APPEAL ON MOTION.

TRADE-MARK FOR BELTING, HOSE, MACHINERY PACKING, AND NON-METALLIC TIRES.

Mr. Ernest Hopkinson and Mr. William B. Corwin for Peerless Rubber Manufacturing Company.

Messrs. Britton & Gray for Gorham Rubber Company.

BILLINGS, Acting Commissioner:

This is an appeal by the Gorham Rubber Company from the decision of the Examiner of Interferences granting a motion filed by opponent to amend his notice of opposition and denying the motion of appellant to dismiss the opposition. These are matters which are in the discretion of the Examiner of Interferences and an appeal from his decision thereon will not be entertained except under circumstances of such unusual character as would justify the exercise of the supervisory authority of the Commissioner. (Oakley & Company v. Babcock, ante, 77; 133 O. G., 761.) No such circumstances have been shown to exist in this case.

The appeal is dismissed.

EX PARTE HIRTH.

Decided November 14, 1908.

137 O. G., 977.

REVIVAL-CASE FORMALLY ABANDONED.

Section 4894, Revised Statutes, does not authorize the Commissioner to set aside a formal abandonment of the application filed by the applicant with the concurrence of his assignee.

ON PETITION.

BALL-BEARING FOR SHAFTS.

Messrs. Foster, Freeman, Watson & Coit for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition for the revival of an application which had been expressly abandoned by means of a written declaration. The record shows that this application was filed on September 24, 1907. Upon November 14, 1907, a paper was filed which was dated October 29, 1907, and signed by the applicant and also by the assignee of record, stating that

We, the applicant for a patent as above, and assignee of such application respectively, desire to withdraw and abandon such application and ask that the same shall be considered withdrawn and abandoned accordingly.

On October 29, 1908, this applicant and assignee filed a paper requesting the cancelation of the formal withdrawal and abandon

ment which they signed on October 29, 1907, and that the case be reinstated and action taken thereon by the Office.

Section 4894, Revised Statutes, is as follows:

All applications for patents shall be completed and prepared for examination within one year after the filing of the application, and in default thereof, or upon failure of the applicant to prosecute the same within one year after any action therein, of which notice shall have been given to the applicant, they shall be regarded as abandoned by the parties thereto, unless it be shown to the satisfaction of the Commissioner of Patents that such delay was unavoidable.

This section of the statute merely gives the Commissioner authority to hold that an application is not abandoned by failure to prosecute the same within one year from the date of the last Office action upon a satisfactory showing that such delay was unavoidable, but it does not authorize him to set aside a formal abandonment of the application filed by the applicant himself.

The question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.

ON PETITION.

OSCILLATION-RECEIVER.

Mr. Philip Farnsworth and Messrs. Meyers, Cushman & Rea for Pickard..

Mr. J. Odell Fowler for Ashton and Curtis.

BILLINGS, Assistant Commissioner:

This case comes up on petition by Ashton and Curtis to remand to the Examiner of Interferences a motion to dissolve filed by Pickard in order that the latter may be required, if the Examiner of Interferences so decides, to point out the appropriateness of the references to the issue and the manner in which it is proposed to combine such references.

It appears from the record that on October 3, 1908, Pickard filed a motion for dissolution, which motion was transmitted to the Ex

aminer of Interferences on October 6. On October 8 Ashton and Curtis filed a motion asking for a rehearing of the decision of October 6, 1908, on the ground that Pickard's motion of October 3 had not been served upon them. This motion for rehearing was denied by the Examiner of Interferences on October 12, and the present petition seeks a review of that decision.

For the same reasons which apply to motions to amend preliminary statements (Smith and Wickes v. Emerson v. Sanders, ante, 97; 133 O. G., 1433) and to motions with respect to the taking of testimony (Goodfellow v. Jolly, C. D., 1905, 105; 115 O. G., 1064) the question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.

The motion of October 8, which is entitled, "a motion for rehearing," was, in effect, a motion to set aside the decision of October 6 for lack of service of Pickard's motion. As no abuse of discretion on the part of the Examiner of Interferences has been shown in holding that the reasons given were not sufficient to justify the setting aside of his prior decision, the decision of October 12 will not be disturbed.

Furthermore, the reasons set up in the present petition why the motion should be remanded to the Examiner of Interferences relate in the most part to the merits of that motion and are questions which should be presented before the Primary Examiner, and not before the Examiner of Interferences.

The petition is denied.

AMERICAN STEAM PACKING COMPANY v. H. W. JOHNS-MANVILLE COMPANY.

Decided November 17, 1908.

