Ohmer to show that he not only conceived the invention prior to January, 1903, but that he used reasonable diligence in reducing his invention to practice. We have found that Wilfred I. Ohmer, before Neth and Tamplin came on the scene in October, 1902, had a broad conception of the invention that culminated in the "Practical Machine." As we have observed, prior to October, 1902, Wilfred I. Ohmer had been formulating, in rude sketches, plans for making this improvement, which plans and sketches were in his possession and produced at the time he held his first conversation with Neth in October, 1902. The record discloses that, following this conversation, all except possibly one of the working plans and drawings, material to the construction of the "February, 1903, Practical Machine," were completed before January, 1903.

It is contended by counsel for appellant that, since the Wilfred I. Ohmer "Practical Machine" was not completed until February, 1903, there is no evidence that before the alleged reduction of the invention to practice by John F. Ohmer, in January, 1903, the machine of Wilfred I. Ohmer either contained all the elements of the issues, or that all the elements of the issues were conceived or worked out before that time. It is true that Wilfred I. Ohmer testified that he and his workmen worked on the machine until February 23, 1903. We think it clearly appears, however, not only from the evidence of Wilfred I. Ohmer, but of other witnesses, that all the elements embodied in the "Practical Machine" were conceived and planned before the date of the alleged reduction of the invention to practice by John F. Ohmer.

Certainly, it cannot, in the light of the evidence, be successfully contended that Wilfred I. Ohmer did not use reasonable diligence in reducing his invention to practice, when it is considered that the "Practical Machine," a complicated and difficult piece of mechanism, was constructed in four months.

John F. Ohmer testified that he had a conception of the invention as early as February, 1901, but as no disclosure was made until January, 1903, we think the evidence, being uncorroborated and of a self-serving nature, is not entitled to sufficient credit to defeat the rights of Wilfred I. Ohmer. Conceding that John F. Ohmer conceived the invention in February, 1901, he has totally failed to show due diligence in reducing the invention to practice, hence this date of conception, if it were not clouded in doubt, could avail him nothing. The earliest possible date that can be accorded John F. Ohmer, under any fair consideration of the record, is January, 1903, and that is too late to establish his priority.

From an examination of the whole case, we are of the opinion that the evidence fully sustains the rulings of the three tribunals of the

Patent Office, and that priority should be awarded to Wilfred L Ohmer.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify the proceedings, as required by law. Affirmed.

[Court of Appeals of the District of Columbia.]

THE EDNA SMELTING & REFINING COMPANY V. NATHAN MANUFACTURING CO.

Decided March 3, 1908.

135 O. G., 664; 30 App. D. C., 487.

1. TRADE-MARKS-REGISTRABILITY-NAME OF PATENTED ARTICLE.

Applicant adopted as a trade-mark for injectors the word "Monitor." These injectors were of the type shown in the Gresham patent, which had expired prior to that time, and also embodied the features of the Wohlers patent, which was of limited scope. Later other styles of injectors were made and designated by various names, of which "Monitor" was a part. None of these injectors embodied the features of the Wohlers patent. Held that these facts do not bring the case within the ruling of Singer Mfg. Co. v. June, (C. D., 1896, 687; 75 O. G., 1703; 163 U. S., 169,) and applicant is entitled to register the mark.

2. SAME-SAME-SAME.

Where a trade-mark had been applied to an article prior to the adoption of features covered by a patent, the expiration of the patent does not terminate the exclusive right to the use of the mark. (Bechelder v. Thomsen, 93 F. R., 660.)

Mr. W. F. Murray for the appellant.

Mr. Marcellus Bailey for the appellee.

ROBB, J.:

This is an appeal from the decision of the Commissioner of Patents, in a trade-mark case, dismissing the opposition filed by The Edna Smelting & Refining Company, and holding that the Nathan Manufacturing Company is entitled to register the word "Monitor" as a trade-mark for steam-boiler injectors and feeders.

