analysis of the evidence, appearing in his published decision, we adopt for the purposes of this opinion. It is contended by Rose and Clifford that, even though it be conceded that Newell reduced the invention to practice by the construction and successful operation of Exhibits 1, 2 and 3, prior to his removal from Wingate street, his failure to make application for a patent until July 22, 1902, amounted to an abandonment. No evidence was offered by either Rose or Clifford to establish either concealment or abandonment on the part of Newell. A large number of exhibits were offered by Newell which showed that he was engaged constantly, from the summer of 1899, up to and after the date of his application, in experimenting on and improving his original invention. As he states, he was attempting, prior to the manufacture of Exhibit No. 4, in 1903, which contained a glass water-receptacle, to find some kind of metal that would withstand the effect of different kinds of water. In the experiments, he states that he used distilled water, city water, and spring water. He testified that he loaned to the Essex street engine-house in Haverhill, a cooler of the style of Exhibit No. 1, which, from reference to his books, appears to have occurred on July 1, 1901. He testified that it was used thereafter at the engine-house up to the date of taking his evidence in this case It will be observed that this cooler was loaned to the engine-house before either Rose or Clifford allege conception of the invention in question. Taking, therefore, any date between the fall of 1899, or the early part of 1900, when Newell testifies that he first successfully operated Exhibits 1, 2 and 3, and July 1, 1901, when he loaned a cooler to the engine-house, as a date for the reduction of the invention to practice, we think neither concealment nor abandonment can be charged against Newell. He was constantly and publicly operating the coolers, both at his Wingate and Washington street places. It is well settled that, after reduction to practice of an invention, a mere delay of the inventor in applying for a patent, in the absence of concealment, abandonment, or suppression, will not prevent the inventor from getting a patent based upon priority of invention. In Rolfe v. Hoffman, (C. D., 1906, 588; 121 O. G., 1350; 26 App. D. C., 336,) this Court, speaking through Mr. Justice Duell, said: That Rolfe was the first to conceive and disclose the invention to others is established beyond a doubt. His case really turns upon the weight that is to be given to his three exhibits Nos. 1, 2, and 3. These exhibits, one and all, contain the elements of each count of the issue excepting the spring or springs which support the heat-cartridge. That these exhibits were made by Rolfe in December, 1901, and by him shown to Wiesinger and Schwarze about that time is sufficiently proved and is not successfully questioned. If they constituted a reduction to practice then Rolfe is entitled to an award of priority for he will then have proven priority of conception, disclosure, and reduction to practice, and, in the absence of any clearly-proven abandonment his right to a patent has not become forfeited either to the public or to his rival. It is true that two years elapsed between his alleged reduction to practice and the filing of his application for patent, during which interval his rival entered the field and secured a patent. Such a period of delay, standing by itself, does not constitute an abandonment of his right to a patent based on priority of invention. An inventor having reduced his invention to practice is entitled to a period of two years in which to put the same in public use and on sale without a forfeiture of his right to receive a patent based upon an application filed before the statutory bar has arisen. Neither abandonment nor forfeiture within that period can be presumed but must be proven. True, the acts of an inventor may be such as to amount to an abandonment or forfeiture within that period but such acts must be proven. The facts in this case were closely analogous to those in the case at bar, except that no patent had been issued to either Rose or Clifford. Here Newell exposed his invention to the public, as shown not only by his own testimony, but by the two witnesses who testified on his behalf before the Examiner of Interferences. We think, therefore, that there is not only a failure to prove abandonment, suppression or concealment, but it is clearly established that, during the statutory period of two years prior to the date of conception alleged by either Rose or Clifford, Newell's invention was given to the public and put into commercial use by being placed in the Essex street enginehouse. It is unnecessary for us to consider the respective claims of Rose and Clifford, since this opinion relates to facts occurring before either of them claims to have had any conception of the invention in question. We are clearly of the opinion that Newell not only conceived the invention in question, but reduced it to practice before the dates of conception alleged by either Rose or Clifford. The priority of Newell has been established, and the decisions of the Commissioner of Patents are affirmed. The clerk is ordered to certify these proceedings, as by statute required. Affirmed. [Court of Appeals of the District of Columbia.] LEVY & Co. v. URI, (N M. URI & Co. SUBSTITUTED.) 135 O. G., 1363; 31 App. D. C., 441. 1. TRADE-MARKS-FALSE REPRESENTATION ON LABELS-MARKS NOT REGISTRABLE. The use of the words Pure Old Rye Whiskey in connection with a trade-mark on labels placed on bottles containing whisky which is part rye and part bourbon and contains neutral spirits and coloring-matter is such false representation as will disentitle the user of the mark to register the same. It was the purpose of the Trade-Mark Act to protect manufacturers and dealers, because in so doing the public would in turn be protected. It was not the purpose of the act to recognize the right of any person, firm, or corporation to deceive the public by the use of a deceptive mark. Mr. A. P. Greeley and Mr. Francis B. James for the appellant. Mr. A. E. Wallace for the appellee. ROBB, J.: This is a trade-mark interference case involving the word "Brookwood" as a trade-mark for whisky. It is established that appellee's predecessor was the first to adopt and use the mark, and that the mark has been continuously used since its original adoption. It is contended, however, that owing to material misrepresentations printed on the labels containing this mark, appellee is not entitled to its registration. A label containing the words: was