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HOWELL, JR., v. HESS.

Decided December 11, 1907.

132 O. G., 1074; 30 App. D. C., 194.

INTERFERENCE-REDUCTION TO PRACTICE BY AGENT.

An inventor conceived an invention and embodied it in a model which was submitted to the company that controlled the sale of the machine for which the improvement was designed, but the company refused to purchase the invention and returned the model to the inventor. An officer of such company disclosed it to the foreman of the factory of a subsidiary corporation, who set about adapting it to the machine made by them for the parent company, and a completed machine was built embodying such invention. Held that such reduction to practice does not inure to the inventor, as such companies were not acting as the inventor's agents, and the fact that they subsequently purchased and procured an assignment of the invention does not affect the question. (Hunter v. Stikeman, C. D., 1898, 564; 85 O. G., 610; 13 App. D. C., 214, 226; Robinson v. McCormick, C. D., 1908, 574; 128 O. G., 3289; 29 App. D. C., 98, 111; Shuman v. Beall, C. D., 1906, 710; 123 O. G., 1664; 27 App., D. C., 324, 328, distinguished.)

Mr. F. C. Somes and Mr. Harold Binney for the appellant.

Mr. W. W. Dodge, Mr. L. B. Wight, Mr. Edward C. Davidson, and Mr. D. A. Carpenter for the appellee.

SHEPARD, C. J.:

This is an appeal in an interference proceeding involving priority of invention of a dust shield or guard, the purpose of which is to protect the pivots of the type-bars of a type-writer from dirt and grit proceeding from erasures from the platen of a front-strike typewriter falling upon the segment upon which the type-bars are pivoted.

The issue is defined as follows:

1. In a type-writing machine, the combination of a type-bar formed with a recess therein, and a dust-shield for the bearing of said type-bar, said shield being adapted to be received within the recess in said type-bar.

2. In a front-strike type-writing machine, the combination of a type-bar segment, a series of segmentally-arranged type-bars pivoted to said segment and each provided with a recess therein, and a segmental strip that covers the pivot-bearings of said bars and is adapted to extend into the recess in each type-bar and constitutes a dust-guard to prevent the admission of dust or grit to said pivot-bearings.

3. In a type-writing machine, the combination of a pivoted type-bar, and a dust-shield to prevent the admission of dust to the pivot-bearing of the typebar, said type-bar being formed to receive the dust-shield when the bar is in the printing position so as to enable the shield to cover the pivot-bearing and not interfere with the printing movement of the bar.

4. In a type-writing machine, the combination of a pivoted type-bar having a notch or reecss, and a dust-shield which lies within said recess when the type-bar is in its printing position,

5. In a writing-machine, the combination of the platen, the type-bar segment, type-bars pivoted therein and notched or bent to form a recess in their front edges adjacent the pivots and a shield or guard located above the pivots, the front edge of which enters said recesses or notches as the type-bars approach the printing-point.

6. In a type-writing machine, the combination of a pivoted type-bar formed with a recess therein, and a dust-shield for the bearing of said type-bar located in close proximity to and partially inclosing said bearing, said shield being adapted to be received within the recess in said type-bar.

The application of Howell was filed December 26, 1901. Hess's application filed June 30, 1903, is a division of an earlier one filed August 28, 1901. The burden of overcoming this earlier date was cast upon Howell. The tribunals of the Patent Office concurred in awarding priority to Hess, and the case is here on final appeal from the Commissioner. (C. D., 1906, 217; 122 O. G., 2393.)

Hess claimed conception, disclosure, making of drawings and model in September, 1900. Without finally deciding whether this date was sufficiently proved, the Patent Office tribunals found it sufficient, in their view of the merits of the case, to give Hess the date of his application, of August 28, 1901. They also agreed in giving a date of conception to Howell as claimed by him in the spring of 1900. The award against him was based on his want of diligence in perfecting his invention before and at the time that Hess entered the field.

It is now contended, apparently for the first time as the decisions below contain no mention of it, that the model made by Howell in the spring of 1900 was such a complete device as of itself to amount to a reduction to practice. It is sufficient to say that in our opinion it was not one of those simple devices, complete in itself, the mere production of which readily demonstrated its practical utility. It was, as called in the preliminary statement, a model representing a device intended to be used as a part of a complicated machine, and the practical usefulness of which depended upon a test in that machine. (Hammond v. Basch, C. D., 1905, 615; 115 O. G., 804; 24 App. D. C., 469, 474.)

According to the testimony of Howell this first structure which included a lever mechanism for the type-bars as well as the dustshield, was submitted to the Underwood Typewriter Co. immediately after its construction in the spring of 1900. Nothing was done in regard to purchasing or using the invention, and Howell inquired about it during the summer. It was during the time shown by an officer of the Underwood Company to the mechanic of the Wagner Company-a subordinate corporation of the Underwood Companywho did not approve the key mechanism. Nothing more was done until late in December, 1900, when Howell was sent for by the president of the Underwood Company, who told him his patent solicitors

had reported it unpatentable. Howell said that he had called on the solicitors and he agreed with them that the key-lever mechanism would infringe Felbel's patent. He said also that the solicitor was of opinion that there was not enough in the dust-guard to apply for a patent on alone. Underwood offered Howell some compensation for his work, which Howell refused. Howell then took the model home, and negotiations ended, until about the last of November, 1901, when Underwood called and obtained from Howell an agreement to assign the invention to the Wagner Company. It appears from the testimony of the representative of the Wagner Company that the dust-guard feature was disclosed to the factory foreman-the model having been shown by an agent of the Underwood Company-who set about adapting it to an Underwood type-writer, and completed it, and other parts of a new model machine, about March, 1901. The construction of this new machine was proceeded with and completed about November 1, 1901.

