CHURCHILL v. Goodwin. PATENT INTERFERENCE. Decided February 10, 1908. 132 O. G., 1838. 1. INTERFERENCE-PRELIMINARY STATEMENT EXTENDING TIME FOR FILING. Where the time for filing preliminary statements had been extended several months in view of the mental condition of one of the parties, Held that a motion for further extension was properly denied where the only showing in support of the motion is the affidavit of a physician stating that in his opinion the applicant will in a few months be sufficiently recovered to be reliable as to his recollection of past occurrences. 2. SAME-SAME-EQUITABLE ASSIGNEE. An order permitting an alleged equitable assignee to file a preliminary statement will not be entered where the assignment is not of record and ample opportunity has been given to file a statement in accordance with Rule 131 and the failure to do so is not sufficiently excused. APPEAL ON MOTION. ON PETITION. LOCK FOR LOCKER-DOORS. Messrs. Brown, Darby & Hopkins for Churchill. MOORE, Commissioner: This case comes up on an appeal by Churchill from a decision of the Examiner of Interferences denying his motion for thirty days for additional time in which to file his preliminary statement, and also upon a petition by Churchill that the Examiner of Interferences be instructed to allow the petitioner, who is alleged to be mentally incapacitated, sufficient time in which to have his case placed under the care of a legal representative, or that an order be entered permitting Churchill's equitable assignee of a half interest to make a preliminary statement in the latter's stead, and that in the latter event thirty days be allowed the assignee in which to file a preliminary statement. It is noted that a paper purporting to be a preliminary statement by the alleged assignee was presented February 6, 1908. The record shows that this interference was declared March 12, 1907, and the time for filing preliminary statements was originally fixed for April 9, 1907. Since that time seven motions for extensions of time for filing his preliminary statement have been granted to Churchill in view of certain affidavits by counsel and by the physician attending Churchill. In the last motion for extension, which was granted October 8, 1907, giving Churchill three months in which to file a preliminary statement, the Examiner of Interferences said: I am of the opinion that the affidavit sets forth the present incapacity of Churchill to make the statement with sufficient certainty to justify the extension now asked. It must be obvious, however, to counsel for Churchill that there must be some limit to the time in which the case of the opposing party in the interference can be tied up through Churchill's sickness. It is therefore advised that every reasonable effort be made to file a statement for Churchill in the time now allowed. No further extension of time will be granted except upon a satisfactory showing that this has been done. The present motion is accompanied by an affidavit by the physician. that Churchill is still mentally incapacitated for making a reliable statement as to past occurrences and that in the opinion of the deponent he will within a few months be sufficiently recovered to be reliable as to his recollection of past occurrences. It is believed that the showing made in support of this motion is insufficient. It does not appear that there is any greater likelihood of obtaining the preliminary statement of the applicant within the period asked for than in any previous time, since the affidavit of the physician is substantially the same as his prior affidavits, nor does it appear that any effort has been made to have a legal representative appointed for the applicant at any time during the period of nine months which has already been allowed to Churchill to file his preliminary statement. In view of these facts the decision of the Examiner of Interferences is affirmed. The first prayer of the petition covers substantially the same ground as the appeal and is denied for the same reason. In respect to the request that an order be entered permitting Churchill's equitable assignee of one-half interest to make the preliminary statement in Churchill's stead it may be said that this Office has no record of any assignment to the alleged assignee. No reason, therefore, appears for recognizing said party in this case. Ample opportunity has been given to the applicant and his assigns to present a preliminary statement in accordance with Rule 131, and the failure to do so is not sufficiently excused. The petition is denied. EX PARTE HAVANA-AMERICAN COMPANY. APPLICATION FOR REGISTRATION OF TRADE-MARK. Decided February 18, 1908. 132 O. G., 1839. TRADE-MARKS-PRACTICE-REGISTRATIONS UNDER THE INVALID ACT OF 1870 WILL BE DISREGARDED. In view of the fact that notice of the application for registration of a trade-mark is published in the OFFICIAL GAZETTE and since the act of 1905 provides that any person who believes he will be damaged may file an opposition, Held that the burden should not be placed upon an applicant for registration to show the abandonment or non-use of a mark registered under the act of 1870, and that registration under the Invalid Act of 1870 should no longer be held a bar to the registration of a trade-mark. ON APPEAL. TRADE-MARK FOR CIGARS. Messrs. Meyers, Cushman & Rea for the applicant. BILLINGS, Assistant Commissioner: This is an appeal from the Examiner of Trade-Marks refusing registration of trade-mark "Antonia Y Cleopatra" for cigars in view of the trade-mark registration of C. G. Peterson, No. 6,737, dated October 22, 1878. This registration was effected under the act of 1870, which was declared invalid by the Supreme Court of the United States in The Trade-Mark Cases, C. D., 1879, 619; 16 O. G., 999; 100 U. S. 82. It is contended on behalf of the appellant that since this law was declared unconstitutional the registrations granted under the same are of no effect and that the reference cited in this case should therefore be withdrawn and registration granted to this applicant. The Examiner of Trade-Marks refused registration of the applicant's mark upon the ground that Peterson's registration, while not prima facie evidence of ownership of the trade-mark in controversy, is evidence of a known mark, and that under the well-established practice it is incumbent upon the applicant, if he is to be granted registration, to overcome the known mark by the presentation of evidence by affidavit or otherwise showing that the mark is not in use or has been abandoned. In the case of ex parte Lyon, Dupuy & Co. (C. D., 1884, 29; 28 O. G., 191,) the applicant sought to register the word " Triumphant for wheat-flour, and registration was refused in view of a prior registration of Imbs, Meyer & Co., No. 3,472, dated February 29, 1876. In passing upon the