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March 3, 1903, cannot be construed to operate retroactively, and, therefore, does not apply to applications pending at the date of its passage. (De Ferranti v. Lindmark, ante, 353; 134 O. G., 515.)

The only question, however, involved in this interference proceeding being one of priority of invention, it is unnecessary to determine what right either of the parties ultimately may have to a patent under their pending applications. The decision of the Commissioner of Patents, so far as this proceeding is concerned, must be affirmed. The clerk is directed to certify these proceedings, as required by law. Affirmed.

[Court of Appeals of the District of Columbia.]

BATTLE CREEK SANITARIUM COMPANY, LIMITED, v. FULLER.

Decided February 18, 1908.

134 O. G., 1299; 30 App. D. C., 411.

1. TRADE-MARKS-OPPOSITION-LEAVE TO AMEND.

A demurrer to a notice of opposition having been sustained by the Examiner of Interferences on the ground that the opponent did not allege that it had used the mark on goods of substantially the same descriptive properties as applicant's, the appropriate time to ask leave to amend was when the demurrer was sustained, and when the case came before the Commissioner on appeal it was discretionary with him to allow or to refuse the leave to amend.

2. SAME-SAME-" HEALTH FOOD" DESCRIPTIVE.

The words "Health Food" as applied to bread, crackers, etc., are clearly descriptive of the goods with which they are used and cannot be appropriated and registered as a technical trade-mark.

3. SAME-SAME-NECESSARY ALLEGATIONS.

It is not sufficient for an opponent to say that he believes he would be damaged by the registration of applicant's mark. He must allege some fact showing an interest in the subject-matter from which damage might be inferred.

4. SAME-SAME-SAME.

A party who has not used a mark as a trade-mark upon goods of a like description to applicant's can suffer no damage from its registration by the latter, (McIlhenny's Son v. New Iberia Extract of Tabasco Pepper Co., ante, 325; 133 O. G., 995,) and a notice of opposition which alleges merely that the opponent used the mark in its advertising-matter is demurrable.

Mr. F. L. Chappell and Mr. Otis A. Earl for the appellant.
Mr. Fritz v. Briesen for the appellee.

SHEPARD, J.:

Frank Fuller, on December 2, 1905, filed an application for the registration of a trade-mark consisting of the words "Health Food," alleging that the same had been used by him continuously since the year 1874 as a trade-mark applied to bread, crackers, wafers, sticks,

puffs, biscuits and buns made of wheat-flour, and also of mixed wheat and oat flour, etc. It has been displayed on the packages containing the goods.

This trade-mark was allowed as entitled to registration under what is called the "ten-years clause" or proviso of section 5 of the TradeMark Act of February 20, 1905, and publication was ordered and made as required by section 6 of said act. On December 16, 1906, the Battle Creek Sanitarium Company Limited, of Battle Creek, Michigan, filed its opposition to the registration of the said trademark. The grounds of this opposition are substantially as follows:

1. The Battle Creek Sanitarium Company, Limited, is engaged in the manufacture, and sale of food products, among others of bread, crackers, wafers, sticks, and the like. 2. It is closely associated with the Sanitas Nut Food Company, Limited, which is largely engaged in the manufacture and sale of foods, opponent being the selling company for the foods manufactured by the Sanitas Company aforesaid. 3. That said companies use in their "advertising matter the words 'Health Food' or words of similar import, and have made use of the same for a period of about twenty-eight years last past." 4. That it is believed that the registration of the term "Health Food" will interfere with rights of the opposer, and its associates in business. 5. That the words "Health Food" do not constitute a valid trade-mark, because descriptive. 6. That the United States Circuit Court of Appeals for the Second Circuit in Fuller v. Huff (C. D., 1900, 351; 92 O. G., 1620; 104 Fed. Rep., 141, 145) has held that the term "Health Food" cannot be a technical trade-mark because descriptive.

