of opposition filed by Charles W. Johnson dismissing the notice of opposition and holding that the former is entitled to register his mark.

The mark of the applicant consists of the picture of a mule having the words "Asbestos " and "Fireproof" printed thereacross and the words "A. Brandau's" printed above and the words "Molder's Shoes" below the same.

The grounds of opposition are stated as follows:

66

I have used the word "Asbestos" as applied to boots and shoes manufactured of leather of heat-resisting and fireproof qualities continuously since early in 1903 as a trade-name, and have had the name Asbestos Shoe" registered under the laws of many of the States. My shoe has been known from the first, as the "Asbestos Shoe."

The shoes manufactured by me have been designed especially for the molder's trade and are well known to the trade as "The Molders' Original Asbestos Shoe." I am informed and believe that the said Adam Brandau well knew of my sole and exclusive use of the word "Asbestos as a trade-name applied to boots and shoes; that he used this word or a word or character of similar appearance as a part of the trade-mark for which he has made application for registration for the purpose of securing trade already established by me among molders for my asbestos shoe."

The applicant demurred to the notice of opposition on the grounds that the words "Asbestos" and "Asbestos Shoe" taken alone are either descriptive or deceptive, and therefore cannot be segregated for trade-mark purposes and that the word "Asbestos" cannot be regarded as the essential part of applicant's mark.

The Examiner of Interferences sustained the demurrer, holding that the word "Asbestos" was clearly descriptive as used by the applicant, that as used by the opposer it was either descriptive or deceptive, and that

as the only matter in common use by the parties cannot be exclusively appropriated by either, but is a word which every one is entitled to use, it is not seen that the opposer can be damaged by the registration of the applicant's mark which contains this word as an element.

The applicant states in his application for registration that he uses his mark on shoes manufactured of leather and asbestos. The word "Asbestos" as applied to such shoes is therefore clearly descriptive. The opposer does not state the material employed by him except by saying that his goods are made of leather of heat-resisting and fireproof qualities. His use of the word is, however, descriptive, whether he employs asbestos in making the shoes or renders his leather heat resisting in some other way. In the first case the word would describe one of the constituents and in the second, from the well-known qualities of asbestos, would indicate that the shoe was made of a heatresisting material.

Section 5 of the Trade-Mark Act of February 20, 1905, provides that no mark by which the goods of the owner 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 the mark unless such mark comprises certain stated prohibited features, and provides further that no mark which consists

⚫ merely in words or devices which are descriptive of the goods with which they are used or of the character or quality of such goods shall be registered under the terms of this act.

By virtue of this provision of the statute registration of a trademark is permitted where the controlling and distinguishing feature of the mark is an arbitrary symbol, although such symbol may be accompanied by accessories which in themselves are not registrable. This being the case, it follows that although the opposer may show that he has used the word "Asbestos" since 1903, which is prior to the alleged date of adoption of the applicant's mark, in connection with goods of the same descriptive properties as those sold by the applicant such use would not prevent the registration by the latter of a mark which included the word "Asbestos" merely as a descriptive and subordinate feature, since any manufacturer of asbestos goods has the right to describe his goods by that term, and the inclusion of this word by the applicant in his trade-mark would not cause legal damage to the opposer.

The decision in Kutroff v. Cassella Color Co., (C. D., 1907, 225; 129 O. G., 3159,) cited by the opposer, is not in point, as the marks there involved were descriptive and registration was sought under the "ten-year" proviso of section 5 of the Trade-Mark Act, while in the present case the mark claimed by the applicant is presented for registration as a technical trade-mark.

The second ground of the notice of opposition raises a question of unfair competition, which it is well settled will not be considered in an opposition proceeding.

It is also urged by the opposer that the applicant having admitted by his demurrer that the word "Asbestos" is descriptive registration of the mark should be refused. This is not one of the grounds of opposition, and the question is not, therefore, before me; but it may be noted that applicant is not seeking to register the word "Asbestos " alone. Upon the contrary, the word "Asbestos " as disclosed in the applicant's mark is merely an accessory and not the controlling feature of the mark.

The decision of the Examiner of Interferences is affirmed.

ROBERTSON, SANDERSON & COMPANY, LTD. v. CHARLES DENNEHY &

COMPANY.

TRADE-MARK INTERFERENCE.

Decided April 28, 1908.

134 O. G., 513.

1. TRADE-Marks—“ Mountain Dew "-DESCRIPTIVE.

The words "Mountain Dew" as a trade-mark for whisky Held to be descriptive in character, and therefore not registrable, these words as commonly used meaning whisky or a particular kind of whisky.

2. SAME-APPLICATION-ALLEGATION

TECHNICAL Mark.

OF EXCLUSIVE USE CONSIDERATION

AS

The amendment of a trade-mark application by the addition of a statement that the mark has been in exclusive use by the applicant for ten years next preceding the passage of the Trade-Mark Act after refusal to register the mark as a technical mark will not preclude consideration on appeal on priority of the question whether the mark is in fact a technical mark.

ON APPEAL.

WHISKY.

Messrs. Kerr, Page & Cooper and Mr. Marcellus Bailey for Robertson, Sanderson & Company, Ltd.

Mr. Arthur E. Wallace for Charles Dennehy & Company.

