The rules governing the working of patented inventions should also be considered. In order to put the patent for a process into operation, within the meaning of paragraph II of the Law of Patents, it is only necessary that the apparatus be used, not that it be manufactured, in the home country. This advantage will, by no means, benefit only foreign owners of German patents, as cases occur quite frequently where it may also be advisable for a citizen of the German Empire to have machines constructed not in Germany, but in some foreign country. At all events, it is the duty of every patent attorney to obtain the best measure of protection for his clients, no matter whether the latter are citizens of his own or of some foreign country. Another fact that bears upon the subject under discussion is that Germany has become a party to the International Union for the Protection of Industrial Property, it being very unfortunate that the working is also obligatory in most of the foreign countries where the same rules are enforced with regard to the working of patents for processes and for apparatus. Some time ago proceedings were instituted against an old Austrian privilege on the ground of nullity, because the component parts of the apparatus characterized in claim 1 had been imported from a foreign country and assembled in Austria. The second claim covered a process and saved the privilege which is still in force. The formal, so-called constat of working, which was brought in the usual manner, would, of course, have been of no avail. It will be advisable to consider these conditions each time than an ORIGINAL application is filed in Germany, as the privileges granted by the Union or the rights stipulated by other treaties between nations will benefit applications for process patents, without difficulties and disadvantages, only when the original application has, likewise, been made for a process. The credit of having been the first to call attention most emphatically to the importance of claims for processes is, probably, due to Hartig, who says in his work "Studien in der Praxis des Kaiserlichen Patentamts" (Studies in the Practice of the Imperial Patent Office"), 1890, that rights which are based upon process patents affect most severely existing conditions, and that they secure to the inventor most directly what he desires:"The legal power to restrain his competitors in their free activity, even if the material instrumentalities which already exist in the realm of technics should suffice to work the invention for practical purposes." In his publication "Erlangung und Sicherung eines Deutschen Patents" (How to obtain and secure a German patent), 1892, Stercken has pointed out what great influence precisely these process claims have in the realm of mechanical technics. He emphasizes that in examining an invention efforts should always be made to find out whether it comprises a new process and, if such be the case, the claim must, by all means, cover this process in order to obtain effective protection for the invention. Hartig has also called attention to the fact that chemists are frequently apt to elevate chemical processes too high above mechanical processes and that this tendency has, actually, induced individual chemists to rank, among inventions, those of a chemical nature higher than inventions made in the province of mechanics, and they allege in support of their contention that chemical inventions require, besides the reasoning process, also experimental work. Although this allegation also holds true in the case of a great number of mechanical inventions, it constitutes no accurate criterion by which to judge the value of the invention per se. On the contrary, this point of view taken by chemists may rather indicate that chemical inventions have their weak point. With the aid of his formulas a chemist succeeds in conceiving the idea how to solve the problem involved in a chemical invention and then he has to find out by experiment how this solution can be practically realized; or he makes his invention while carrying out experiments with a different object in view. Strictly speakng, this kind of activity is, as a rule, inferior to that which an inventor has to perform in the realm of mechanical technics, above all, if there are in question new working processes, and precisely within this province of science, which is of the greatest importance, the inventor is by no means released from the obligation to make experiments in order to realize his process invention. (To be continued.) United States Practice. EX PARTE PAULING. Decided March 29, 1905. 115 O. G., 1848. I. DATE OF APPLICATION UNDER INTERNATIONAL CONVENTION-FOREIGN APPLICATION MUST BE PROVED. The benefit of the date of a foreign application filed under the International Convention cannot be secured by the mere allegation that such application has been filed, but only by proving such foreign application. 2. SAME-SAME-PROOF NEED NOT BE MADE WITH APPLICATION. There is no necessity for proving a foreign application and thereby securing the benefit of its date under section 4887 of the Revised Statutes until some occasion arises for wishing to secure the benefit of that date. Such proof need not be filed with the application. 