MARTIN v. GOODRUM v. DYSON V. LATTIG AND GOODRUM. PATENT INTERFERENCE. Decided May 12, 1908. 134 O. G., 1297. 1. INTERFERENCE-SEVERAL PARTIES-JUNIOR PARTY FAILING TO OVERCOME FILING DATES OF ALL PARTIES-RIGHT TO TAKE TESTIMONY. Where in an interference between several parties the preliminary statement of the junior party fails to overcome the filing date of the senior party, but does overcome the filing date of an intermediate party and such Junior party raises the question of the operativeness of the senior party's device and is entitled to argue such question at final hearing, Held that it is proper to assign such junior party time to take testimony on the question of priority and, also, upon sufficient showing, upon the question of the operativeness of the senior party's device. All questions relating to priority should be tried out in one proceeding and not piecemeal. 2. SAME-APPEAL-MOTION TO TAKE TESTIMONY-SHOWING. No appeal lies from a favorable decision of the Examiner of Interferences upon the sufficiency of the showing in support of a motion to take testimony on the question of the operativeness of another party's device, PETITION AND APPEAL on motion. TELEPHONE SYSTEM. Messrs. Bulkley & Durand for Martin. Messrs. Church & Rich for Goodrum. Mr. Thos. H. Ferguson and Mr. Leroy D. Kellogg for Dyson. MOORE, Commissioner: This case is before me for consideration of a petition by Lattıg and Goodrum and an appeal by Martin. Lattig and Goodrum petition from the action of the Examiner of Interferences assigning Martin a time in which to take testimony and giving him permission to take evidence as to the inoperativeness of the structures disclosed by Goodrum and by Lattig and Goodrum. It appears from the record that the preliminary statement of Martin failed to allege a date of conception prior to the filing date of Lattig and Goodrum, and he was ordered to show cause why judgment on the record should not be rendered against him. In response thereto he filed a motion to dissolve, alleging that the applications of Goodrum and of Lattig and Goodrum disclose inoperative devices. This motion was denied by the Primary Examiner, and Martin then moved for permission to take testimony for the purpose of establishing the inoperativeness of the structures disclosed in said applications and filed several affidavits in support of his motion. The Ex aminer of Interferences held that Martin was entitled under Rule 130 to urge at final hearing the inoperativeness of the devices of said parties; also, that as it would not be expedient to have the question of priority considered and the appeal from the decision thereon take place at different times between various groups of the interferants Martin should stay in the interference until all parties were ready for a final hearing. In view of the fact that Martin would be entitled to take testimony concerning priority of invention as against Dyson in case he prevailed in his contention that the devices of the above mentioned parties were inoperative the Examiner of Interferences assigned him a time for taking testimony in order that the whole matter might be considered at one hearing. In his decision of February 21, 1908, he also held that Martin had made such a showing as would entitle him to take testimony under Rule 130. Petitioner admits that Martin has the undoubted right to be heard at final hearing under Rule 130, but contends that he will be put to great delay and expense if Martin is allowed to take testimony now and that Martin's recourse is to have a second interference in case petitioners' apparatus should be finally held inoperative. The circumstances in this case are quite similar to those in the case of Hewitt v. Weintraub v. Hewitt and Rogers, (C. D., 1907, 155; 128 O. G., 1689,) where I stated: In case IHewitt's petition was granted the first contest would be between Weintraub and the senior party, Hewitt and Rogers. Then the winning party would have to contest priority with the junior party, Hewitt. The judgments in each contest would be by award of priority and in each there would be the statutory right of appeal. Hewitt contends that there are two distinct contests and should therefore be two separate proceedings. This contention is erroneous. If, under Rule 130, Weintraub can establish that Rogers and Hewitt have no right to make the claims, the judgment will be an award of priority in his favor as against the senior party. The rule contemplates but one contest, and that leading to an award of priority. To make the question the subject-matter of two contests, each resulting in an award of priority with the right of appeal to the Court of Appeals of the District of Columbia, would be piecemeal action and unnecessarily prolong the contest. For reasons similar to those stated in the above decision, also because all matters relating to priority should be tried out in the one proceeding, (and it is doubtful if the court of appeals would entertain appeals in two or more successive contests,) it is held that the Examiner of Interferences was right in assigning Martin a time for taking testimony and in fixing one date for the final hearing of the whole matter. In the present case the Examiner of Interferences in his decision of February 21, 1908, considered the showing made by Martin in support of his motion to take testimony to establish the inoperativeness of the disclosures of Goodrum and of Lattig and Goodrum and held aid showing sufficient to entitle him to take testimony under Rule 130. It is therefore unnecessary to consider in this case whether Martin, in connection with his other testimony, would be entitled to take testimony on the question of operativeness without such a showing. From the decision of the Examiner of Interferences holding said showing sufficient there is no appeal, (Daggett v. Kaufmann, C. D., 1907, 121; 127 O. G., 3641,) and no such abuse of discretion is apparent as would warrant reviewing said decision under the exercise of the supervisory authority of the Commissioner. In the recent case of O'Brien v. Gale v. Zimmer v. Calderwood, (90 Ms. Dec., 151,) where similar questions were involved and similar conclusions reached by the Examiner of Interferences, it was held on appeal that: It is well settled that the question of setting times for taking testimony rests within the discretion of the Examiner of Interferences. (Goodfellow v. Jolly, C. D., 1905, 105; 115 O. G., 1064; Christensen v. McKenzie, C. D., 1905, 238; 117 0. G., 277.) The question of the right of one of the parties to take testimony stands on the same footing. Martin has appealed from the decision of the Examiner of Interferences denying his motion to transmit the interference to the Primary Examiner and to suspend proceedings. As stated by the Examiner of Interferences, the interference has been before the Primary Examiner since the decision of the Commissioner of July 31, 1907, referred to in the motion, and no good reason is shown for suspending proceedings and transmitting the motion at this time. The decision of the Examiner of Interferences on Martin's appeal is affirmed, and the petition of Lattig and Goodrum from the action of the Examiner of Interferences is denied. EX PARTE MINEHAN. APPLICATION FOR PATENT. Decided May 19, 1908. 