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without reference to whether "Arch Preserver" is or is not descriptive as used, has the right to oppose the registration sought, notwithstanding its disclaimer in the certificate of October 24, 1916.

[3] The question then is, whether there is such a resemblance between "Arch Preserver" and "Foot Preserver" as that confusion would likely result from their application to boots and shoes.

We are not in agreement with appellant's contention that the dominant feature of the mark used by it is the disclaimed word "Preserver," or that the mark should be construed largely by that commonly used English word. The issue must be treated by considering the words "Arch" and "Foot", taken in connection with "Preserver."

When applied to footwear we can not escape the conviction that confusion would likely result. "Arch" when so applied carries with it a direct suggestion relating to a portion of the human foot. Foot is a term which embraces the arch. It is possible that there are terms relating to other parts of the foot which might not be confused with "Arch," but if the positions of the respective parties hereto were reversed, and one were seeking to register "Arch Preserver over the opposition of a prior user of "Foot Preserver," we apprehend the registration would be denied upon the issue of confusion.

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The evidence introduced by appellant in the effort to show actual confusion is not strongly impressive. In a proceeding in equity involving an issue of unfair competition inter partes, probably most of it, as presented, would be held inadmissible. Generally speaking, we think the usual rules relating to admissibility of evidence should be applied in these statutory proceedings. Where proofs are attempted they should be made with regard to these rules. But a definite ruling here upon the testimony objected to, at the time of its taking, by counsel for appellee, is not necessary-indeed not proper, since there is no specific assignment of error upon that feature.

There is some evidence indicating actual confusion on the part of a newspaper in the preparation and issuance of advertising matter, when, intending to advertise "Foot Preserver" shoes, it caused the advertisement to be inserted for "Arch Preserver" shoes, and then, in subsequently attempting to correct the error, made the advertisement read simply "Preserver" shoes.

Independent of the testimony, however, we have the words themselves before us to be considered in the light of the statute and of numerous decisions of this and other courts.

The first paragraph of section 5 of the Trade-Mark Registration Act reads, in part:

That no mark by which the goods of the owners of the mark may be distinguished from other goods of the same class shall be refused registration as a trade-mark on account of the nature of such mark.

It is required, therefore, that a mark to be registrable shall have the quality of distinguishing the goods upon which it is applied by its owner from other goods of the same class. Obviously,Foot Preserver," on account of its resemblance to "Arch Preserver," will not serve to distinguish the goods labeled "Foot Preserver" from those labeled "Arch Preserver," and is not, therefore, a mark, registration of which is proper under the statute.

We think the registration sought must be denied upon the ground of likelihood of confusion. This being our view, it is not necessary to discuss the question of descriptiveness.

For the reasons stated, the decision of the Commissioner is reversed and the registration denied.

The costs incident to records furnished in response to præcipe of appellee are adjudged against appellee.

Reversed.

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

HEADLEY & THOMPSON v. Bridges

No. 2,872. Decided April 29, 1931

410 O. G. 544; 48 (F. 2) 938

1. INTERFERENCES-APPEALS-COURT OF CUSTOMS AND PATENT APPEALS-JURIS

DICTION.

We adhere to the doctrine that the only question of which we have jurisdiction in interference cases is that of priority, and that the only appeals that we may entertain in such cases are appeals from decisions of the Board of Appeals of the Patent Office, making a final award thereof." 2. SAME-SAME-SAME PATENTABILITY OF THE ISSUE NOT REVIEWABLE.

"We further hold that determination of the patentability or nonpatentability in an interference case is an interlocutory proceeding and we have no jurisdiction of an appeal from a decision upon it, no adjudication of priority having been made by the tribunal from which the appeal is taken." APPEAL from the Patent Office. Dismissed.

Messrs. Byrnes, Stebbins, Parmelee & Blenko, and Mr. Clarence P. Byrnes and Mr. Earl L. Parmelee for Headley & Thompson.

Messrs. Emery, Booth, Varney & Holcombe, Mr. Amasa M. Holcombe, and Mr. Charles F. Miller, Jr., for Bridges.

GARRETT, J.:

This is an appeal from a decision of the Board of Appeals of the United States Patent Office, affirming a decision of the Law Examiner, dissolving an interference as to certain counts on the ground of nonpatentability.

The cause was advanced upon our docket in order that it might be heard upon the single question of jurisdiction, it being agreed that, if the court finds itself without jurisdiction to determine now the question of patentability, the appeal must be dismissed to the end that proceedings in the Patent Office may be resumed.

