the appealed claim. They will not therefore serve to differentiate between the application and the patent. Numerous other errors are assigned which need not be separately noticed and considered, as they are all embraced in the proposition 69025-H. Doc. 1349, 60-2▬▬28 that the Commissioner erred in holding the patent a bar to the grant of another patent for the same invention to the same applicant. Appellant contends that it was the duty of the Commissionerto issue the patent to Pearsall or else determine in some way which of the assignees was legally entitled to it and issue it to him. It is further contended that Whittall had no legal interest in the invention because of the prior assignment to Vorwerk, and that, therefore, the grant of the patent was in excess of the Commissioner's powers and a nullity. The fallacy in appellant's contention consists in his assumption that the patent to Whittall is void. The application forming the basis of that patent was regularly made, and, but for the prior assignment, no question could be raised as to the jurisdiction and authority of the Commissioner in the premises. Clearly he had jurisdiction of the subject-matter of his decision which was the invention. Having determined that a patent should issue, it is conceded he might have ignored both assignments and issued a patent in the name of the inventor, which, probably, would have been the better course for him to have followed. In Gayler v. Wilder, (10 How., 477,) it was ruled that where a patent issues to an applicant who has assigned his interest therein, the patent is valid and by operation of law vests in the assignee. If a patent to an inventor who has assigned all his interest in the invention is valid and by operation of law inures to the benefit of the assignee, we fail to perceive why a patent to one of two rival assignees does not vest in the holder of the superior assignment. As previously stated, it does not appear that the patent to Whittall inadvertently issued, neither does it necessarily follow that because Vorwerk holds the prior assignment his title is superior to Whittall's. The record is silent as to the facts and circumstances surrounding the two assignments. The Commissioner says: * But if it be agreed that the Office made an error in issuing the patent on the second application instead of the first, it is believed that the error cannot be corrected by issuing a patent to appellant. The patent is based upon the application of Pearsall, and in issuing the same, the Office exhausted its authority to grant patents for that invention based upon Pearsall's inventorship. Moreover, the issue of a second patent would not settle the question of title. It is believed that appellant must be left to his remedy in court where this question can be finally determined. Holding as we do that the patent to Whittall is valid and inures to the benefit of the holder of the equitable title thereto, it necessarily follows, in view of the well-established rule prohibiting the grant of two patents for the same invention to the same or a different party (Miller v. Eagle Mfg. Co., C. D., 1894, 147; 66 O. G., 845; 151 U. S., 186,) that the decision of the Commissioner must be sustained. If appellant is the real owner of the patent, he has his remedy by appropriate proceedings in a court of equity. The decision of the Commissioner of Patents is affirmed, and the clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents, in accordance with law. Affirmed. [Court of Appeals of the District of Columbia.] MICHIGAN CONDENSED MILK COMPANY v. THE KENNEWEG COMPANY. Decided March 3, 1908. 135 O. G., 451; 30 App. D. C., 491. 1. TRADE-MARKS-OPPOSITION-MARK ORIGINATING WITH CONSUMER USED BY MANUFACTURER. Where a customer orders a manufacturer to put up goods under a certain brand, which originated with the customer, the brand belongs to him and not to the manufacturer. 2. SAME-SAME-EVIDENCE CONSIDERED. The evidence considered and held not to establish that Kenneweg & Company, the predecessor in business of the applicant, with whom the mark in issue originated, had only an exclusive license to use the mark in a limited territory. 3. SAME-SAME-LACHES. The fact that after discovering that the opponent was using the mark in issue applicant took no steps to prevent this use does not constitute such laches as will defeat its right of registration. Mr. J. A. Burkart and Mr. A. P. Greeley for the appellant. Mr. E. S. Duvall, Jr., for the appellee. SHEPARD, C. J.: On April 17, 1905, the Kenneweg Company, a corporation doing business as wholesale grocer in Cumberland, Md., filed an application for the registration of a trade-mark consisting of a large figure of a star, in solid color, with the words "Star Brand, Condensed Milk " arranged around it. The description and accompanying label show the word "Star" above the representation of a large five-pointed star; the word "Milk was below; the word "Brand" was on one side; and the word "Condensed " on the other. The Examiner informed the applicant that the trade-mark appeared to consist of the representation of the star associated with the word "Star," and that the words "Condensed Milk" must be canceled. These suggestions were followed by amendment of the application in conformity therewith, and the applicant was thereupon notified of the passage of the application for the required publication. Within the period prescribed by law, the Michigan Condensed Milk Company filed an opposition to the registration. The substantial allegations of the opposition are, that the said trade-mark is substantially identical with a trade-mark adopted by opponent in 1890 and used continuously since upon the goods manufactured and sold by it; and is likely to be mistaken by the public for its trade-mark: That the trade-mark of opponent adopted in 1890 was first placed upon goods manufactured by opponent and sold to the Kenneweg Company on May 19, 1891; and that opponent has never given to the Kenneweg Company any interest in said trade-mark, or the right to use the same. The Kenneweg Company replied to the opposition, alleging that it had adopted the trade-mark in 1891; that the same had been designed by it and used on condensed milk ordered from the opponent about May 19, 1891, with the request to furnish the Star Milk and place upon the cans the label bearing the adopted mark; that the Kenneweg Company originated and adopted the trade-mark before entering into any arrangement with opponent, and that opponent furnished the labels from designs and drawings submitted by Kenneweg & Co.; that the said trade-mark is the lawful property of the Kenneweg Company, and the opponent has never had the right to use the same; that the said trade-mark has been continuously used by the Kenneweg Company in its business, since its adoption, and was registered by it April 16, 1895. On the evidence taken the Examiner of Interferences rendered a decision in favor of the opponent. The Kenneweg Company appealed to the Commissioner who reversed the Examiner's decision. The Michigan Condensed Milk Company was a large manufacturer of condensed milk in, and prior to 1891. Kenneweg & Co. who were succeeded by the Kenneweg Company in its business and rights, was engaged in the wholesale grocery business in Cumberland, Md., in and before 1891. It appears from correspondence between the parties, some of which seems to have been lost or destroyed before the controversy began, that on April 14, 1891, Kenneweg & Co. wrote to the Michigan Condensed Milk Company asking if it could put up for them a certain sample of milk under a private brand. This was satisfactory to the Michigan Company. They wrote again on April 24 acknowledging receipt of samples and saying: You will please put up for us 25 cases at $4.00 f. o. b. New York, brand it star, having a large in the label and have the color and general printing matter resemble as nearly as possible, G. B. Eagle brand. To this the Michigan Company replied under date of April 27, 1891, saying: We have ordered the labels made and will get them out as quick as we can get the woodcut completed. We inclose label so that you may see it. We wish |