It appears that petitioners' application was involved in an interference with an application of Gilman; that on April 3, 1906, the Examiner of Interferences awarded priority of invention in favor of Gilman, holding that the only witness called to support the testimony of the joint inventors, Wenzelmann and Overholt, failed to corroborate their testimony, and that their testimony alone was insufficient to prove the dates of conception and reduction to practice alleged in their preliminary statement. After the termination of said interference petitioners filed a protest against the issuance of a patent to Gilman, on the ground that the invention was in public use more than two years prior to the filing of Gilman's application. A public-use proceeding was thereupon instituted. Gilman took no testimony in said proceeding, and upon the evidence filed by Wenzelmann and Overholt the Primary Examiner, in a decision in the proceeding rendered August 19, 1907, held that a bar of two years' public use against Gilman's application was established and fixed a limit of appeal to expire September 9, 1907. Petitioners contend that the same evidence upon which the Primary Examiner found the existence of the publicuse bar against Gilman's application also establishes the fact that they are the prior inventors and fills out the proof that was lacking in the interference proceeding; also, that said use was less than two years prior to the filing of their application and does not, therefore, bar them from receiving a patent.

The matters at issue in an interference proceeding and a public-use proceeding are different, and it is for this reason that testimony taken on the question of priority in an interference is not used on the issue of public use without further proceedings, in which the party adversely affected is given an opportunity to cross-examine the witnesses with that issue framed and to produce witnesses to explain the evidence. (Ex parte Weber, C. D., 1902, 457; 101 O. G., 2570.) For the same reason testimony taken in the public-use proceeding cannot be held conclusive of the question of priority of invention and should not be used against Gilman without the institution of a second interference.

The Court of Appeals of the District of Columbia held in Blackford v. Wilder (C. D., 1907, 491; 127 O. G., 1255) and Horine v. Wende (C. D., 1907, 615; 129 O. G., 2858) that a second interference upon the same subject-matter should not be instituted between the same parties; also, that the subject-matter of the second interference is res adjudicata by reason of the first interference, notwithstanding the fact that this Office had in each of the above cases awarded priority upon the additional testimony taken in the second interference to the party defeated in the first interference. In the second case cited above Wende petitioned that in view of these facts I exercise my 69025-H. Doc. 1349, 60-2 -2

supervisory authority and reinstate the first interference. (Wende v. Horine, C. D., 1907, 266; 130 O. G., 1311.) The reasons for denying that petition are largely applicable in this case. This petition is even of less merit, for Wenzelmann and Overholt have not requested a reinstatement of the first interference, but that the decision in the interference be arbitrarily set aside.

The contention of Wenzelmann and Overholt that no additional consideration of the testimony taken in the public-use proceeding will be necessary in view of the decision of the Primary Examiner is not warranted, for while the Primary Examiner held that a device embodying the invention in question was constructed and successfully operated at a date more than two years prior to that claimed by Gilman he did not hold that it was the invention of Wenzelmann and Overholt. Petitioners have had their day in the Patent Office so far as proceedings relating to priority of invention are concerned, and if they have a remedy under section 4915 of the Revised Statutes, as they contend, it is an additional reason why the regular order of proceedings should not be disturbed.

It is further noted that the claims of Gilman have not as yet been rejected in his ex parte application, and since when rejected he undoubtedly has a right of appeal under section 4909, Revised Statutes, the question of the public-use bar cannot be said to be finally established, as contended by petitioners.

The petition is denied.

EX PARTE THE COBB MANUFACTURING COMPANY.

APPLICATION FOR REGISTRATION OF TRADE-MARK.

Decided November 7, 1907.

132 O. G., 233.

1. TRADE-MARKS-DESCRIPTIVE-NOT REGISTRABLE.

A word or phrase which is not descriptive of the ingredients or characteristics of an article of merchandise to which it is applied is not registrable if it is descriptive of the uses to which the same may be put.