3. SAME-DATE OF FILING IN THIS COUNTRY MUST APPEAR. Even where a party secures for his application here the benefit of the filing date of a foreign application the actual filing date in this country must appear and cannot be changed to the foreign filing date. ON PETITION. PROCESS FOR THE PRODUCTION OF NITRIC ACID FROM AIR. Messrs. Arthur and Harry Pauling pro se. ALLEN, Commissioner: This is a petition that this application be given as a date of filing the date on which an application is said to have been filed in Germany covering the same invention. The applicants wish to secure the benefit of the date of their foreign application under the provisions of the International Convention for the Protection of Industrial Property and under the provisions of section 4887 of the Revised Statutes. It is clear, however, that they cannot secure that benefit by the mere allegation that they have filed a foreign application which entitles them to claim the benefit, but only by proving the foreign application. It is equally clear that the date of filing in this country cannot be changed to the date of filing abroad, even where the foreign application is proved. The present application may— have the same force and effect as the same application would have if filed in such foreign country * * * but the actual date of filing in this country must appear and cannot be changed. It would seem that there is no necessity for proving a foreign application to secure the benefit of its date under section 4887 of the Revised Statutes until some occasion arises for wishing to secure the benefit of that date. The proof may be presented whenever the applicant wishes to take advantage of the foreign filing date and need not be presented at the time that the application is filed here. The petition is denied. SUPREME COURT OF THE UNITED STATES. HOWE SCALE COMPANY OF 1886 AND FAY-SHOLES COMPANY V. WYCKOFF, SEAMANS & BENEDICT. Decided April 24, 1905. 116 O. G., 299. 1. TRADE-MARKS-"REMINGTON"--"REM-SHO"-INJUNCTION REFUSED. Bill of complaint praying an injunction restraining the defendant from using the words "Remington-Sholes" and "Rem-Sho" in the sale of type-writers in view of the complainant's prior use of and right to the words "Remington Standard Typewriter" in the same business dismissed. Lower court reversed. 2. SAME-SURNAME NOT A TRADE-MARK-RIGHT TO USE NAME. It is well settled that a personal name cannot be exclusively appropriated by any one as against others having a right to use it, and as the name "Remington" is an ordinary surname it was manifestly incapable of exclusive appropriation as a valid trade-mark, and its registration as such could not in itself give it validity. 3. SAME-FAMILY NAME-USE NOT RESTRAINED. The courts will not interfere to restrain the use of a family name where the only confusion, if any, results from a similarity of the names and not from the manner of its use. 4. Same-Same-Name of CORPORATION. In the absence of contract, fraud, or estoppel any man may use his own name in all legitimate ways and as a whole or a part of a corporate name. --- 5. Same SamE-CORPORATION NOT RESTRAINED SHOWING OF FRAUD NECESSARY. One corporation is not entitled to restrain another from using in its corporate title a name to which others have a common right. The question whether the use of the name was necessary is not the test, but the question is whether its use is reasonable and honest or is calculated to deceive. 6. SAME "REMINGTON-SHOLES"-REASONABLE USE OF NAME-ABSENCE OF FRAUD. Held, that the Remingtons and Sholes made a reasonable and fair use of their names in adopting the name "Remington-Sholes" for their typewriter and in giving that name to the corporation formed for its manufacture and sale. Held, further, that the fact that they desired to avail themselves of the general family reputation attached to the two names does not in itself justify the assumption that their purpose was to confuse their machines with complainant's or that the use of that name was in itself calculated to deceive. On writ and cross-writ of certiorari to the United States Circuit Court of Appeals for the Second Circuit. STATEMENT OF THE CASE. This was a bill exhibited, in September, 1898, by Wyckoff, Seamans & Benedict, a corporation of New York, in the Circuit Court of the United States for the District of Vermont, against the Howe Scale Company of 1886, a corporation of Vermont, alleging that complainant had been for many years engaged in the manufacture and sale of typewriting machines known in the markets and to the trade and public, and referred to, identified, offered for sale and sold as the "Remington typewriter," and the "Remington standard typewriter," and that the words "Remington" and "Remington standard" had been registered in the Patent Office under the act of Congress; and charging defendant with fraud and unfair competition in making use of the corporate name "Remington-Sholes Company" and the designations "Remington-Sholes," "Rem-Sho" and "Remington-Sholes Company," in advertising for sale, offering for sale and selling typewriting machines; and praying for an accounting, and for an injunction restraining defendant from advertising or offering for sale or selling typewriting machines manufactured by the "Remington-. Sholes Company," bearing the name “Remington" or "Remington-Sholes" or "RemSho" or "Remington-Sholes Company," and from advertising or offering for sale or selling any such machines under said designation, or under any designation of which the name "Remington" was a part. Defendant was the sales agent of the "Remington-Sholes Company," a corporation of Illinois, and was engaged in selling the typewriting machines called the "Remington-Sholes" or "Rem-Sho" typewriter, which were manufactured by the Illinois corporation at Chicago. The right to use those designations in the way they were used was asserted by the defense, of which the Remington-Sholes Company, and subsequently the Fay-Sholes Company, had charge. The word "RemSho" was alleged to have been registered in the Patent Office as a trade-mark. The circuit court found that defendant's use of the name "Remington" was an unjustifiable invasion of complainant's right to the use of that name, and