a receptacle of one piece, and that applicant's idea is rather that of a process than of a device. We are of the opinion, however, that there may be, and probably is, a clear distinction between a device made of one or more parts cemented together, and one which is made as a whole. Lektophone Corp. v. The Rola Co., 282 U. S. 168, 401 O. G. 920, decided December 8, 1930. Certainly, no one else, so far as the references disclose, has suggested this idea. Even if it were conceded that there is doubt as to whether appellant's unitary molded block is an improvement in the art over McBean, the appellant is entitled to the benefit of the doubt, and, under the rule, should have his patent. In re Coley, 17 C. C. P. A. (Patents) 1174, 401 O. G. 4, 40 F. (2d) 982, and cases therein cited.

The decision of the Board of Appeals is affirmed as to all claims except claim 34, and, as to this claim, it is reversed. Modified.

[U. S. Court of Customs and Patent Appeals]

DECKER & COHN, INC., v. S. LIEBOVITZ & SONS, INC.

1. TRADE-MARKS

No. 2,501. Decided December 19, 1930

404 O. G. 797; 46 F. (2d) 179

GOODS OF SAME DESCRIPTIVE PROPERTIES-SHIRTS AND PAJA

MAS AND MEN'S OUTER CLOTHING.

Dress and negligee shirts, blouses, and pajamas Held to constitute goods of the same descriptive properties as men's outer clothes.

2. SAME OPPOSITION-PRIOR REGISTRATIONS OF MARK.

Where applicant was not the first to originate a trade-mark and did not use it until after the use and registration by the opposer, he is not entitled to urge that, in view of the registration of that mark by others on specific goods, the opposer is restricted for the use of its mark to the precise goods stated in its registration.

APPEAL from the Patent Office. Reversed.

Mr. Arthur F. Durand and Mr. Charles S. Grindle for Decker & Cohn, Inc.

Mr. Conway P. Coe and Messrs. Richards and Geier for S. Liebovitz & Sons, Inc.

HATFIELD, J..

This is an appeal, in a trade-mark opposition proceeding, from the decision of the Commissioner of Patents affirming the decision of the Examiner of Interferences dismissing the notice of opposition and holding that appellee was entitled to the registration of the trademark "Society" for use on certain articles of clothing, namely, dress shirts, negligee shirts, blouses, boys' shirts, and pajamas.

In its application for registration, filed February 12, 1927, appellee alleged that it had used its trade-mark since January 5, 1927.

In its notice of opposition, appellant alleged that it had used the word "Society" as a trade-mark, for approximately twenty years, on various articles of clothing, including men's knickerbockers, coats, overcoats, vests, trousers, jackets, knickerbockers for women,

coats, overcoats, vests, pants, knickerbockers for youths and children, and other articles of wearing apparel; that its trade-mark was well and favorably known to the public; that it distinguished opposer's goods from the goods of other manufacturers; that, due to its long and extensive use, its trade-mark was well and favorably known to the public; and that appellant believed that it would be damaged by the registration of the mark "Society" to appellee. Appellant also pleaded in its notice of opposition, the following registrations for the words "Society Brand " and "Society " on various articles of clothing: No. 66,619, December 17, 1907; No. 74,272, June 29, 1909; No. 208,938, February 9, 1926.

In its answer to the notice of opposition, appellee called attention to the fact that there were many registrations of the trade-mark "Society" in the Patent Office, for use on various articles of wearing apparel; and that, as the word "Society " had been extensively used by others on articles of wearing apparel, appellant was restricted in its right to use its mark to the specific articles of clothing enumerated in its several registrations.

Thereafter, appellee submitted certain interrogatories to be answered by appellant. It appears from appellant's answer thereto, that it had never used the trade-mark "Society" on men's dress shirts, for formal occasions; that it had used its trade-mark on hats and caps made of cloth as early as October, 1913; and that it had manufactured and sold spats under its trade-mark as early as 1908, but that no labels bearing its mark were attached to such articles.

Upon this record the tribunals below held that, although the marks were substantially identical, the word "Society" being the dominant feature of each, the goods on which the parties used their trademarks did not possess the same descriptive properties; that, therefore, the use by appellee of its mark would not be likely to cause confusion or mistake in the mind of the public; and that appellee was entitled to have its mark registered.

This court has held that the language "same descriptive properties" appearing in the proviso of section 5 of the Trade-Mark Act of February 20, 1905 (15 U. S. C. A. sec. 85), was intended by the Congress to relate to goods of the same general class; that it was not intended to be more or less comprehensive than the term "class" used in the first part of the section; and that it should be limited or extended, both in meaning and application, according to whether or not "the use of identical or similar trade-marks would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers." B. F. Goodrich Co. v. Hockmeyer (Zip-on Mfg. Co., Substituted), 17 C. C. P. A. (Patents) 1068, 394 O. G. 795, 40 F. (2d) 99.