This opposition was demurred to by Fuller, on the following grounds:

1. The opposition does not state facts sufficient to constitute a cause of action. 2. The opposition does not show in what manner the opponent would be injured by the registration of the mark. 3. That paragraphs five and six of the opposition if true would not bar the applicant's right to register. 4. That the opposition is defective because the Sanitas Nut Food Company is not a party. 5. The opposition is bad in that the opponent does not show that it or the Sanitas Food Co. has used the words "Health Food" or a colorable imitation of the same on merchandise of substantially the same descriptive properties as those set forth in the application, or on labels, signs, prints, packages, wrappers or receptacles intended to be used upon or in connection with the sale of merchandise of substantially the same descriptive properties as those set forth in the registration.

The Examiner of Interferences overruled grounds 1, 2, and 4 of the demurrer, but sustained grounds 3 and 5. Without asking leave. to amend the allegations of the opposition to which the said objections applied, the opponent appealed to the Commissioner. The Commissioner affirmed the decision and denied the opponent leave to amend the opposition in order that it might allege the use of the trade-mark

by it upon its merchandise. (C. D., 1907, 180; 128 O. G., 2837.) This objection was called to the attention of the opponent by the fifth ground of demurrer, and the appropriate time to ask leave to amend was when the Examiner of Interferences sustained that ground of the demurrer. When the case came before the Commissioner on appeal it was discretionary with him to allow or to refuse the leave to amend. Under the conditions stated there was no abuse of that discretion, and we need not pause to consider whether such an amendment, setting up a new ground of opposition, would be equivalent to a new opposition, and therefore not permissible because the period within which opposition can be made had elapsed.

It is true, as contended by the appellant, that the words "Health Food" cannot be appropriated and registered as a technical trademark, because they are clearly descriptive of the goods with which they are used. (Trade-Mark Act, sec. 5.) The right to register is claimed under the "ten-years" proviso of the same section, which reads as follows:

And provided further: That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom the title is derived, in commerce with foreign nations, or among the several States, or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act.

In construing this proviso, in a recent case, it was said by Mr. Justice McComas:

The last proviso of section 5, as amended and passed, was not intended to provide for the registration of technical trade-marks, for such marks had been cared for elsewhere in this act. This proviso permitted the registration of marks, not in either of the classes prohibited by this section, if such marks were in actual and exclusive use as a trade-mark for ten years next preceding the passage of the act. In respect of technical trade-marks, this proviso was absolutely useless. It was intended to save the right of registration to the marks described in the proviso.

The section had prohibited the registration of immoral or scandalous matter and public insignia as trade-marks, no matter how long the same had been before registered, and the proviso only extended the right of registration to marks not within either of the prohibited classes, if such marks had been in actual and exclusive use as a trade-mark during the ten years next preceding the passage of the act. (In re Cahn, Belt & Co., C. D., 1906, 627; 122 O. G., 354; 27 App. D. C., 173, 177; see, also, Natural Food Co. v. Williams, ante, 320; 133 O. G., 232.)

When an application for registration is made under the said proviso, it is the duty of the Commissioner to determine whether the applicant has brought his claim within its terms. He represents the general public interest in such matters as he does in the case of applications for patents. If satisfied of the truth of the representations, as

he was in the matter of Fuller's application, it was his duty to order publication. Within thirty days after this publication—

any person who believes he would be damaged by the registration of a mark may oppose the same by filing notice of the same, stating the grounds thereof

(Sec. 6.)

It is not sufficient for the opponent to say that he believes he would be damaged. He must allege some fact showing an interest in the subject-matter from which damage might be inferred. If he has not used the mark as a trade-mark upon goods of a like description he can suffer no damage from its registration by another. (McIlhenny's Son v. New Iberia Extract of Tabasco Pepper Co., ante, 320; 133 O. G., 995.)