placed on bottled goods by appellee, and a label containing the words: "BROOKWOOD Distilled Selected Grain was furnished dealers to whom sales in bulk were made for use in bottling "Brookwood" whisky. The evidence shows that these labels were extensively used from about 1893, soon after the adoption of the word "Brookwood" as a trade-mark, down to the time when the so-called pure food law went into operation, when the words "A Blended" were added. It clearly appears that the whisky sold as "Pure Old Brookwood Rye Whiskey" and "Brookwood Pure Old Rye Whiskey" contained a certain proportion of Pennsylvania rye whisky, a certain proportion of Kentucky rye whisky, three different brands of Kentucky bourbon, a certain proportion of neutral spirits, some prune-juice, bead-oil, and caramel. It also clearly appears that 99 the statement "Distilled from Selected Grain was made without regard to its accuracy. It is established by a long line of authorities that in an equitable proceeding to restrain the fraudulent use of a trade-mark, the one seeking such relief must himself be guiltless of any false representations in the mark and in advertising the article covered by the mark, and that, if he has made such false representations, the right to the exclusive use of the mark cannot be maintained. In Worden v. Calif. Fig Syrup Co., (187 U. S., 528,) Mr. Justice Shiras, speaking for the Court, said: When the owner of a trade-mark applies for an injunction to restrain the defendant from injuring his property by making false representations to the public it is essential that the plaintiff should not in his trade-mark, or in his advertisements and business, be himself guilty of any false or misleading representation; that if the plaintiff makes any material false statement in connection with the property which he seeks to protect, he loses his right to claim the assistance of a court of equity; that where any symbol or label claimed as a trade-mark is so constructed or worded as to claim or contain a distinct assertion which is false, no property can be claimed on it, or, in other words, the right to the exclusive use of it cannot be maintained. To the same effect are: Manhattan Med. Co. v. Wood, (C. D., 1883, 268; 23 O. G., 1925; 108 U. S., 218;) Holzapfel v. Rachtjen, (C. D., 1901, 500; 97 O. G., 958; 183 U. S., 1;) Ginter v. Kinney, (C. D., 1882, 385; 22 O. G., 770; 12 Fed., 782;) Krauss v. Peebles, (59 Fed., 585;) Hilson v. Foote, (80 Fed., 896;) Uri v. Hirsch, (123 Fed., 568;) Memphis Keeley Institute v. Keeley, (155 Fed., 964;) Prince Mfg. Co. v. Prince M. Paint Co., (135 N. Y., 24;) Joseph v. Macowsky, (96 Calif., 518;) Palmer v. Harris, (60 Pa. St., 156;) Laird v. Wilder, (72 Ky. (Bush), 131;) Solace Cigar Co. v. Poso, (16 Colo., 388;) Estcort v. Estcort, (Law Rep., 10 Ch. App., 276.) Under the rule announced in these cases it is clear that appellee would not be entitled to invoke the assistance of a court of equity in attempting to maintain the exclusive use of this trade-mark. In other words, a court of equity in the circumstances of the case would recognize no property right in the mark. For many years the public has been led to believe that the whisky sold under this mark was a pure old rye whisky when in truth and in fact it was very far from being such a whisky. It may be, as contended by counsel for appellee, that a similar mixture, containing more than fifty per cent. of real rye whisky, is rye whisky for the purpose of internal-revenue assessment; but the acceptance of such a mixture as pure old rye whisky or pure rye whisky would impose altogether too great a tax upon our credulity. The Century Dictionary tells us that a thing is pure when it is— free from extraneous matter; separate from matter of another kind; free from mixture; unmixed. It is well known that a pure rye whisky is exactly what the term imports a whisky made solely from malted rye. Such a whisky has all the congeneric properties of the grain from which it derives its name, and in the mind of the consumer is associated with that particular grain and no other. When we speak of Scotch whisky we do not mean whisky made from corn but from malted barley. So, too, it is well understood that Bourbon whisky is a Kentucky product made principally out of corn with sufficient rye and barley malt added to distinguish it from straight corn whisky. Each kind of whisky mentioned has its own peculiar flavor and character and is sought after as a beverage because of that flavor and character. Neutral spirits, on the contrary, as the term suggests, is a colorless liquid, has neither flavor nor character, and is not a beverage at all. It may be produced from any fermented substance, such as corn, potatoes, and sugar-beets. Formerly it was used exclusively in the arts, but with the advent of cheaper methods of production it has been palmed off on the public as a beverage by mixing it with something to give it flavor and character. Since it costs far less to produce than rye whisky it is apparent that its use by the distiller increases his profits in proportion as the public is deceived. Appellee admits the use of neutral spirits in the mixture sold as "Pure Old Rye Whiskey," but does not state the proportion used. In view of this admission, however, it is safe to assume that a substantial proportion was used. We do not think a mixture of spirits and rye whisky a pure rye whisky, and we do not believe the public would so regard it. As before stated, neutral spirits is not a beverage, has none of the distinguishing characteristics of rye whisky, and is, therefore," matter of another kind." We think it very clear that to advertise and sell a mixture containing rye and Bourbon whiskies and neutral spirits, whether containing flavoring and coloring matter or not, as a pure rye whisky is grossly to deceive the public. It follows that sitting as a court of equity we would not recognize any property right in this mark. The question for determination, therefore, is whether the Patent Office should recognize a property right in the mark and accord it registration when the courts upon the same facts would decline to protect the mark when registered. The act, under which registration is sought, requires a verified declaration by the applicant that to the best of his belief no one else has the right to use the mark. The act also provides that the registration of the mark shall be prima facie evidence of ownership. It further provides that no action shall be maintained under the provisions of the act in any case when the trade-mark * has been used with a design of de ceiving the public in the purchase of merchandise. |