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Three references are cited from the prior art: Halliwell et al., British, 15,501, Dec. 28, 1895; Fairweather et al., British, 2,455, Aug. 14, 1913; Waldie et al., British, 171,251, Jan. 26, 1922.

It is the contention of appellant that he is the first to devise and construct a trawl net door which may be used upon either the right or the left of the mouth of the net, with the necessary reinforcing structure properly arranged and attached to the door in a manner that enables the towing cable to be fastened to the bracket or brackets in whichever position (left or right) the door may be placed; that by so doing he has developed a device both useful and patentably novel; that, until the creation of his reversible doors, trawl doors have always been made in pairs, one for the left and one for the right; that in operation, the net being towed in such a manner as that it drags upon the sea bottom, there is rough usage which frequently causes one door of a pair to be torn away and lost; that this necessitates there being carried upon trawl using fishing vessels, as spares, a number of extra doors to replace any that may be lost; that they have heretofore had to be carried in pairs, but that now, by reason of his invention, it is necessary to carry, as spares, only half the number formerly essential; and that the arrangement of the shoe as provided in claim 11 "adapts the door to tip forward and ride over obstructions on the sea bottom "; all these things to the manifest advantage of the art.

The allowed claims are set out in appellant's brief and, from an examination of these, it does not appear that any patent has been granted upon the reversible feature of his doors, or the arrangement of the elements essential to render such reversal practical. The tribunals of the Patent Office held that the patent to Waldie:

shows a trawl door similar to appellant's but no extra holes were provided nor is any suggestion found in the specification that the cable connection could be shifted to the other end of the door to permit it to be employed on the opposite side of the net. There is no question but that this simple expedient is advantageous. We agree with the Examiner, however, that it is not a patentable difference.

This same patent shows longitudinal reinforcing ribs but these are upon the face of the door rather than upon the back, as called for by appellant's claim 10. Diagonal ribs also called for by claim 10, appear to be shown by Halliwell, but these also are on the front rather than the back.

The tribunals of the Patent Office felt that the peculiar, or particular, structure of the runners disclosed in claim 11 does not constitute invention, or, as the board expresses it, requires nothing" more than mechanical skill."

There can be no doubt, we think, about appellant having conceived and devised an arrangement of parts which has contributed a device of great value to the art of fishing. Its commercial success we understand to be virtually conceded.

It is true that these elements alone do not render the claims patentable. Invention must be present.

The Solicitor for the Patent Office cites us to the case of In re Iwan, 17 App. D. C. 566, 95 O. G. 441, wherein it was held that makng a handle for a hay knife reversible on the head of the shank to which the blade is attached did not involve invention, the court saying:

The claims for which those patents [the references] were granted are substantially, though not in every particular, the same in mechanical construction as the device described in claims 1, 2, 3, and 5 of this case. It is true there is some difference in form, and, in the two patents referred to it is not stated that the handle attachment is reversible. But to make the handle reversible on the head of the shank to which the blade of the knife is attached it is only necessary to and this does not require anything more than ordinary mechanical ingenuity.

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*. There is nothing, therefore, patentable in the device of readjustment and reversible attachment of the handle on the shank of the knife so as to affect the manner of its operation as described by the appellant.

The Solicitor's brief then continues:

The only change in the Waldie et al, device necessary to make it completely anticipate claims 3 and 8 is to drill a few holes on the opposite side of the center line. The towing and the net attaching connections then became reversible with respect to the ends of the door because these connections are merely made by bolts through holes in the appropriate places.

This may be true, but the fact remains that appellant did drill the holes at the proper places and thereby made the doors reversible, thus contributing a new arrangement which created a valuable device for use in a very ancient art.

It is quite simple, it is true, but many problems are simple after they have been solved.

In Murphy Wall Bed Co. et al. v. Rip Van Winkle Wall Bed Co., 295 Fed. 748, 753, the validity of a patent to Murphy for a disappearing bed was upheld, the court saying:

His lateral shift was the simple improvement which revolutionized the art. (Italics ours.)

In H. D. Smith & Company v. Peck, Stow & Wilcox Co., 262 Fed. 415, 416, 417, the Circuit Court of Appeals of the Second Circuit approved a patent for a screwdriver on account of "a particular structure and a particular shape " which "provided a firm grasp, while facilitating a nice control by pressure of the finger and thumb upon the shank of the tool."