The grounds for the opposition are that the word "Monitor" for over twenty-one years has been applied to steam-boiler injectors which embody inventions set forth in three patents, Nos. 234,157 and 234,158, dated November 9, 1880, and No. 276,319, dated April 24, 1883, granted to Emil Wohlers, and a patent, No. 289,329, dated May 6, 1884, granted to Wotapek, all of which have expired; and that the word has become descriptive of a patented article and not susceptible of exclusive appropriation as a trade-mark.

The facts briefly stated are these: Since 1881 the Nathan Manufacturing Company and its predecessor have been engaged in the manufacture, among other things, of injectors for locomotive and stationary engines. The injector first constructed by the Nathan Company was of the type embodied in the broad invention of Gresham as described in Patent No. 57,057 granted August 7, 1867, and which expired in 1879. This early type of injector also embodied the Wohlers patent, which is very narrow in scope, being limited to the particular manner of joining the auxiliary jet to the body of the injector. The Wohlers patent, therefore, is not fundamental, involving, as it does, a mere structural change in the Gresham construction. The Nathan Company designated its original output of injectors by the word "Monitor." From time to time thereafter it constructed six other styles of injectors, none of which embody the Wohlers patent, and which it designated "Monitor 88," " Monitor P. R. R. Standard," "Monitor 88, P. R. R. Standard," " Monitor '97," "Monitor No. 5C," and "Monitor No. 8D." The Examiner of Interferences dismissed the opposition of appellant in a carefully-prepared opinion. The Commissioner sustained his decision, saying:

In the present case no patented improvements are found which are common to all the forms of injectors of the Nathan Manufacturing Company to which the word "Monitor" was applied. It is therefore clear that this term was not used by the Nathan Manufacturing Company as descriptive of any particular type of injector. *** In my opinion the testimony clearly warrants the conclusion that the word "Monitor" was not used by the Nathan Manufacturing Company in such manner that it became descriptive either of a particular injector or of a type of injector. Its use was, on the contrary, merely such as would indicate the origin of the various injectors made by the Nathan Manufacturing Company and was therefore a proper trade-mark use.

The Wotapek patent may be laid out of view since the word " Monitor" was used by the Nathan Company as a trade-mark prior to its adoption of the features covered by the claims of that patent. (Bechelder v. Thomsen, 93 Fed. Rep., 660.)

The Nathan Company, the record discloses, has built up a large business, and the word "Monitor" has become synonymous with the firm-name, hence to deny the firm the exclusive benefit of its trade reputation, it should plainly appear that a measurable monopoly under an expired patent would be continued to the injury of the public. We have carefully examined the record, and concur in the views of the Commissioner. The predecessor of the Nathan Company, we are convinced, used the word " Monitor" as a trade-name to designate the origin of its output and without reference to the very narrow patent to Wohlers, which both tribunals of the Patent Office have found in no way dominated the first style of injector manufactured. The case of Singer Mfg. Co. v. June, (C. D., 1896, 687; 75 O. G., 1703; 69025-H. Doc. 1349, 60-2- -29

163 U. S., 169,) cited by appellant, is not in point. In that case all the Singer sewing-machines embodied certain fundamental patents controlled by the company and caused them to be embraced under the generic term of "Singer." During the life of the patents none of the machines as a whole were open to public competition. In this case the Gresham patent had expired before the Nathan Company manufactured its first injector, and the Commissioner found that— some of the forms of the Nathan Company's "Monitor" injectors are not shown to contain patented inventions and none of the patents cover features common to all the forms.

Appellant introduced three technical works, by Kirkman, Roper, and Swingle, respectively, in support of its contention that the "Monitor" injector signified to the trade a patented article. Kirkman refers to the injector as the "Nathan Monitor Injector." Roper refers to the "Monitor Injector " as a " modification of Friedman's injector" and as containing "a few novel features." Swingle describes two of the seven different types of "Monitor" injectors manufactured by the Nathan Company. Not one of these authors mentions the Wohlers patent in describing this locomotive-injector, which, as we have seen, embodies that patent, and the subject-matter of the Wohlers patent is found in only one of the three illustrations accompanying the three descriptive articles.