In the Goodrich Co. case, supra, it was held that boots and and overshoes made of rubber and fabric possessed the same descriptive properties as "leggings; men's, women's, and children's knickerbockers; children's rompers, children's sleeping and carriage suits, children's hats, children's coats, children's suits, children's overalls, children's play suits, children's bath robes, children's blouses, children's bloomers."

In the case of Sexton Mfg. Co. v. Goodall Worsted Co., 17 C. C. P. A. (Patents) 1196, 399 O. G. 418, 40 F. (2d) 1017, it was held

that union suits, drawers, nightshirts, and pajamas possessed the same descriptive properties as outer clothing and the textile fabrics used in the manufacture of such clothing.

[1] It would seem that, if appellee is permitted to use the trademark "Society" on its goods, concurrently with the use by appellant of its mark on its goods, confusion and deceit would likely result. We are of opinion that the goods of the respective parties possess the same descriptive properties within the principles heretofore announced by this court: California Packing Corporation v. Tillman & Bendel, 17 C. C. P. A. (Patents) 1048, 394 O. G. 789, 40 F. (2d) 108; B. F. Goodrich Co. v. Hockmeyer (Zipon Mfg. Co. Substituted), supra; Sun-Maid Raisin Growers of California v. American Grocer Co., 17 C. C. P. A. (Patents) 1034, 395 O. G. 3, 40 F. (2d) 116; Cheek-Neal Coffee Co. v. Hal Dick Mfg. Co., 17 C. C. P. A. (Patents) 1103, 395 O. G. 10, 40 F. (2d) 106; Sexton Mfg. Co. v. Goodall Worsted Co., supra; Cluett Peabody & Co., Inc., v. Hartogensis (Arrow Emblem Co., Inc., Substituted) 17 C. C. P. A. (Patents) 1166, 396 O. G. 707, 41 F. (2d) 94.

It is claimed, however, by counsel for appellee that, due to the many registrations of the trade-mark "Society" for various articles of wearing apparel, appellant is restricted in its use of its mark "Society" to the precise goods referred to in its registrations.

[2] From an examination of the record, it appears that the word "Society" was registered for use on leather boots and shoes only prior to the first registration of its mark by appellant. Appellee did not originate the mark, nor did it use it prior to its use and registration by appellant. Accordingly, appellee is not in a position to raise this issue in the case at bar. Sharp & Dohme v. Parke, Davis & Co., 17 C. C. P. A. (Patents) 842, 394 O. G. 545, 37 F. (2d) 960; American Fruit Growers, Inc., v. Michigan Fruit Growers, Inc., 17 C. C. P. A. (Patents) 906, 393 O. G. 789, 38 F. (2d) 696; National Biscuit Co. v. Sheridan, 18 C. C. P. A. (Patents) 720, 402 O. G. 2, 44 F. (2d) 987.

The decision is reversed.
Reversed.

[U. S. Court of Customs and Patent Appeals]

BLUNT v. GRACE

No. 2,541. Decided December 19, 1930

404 O. G. 1047; 45 F. (2d) 441

1. INTERFERENCE PRIORITY-EVIDENCE-REDUCTION TO PRACTICE.

Appellant's evidence reviewed and Held insufficient to establish a reduction to practice of the invention in issue.

2. SAME SAME DILIGENCE.

Evidence on behalf of appellant Held insufficient to establish that he was diligent, from a time prior to the filing of appellee's application, in reducing to practice the invention in issue, since there is no substantial evidence that on that date or for more than a year prior thereto appellant was active in any way in perfecting his invention or reducing it to practice.

APPEAL from the Patent Office. Affirmed.

Mr. Conway P. Coe and Mr. Robert S. Allyn for Blunt.
Mr. Cleon J. Sawyer for Grace.

LENROOT, J.:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, in an interference proceeding, wherein the Board affirmed the decision of the Examiner of Interferences awarding priority of invention to appellee, the senior party in the interference.

The issue is stated in 14 counts, of which the following are illustrative:

1. In a locomotive open type feed water heater, a heater vessel, a pump cylinder, a single piston reciprocating in said cylinder for forcing a definite volume of cold water into said heater vessel at each upward stroke of the piston and withdrawing a definite but larger volume of hot water from said vessel into the bottom of said cylinder at the same time, means for conducting steam to said heater vessel to be condensed by and mingled with the water therein, the volumetric displacement of the upper cold water end of the piston being less than the volumetric displacement of the lower hot water and of the piston by an amount determined by the cross-sectional area of the piston rod and the difference in the displacement between the cold and hot water sides of the piston being substantially equal to the normal volume of the condensate formed in the heater vessel.