entered a decree, August 14, 1901, denying an account for gains and profits, without prejudice to the recovery thereof from the Remington-Sholes Company; and perpetually enjoining the use of the designation "Remington," or "Rem-Sho," as the name or part of the name of any typewriting machine whatsoever manufactured by the "Remington-Sholes Company," or by defendant, or any person or concern, and from selling, offering or advertising for sale in any manner, typewriting machines so manufactured "under the name of or as 'Remington-Sholes' or 'RemSho,' or by any designation of which the word 'Remington' or the abbreviation 'Rem' shall constitute a part." (110 Fed. Rep., 520.) The case was carried by appeal to the Circuit Court of Appeals for the Second Circuit, and was there heard before Circuit Judges Wallace, Lacombe, and Coxe. April 20, 1903, the decree was reversed, without costs, and the cause remanded "with instructions to decree in favor of complainant only as to the name 'Remington.'" Lacombe, J., delivered an opinion in support of that decree, Coxe, J., concurring in the conclusion because "unable to distinguish this cause from Rogers v. Rogers, (70 Fed. Rep., 1017);" Wallace, J., dissented, holding that the decree of the circuit court should be reversed with instructions to dismiss the bill. (122 Fed. Rep., 348.) It appeared that the mandate of the circuit court of appeals was issued April 22, 1903, and that the circuit court entered a final decree, June 22, 1903, enjoining the use of the word "Remington," and also that after the original decree of the circuit court the Remington-Sholes Company changed its corporate name to that of Fay-Sholes Company, and ceased to make its machines marked with the registered trade-mark "Rem-Sho," and with the inscription "Remington-Sholes Company, Mgrs., Chicago." It also appeared that in October, 1901, complainant filed its bill in the Circuit Court of the United States for the Northern District of Illinois against the Remington-Sholes Company, for alleged unfair trade competition, and that, after answer filed, an order was entered staying proceedings until the determination of this cause, and providing that if this cause resulted in favor of complainant, that cause should be sent at once to an accounting. On petition of the Howe Scale Company of 1886, and the Fay-Sholes Company, filed October 22, 1903, and on petition of Wyckoff, Seamans & Benedict, filed December 21, 1903, writ and cross-writ of certiorari were granted. For some years prior to 1860 E. Remington and his three sons were engaged at Ilion, New York, in the manufacture of firearms under the firm-name of E. Remington & Sons. The father died in 1863, and in 1865 the sons, who had continued the business, organized the corporation E. Remington & Sons under the laws of New York. About 1866 E. Remington & Sons produced a breech-loading rifle that obtained great vogue throughout the world, and was and is known as "The Remington Rifle." The "Remington Sewing Machine" and other machines were also manufactured and sold. In 1873 E. Remington & Sons began the manufacture of a typewriting machine, the most important features of which were invented and patented by Christopher Latham Sholes. It was the pioneer writing-machine and called "The Typewriter," and "The Sholes and Glidden Typewriter," and in 1880 the names "Remington" and "Remington Standard" were used instead, as they have since been continuously. One of complainant's witnesses testified that the typewriter was called "Remington" "for the reason that the name Remington was known the world over, owing to their building guns for foreign governments, building sewing-machines, and having one of the largest manufacturing works in the world." In March, 1886, the typewriter branch of the business of E. Remington & Sons was sold to Messrs. Wyckoff, Seamans & Benedict, and there was also transferred the exclusive right to the name "Standard Remington Typewriter," by which name the assignment states the machines were generally known. The assignment contained the express reservation to E. Remington & Sons of the right to engage in the manufacture and sale of typewriters at any time after ten years from its date. Complainant's type-writing machines have been for yearfs conspicuously marked with the name "Remington" and with a large "Red Seal" trade-mark on the paper-table and frame; the name and address "Remington Standard Typewriter, manufactured by Wyckoff, Seamans & Benedict, Ilion, N. Y., U. S. A.,” on the cross-bar in front of the keyboard; the words and figures "No. 6 Remington Standard Typewriter No. 6" on the front of the base, and the words "This machine is protected by 67 American and foreign patents" on the back. "Remington" and "Remington Standard" and the "Red Seal" have all been registered by complainant as trade-marks. In 1892 Z. G. Sholes, a son of Christopher Latham Sholes, invented a typewriting machine, and early in 1893 the Z. G. Sholes Company was organized under the laws of Wisconsin for its manufacture, but the stock of the company was never issued, and no machine was ever made or sold by it. Later in the year Franklin and Carver Remington, sons of Samuel Remington, formerly president of the E. Remington & Sons corporation, bought a three-fourths interest in Sholes's invention, Sholes retaining one-fourth, and a like interest in the stock of the company, paying from eight to nine thousand dollars. They entered into a written agreement with Sholes, which provided, among other things, that— no further, other or different business of any kind or nature shall be transacted by said corporation or in its behalf, except that the same may be dissolved, in due form of law, as soon as practicable hereafter. |