There is no such allegation in this opposition. The allegation is that the opponent "uses in its advertising matter the words 'Health Food' or words of similar purport," and has so used them for about twenty-eight years. No trade-mark right grows out of the mere invention or discovery of the word or symbol, but out of its use as such. (Trade-Mark Cases, C. D., 1879, 619; 16 O. G., 999; 100 U. S., 82, 94.) To constitute a trade-mark use, the mark must be attached or applied to the goods. (Columbia Mill Co. v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150 U. S., 460, 464.) Property in it can only be acquired by the actual application of it to goods of a certain class, so that it serves to indicate the origin of the goods, that is to say, identify them with the particular manufacturer or trader, and to distinguish them from similar goods. (U. S. v. Braun, 39 Fed. Rep., 775; 28 Encyc. L., p. 346.) The mere advertisement of the words or symbol without application to the goods themselves is insufficient to constitute a trade-mark. As this is all that was claimed in the opposition, the Commissioner was right in sustaining the demurrer to it on that ground. As this is sufficient to dispose of the case, it may be remarked of the paragraph setting up the decision of the circuit court of appeals in Fuller v. Huff (C. D., 1900, 351; 92 O. G., 1620; 104 Fed. Rep., 141) that the decree of that court is not pleaded as decisive of the question involved here; nor could it avail the opposition if it had been so pleaded. Fuller sued Huff, who represented the Battle Creek Sanitarium Company, apparently, not for the infringement of a trade-mark, but for unfair competition in trade, and obtained a decree against him. In discussing the case, the Court said that the words would not constitute a technical trade-mark because descriptive; and in this it was undoubtedly correct. But the question of trade-mark was not involved, and Fuller, as we have seen, is not asking for registration, on that ground, but under the "ten-years clause" or proviso.

69025-H. Doc. 1349, 60-2- -25

The decision appealed from will be affirmed, and this decision certified to the Commissioner of Patents as required by law. It is so ordered. Affirmed.

[Court of Appeals of the District of Columbia.]

IN RE SPITTELER AND KRISCHE.

Decided April 20, 1908.

134 O. G., 1301; 31 App. D. C., 271.

1. APPLICATION-SUBJECT-MATTER DISCLOSED IN PRIOR PATENT-NOT CONTINUA

TION.

An application filed within one year after the grant of a patent disclosing the subject-matter of such application is not a continuation of the application on which such patent was granted and is not entitled to the benefit of the date of such prior application. Although the claims of the second application were made in the prior application, on which the patent was granted, and could have been divided out therefrom, and the date of the prior application could have been thus secured, when the patent was granted the application was merged in the patent, the proceeding was closed, and there was nothing to be continued.

2. SAME

DOCTRINE OF CONTINUING APPLICATIONS NOT TO BE EXTENDED.

The rule which permits a divisional application to relate back to the filing date of the original, which also discloses its subject-matter, as long as it remains open in the Patent Office is a very liberal one that sometimes works hardship upon intermediate inventors, and it ought not to be extended to cases not clearly within it.

Mr. J. L. Norris, Jr., for the appellant.

Mr. Webster S. Ruckman for the Commissioner of Patents.

SHEPARD, J.:

This is an appeal from the decision of the Commissioner of Patents denying an application for a patent, having the following claims:

1. The herein-described composition of matter consisting of insoluble casein and formaldehyde.

2. As a new manufacture a material consisting of insoluble non-absorbent casein and characterized by hardness and tenacity.

3. Solid, non-absorbent casein.

4. Solid casein, capable of resisting the action of water.

5. Solid casein, characterized by toughness and elasticity.

6. Solid, non-absorbent casein, characterized by toughness and elasticity.

7. Solid, non-absorbent casein of substantially uniform density, characterized by toughness and elasticity.

8. As a new manufacture, plates, boards or blocks of solid casein, characterized by toughness and to some extent by flexibility and resilience.

9. As a new manufacture, waterproof or non-absorbent plates, boards or blocks of solid casein, characterized by toughness and to some extent by flexi bility and resilience.

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