The motion to advance is accompanied by a memorandum of facts, agreed to by counsel for the respective parties, from which it appears that 111 counts were tentatively embraced in, or suggested for, the interference.

Of these, 78 are involved in the jurisdictional question. All of these 78, except No. 7, were twice rejected by an Examiner in ex parte proceedings without being suggested for the interference, but, upon appeal in the ex parte cases, the decisions of the Examiner were reversed and the claims, which became the counts, were allowed to Headley & Thompson by that tribunal of the Patent Office, then designated as the Board of Examiners-in-Chief," the proceedings

having been prior to the act of March 2, 1927, which act changed the designation to that of " Board of Appeals."

Following this reversal the interference was declared with Bridges, on September 3, 1927, being interference No. 55,728. The counts not here involved in the jurisdictional question were subsequently added. Both parties moved to dissolve, Bridges upon the ground of nonpatentability. Under the rules of the Patent Office, the motions to dissolve were referred to a Law Examiner. This official sustained the Bridges motion, and appeal was taken to the Board which had then become, by statute (act of March 2, 1927) the Board of Appeals. That tribunal affirmed the decision of the Law Examiner and it was from the Board's decision that the present appeal was taken to this court.

Therefore, as to the seventy-eight counts, the question of priority has never been before the tribunals of the Patent Office and there has been no adjudication thereon. The effect of holding them nonpatentable in the interference proceeding has been to dissolve the interference as to them and it stands dissolved in that respect, unless we should find that we have jurisdiction to review the question here, and should later find them patentable. Field v. Colman, 47 App. D. C. 189, 247 O. G. 246.

The thirty-three counts that are in the interference have yet to be tried in the Patent Office upon the issue of priority and are not claimed to be involved in the question of jurisdiction now before us.

The recent appeal in Sundback v. Blair and Perrault, dismissed by us February 25, 1931, 18 C. C. P. A. (Patents) 1016, 47 F. (2d) 378, the opinion being by Judge Lenroot, involved the question of jurisdiction, but arose upon a state of facts somewhat different from the facts of the instant case.

In the brief for Bridges in the present case, it is said, referring to the Sundback case:

The decision of the Board of Appeals sustaining the decision of the Examiner in the interference automatically dissolved the interference, the motion being effective as to all of the counts therein. Hence in the appeal to this court Sundback had no standing whatever as a party to an interference because that interference was dissolved in toto with no decision on the issue of priority of invention. He had no standing before this court as an applicant appealing from the decision of the Board of Appeals holding the claims unpatentable, because the Examiner had not twice rejected the claims on that ground.

Thus on comparing the facts in the Sunback v. Blair and Perrault case with those of this appeal, the questions of jurisdiction as presented by the respective records before the court are fundamentally different, and it is not surprising that the court held that it did not have jurisdiction of the Sundback case, because there had not been a second rejection by the Examiner of the claims and there had been no award of priority; but this decision does not control the present case and the reasoning upon which it is based would seem to require an opposite holding as applied to the facts presented upon this appeal. It will be observed, however, from a reading of it, that our decision in the Sundback case did not rest upon the matter of there not having been two rejections by the Examiner. This element was nowhere mentioned in the opinion, nor was it a factor in deciding the case. Upon the contrary, under the reasoning of that case, the number of rejections would not have affected our conclusion, which rested solely on the ground that the appeal then before us was not from a decision which the Board of Appeals was required by statute to make,

the appeal to the Board being from a decision of a Law Examiner who is not a statutory tribunal. We did not specifically refer to the interlocutory character of the motion to dissolve, nor to the fact that there had been no adjudication of priority.

We did say therein:

Nothing herein should be construed as intimating that, if the decision of the Board of Appeals had been based upon an appeal to it from a decision of a Primary Examiner or Examiner of Interferences, dissolving an interference, we would entertain jurisdiction. It is unnecessary for us to decide that question.

In the instant case the appeal to the Board of Appeals was also from a decision by a Law Examiner, and hence it might be held to be controlled by the Sundback decision. But arguments are here presented and questions are here raised, which were not there urged or discussed. These lead us to feel that we should here go further than we did in that case and determine whether we have jurisdiction to pass upon and adjudicate the question of patentability in an interference proceeding in which there has been no award of priority by the Board of Appeals of the Patent Office.

Both parties are here insisting that we do have such jurisdiction. The brief in behalf of Headley & Thompson insists that the language of section 482, Revised Statutes, 35 U. S. C. A., section 7, precludes construing the word 'Examiners' as applying to jurisdiction in interference cases,'" and presents argument on this insistence. The brief further says:

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Appellant has carefully reviewed the decision of this court under date of February 25, 1931, in the case of Sundback v. Blair and Perrault, patent appeal No. 2,599, interference No. 55,743. It is respectfully submitted, however, that such decision is predicated on a judicial interpretation of sections 4904, 4909 and 4911, without regard to the jurisdiction of the Board of Appeals as expressly set forth in section 482 of the Revised Statutes.