Having in mind the narrowness of the Wohlers patent, that it was embodied in only one of the many injectors manufactured by appellee, and that there was a difference in the type and construction of those injectors, we conclude with the Commissioner that the word "Monitor" indicates origin and is not descriptive of any particular type of injector.

The decision of the Commissioner of Patents, therefore, is affirmed. The clerk of the court will certify this opinion and the proceedings in this court to the Commissioner of Patents, according to law. Affirmed.

[Court of Appeals of the District of Columbia.]

ONDERDONK v. PARKES.

Decided April 7, 1908.

135 O. G., 665; 31 App. D. C., 214.

APPEAL TO COURT-UNANIMOUS DECISIONS OF PATENT OFFICE TRIBUNALS. To justify the court of appeals in reversing the unanimous decisions of the Patent Office tribunals error therein must be made clearly to appear.

Mr. C. L. Sturtevant and Mr. James C. Fraley for the appellant. Mr. Wm. R. Baird for the appellee.

SHEPARD, C. J.:

This is an appeal from the decision of the Commissioner of Patents in an interference proceeding, having the following issue:

1. In a sewing-machine a series of stitch-forming devices for depositing upon the fabric to be sewed a plurality of rows of overseam-stitches, said stitchforming devices including a plurality of needles arranged one directly behind the other in the line of the direction of feed, and complemental stitch-forming devices, whereby a plurality of intersecting stitches in the same path may be deposited upon the fabric.

2. In a sewing-machine, a series of stitch-forming devices for depositing upon the fabric to be sewed a plurality of rows of overseam-stitches, said stitch-forming devices including a plurality of laterally-vibrating needles arranged one directly behind the other in the line of the direction of feed, and complemental stitch-forming devices, whereby a plurality of intersecting stitches in the same path may be deposited upon the fabric.

3. In a sewing-machine a series of stitch-forming devices for depositing upon the fabric to be sewed a plurality of rows of overseam-stitches, said stitchforming devices including a plurality of laterally-vibrating needles arranged one directly behind the other in the line of the direction of feed, whereby a plurality of intersecting stitches in the same path may be deposited upon the fabric, and a single under-thread-carrying looper with means for operating it to cause it to coöperate with said needles.

4. A sewing-machine having a plurality of needles, arranged one behind the other in the line of feed, means for laterally vibrating said needles; and an under-thread-carrying looper coöperating with said needles, and means for vibrating said looper in unison with the lateral movements of the needles.

The invention of the issue is thus stated by the Examiners-in-Chief: The invention relates to an overseaming-machine of the button-hole type. It is intended to make zigzag stitches and includes two needles in line lengthwise of the feed and coöperating looper and stitch-forming mechanism. The needles vibrate laterally to make the zigzag stitch. As stated in counts 3 and 4 the device includes a single under-thread-carrying looper coöperating with the needles and in this form it is necessary that the looper move in the direction of the feed and vibrate laterally in unison with the needles as stated in count 4. This arrangement of needles, one directly behind the other, permits a longer stitch for each needle and greater speed.

Parkes's application was filed January 6, 1899, and that of Onderdonk May 13, 1899. Parkes's preliminary statement alleges conception between February 1 and May 1, 1897, disclosure May 1, 1897, and reduction to practice September or October, 1900. Onderdonk's dates, as alleged, are conception, drawings and disclosures November 15, 1898, with no reduction to practice. Parkes is an inventor of many improvements in sewing-machines and is now president of a company engaged in manufacture. Onderdonk is skilled in the sewing-machine art and is employed by the Union Special Sewing Machine Company as an inventor and experimenter. His application is assigned to that company.

Negotiations had been begun between Parkes and the said Company early in 1898 looking to the adaptation by Parkes of his button