be modified or set aside, the reëxamination necessarily becomes a mere formal proceeding and no useful result can accrue therefrom. It is not sufficient merely to request a reconsideration so that the application may, as stated by the applicant, be in condition for appeal. If this were the only object of a reëxamination, the provision for the same in the statutes would be useless. Furthermore, as stated in ex parte McKnight, (C. D., 1901, 238; 97 O. G., 2742:) In order that this reëxamination may be made intelligently by the Examiner, it is necessary that he should understand fully and clearly applicant's position, just as it is necessary for applicants in amending their claims to understand fully and clearly the Examiner's position. It is only when such a reciprocal understanding exists that applications can be prosecuted intelligently and without unnecessary delay. In the present case the Examiner in his second letter specifically requested the applicant to point out wherein the rejection was in his opinion erroneous, in order that the Examiner may be able to do justice to the applicant. No better illustration of the salutary provision of this rule can be found. The Examiner upon his part invited the applicant to state his views as to the bearing of the references and reasons for rejection upon the claims in order that he might be advised of the applicant's position and, if he considered such reasons to be well founded, allow the claims. If, on the other hand, he disagreed with such reasons, a clear and unmistakable issue would be defined which might be presented thereafter to the appellate tribunals of this Office and to the Court of Appeals of the District of Columbia. This, it is believed, is precisely in accordance with the intention of section 4903 of the Revised Statutes, which is specifically set forth in the terms of Rule 69. It may be said in conclusion that it is contrary to all principles of practice to permit an applicant to prosecute his case for the first time before the appellate tribunals. The Examiner is the person skilled in the particular art to which the invention appertains, and the appellate tribunals have a right to his opinion upon matters presented before them, rendered after due presentation of the case before the second and final rejection, should the Examiner feel justified in repeating his first action. Furthermore, a careful presentation of the case after the first rejection oftentimes obviates the necessity of appeal. These are the reasons which were undoubtedly in the mind of Congress when it provided for a second rejection by the Examiner before the application would be in a condition for consideration by the appellate tribunals. The action of the Examiner was undoubtedly right, and the peti tion is accordingly denied. THE WILLIAM LEA & SONS COMPANY v. H. C. COLE & COMPANY. Decided December 4, 1908. 137 O. G., 1713. 1. TRADE-MARKS-MOTION TO DISSOLVE IMPROPERLY FILED UNDER RULE 48. Rule 48 of the Trade-Mark Rules of Practice does not provide for the filing of motions, and a motion purporting to be filed thereunder submitting a motion to dissolve the interference and requesting its transmission to the Examiner of Trade-Marks may properly be dismissed. 2. SAME-MOTION TO DISSOLVE BASED ON TESTIMONY IMPROPER. The facts adduced during the taking of testimony in a trade-mark interference tending to show a misbranding under the Food and Drugs Act by the opposing party does not form a proper basis for a motion to dissolve. APPEAL ON MOTION. TRADE-MARK FOR WHEAT-FLOUR. Mr. T. W. Johnson for The William Lea & Sons Company. MOORE, Commissioner: This is an appeal by H. C. Cole & Company from the decision of the Examiner of Interferences refusing to transmit to the Primary Examiner a motion praying for the dissolution of the interference upon the ground that the specimens filed by The William Lea & Sons Company with its application and as "Exhibit A," with the testimony recently taken by them, constitute a misbranding under section 8 of the Food and Drugs Act of June 30, 1906. The motion purports to have been filed under the provisions of Rule 48 of the Trade-Mark Rules, which is analogous to Rule 126 of the Rules of Practice of the United States Patent Office. As a motion brought under this rule it has no standing, for the reasons stated in the case of Struble v. Young, (C. D., 1906, 97; 121 O. G., 340,) and the Examiner of Interferences might properly have dismissed the motion. He, however, construed the motion to be a motion for dissolution and denied transmission thereof, for the reason that no satisfactory showing was made why the motion was not presented within the period prescribed by Rule 49 of the Trade-Mark Rules. The decision of the Examiner of Interferences refusing to transmit the motion is clearly right. The specimens forming part of the application were accessible to counsel for H. C. Cole & Company at any time after the declaration of the interference, and the matter adduced during the taking of testimony of witnesses in behalf of The William Lea & Sons Company does not form proper basis for a motion for dissolution. On the other hand, it is evidence which should properly be considered upon the final hearing of the case. The decision of the Examiner of Interferences is affirmed. HERBST V. THE ROTHENBERG CO. Decided September 28, 1908. 1. TRADE-MARKS-ALTERNATIVES. 137 O. G., 1939. The words "Old Judge” and a so-called pictorial representation of an old judge are not alternatives, since the picture does not have any such characteristics as would cause the same to be designated by the name Old Judge" unless associated with the words “Old Judge." 2. SAME-OPPOSITION-PRIOR INTERFERENCE-RES ADJUDICATA. 