and that it should now be dissolved and the patent issued to them. In support of their contention they cite the case of Fowler v. Dodge (C. D., 1898, 28; 82 O. G., 1687;) and claim that similar procedure should govern the present case. In the case cited the Commissioner held in his decision on priority that while it was doubtful whether Dodge's application disclosed an operative device it was unnecessary to decide that question, since the evidence in any event showed Fowler to be the prior inventor. On appeal, however, the court held that according to the evidence Dodge was entitled to the award of priority, assuming that his application showed an operative device. The court of appeals refused to pass upon the latter question and expressly left it open for further consideration by the Patent Office, stating

We are not to be understood by this decision as precluding such action by the Office.

Upon the return of the case to this Office the Commissioner held that in view of the above statement of the court the question of the operativeness of Dodge's device was still open and might properly be raised by a motion to dissolve, and he reopened the interference for the consideration of such a motion. In his decision he said:

It is true, as contended by Dodge, that after decision on priority the question as to the right of the successful party to a patent is ordinarily an ex parte question; but this is for the reason that in most cases the defeated party has no right to a patent in any case whether his opponent is or is not entitled to a patent, and therefore has no more interest in the question as to whether a patent shall be granted to him than would any third party. The rule does not apply in a case like the present, where a decision is necessary to finally settle the very question raised by the inter partes proceedings.

It is well settled that a prior inoperative machine cannot defeat a subse quent applicant for a patent.

In other words, the question was ancillary to that of priority of invention. In the case of Podlesak v. McInnerney (C. D., 1906, 538; 120 O. G., 2127) the Court of Appeals of the District of Columbia held that such questions would be considered as involved in that of priority of invention, since priority should not be awarded against a party if his adversary never made the invention of the issue. In the case mentioned the court remanded the interference to the Patent Office for further consideration and reserved its decision on priority. In the present case the circumstances are very different. There is no question but that Wictorsohn's application discloses an operative device. The court held without any reservation that he was the first and original inventor. The fact that it suggested the possible existence of a statutory bar to his receiving a patent in no wise affects the award of priority in his favor. Because Wictorsohn may be

debarred from receiving a patent on account of his Austrian patent it does not follow that Gueniffet et al. are entitled to the patent. Concerning a similar question, the Court of Appeals of the District of Columbia, in the case of Hill v. Hodge, (C. D., 1898, 480; 83 O. G., 1211,) stated:

The Commissioner was right in refusing to entertain the issue of patentability. That the question of patentability of the claim in interference is not involved therein has been time and again decided. (Hisey v. Peters, C. D., 1895, 349; 71 O. G., 892; 6 App. D. C., 68, 71; Doyle v. McRoberts, C. D., 1897, 413; 79 O. G., 1029; 10 App. D. C., 445, 467, and cases cited therein.)

After this controversy shall have been determined the question of patentability may be raised in the Patent Office against the successful party. As a matter of fact the Commissioner, though refusing to take cognizance of the issue of patentability, regarded the evidence of prior invention and public use by Leeds as sufficiently important to require him in rendering his decision to direct the Primary Examiner to inquire into and consider the question of patentability when the matter shall again come before him. When that question shall be raised, Hill will have no other interest in its decision than as one of the general public whose interests are under the protection of the Commissioner of Patents.

In the present interference the court did not leave open for further consideration any question relating to priority of invention. Its decision affirming the holding of the Commissioner that Wictorsohn is the prior inventor clearly terminated the interference and must "govern the future proceedings in the case." (Sec. 4914, Rev. Stats.) It follows that the Commissioner has no authority to reopen the interference and is without jurisdiction to entertain the motion of Gueniffet et al. (In re Potts, C. D., 1897, 342; 78 O. G., 2049; 166 U. S., 263.)

Having reached this conclusion, it is unnecessary to discuss further the merits of the motion. Whether Wictorsohn is entitled to a patent is a matter for further ex parte consideration. In the case of Sobey v. Holsclaw (C. D., 1907, 465; 126 O. G., 3041) the Court of Appeals of the District of Columbia said:

In interferences we do not determine whether either party shall receive a patent. The question `presented to us is, conceding that there is a patentable invention, which party was the one first to invent or discover the same. When an interference is returned to the Patent Office after we have decided the question of priority it is within the power of the Commissioner of Patents to withhold a patent from the successful interferant. In such case by an orderly system of appeals provided by the statute the action of the Commissioner of Patents may be reviewed on an ex parte appeal.

For the reasons stated the motion for dissolution of the interference is dismissed.

HUTCHINSON, PIERCE & Co. v. LOEWY.

CANCELATION PROCEEDING.

Decided March 2, 1908.

134 O. G., 256.

1. TRADE-MARKS CANCELATION-MARKS NOT IDENTICAL.

The registration of a trade-mark consisting of a comet having the representation of a star at its head instead of the usual nebulous mass and associated therewith the words "The Comet" will not be canceled upon the application of the owner of the registered mark "Star" for the same class of goods, as there is no such near resemblance between the marks as to cause confusion in trade.

2. SAME-SAME-RIGHT TO PREVENT USE OF MARK BY ANOTHER IN COMBINATION WITH OTHER FEATURES.

The owner of a technical trade-mark consisting of the representation of a star and the word "Star" has no such right therein as would warrant the cancelation by the Patent Office of a registered mark for the same class of goods adopted at a later date consisting of a star and other features forming a part thereof which clearly distinguishes as a whole from the prior mark.