question of the validity of the registration under the act of 1870 Acting Commissioner Dyrenforth said: The registration of Imbs, Meyer & Co. was complete under the law of 1870, and established not only title to the trade-mark in controversy, but that they had been using it for ten years. There is no pretense that that record does not disclose the exact truth. The point made is that the law under which that solemn act took place and the record of it was made up was unconstitutional, and, ergo, I must shut my eyes to what that record discloses. But the statute says that applicant shall not be entitled to registration of a trademark which is identical, or substantially identical, with the registered or known trade-mark of another. This record discloses to me that applicants are seeking to register substantially the known trade-mark of another-to wit, that of Imbs, Meyer & Co. It is true that these parties may have abandoned their trade-mark, but abandonment is not to be presumed. If it had become worthless, no other person would have sought to appropriate it, or that which is substantially identical with it. This position has been generally adhered to by the Office since that time. In ex parte Star Distillery Company (C. D., 1905, 493; 119 O. G., 964) Commissioner Allen said in respect to registration under the act of 1870 that The act of 1870 was declared unconstitutional by the Supreme Court, and consequently registrations thereunder were invalid and furnished no protection to the parties securing them. They constitute publications, however, in which the registrants made public claim and affidavit to ownership of the marks disclosed therein. They made that claim, furthermore, before the present applicant entered the field and long before it made claim to ownership. While those registrations do not constitute legal proof of ownership, they constitute evidence, and it is believed that this Office is warranted in accepting it as making out a prima facie case until overcome in some way by the applicant. The decision in Schneider v. The Union Distilling Co. (C. D., 1906, 129; 121 O. G., 1676) is to the same effect. Under these decisions it has been the practice of the Office to require an applicant to show by affidavit or otherwise a prior claim to the trade-mark sought to be registered or that the registrant under the act of 1870 has ceased to use the mark or has abandoned the same. It is urged by the appellant that since registrations effected under the act of 1870 are invalid the burden should not be placed upon an applicant of overcoming such registrations; that either they should be disregarded or that an interference should be declared therewith in order that the applicant should not be put to the expense of procuring and presenting testimony which must from the very nature of the case be negative in its character and unconvincing. The contention of the appellant is believed to be well founded. This position was recognized in ex parte American Lead Pencil Company, (C. D., 1892, 199; 61 O. G., 151,) in which case Commissioner Simonds said: The Examiner declines to institute the interference on the ground that the registrations under the act of 1870 are known to be null and void through the decision of the United States Supreme Court, and he declines to grant registration because, although the previous registration is void, yet it makes the trade-mark in question known to the Patent Office. Under such circumstances the proper and equitable thing seems to be to give the registrant under the act of 1870 opportunity to file an application under the existing act and become an interference contestant if that party so chooses. Notice will be issued to the registrant under the act of 1870 that an application for registry is pending with which the said registry would interfere if it were a registry under the existing act, and that sixty days will be allowed wherein such registrant may make application under the existing act with a view to interference. By the procedure indicated in this decision it appears that the registrant was duly notified of the conflicting claim of the applicant and was given an opportunity to contest the same if he so desired. The burden in such case was not placed upon the applicant to present evidence of a negative character showing that the registrant had no valid title to his trade-mark. The act of 1881 contained no provision for the notification of the public of the pendency of applications for registration of trademarks. The act of 1905, however, provides in section 6 that if after examination * * * it shall appear that the applicant is entitled to have his trade-mark registered under the provisions of this act, the Commissioner shall cause the mark to be published at least once in the OFFICIAL GAZETTE of the Patent Office. This section further provides that— Any person who believes he would be damaged by the registration of a mark may oppose the same by filing notice of opposition, stating the grounds therefor, in the Patent Office within thirty days after the publication of the mark sought to be registered, etc. It is clear that by this provision the public at large is notified of the pendency of an application for the registration of a trade-mark in the Patent Office, and any person who believes that he has a superior title to said mark has the right to delay registration of the mark by the interposition of a notice of opposition and finally prevent the registration should he succeed in establishing legal grounds for the refusal of the registration for which application was made. Furthermore, section 13 of the act of 1905 provides— That whenever any person shall deem himself injured by the registration of a trade-mark in the Patent Office he may at any time apply to the Commissioner of Patents to cancel the registration thereof. In view of these provisions of the present Trade-Mark Act it is believed that registrants under the act of 1870, as well as parties who have no registration, are sufficiently advised of the presentation of the claim of an applicant for registration and that the burden is upon them, if they desire to contest the right to such registration, to either present an application for interference or to file notice of opposition, or if such time has elapsed that neither can be done the right of cancelation is adequate to protect their interests. It is to be noted that after the Trade-Mark Act of 1870 was declared invalid registrants under that act had the right under the act of 1881 to register such marks as were used in commerce with foreign nations or with Indian tribes. By the act of February 20, 1905, the righ.. to registration was extended to trade-marks used in interstate commerce. It is believed that where a registrant under the act of 1870 has not availed himself of the right to register his |