In that case the court said:

Whether the structure involves invention is a question of fact, and the determining factor is not whether the achievement is difficult or easy, but whether it has, in point of fact, given the world something of real value, that it did not have a benefit conferred upon mankind. O'Rourke Engineering Const. Co. v. McMullen et al., 160 Fed. 933, 88 C. C. A. 115.

A quotation from the O'Rourke case is:

Has the patentee added anything of value to the sum of human knowledge; has he made the world's work easier, cheaper, and safer; would the return to the prior art be a retrogression? When the court has answered this question, or these questions, in the affirmative, the effort should be to give the inventor the just reward of the contribution he has made.

It must, of course, be understood, in construing the language last quoted that invention must be present. We understand the court to have laid down the quoted doctrine as a partial test of whether invention was present.

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In Kurtz et al. v. Belle Hat Lining Co., Inc., 280 Fed. 277, 282, a patent for a hat lining "in which," as stated in the syllabus, uncovered cord is sewed between the crown piece and the side piece to produce an ornate seam," was upheld, " in view of its commercial success."

The court there said:

If we viewed this hat lining, or any hat lining, in the light of our own experience, it would appear trivial and unworthy the dignity of patent protection; but, looking at it through the evidence and (we hope) with the eyes of the hat lining trade, this patent represents a large and successful business. It is, in the minds of all those who deal in hat linings, of the utmost importance. No one ever made a lining of such simplicity, cheapness, and general adaptability as has Kurtz, and he has done it by mechanical means of winning simplicity

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In General Electric v. Sangamo, 174 Fed. 246, 251, 98 C. C. A. 154, 159, the court said:

Invention, in the nature of improvements, is the double mental act of discerning, in existing machines or processes or articles, some deficiency, and pointing out the means of overcoming it.

It seems to us that what appellant here has done to aid in the art of trawl fishing meets the tests laid down in the several cases from which we have quoted, supra. Expressions in other cases might be cited, such as Cincinnati Milling Machine Co. v. Oakley Machine Tool Company, 268 Fed. 257; Matrix Contrast Corporation et al. v. Kellar, 34 F. (2d) 510, and cases therein referred to. Also Eibel Co. v. Paper Co., 261 U. S. 45, 310 O. G. 3.

The features in claim 9, not shown in claims 3 and 8, are the arrangement of the towing brackets in reversible positions with respect to the ends of the doors, and also the arrangement of reinforcing means on the back face of the door, rather than the front, and connecting said reinforcing means with the towing bracket which latter is on the front face. Člaim 10, as will be observed, also relates to reinforcing means with diagonal members, on the back rather than the front face of the door. All these arrangements seem to be necessary or, at least, important features in accomplishing the end sought-that is the creation of the reversible door.

Claim 11 relates solely to the shoe or runner with which the lower edge of the door is equipped. We agree with the tribunals of the Patent Office that this feature is more one of mechanical skill than of invention. The other features, we think, involve invention.

The decision of the Board of Appeals is modified, being reversed as to claims 3, 8, 9, and 10 and affirmed as to claim 11. Modified.

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

THE J. B. WILLIAMS COMPANY v. ERNEST W. WILLIAMS

No. 2,659. Decided March 31, 1931

410 O. G. 8; 48 F. (2d) 398

1. TRADE-MARKS-FACSIMILE SIGNATURE-LIKELIHOOD OF CONFUSION. "We do not think it can properly be held that the mere differentiation in the appearance of a name wrought by individual characteristics of handwriting can eliminate the confusion likely to arise by applying that written name, or a facsimile thereof, to goods of the same descriptive properties as those of another person to which the same name has been or is being applied."

2. SAME-SAME WHEN REGISTRABLE.

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It seems to us that where one elects to make a technical trade-mark use of his own name, that name, for that purpose, becomes dissevered, as it

were, from its owner's personality, and when he seeks to register it under a statutory enactment, it must be tested by precisely the same rules and principles which apply to all other technical trade marks."

3. SAME-SAME LIKELIHOOD OF CONFUSION.

The facsimile signature of "E. W. Williams" Held not registrable as a trade-mark for soap in view of the prior use of the name "Williams" and "J. B. Williams" by the J. B. Williams Company.

APPEAL from the Patent Office. Reversed.