134 O. G., 1298. AMENDMENT-SIGNATURE-RUBBER STAMP. Amendments to an application should be actually signed by an applicant or his attorney with pen and ink or equivalent writing material. Ameudments signed by means of a rubber stamp will not be accepted. ON PETITION. PAPER-CATCHER. Messrs. Hazard & Strause for the applicant. BILLINGS, Assistant Commissioner: This is a petition from the action of the Examiner refusing to accept an amendment having affixed thereto the firm-name of the attorney impressed by a rubber stamp. The amendments to an application for a patent are far too formal and important documents to justify their acceptance if signed only by means of a rubber stamp. To accept such papers would open the door to the commission of grave irregularities in the prosecution of an application for a patent. Amendments to an application should be actually signed by the applicant or his attorney with pen and ink or equivalent writing material. The petition is denied. IN RE NATIONAL CHEMICAL COMPANY. Decided May 21, 1908. 134 O. G., 1298. 1. TRADE-MARKS—ASSIGNMENTS NOT CONVEYING THE GOOD-WILL OF BUSINESS-NOT RECORDABLE. Section 10 of the Trade-Mark Act provides that a registered trade-mark or a mark for the registration of which application has been made shall be assignable in connection with the good-will of the business in which the mark is used, and it is only such assignments which are recordable in this Office. 2. SAME ASSIGNMENTS OF TERRITORIAL RIGHTS-NOT RECORDABLE. Section 2 and section 10 of the Trade-Mark Act construed and Held not to provide for the recording of a paper purporting to grant a mere territorial right to the use of a trade-mark. IN THE MATTER of the petition of the National Chemical Company that certain assignments of trade-mark be recorded in the Patent Office. Messrs. Milo B. Stevens & Company for the petitioner. BILLINGS, Assistant Commissioner: This is a petition that certain trade-mark assignments be recorded. It appears that on February 29, 1908, the petitioner filed certain assignments relating to a trade-mark registered to James A. Dacus, the certificate of registration being No. 42,636, and dated May 17, 1904. The Chief of the Assignment Division refused to record these papers and returned them to the petitioner. These assignments, eight in number, are filed with the petition, as well as three others relating to the same trade-mark. Of these papers the first, which is signed by James A. Dacus, purports to convey to certain parties named therein a one-third interest in said trade-mark with the right to make and sell the article to which the trade-mark is applied in any State east of the Mississippi River, and to sell the right to sell State and county rights to make and sell the article. Eight of the remaining papers, some of which are signed by the parties named in the first, purport to convey the interest of the parties signing the same in the trade-mark to the petitioner, together with their rights under the same and their good-will and the right to use the trade-mark. The other two papers are signed by an officer of a State court and purport to convey to each of the parties named therein a one-sixth interest in the trade-mark, the papers stating that the transfer is made by order of the court. Section 10 of the Trade-Mark Act of 1905 is as follows: SEC. 10. That every registered trade-mark, and every mark for the registration of which application has been made, together with the application for registration of the same, shall be assignable in connection with the good-will of the business in which the mark is used. Such assignment must be by an instrument in writing and duly acknowledged according to the laws of the country or State in which the same is executed; such assignment shall be void as against any subsequent purchaser for a valuable consideration, without notice, unless it is recorded in the Patent Office within three months from date thereof. The Commissioner shall keep a record of such assignments. Clearly this section makes a trade-mark assignable only in connection with the good-will of the business in which it is used, and it is only “such" an assignment that the Commissioner is directed to record. The paper signed by James A. Dacus does not purport to convey the good-will of the business and for that reason was properly held to be unrecordable. Furthermore, this paper only purports to convey a right to use the mark and make the article in a limited territory and to sell to others the right to use it on goods manufactured by them. The primary purpose of a trade-mark is to denote ownership or origin. If the mark is used by various persons in various localities on goods of their individual manufacture, then it fails to accomplish this purpose. While the law does not in terms forbid the recordation of such an assignment, it is believed that the clear intent of the statute is that such assignment should not be recorded. Section 2 provides that the applicant for the registration of a mark shall make oath that he or the firm or corporation in whose behalf he applies is the owner of the mark and that no other person, firm, or corporation has the right to use such mark. Section 10 provides that a registered mark or a mark for the registration of which application has been made shall be assignable in connection with the good-will of the business in which it is used. Taking these sections together, it is believed that a paper purporting to grant a mere territorial right to the use of a mark is not recordable. The papers signed by J. H. Evans and Elizabeth J. Evans, by James L. Douglass and Eva L. Douglass, by H. C. Howard and S. A. |