4. In a feedwater heater, a heater vessel, means for introducing steam into said vessel, pump means including a cylinder and piston for introducing cold water into said vessel and withdrawing hot water therefrom, a conduit connecting said heater vessel with the hot water pumping unit, and an inlet valve in said hot water conduit below the lower end of said piston for admitting hot water to said cylinder.

12. In a feed water heater apparatus, the combination with a supply pump and passage for delivering water to the heater, of a float in said heater controlled by the water level in said heater, and means controlled by said float for reducing the discharge of the supply pump to said passage.

The invention is described in the decision of the Board of Appeals as follows:

The invention relates to a feedwater heater adapted for use on a locomotive. The heater is of the open or contact type in which the steam used for heating the water mingles with the water and is condensed thereby. The water is fed to the heating chamber and also from said chamber by a single pump having a vertically reciprocating piston. This piston is connected to a piston in a steam cylinder located above the pump cylinder by means of a piston rod of such cross sectional area that the cold water pumped by the upper face of the piston toward the heating chamber is less than the hot water pumped by the lower face of the piston from the heating chamber toward the boiler by an amount which compensates for the additional hot water due to the condensed steam. A cold water by-pass around the upper end of the pump cylinder permits some of the pumped water to return to the intake side of the pump, instead of flowing through the passage from the pump to the heating chamber, provided the water level in the chamber is high enough to permit a float controlled valve in the by-pass to open.

In its decision the Board also correctly states that:

All of the counts are limited either to the compensating feature or to specificfeatures of construction such as the location of the hot water inlet valve below the lower end of the piston and the location of the inlet end of the by-pass in the pulsation chamber of the supply pump to reduce the discharge of the pump to the passage or connection leading to the heating chamber.

The senior party has not taken testimony and he is accordingly restricted to his filing date, August 20, 1920, for conception and reduction to practice. Two applications of appellee are involved in the interference, both being filed on August 20, 1920. The application of appellant was

filed March 1, 1921. Through inadvertence patent was issued to appellant on September 1, 1925. Thereafter, an interference was declared between certain claims of said patent and said applications of appellee. Thereafter, appellant filed an application for reissue of his said patent, and said interference was redeclared on the counts above stated.

Appellant took testimony but appellee did not; appellee, therefore, is confined to his filing date, August 20, 1920, for conception and reduction to practice.

The Examiner of Interferences found that appellee was the first to conceive as to counts 1 to 11, inclusive, and that appellant was the first to conceive as to counts 12, 13, and 14; that as to all of the counts, appellee was the first to reduce to practice; that as to the three counts in which appellant was the first to conceive, he had failed to relate his subsequent reduction back to his early conception by proper diligence, and was, therefore, not entitled to prevail as to those counts. He therefore awarded priority of invention to appellee upon all of the counts in issue.

The Board of Appeals also found that appellee was the first to conceive and the first to reduce to practice as to counts 1 to 11, inclusive, but disagreed with the Examiner as to his finding that appellant was the first to conceive as to counts 12, 13, and 14, and held that appellant had failed to establish_conception as to any of the counts prior to appellee's filing date. It further held, however, that even if it were to be held that appellant was the first to conceive as to said last-named counts, he was not diligent in reducing the invention to practice at the time that appellee entered the field, thus agreeing with the Examiner as to lack of diligence on the part of appellant.

In view of the conclusion we have reached, it is unnecessary to determine the question of which party was the first to conceive as to any of the counts, for we agree with both tribunals of the Patent Office that appellant has not shown a reduction to practice prior to appellee's filing date, and this being so, if he was lacking in diligence at the time that appellee filed his application, or thereafter until appellant reduced to practice, the decision of the Board of Appeals must be affirmed, regardless of who was the first to conceive as to any of the counts.

Appellant claims to have conceived and disclosed to others most of the counts in issue prior to October 15, 1902, and to have constructed an apparatus, embodying the basic features of all the counts, which was successfully operated in Brooklyn, N. Y., about October 15, 1902. He claims that this constituted a reduction to practice of the invention here involved.

[1] In its decision, the Board, speaking of this alleged test of said apparatus, said:

No corroborating witness has been produced who saw these tests and testified that they were successful.

This is not denied by appellant, but we understand the position of his counsel to be that the construction of the device was so simple and practical that it was not necessary to be operated to prove its value, and that the mere construction of such a device entitled him to an actual reduction to practice. We can not agree with this con..