2. SAME "SILVER DIP "-DESCRIPTIVE.

The words "Silver Dip" as a trade-mark for a preparation in which silver articles may be dipped or immersed for the purpose of cleaning them is descriptive, and hence not registrable.

ON APPEAL.

TRADE MARK FOR CLEANING COMPOUND FOR SILVER, ETC.

Messrs. Heidman & Street for the applicant.

BILLINGS, Assistant Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing to register the words "Silver Dip" as a trade

mark for cleaning compound. In the applicant's statement it is made to appear by amendment that the article to which the trade-mark is applied is "for cleaning and polishing metals, plate-glass, mirrors etc., in Class No. 8, Detergents." It appears however, on the label which has been filed with the application, that the merchandise is used for "cleaning and polishing silver and other fine metals." It is also stated that "it finishes the silver like new and delays retarnishing." The following extracts are also taken from the label:

The simplest Cleanest and Quickest means of Cleaning Silver known. Excellent for Plate Glass and Fine Mirrors.

The following directions also appear:

Dip the silver into the jar and stir slightly. Lay aside and wipe briskly with a soft dry cloth. Finish polishing with chamois skin.

Jar should be well shaken before opening. For large pieces put a little of well mixed solution in a saucer, apply with cloth.

As stated by the Examiner, one of the definitions in the Century Dictionary of the word "dip" is "Any liquid into which something is to be dipped." The Examiner says:

As an illustration of the use of the word "dip," the following quotation is given:

"The bronzing dip may be prepared by dissolving in 1 gal. hot water lb. each perchloride of iron and perchloride of copper. The metal should not be allowed to remain in this dip any longer than is necessary to produce the desired colour. (Workshop Receipts, 2d ser., p. 244.)"

The applicant states in his brief:

While it is true that the article-silver, gold or glass-may be dipped into the preparation, there is no suggestion in these words of the qualities, ingredients, or characteristics of the preparation to which it is applied.

The contention that a word or phrase is registrable as a trade-mark because it does not describe the ingredients or characteristics of the article of merchandise to which the word or phrase is applied is not well taken when that word or phrase is clearly descriptive of the uses to which the goods may be put. It is very clear that the words "Silver Dip" signify a preparation in which silver articles may be dipped or immersed for the purpose of cleaning the silver or giving those articles the appearance of silver. This being the fact, and this fact is not controverted by the appellant, it is very clear that any manufacturer who puts upon the market such a preparation has a right to designate it as "silver dip." The principle upon which a word or phrase used as a trade-mark may be refused registration on the ground that it is descriptive is based upon the fact that such word or phrase is open to the use of any one, and consequently is not such an arbitrary or fanciful mark as to make it capable of exclusive appropriation.

The decision of the Examiner of Trade-Marks is affirmed.

WHITTEMORE BROS. & Co. v. C. L. HAUTHAWAY & SONS, INCOR

PORATED.

CANCELATION.

Decided November 25, 1907.

132 O. G., 233.

1. TRADE-MARKS-CANCELATION-SHOWING THAT REGISTRANT WAS NOT THE

SOLE USER INSUFFICIENT.

Where a mark was registered under the "ten-years" clause of section 5 of the Trade-Mark Act of 1905, a showing that the registrant was not the sole user of the mark during the ten years next preceding the passage of that act is not sufficient to justify the cancelation of the mark.

2. SAME-SAME-" EXCLUSIVE USE."

The phrase "exclusive use" in the "ten-years" clause of section 5 of the act of 1905 does not mean "sole use," but the right to exclude others from using.

3. SAME-SAME-TESTIMONY IMPROPER REBUTTAL.

Testimony tending to show use of the mark in issue by parties other than the parties to the controversy Held to be improper rebuttal. 4. SAME-SAME-USE OF DESCRIPTIVE TERM.