The words "the decision of the Board of Appeals" as used in section 4911 is applicable to any decision which the Board of Appeals has the right by statute to enter in any case. Having been expressly given the statutory right under section 482 to review and determine decisions "in interference cases," the decision of the Board of Appeals in an interference case is subject to appeal to this court.

The full text of section 482 Revised Statutes, 35 U. S. C. A., section 7, as amended by acts of March 2, 1927, and April 11, 1930, respectively as follows:

The Examiners-in-Chief shall be persons of competent legal knowledge and scientific ability. The Commissioner of Patents, the First Assistant Commissioner, the Assistant Commissioners, and the Examiners-in-Chief shall constitute a Board of Appeals, whose duty it shall be, on written petition of the appellant, to review and determine upon the validity of the adverse decisions of Examiners upon applications for patents and for reissues of patents and in interference cases. Each appeal shall be heard by at least three members of the Board of Appeals, the members bearing such appeal to be designated by the Commissioner. The Board of Appeals shall have sole power to grant rehearings.

Prior to the Act of March 2, 1927, the statutes had provided: first (section 4909 Revised Statutes), for appeals to the Board of Examiners-in-Chief from (a) the decisions of "Primary Examiners," twice rejecting applications for a patent, or for the reissue of a patent; (b) decisions of the Examiner in charge of interferences, in

an interference case; second (secton 4910 Revised Statutes), for appeals to the Commissioner in person,

If such party is dissatisfied with the decision of the Examiners-in-Chief, and, third (section 4911 Revised Statutes), appeals to the Court of Appeals of the District of Columbia from the decisions of the Commissioner in (a) ex parte cases involving applications for patents or reissue of patents, and (b), in any interference case by "any party aggrieved by" the Commissioner's decision.

The act of March 2, 1927, amended the existing law relating to appeals within the Patent Office by (a) providing a tribunal designated as the "Board of Appeals" instead of as theretofore the "Board of Examiners-in-Chief," and (b) by repealing 4910 Revised Statutes, thus eliminating appeals to the Commissioner in person. The law relating to appeals within the Patent Office is now embraced in section 4909 Revised Statutes, 35 U. S. C. A., section 57, which reads as follows:

Every applicant for a patent or for the reissue of a patent, any of the claims of which have been twice rejected, and every party to an interference, may appeal from the decision of the Primary Examiner, or of the Examiner in charge of interferences in such case, to the Board of Appeals, having once paid the fee for such appeal.

The act of March 2, 1927, also amended the law relating to appeals to, or proceedings in, the courts by providing that they should be taken directly from the Board of Appeals. The law is now embraced in section 4911 Revised Statutes, 35 U. S. C. A., section 59 a.

If any applicant is dissatisfied with the decision of the Board of Appeals, he may appeal to the United States Court of Customs and Patent Appeals, in which case he waives his right to proceed under section 63 of this title. If any party to an interference is dissatisfied with the decision of the Board of Appeals, he may appeal to the United States Court of Customs and Patent Appeals, provided that such appeal shall be dismissed if any adverse party to such interference shall, within twenty days after the appellant shall have filed notice of appeal according to section 60 of this title, file notice with the Commissioner of Patents that he elects to have all further proceedings conducted as provided in section 63. Thereupon the appellant shall have thirty days thereafter within which to file a bill in equity under said section 63, in default of which the decisions appealed from shall govern the further proceedings in the case. If the appellant shall file such bill within said thirty days and shall file due proof thereof with the Commissioner of Patents, the issue of a patent to the party awarded priority by said Board of Appeals shall be withheld pending the final determination of said proceeding under said section 63.

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It will be observed that section 4911, as quoted, contains the phrase: "* If any party to an interference is dissatisfied with the decision * * * he may appeal The prior language relating to interference appeals to the court was: any party aggrieved by a decision may appeal but as related to ex parte appeals it was "dissatisfied with." The phrase, "is dissatisfied with," also appeared in the former section 4910 Revised Statutes, which section was repealed, being there used in connection with appeals from the Board of Examiners-inChief to the Commissioner. This change in phraseology in section 4911 Revised Statutes is urged to have a significance. It will be hereinafter discussed.

By an act of March 2, 1929, the jurisdiction in patent appeals of the Court of Appeals of the District of Columbia was transferred

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