MOORE, Commissioner:

This is an appeal by Robertson, Sanderson & Company, Ltd., from the decision of the Examiner of Interferences holding that Charles Dennehy & Company were the first to adopt and use and are entitled to register the words "Mountain Dew" as a trade-mark for whisky. The Examiner of Interferences found that the use of the mark claimed by Robertson, Sanderson & Company in Scotland since 1846 is immaterial in this proceeding and that the earliest date of adoption and use available to them is 1894, when, according to the testimony, their "Mountain Dew " whisky was sold in this country by the firm of Raoul, Duval, Stevens & Hall of New York City, with whom they entered into a contract in said year to represent them in the United States. Charles Dennehy & Company he found entitled to a date of adoption and use some years earlier than the date accorded to Robertson, Sanderson & Company, Ltd., and he, therefore, awarded priority in favor of the former.

The correctness of these conclusions is not seriously disputed; but Robertson, Sanderson & Company, Ltd., strenuously contend that Charles Dennehy & Company are not entitled to register the mark because it is descriptive in character when applied to whisky, and they have not had the ten years exclusive use necessary to entitle them to register it under the ten-year proviso of the Trade-Mark Act. 69025-H. Doc. 1349, 60-2- -9

Appellees contend, on the other hand, that the question of the alleged descriptive character of the mark should not be considered on this appeal, upon the ground that it is here raised for the first time.

The ground advanced in support of this latter contention appears to be based on an error of fact. The Examiner of Trade-Marks in his first action on the application of Charles Dennehy & Company refused registration on the ground that the term "Mountain Dew " is a common name applied to whisky and possesses nothing of a trademark character. In response to this action Charles Dennehy & Company filed a substitute declaration containing the allegation of ten years exclusive use, accompanied by a letter stating that the case was brought within the ten-year clause by said substitute declaration. While the matter was not discussed in the decision of the Examiner of Interferences, this may be for the reason that he considered the question immaterial under the Office ruling, prevailing at that time, that the requirement of ten years exclusive use of the statute was satisfactory, if the right to exclude existed during that time. Counsel for Robertson, Sanderson & Company, Ltd., filed no brief at the hearing before the Examiner of Interferences, but he alleges in an affidavit filed October 18, 1907, that he called the attention of the Examiner of Interferences to this matter in his oral argument. Moreover the record shows that appellants raised the question in a motion to dissolve the interference, which was refused transmission by the Examiner of Interferences; also that they served notice upon the appellees on November 30, 1907, that the matter would be urged upon this appeal.

The Court of Appeals of the District of Columbia in Worcester Brewing Corporation v. Reuter & Company (post, 329; 133 O. G., 1190) and in Kentucky Distilleries & Warehouse Co. v. The Old Lexington Club Distilling Company (post, 417; 135 O. G., 220) considered and passed upon the registrability of the marks involved in those cases, both as technical trade-marks and under the ten-year proviso.

It was held by me in the case of L. W. Levy & Company v. Uri (C. D., 1907, 386; 131 O. G., 1687) that the inclusion in the declaration of the additional averments necessary to secure registration under the ten-year proviso does not operate to limit an applicant to registration under said proviso, providing it is found that the mark is in fact a technical mark. This case is now pending on appeal before the Court of Appeals of the District of Columbia; but whether this holding is sustained by the court is immaterial in disposing of the present case, in view of the conclusion reached hereinafter that appellant's mark is not a technical trade-mark.

For the reasons and in view of the decisions cited above consideration will be given to the registrability of the mark in question, both as a technical trade-mark and under the ten-year proviso.

The question of whether the words "Mountain Dew" when applied to whisky are "descriptive of the goods with which they are used or of the character or quality of such goods" so as to render them ineligible to registration as a technical trade-mark under the first part of section 5 of the Trade-Mark Act will be considered first. Judicial notice is taken of the fact that it is a matter of common knowledge that the term "Mountain Dew" means whisky and is defined in the Century, Worcester, Webster, and Standard Diction aries as follows:

Mountain dew.-Whiskey, especially Highland whiskey.

(Scotch.)

"The shepherds who had all come down from the mountain heights and were collected together (not without a quench of the mountain dew or water of life) in a large shed." J. Wilson, Lights and Shadows of Scottish Life, p. 305. (Century Dictionary, edition of 1890.)

Mountain dew.-Scotch Highland whisky that has paid no duty. (Worcester Dictionary, editions of 1865 and 1902.)

Mountain dew.-Genuine Scotch whisky; so called as being often secretly distilled in the mountains of Scotland. (Webster's Unabridged Dictionary,

edition of 1872.)

Mountain dew.-Illicitly-distilled whisky; so called from being very commonly made among the mountains. (Standard Dictionary, edition of 1895.)

It is unnecessary to cite others than these commonly-accepted authorities, which are conveniently at hand. They show conclusively that the words "Mountain-Dew" commonly mean whisky or a particular kind of whisky.

It is noted, moreover, that the witness, Thomas C. Dennehy, the secretary and treasurer of Charles Dennehy & Company, who testified in behalf of said concern, makes the following admission on cross-examination:

X-Q. 20. Can you tell me how the firm of Charles Dennehy came to use the name of "Mountain Dew" for blended whisky?

A. It was suggested by an Irish salesman we had. The words or the combination of words "Mountain Dew" in Ireland are suggestive of whisky. X-Q. 21. Then you had previously known of the use of the term "Mountain Dew" in Ireland as a name for whisky?

A. Yes, sir.

It follows from the authorities cited and the testimony quoted that the mark is descriptive of the goods upon which it is used and cannot under the statute be registered as a technical trade-mark for whisky. Consequently if the mark is registrable at all it must be under the ten-year proviso of the Trade-Mark Act. This clause has been recently construed by the Court of Appeals of the District of