EX PARTE UNION CARBIDE COMPANY.

APPLICATION FOR REGISTRATION OF TRADE-MARK.

Decided June 24, 1908

135 O. G., 450.

1. TRADE-MARKS-REGISTRation-ConTROLLING FEATURES.

A mark is not registrable unless its controlling features are registrable. (In re Hopkins, C. D., 1907, 549; 128 O. G., 980; 29 App. D. C., 118; in re Crescent Typewriter Supply Company, post, 318; 133 O. G., 231.)

2. SAME " UNION CARBIDE "-DESCRIPTIVE AND GEOGRAPHICAL.

"Car

The words "Union Carbide" are not registrable as a trade-mark for calcium carbid, as the word " 'Union" is geographical and the word bide" is descriptive.

3. SAME "UNION CARBIDE" MERELY THE NAME OF APPLICANT.

The words "Union Carbide" Held not registrable by the Union Carbide Company as a trade-mark for calcium carbid, as these words substantially constitute the name of the applicant.

ON APPEAL.

TRADE-MARK FOR CALCIUM CARBID.

Messrs. Byrnes & Townsend for the applicant.

BILLINGS, Assistant Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing registration of a trade-mark for calcium carbid comprising the words "Union Carbide " arranged upon a panel which spans an annular band, the words " Calcium Carbide " being printed on the top and "Union Carbide Co." on the bottom of the band.

Registration of this mark was refused by the Examiner of TradeMarks on the ground that the controlling and distinguishing feature of the mark is the term "Union Carbide" and that the word "Union" is either geographical or descriptive and the word "Carbide" is descriptive.

That the words "Union Carbide " form the controlling and distinguishing feature of appellant's mark cannot be seriously questioned, and it is settled that this feature must be registrable in order to render the mark as a whole registrable by the following decisions of the Court of Appeals of the District of Columbia: in re Hopkins, (C. D., 1907, 549; 128 O. G., 890; 29 App. D. C., 118;) in re Crescent Typewriter Supply Company, (post, 318; 133 O. G., 231.) The word "Carbide" is the generic name of applicant's goods, calcium carbid, and is obviously descriptive.

The word "Union" as a trade-mark has been repeatedly refused registration, as appears from the Commissioner's decision in ex parte

Sacks (C. D., 1907, 169; 128 O. G., 2530) and the cases therein mentioned. In that decision, where the registration of "Union" as a trade-mark for heel-plates for boots and shoes was refused, it was said:

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The first definition of “Union" given in The Century Cyclopedia of Names is "The United States of America." The registration of appellant's mark is refused in view of the above definition, and of section 5 of the Trade-Mark Act of February 20, 1905, which provides that no mark consisting merely of "a geographical name or term, shall be registered under the terms of this act," and of the decisions of the courts holding such terms as Columbia," (Colum bia Mill Company v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150 U. S., 460,) "Old Country" and "Our Country," (Wrisley Company v. Iowa Soap Company, 122 Fed. Rep., 796,) and "Continental" (Continental Insurance Company v. Continental Fire Association, 101 Fed. Rep., 255) to be geographical and not capable of appropriation as trade-marks.

That it is the practice of this Office to refuse to register the word " 'Union as a trade-mark appears from the cases of ex parte The Union Metallic Cartridge Company (70 MS. Dec., 400) and Martin H. Taylor, (71 MS. Dec., 480,) where the word "Union" was refused registration as a trade-mark for cartridges and cartridge-belts and for smoking and chewing tobacco, respectively. The reasons there stated for holding the word "Union " geographical are believed to be equally applicable to the present case.

This case is very similar to in re Crescent Typewriter Company and to in re Hopkins, supra, where the court of appeals held the words "Orient" and "Oriental" to be geographical and the term "Oriental Cream" to be descriptive. Registration was refused for these reasons, notwithstanding the words were associated, as in the present case, with certain minor arbitrary features.

Section 5 of the Trade-Mark Act provides not only that descriptive and geographical words shall be refused registration as trademarks, but also that no mark shall be registered

which consists merely in the name of an individual, firm, corporation or association not written, printed, impressed, or woven in some particular or distinctive manner.

Applicant's name consists of the words "Union Carbide," which constitutes the predominating feature of its mark, with the word "Company" added. The words are not printed in a particular or distinctive manner, but are printed from ordinary block type. The name of applicant," Union Carbide Co.," on the bottom and the name of the goods," Calcium Carbide," on the top of the annular band are printed in the same character of type and add nothing registrable to the mark. For this reason also the mark is not thought to be registrable under the above proviso of the Trade-Mark Act.

The present case is similar to that of ex parte C. H. Alden Company C. D., 1907, 423; 131 O. G., 2419,) involving a trade-mark for boots and shoes, where the mark consisted of the words." The Alden Shoe,"

with the word "Alden " printed in letters of such relative sizes as to form an elipse, inclosed within a circle around which was printed the words "Mannish Shoes" at the top and "For Boys" at the bottom. This mark was refused registration on the ground that "Alden" is the name of an individual and that the other features of the mark are descriptive. See also ex parte The Creedmoor Cartridge Company, (C. D., 1891, 140; 56 O. G., 1333.)