Mr. Arthur B. Jenkins, Mr. Hubert Howson, and Mr. Theodore K. Bryant for The J. B. Williams Co.

Mr. Clarence A. O'Brien, Mr. Charles E. A. Smith, and Mr. Thomas E. Turpin for Ernest W. Williams.

GARRETT, J.:

This appeal involves the right of appellee to register a facsimile of his own autographically produced name as a technical trade-mark under the Trade Mark Registration Act of 1905 as amended.

His application is to register "E. W. Williams," in the form of a facsimile produced from his own signature, for use as a mark on a cream, or lotion, to be used after shaving. Use of the mark is claimed since January 1, 1928.

Opposition is made by appellant who claims to have been engaged, through itself and predecessors, in the manufacture and distribution of "Williams' " shaving soap since about 1840, and of other lotions or articles used in connection with shaving for many years antedating appellee's entry into the field. Appellant alleges many registrations of the word "Williams'," the first being for shaving soap as far back as March 25, 1873.

The last registration cited is one for "After-Shaving Preparations' dated April 10, 1928.

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It is stated that, in all, appellant has procured 21 registrations; that two of these embody the full name, "The J. B. Williams Company"; one shows the name of the Company in the possessive sense; seven are for the word "Williams " alone as a trade-mark, and that all the "Williams" marks "are applied in the possessive case as a name for the goods." Some of appellant's registrations appear to have been obtained under the "ten year" proviso of the 1905 act.

The notice of opposition contains the usual allegations as to advertising, large sales, etc., and charges probability of confusion and injury to appellant.

The Examiner of Interferences sustained the opposition. Upon appeal his decision was reversed by the Assistant Commissioner and the matter is before us upon an appeal from the decision of the latter.

Admittedly, the goods are of the same descriptive properties.

In view of the fact that the respective marks of both parties have the word "Williams as the clearly dominant and peculiarly noticeable part thereof, we take it there would be little or no hesitation in holding them to be similar, in the sense of the statute, except for two features:

First, the fact that appellee, E. W. Williams, creates his mark as a facsimile of one written with his own hand, thus giving to it a

certain distinctiveness, or characteristic, not present in the mark of appellant; and,

Second, the fact that it is appellee's own name which he seeks to register.

As for the first there is this to be said:

A proviso of section 5 of the Registration Act of 1905 reads, in part:

not written,

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no mark which consists merely in the name of an individual, in some particular or distinctive manner, * shall be registered under the terms of this act.

There is also a further proviso, reading:

That nothing herein shall prevent the registration of a trade-mark otherwise registrable because of its being the name of the applicant or a portion thereof. The Assistant Commissioner held that in view of the fact that applicant's mark is a facsimile signature it is not deceptively similar to the mark of appellant, stating that a facsimile signature is regarded by the Patent Office as being the writing of an applicant "in some particular and distinctive manner."

The individuality inherent in the handwriting of each person is evidently regarded by the tribunals of the Patent Office as meeting the "particular or distinctive manner" requirement of the first proviso above quoted. Ex parte Cross Co. 1903 C. D. 23 and Ex parte John H. Wilkins Co., 128 MS. Dec. 409, are cited.

Under the view which we take of this case it is not necessary here to pass upon the soundness of this position of the Patent Office tribunals. We incline to the opinion that it is correct and that the autographic forming of a name overcomes the general negation of the quoted proviso. But in cases like this we must look beyond that immediate question, and hence do not pass upon it here, as a matter standing alone.

The statute must be considered as a whole, and all parts of section 5 must be so construed together as to give them their proper force

and effect.

We must, therefore, consider the provisos, already quoted, supra, not only in connection with each other, but in connection with that language of the section which relates to the resemblance of the marks. The text necessary for consideration here is accurately arranged in the Assistant Commisisoner's decision and we take it therefrom.

That trade-marks 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: Provided, That no mark which consists merely in the name of an individual not written * in some particular or distinctive manner * shall be registered under the terms of this act * Provided further, That nothing herein shall prevent the registration of a trade-mark otherwise registrable because of its being the name of the applicant or a portion thereof.

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[1] We do not think it can properly be held that the mere differentiation in the appearance of a name wrought by individual characteristics of handwriting can eliminate the confusion likely to arise by applying that written name, or a facsimile thereof, to goods of the same descriptive properties as those of another person to which the same name has been or is being applied.

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