APPEAL from Examiner of Interferences.

TRADE-MARK FOR SHIRTS.

Messrs. Phelps, Evins & East and Mr. William G. Henderson for Hutchinson, Pierce & Co. (Mr. Archibald Cox of counsel.)

Messrs. Mason, Fenwick & Lawrence and Mr. L. L. Morrill for Loewy.

BILLINGS, Assistant Commissioner:

This is an appeal by Hutchinson, Pierce & Co. from a decision of the Examiner of Interferences dismissing its application for the cancelation of the registered mark of Joseph Loewy, No. 56,102, August 21, 1906, for dress-shirts.

Appellant's mark was registered April 3, 1906, No. 51,146. It consists of the representation of a star and the word "Star" and is applied to shirts, shirt-waists, and blouses. Appellee's mark is described as consisting of a representation of a comet and the words The Comet." This representation as it appears in the drawing forming part of the registration is not of the usual character. A comet is ordinarily represented as having a nebulous head, whereas in appellee's drawing the head of the comet consists of a star which is given great prominence with respect to the other features of the mark.

Appellant seeks the cancelation of appellee's mark, alleging that the representation of a star and the word "Star" are the exclusive

property of appellant; that appellee's use of the representation of a star is an unwarranted invasion of appellant's property rights therein, and that appellee has no right to use this symbol either alone or in combination with other devices.

It appears from the record that appellant was the first to adopt and use its mark, and if it is found that the marks of appellant and appellee are identical it would follow that appellee had no right to use his mark at the time the application for registration was filed.

I agree with the conclusion of the Examiner of Interferences that the marks are not identical and that there is no such near resemblance between them as to be likely to cause confusion in trade. Appellant's mark consists, as above stated, of the representation of a star and the word "Star," while appellee's, mark has in addition to the representation of a star a streamer representing, it is said, the tail of a comet and the words "The Comet" printed in large type. These marks give an entirely different impression to the eye, and there seems to be no likelihood that appellee's goods would be referred to as "Star goods" instead of "Comet goods." There seems to be no likelihood of confusion either in the appearance of the marks or in the sound of the words by which the goods of the respective parties would probably be referred to.

Appellant makes the contention, however, that as it has the exclusive right to the use of the mark consisting of the representation of a star and the word "Star" no other person, firm, or corporation has the right to use the representation of a star alone or with accessories, no matter what the character of such accessories may be. A number of authorities are cited in support of this contention. These authorities have been examined in connection with appellant's argument, but it is believed that they do not sustain this contention. As I understand the decisions on this subject they go no further than to hold that an infringement of a technical mark cannot be avoided by the use of accessories which do not form part of the mark and which do not in fact change the substantial identity of the mark. One of the principal decisions relied upon by appellant is the case of Bass & Company v. Feigenspan, (96 Fed. Rep., 206, 212,) from which appellant gives copious extracts. In this decision the Court said:

No one who has counterfeited a legitimate trade-mark and applied the spurious symbol in competition with the genuine can avoid the charge of infringement by showing that the false mark he in practice been so accompanied on labels, capsules, or other accessories, not forming part of it, as to render it unlikely that the public has been deceived. A sound public policy requires that the spurious trade-mark be suppressed, whether it is or is not for the time being accompanied by such accessories, not constituting part of it, as to avoid deception or render it unlikely.

The court carefully points out in this decision that the accessories used by the infringer did not constitute a part of the mark. In the present case the features of appellee's mark referred to by the appellant as accessories form an actual part of the trade-mark, and in my opinion are so combined with the representation of the star which forms the head of the comet in appellee's mark as to be clearly distinguishable in appearance from that of the appellant. Furthermore, there would seem to be no phonetic confusion between the trade-marks when the words defining the same are spoken, for the appellee's goods would probably be known as "The Comet" goods, and the appellant's goods would be known by no other name than the "Star."

The decision of the Examiner of Interferences is affirmed.

JOHNSON V. BRANDAU.

OPPOSITION.

Decided April 24, 1903.

134 O. G., 257.

1. TRADE-MARKS-OPPOSITION-USE OF ACCESSORIES BY ANOTHER.

Section 5 of the Trade-Mark Act permits the registration of a mark the controlling and distinguishing feature of which is an arbitrary symbol, although such symbol is accompanied by accessories which in themselves are not registrable, and the use by the opposer of such non-registrable accessories prior to applicant's use of his mark does not defeat the latter's right of registration.

2. SAME "ASBESTOS "-DESCRIPTIVE.

The word "Asbestos" as applied to shoes made of leather and asbestos clearly descriptive.

APPEAL from Examiner of Interferences.

TRADE-MARK FOR SHOES MANUFACTURED OF LEATHER AND ASBESTOS.

Mr. Henry C. Mulligan and Messrs. Robertson & Johnson for Johnson.

Mr. Samuel E. Thomas and Mr. George C. Shoemaker for Brandau.

BILLINGS, Assistant Commissioner:

This is an appeal from a decision of the Examiner of Interferences sustaining a demurrer of the applicant, Adam Brandau, to a notice