66 A decision in an interference involving a trade-mark consisting of the words "Old Judge" does not render the question of registration of the picture of an old man res adjudicata, although the exhibits in the interference showed that the words "Old Judge" were used by one of the parties in connection with the picture. APPEAL from the Examiner of Interferences. TRADE-MARK FOR WHISKY. Messrs. Bacon & Milans for Herbst. Mr. Nicholas A. Acker for The Rothenberg Co. MOORE, Commissioner: This is an appeal from the decision of the Examiner of Interferences dismissing notice of opposition and adjudging that The Rothenberg Company is entitled to the registration of the mark for which it has made application. The mark as described in the original specification is said to consist of a conventional pictorial representation of a judge, the right arm being raised, and the hånd thereof holding a glass of liquor. It is alleged in the notice of opposition that the opposer and his predecessors in business— for many years past applied continuously the trade-mark "Old Judge" to whisky and claim the exclusive right to such trade-mark— and that in interference proceeding No. 24,870 the right of registration of the trade-mark "Old Judge " is being contested and determined but in that interference The Rothenberg Company being the above-named applicant have presented as exhibits in connection with their proofs certain labels which contain a representation of a figure illustrated in the drawing accompanying such application No. 15,559, and associated with such pictorial representation on their label are the 60025-H. Doc. 1349, 60-2--19 words "Old Judge" thereby designating that the said pictorial representation is intended and particularly designed to represent an elderly jurist or as the trade-mark implies an old judge. The record shows that a demurrer was filed against the notice of opposition, which was overruled by the Examiner of Interferences, and the applicant required to answer the notice of opposition. An answer was thereupon filed, in which it was admitted that the said The Rothenberg & Company was a party to interference proceeding No. 24,870 and that proofs were duly taken by the parties of this interference, but denies that in the decision rendered in connection with the interference the opposer was adjudged to be entitled to an award of priority as to the trade-mark "Old Judge " or that it was declared that the opposer was entitled to the exclusive right of the name " Old Judge." Section 8 of the answer reads as follows: 66 Eight. Admits that in the said mentioned interference No. 24,870, the defendant herein presented and exhibited in connection with its proofs certain labels, which labels contained the representation of the figure illustrated in the drawings accompanying the application No. 15,559 involved in the present proceedings; but denied that the trade-mark involved herein was in any manner embraced in the proceedings of the interference No. 24,870 entitled Solomon C. Herbst v. Records & Goldsborough v. The Rothenberg Co. The record of interference No. 24,870 shows that the right of registration was denied to all of the parties to that interference. After the filing of the answer motion for judgment was made by Herbst upon the ground that in view of the decision of the Commissioner of Patents in said interference and of the admissions in the answer, especially those above quoted, the question of the right of registration of the words “Old Judge " and the pictorial representation of the old judge was res adjudicata. This motion for judgment was denied by the Examiner of Interferences upon the ground that the issue of interference No. 24,870 was the words "Old Judge " as a trade-mark for whisky, whereas in the present case the question involved is the right of registration of the picture of an old man as a trade-mark for whisky. He stated in his decision that— the similarity of the labels accompanying the applications involved in interference No. 24,870 and those accompanying the present application does not prove that the Rothenberg Company has so used the two marks as to make them alternative. According to the Trade-Mark Act of 1905 these labels or specimens are submitted for the purpose of demonstrating in the ex parte application the manner of using the trade-mark. The operation and extent of such use which are extremely important in the determination of whether the public has been led to consider the two marks alternatives are not evidenced by the label. We have then no evidence to support the contention. There was therefore a different question decided in the interference than that to be decided in this opposition and this contention is analogous to the differences of the cause of motion in an equity suit. He therefore held the subject-matter of the opposition was not res adjudicata by reason of the decision in the interference and set times for taking testimony in the opposition proceeding. No testimony was adduced by either of the parties to this proceeding, and upon final hearing of the case the notice of opposition was dismissed. The same question is now presented as was considered by the Examiner of Interferences upon the motion for judgment, and it is again urged that the parties to this proceeding are the same as those involved in the former interference and that the subjectmatter involved in the former interference was the trade-mark "Old Judge," as admitted in the answer above quoted. It may be stated that the record of interference No. 24,870 shows that the issue was defined as "the words "Old Judge' for whisky." It cannot, therefore, be held that the issue of that interference was of sufficient scope to include the pictorial representation involved in this proceeding. Furthermore, no evidence has been offered by the opposer to establish the true alternativeness of the words "Old Judge " and the pictorial representation referred to, although opportunity was given for the presentation of such proof. In the decision cited by opposer in support of his contention the pictorial representations were such as would necessarily be known by the name which was considered an alternative. This condition does not obtain in the present case. The so-called picture of an old judge does not, in my opinion, have any such characteristics as would cause the same to be designated by the name of "Old Judge " if not associated with the words "Old Judge." In view of these facts I am of the opinion that the decision of the Examiner of Interferences dismissing the notice of opposition was clearly right, and it is affirmed. EX PARTE MAYNARD. Decided December 4, 1908. CLASSIFICATION-REQUEST For Transfer from One DIVISION TO ANOTHER, The filing of petitions requesting that an application be transferred from one division to another, which are in the nature of complaints, condemned. ON PETITION. EMBROIDERY-HOOP. Messrs. Betts, Sheffield, Bentley & Betts for the applicant. MOORE, Commissioner: This is a petition that the above-entitled application be transferred from the jurisdiction of the Examiner now in charge of the case to the jurisdiction of some other Examiner upon the ground that in |