In the case of Kentucky Distilleries & Warehouse Company v. Old Lexington Club Distilling Company (post, 417; 135 O. G., 220;) the Court of Appeals of the District of Columbia held that appellee was not entitled to register the words "Old Lexington Club" as a technical trade-mark for whisky upon the grounds (1) that the mark is substantially a reproduction of the corporate name of the appellee and (2) that the word " Club" is descriptive and the word "Lexington" is geographical. The Court in its decision said:

There are several provisions of the statute, which, we think, forbid the registration of the mark in question. Section 5 of the act of Congress of February 20, 1905, among other things provides:

"That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or 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, or merely a geographical name or term shall be registered under the terms of this act.' It will be observed that the trade-name here sought to be registered is almost a reproduction of the corporate name of the applicant. In fact, it seems probable, from an examination of the record in this case, that the corporate name of the appellee company was derived from the mark sought to be registered, since "Old Lexington Club' was a name applied to liquor distilled and sold by the predecessors in business of appellee.

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We are also of the opinion that the words "Old Lexington Club" do not constitute a technical trade-mark. The word "Club," as applied to liquors, has become a descriptive term. A word in its early use may be neither descriptive, nor denote quality, but by constant and repeated use and application to a particular product become descriptive of such goods, and also denote their quality.

In that case the mark consisted of the applicant's name with the words "Distilling Company " omitted. In the present case the predominating feature of the mark is the name of the applicant with the word "Company" omitted. There the words "Lexington" and "Club" were held, respectively, geographical and descriptive, while here the words "Union" and "Carbide," respectively, are likewise geographical and descriptive.

For the reasons stated appellant's mark is not considered registrable as a technical trade-mark, and the decision of the Examiner of Trade-Marks is therefore affirmed.

EX PARTE THE MAGAZINE AND BOOK COMPANY OF NEW YORK.

APPLICATION FOR REGISTRATION OF TRADE-MARK.

Decided June 8, 1908.

135 O. G., 661.

1. TRADE-MARKS-USE AS A TRADE-MARK A PREREQUISITE TO REGISTRATION. Where the specimens filed with the application for registration show that the words alleged to constitute the trade-mark have not been used as a trade-mark, registration should be refused.

2. SAME "LIBRARY SLIPS" DESCRIPTIVE.

The words "Library Slips" are descriptive of trading-coupons to be used in the purchase of books, libraries, etc., and cannot be registered as a technical trade mark.

ON APPEAL.

TRADE-MARK FOR TRADING-Courons.

Mr. Seward Davis for the applicant.

MOORE, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing to register the words "Library Slips" as a trademark for trading-coupons.

The grounds upon which registration was refused are (1) that these words have not been used as a trade-mark, and (2) that they are descriptive of a characteristic of the goods upon which they are used. The specimens filed with the application do not show a trade-mark use of the words in question. They appear in a number of places on the front and on the back of the coupon, but each time in connection with other words. In none of these places are the words used in such a way as to suggest that they are arbitrary words used to indicate the ownership or origin of the coupons.

Furthermore, the words are clearly descriptive. The coupons are “slips” which the printed matter thereon states will be accepted by The Magazine and Book Company in full payment for magazines, books, complete libraries for Sunday schools, etc. A slip which can be used in the purchase of a library is certainly described by the words "Library Slips."

It must be held, therefore, that the Examiner of Trade-Marks was right in refusing registration on both grounds.

The decision is affirmed.

SKINNER V. CARPENTER.

PATENT INTERFERENCE.

Decided July 10, 1908.

135 O. G., 661.

INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.

A motion to dissolve on the ground of irregularity in declaration will not be transmitted where it appears that the basis of this ground is that the other party has no right to make the claims corresponding to the issue.

APPEAL ON MOTION.

DENTAL TOOL.

Mr. J. Warren Beckstrom for Skinner.

Messrs. Offield, Towle & Linthicum for Carpenter.

MOORE, Commissioner:

This is an appeal by Skinner from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve as to ground 2.

Ground 2 of appellant's motion for dissolution reads as follows: 2. That there has been such irregularity in declaring this interference as will preclude a proper determination of the question of priority, because, in the light of the disclosures made in Carpenter's reissue file of papers, the counts are not readable upon both Carpenter's and Skinner's structures. The words "a thrust member slidably mounted in said vise" must, when read upon Carpenter's drawing, refer to the feature represented by the groove 6 wherein the thrust inember is slidably mounted.

The Examiner of Interferences refused to transmit this ground of the motion for the reason that appellant improperly seeks thereby

consideration of matters of right to make claims and double meaning of claims under the head of irregularity in the declaration of interference.

Appellant contends that the substance of this ground is that the counts are vague and indefinite and that the motion is therefore in proper form and should be transmitted as a whole.

I fail to find in the motion any statement, directly or indirectly, that the counts are vague and indefinite. On the contrary, the basis of this ground of the motion appears to be that the counts of the issue when considered in the light of the disclosure of Carpenter, who first made the claims, will not read on appellant's structure, or, in other words, that appellant has no right to make the counts of the issue.

The only other construction which it appears possible to place upon appellant's obscure statement of reasons in support of this