While Howell was doing practically nothing towards perfecting his machine, reducing it to actual practice, or taking steps to secure a patent, Hess entered the field, and three months before Howell assigned to the Wagner Company, filed his application for a patent. Undoubtedly the tribunals of the Patent Office were right in holding that so far as the acts of Howell were concerned, there was a failure of due diligence.

Assuming that what the Wagner Company did between April and November, 1900, amounted to a reduction of the invention to practice, it is earnestly contended that this was for, and inured to the benefit of Howell.

We cannot agree with this contention. Taking the most liberal view of the evidence, the case falls within the principle declared in Hunter v. Stikeman, (C. D., 1898, 564; 85 O. G., 610; 13 App. D. C., 214, 226,) where it was said by Chief Justice Alvey:

It is a well-settled principle in the patent law that while that law accords the right to a patent to a later applicant who connects by due diligence a prior conception, the reduction to practice must be by the applicant himself of by his authorized agent, and not by some other third party. It is not enough to entitle an applicant to a patent that some one else has shown the practicability of the invention by reducing it to practice. The work of such third party will not be taken as sufficient to relieve the applicant of the consequences of his own want of diligence.

We think it clear that whatever the motive of the Underwood or Wagner Company in undertaking to utilize the invention in one of their machines, after declining to purchase, and returning the model to the inventor, they were not acting as his agents. That they subsequently purchased and procured an assignment of the invention does not affect the operation of the rule. (Robinson v. McCormick, C. D., 1907, 574; 128 O. G., 3289; 29 App. D. C., 98, 111.) The facts are

essentially different from those in the case relied on by the appellant. (Shuman v. Beall, C. D., 1906, 710; 123 O. G., 1664; 27 App. D. C., 324, 328.)

In that case the inventor was in the employ of the corporation which reduced the invention to practice, had promised its officer's a large interest in it, and had been led to believe that everything was done in the joint interest; and the evidence showed a deliberate effort to defraud him by colluding with another who obtained his knowledge from the true inventor.

The decision must be affirmed. The clerk will certify this decision to the Commissioner of Patents. Affirmed.

[Court of Appeals of the District of Columbia.]

IN RE CRESCENT TYPEWRITER SUPPLY CO.

Decided February 4, 1908.

133 O. G., 231; 30 App. D. C., 324.

1. TRADE-MARKS-REGISTRATION OF GEOGRAPHICAL MARKS PROHIBITED.

Section 5 of the Trade-Mark Act of 1905 is broad enough to prohibit the registration of any word that has an exclusive geographical significance or that would suggest any particular geographical location.

2. SAME-" ORIENT "-GEOGRAPHICAL.

The word "Orient" is generally understood to refer to certain Eastern countries, and, as applied to ink-ribbons and carbon-paper, Held to be geographical and not registrable.

3. SAME THE WORD "ORIENT" INCLOSED IN WREATH-GEOGRAPHICAL.

A mark for ink-ribbons and carbon-paper consisting of the word “Orient” inclosed in a wreath, the letters E and I of the word being printed as a monogram, Held not registrable under section 5 of the Trade-Mark Act of 1905, as the word "Orient" is geographical.

Mr. H. A. Dodge for the appellant.

Mr. F. A. Tennant for the Commissioner.

VAN ORSDEL, J.:

This is an appeal from the decision of the Commissioner of Patents (C. D., 1907, 149; 128 O. G., 1295) refusing to register as a trade-mark for ink-ribbons and carbon-paper, a device consisting of a wreath, inclosing the following combination of letters:—“ ORENT.” Underneath said combination, and within the wreath, is printed the word "Brand." The application was refused by the Commissioner for the reason that the word attempted to be used in the design is the word "Orient," a geographical name, and that it is the predominating feature of the proposed trade-mark. It is contended by appellant that the mark is a device consisting of a wreath and letters arranged therein in an arbitrary manner, in other words, that it takes

the whole design, wreath and letters, to compose the proposed trademark. It is also denied "that the word 'Orient,' as applied to typewriter ribbons, is geographical.”

It appears from the record that the appellant, in his original application for the registration of the proposed trade-mark, inserted the following specification:—

The trade-mark consists of the word "Orient," inclosed in a wreath, the letters E and I of the word "Orient" being printed as a monogram.

Subsequently, when it was suggested in the Patent Office that the word "Orient" was a geographical term and under the statute precluded from use for the purpose of registration, appellant withdrew the above specification, and now contends that the word used in the design is not the word "Orient," but a mere arbitrary combination of letters. The fact that the appellant, in his original application, interpreted the word used in his proposed trade-mark as the word "Orient" presents such a presumption of his intention as cannot well be removed by a mere withdrawal of that particular specification. Especially is this true where the design is left unchanged and remains the same after the withdrawal, or amendment of the specification, as before. We are of the opinion that the only reasonable interpretation of the combination of letters used is that they spell the word "Orient" and at once convey the use of that word to the mind. The Commissioner refused to register the appellant's mark "for the reason that the word 'Orient,' the distinguishing feature of applicant's mark, is geographical." Section 5, of the Trade-Mark Act of 1905, provides in part 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 the 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 noted that this section of the Trade-Mark Act does not permit the use of "a geographical name or term." We think this provision of the statute is broad enough to prohibit the use of any word that has an exclusive geographical significance, or that would suggest any particular geographical location. Certainly, the use of a name indicating a particular place is prohibited, such as the name of a city, or country, or subdivision of a country. With equal certainty do we think that it prohibits the use of a name that applies to a particular section of the globe, as, in this instance, to a section composed of a number of countries. The word "Orient " is generally understood to refer to certain Eastern countries, specifically the region east and southeast of the leading States of Europe, including, among others, Turkey, Persia, Egypt and India. The word has a fixed and definite use in our vocabulary.

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