137 O. G., 978.

TRADE-MARKS-DESCRIPTIVE WORDS PRINTED IN FANCIFUL LETTERS-EXCLUSIVE USE.

The fact that the mark used by applicant for registration is printed in fanciful letters Held insufficient to justify the registration of the same under the "ten-years" clause of the Trade-Mark Act of February 20, 1905, where said mark is not so unlike a word used on its goods by the opposer as to prevent confusion in the mind of the public, citing The Natural Food Company v. Williams (post, 320; 133 O. G., 232) and Kentucky Distilleries and Warehouse Company v. Old Lexington Club Distilling Company, (post, 417; 135 O. G., 220.)

APPEAL from the Examiner of Interferences

ASBESTOS ENGINE AND MACHINERY PACKING.

Mr. William L. Morris and Messrs. Steuart & Steuart for American Steam Packing Company.

Mr. A. Parker-Smith for H. W. Johns-Manville Company.

BILLINGS, Assistant Commissioner:

This is an appeal by the H. W. Johns-Manville Company from a decision of the Examiner of Interferences sustaining the opposition of the American Steam Packing Company and holding that the applicant is not entitled to register the mark for which it has made application. Applicant states in his brief that his mark consists—

of a fanciful form of letters shown in the drawing as a trade-mark for asbestos engine and machinery packing—

and that

the fanciful and arbitrary features of the mark are the representation of the letters of the word "Asbestos" in fibrous form intended to suggest that they are made of asbestos fibers, and the intermingling of the letters "T-R-A-D-E. M-A-R-K" between the fanciful letters "A-S-B-E-S-T-O-S."

No testimony was taken; but it was stipulated by and between counsel for the respective parties that the opposer, the American Steam Packing Company, or its predecessors in business have continuously for about thirty-five years prior to the filing of the opposition used the word "Asbestos" to designate engine and machinery packing made and sold by it; that the applicant, the H. W. JohnsManville Company, or its predecessors in business have used and had exclusive use of the word " Asbestos " written or printed as shown in the attached exhibits; that said word as written or printed has been used by applicant or its predecessors in connection with the shipment and sale of asbestos engine and machinery packing from the years 1868 to 1876 and later.

The form shown in the exhibits is the fanciful form of letters above described.

Applicant contended before the Examiner of Interferences that he was entitled to register the mark shown in his drawings both as a technical trade-mark and under the ten-year clause. On this appeal, however, he insists merely that he has had exclusive use of the particular mark shown in his drawings for more than ten years prior to the passage of the Trade-Mark Act of 1905, and therefore was entitled to register the same under the "ten-year " proviso of that act. He contends, further, that the opposer had no standing in this case, since

as a

it did not appear that he had ever used the word "Asbestos " trade-mark, but merely as a descriptive term applied to engine and machinery packing.

In the decision by the court of appeals in The Natural Food Company v. Williams (post, 320; 133 O. G., 232; 30 App. D. C., 348) the Court said;

The evidence above briefly reviewed, we think, clearly establishes the fact that appellant was not the exclusive user of these words during the ten-years period. No claim is made of any atttempt on the part of Williams to deceive the public, or that the product of his machines is not in fact as much entitled to be called shredded whole wheat as is the product of appellant's machines. That he did not use the words as a trade-mark, but merely in a descriptive sense is of no moment

and in the case of Kentucky Distilleries & Warehouse Company v. Old Lexington Club Distilling Company (post, 417; 135 O. G., 220; 31 App. D. C., 223) the Court also stated:

Where two marks are so nearly identical as to tend to confuse and mislead the public, neither is entitled to registration, even under the ten-year clause of the act of 1905.

Applying the principles announced in these two decisions to the present case, it is clear that the holding of the Examiner was right. Applicant's mark, it is true, consists of the word "Asbestos " the letters of which are written in a certain fanciful form and combined with the letters of the word "Trade-mark;" but this mark is not so different from the mere word "Asbestos" that there would not be a likelihood of confusion between the mark and the word used by the opposer, especially as applicant's goods would necessarily be known as "asbestos packing." Furthermore, under the decision of The Natural Food Company v. Williams, supra, the fact that the opposer did not use this word as a trade-mark, but used it merely as a descriptive term to designate his product, is of no moment, and he was clearly entitled to file the opposition.

The decision of the Examiner of Interferences is affirmed.

EX PARTE LOVERIDGE.

Decided January 16, 1907.

137 O. G., 978.

PATENTABILITY—SUBSTITUTION OF MATERIAL.

The substitution of a rubber-covered roller for a metal-covered roller in a machine for winding wire or thread onto a spool Held to involve merely the substitution of one well-known material for another.