Where the registrant has shown exclusive use of the word 'Hauthaway's" for ten years next preceding the passage of the act of 1905, Held that it is entitled to register the mark "Hauthaway's Lynn Burnishing Ink" even if the term "Lynn Burnishing Ink" has become the name of an article of commerce.

APPEAL from Examiner of Interferences.

TRADE-MARK FOR BURNISHING-INK.

Mr. Faust F. Crampton for Whittemore Bros. & Co.

Messrs. Macleod, Calver, Copeland & Dike for C. L. Hauthaway & Sons, Incorporated.

BILLINGS, Assistant Commissioner:

This is an appeal from the decision of the Examiner of Interferences dismissing the application of Whittemore Bros. & Co. for the cancelation of Trade-Mark No. 47,987, registered to C. L. Hauthaway & Sons, Inc.

The mark is shown and described as consisting of the words "Hauthaway's Lynn Burnishing Ink" and was registered under the "ten-year" proviso of section 5 of the Trade-Mark Act of February 20, 1905. Five grounds for cancelation are assigned. The first three are based on the alleged prior adoption and use by Whittemore Bros. & Co. of a mark identical with that registered by C. L. Hauthaway & Sons, Inc., or so nearly identical therewith as to be likely to deceive purchasers and cause confusion in trade. The fourth ground alleges that C. L. Hauthaway & Sons, Inc., has no title to the mark and also

alleges that the mark was not adopted by C. L. Hauthaway & Sons, Inc., until long after its adoption by Whittemore Bros. & Co. The fifth ground is that the use of the mark by C. L. Hauthaway & Sons, Inc., was not exclusive during the ten years next preceding the passage of the act, as it was used by Whittemore Bros. & Co. during that time and long prior thereto.

The Examiner of Interferences has carefully analyzed the testimony, and no useful purpose would be subserved by repeating that analysis here. This testimony clearly shows that the mark as registered has been continuously used by C. L. Hauthaway & Sons, Inc., and its predecessor in business, the firm of C. L. Hauthaway & Sons, since 1872. The testimony offered on behalf of Whittemore Brothers & Co. shows that they have used the words "Lynn Burnishing Ink" since about 1883. One witness, Radley, testifies that he entered the employ of Whittemore Brothers & Co. on November 7, 1872, and that he commenced to manufacture "Lynn Burnishing Ink" a few days later. He does not, however, testify as to any sales of the ink, and his testimony alone is not sufficient to establish a use of the mark as of that date. There is no testimony that Whittemore Brothers & Co. ever used the word "Hauthaway's" in connection with the words Lynn Burnishing Ink," and, in fact, no such use is claimed.

66

It has been pointed out in several decisions (Worcester Brewing Co. v. Reuter & Co., C. D., 1907, 151; 128 O. G., 1687; Beech Hill Distilling Co. v. Brown-Forman Co., C. D., 1907, 146; 128 O. G., 1293; ex parte Cahn, Belt & Co., C. D., 1905, 422; 118 O. G., 1936) that the term "exclusive use " as used in the ten-years clause of section 5 of the act of February 20, 1905, does not mean "sole use," but the right to exclude others from using, and that therefore the person who was the first to adopt and use a mark and whose use had been continuous since the adoption would be entitled to register the mark even though others were using it during the ten years.

It follows, therefore, that even if it be held that the marks used by the two parties are so nearly alike as to cause confusion in trade and deceive purchasers the right of C. L. Hauthaway & Sons, Inc., to register its mark would not be affected by the subsequent adoption of Whittemore Brothers & Co. of the mark used by them.

In rebuttal Whittemore Brothers & Co. introduced testimony to show that the term "Lynn Burnishing Ink" was used by others than the parties to this controversy. This testimony was objected to, and it is clearly inadmissible under the pleadings of the case; but even if it could be held admissible under ground 4 of the application for cancelation it is clearly improper rebuttal testimony.

Furthermore, if it be held that this testimony is admissible and that it establishes that the term "Lynn Burnishing Ink " is merely the name of an article of commerce and not capable of exclusive use by