the applicant will be permitted to amend his specification after such dissolution to incorporate the matter submitted or any other amendment is an ex parte question, which must be determined independently of any interference proceeding. The right of appeal from an adverse decision upon such amendment is likewise ex parte in its nature, and it is necessary that the question as to the patentability of claims based upon the specification, whether original or amended, be finally determined before the case is placed in interference. The decision of the Examiner of Interferences refusing to transmit this amendment is right. The motion to amend under Rule 109 contains a proviso that such claims shall be added without prejudice to Wheeler's right to contest such claims under the provisions of Rule 123 (122). This condition, as stated by the Examiner of Interferences, is in contravention of Rule 109, which provides that motions for dissolution will not be transmitted in regard to claims presented under this rule where the questions could have been disposed of in connection with the admission of the claims. Under the provisions of this rule it is contemplated that the question of each party's right to make the claims should be determined in connection with the motion to add such claims. The decision of the Examiner of Interferences is affirmed. The applicant, Woodbury, having given opposer the exclusive right to use certain trade-names and a trade-mark which had been associated for many years with applicant's name, Held that he is not entitled to register a mark of which the name Woodbury" constitutes a prominent feature for goods of the same descriptive properties. APPEAL from the Examiner of Interferences. TRADE-MARKS FOR DETERGENTS, (TOILET soap.) Mr. Roswell S. Nichols and Messrs. Knight Bros. for The Andrew Jergens Co. Mr. C. T. Belt for Woodbury. MOORE, Commissioner: This is an appeal by John H. Woodbury from a decision of the Examiner of Interferences sustaining the opposition and adjudging that John H. Woodbury is not entitled to register the mark for which he has made application. It appears that Woodbury made application for the registration of a trade-mark for toilet soap, which consists of the name "Woodbury" arranged in a circular shape between two concentric circles, which inclose the representation of a serpent and arrows. The opposition is based on the ground that by virtue of certain contracts between the parties to these proceedings John H. Woodbury had given to the opposer the right to use the name "Woodbury" on certain toilet soap; that therefore John H. Woodbury had no right to use this name in connection with toilet soap, and that the opposer would be injured by the registration by Woodbury of a mark for of which the name constituted a part. toilet soap The record shows that on June 7, 1897, Andrew Jergens & Co., the predecessors in business of the opposer, entered into a contract with the applicant, who had for many years been engaged in selling a toilet soap known as "Woodbury's Facial Soap," whereby Andrew Jergens & Co. was to manufacture this soap for the applicant. On June 29, 1900, another contract was entered into between the same parties with reference to this soap, and on June 13, 1901, Andrew Jergens & Co. purchased from the applicant and those associated in business with him the business of manufacturing certain named commodities, of which "Facial Soap" was one. The contract of June 29, 1900, contains the following statement: Whereas John H. Woodbury is the owner of the proprietary toilet articles known as Woodbury's Facial Soap, Woodbury's Facial Cream, Woodbury's Dental Cream, Woodbury's Tooth Powder and Woodbury's Odorine Powder, and as sole and exclusive owner of the aforesaid articles having made them valuable by long advertising thereby acquiring a considerable patronage and demand for the same and an identification of the same in the minds and eyes of the public. When the contract of June 13, 1901, was entered into, the applicant sold to Andrew Jergens & Co. and its assigns all right, title and interest in and to the commodities known as Facial Soap, Facial Cream, Dental Cream, Tooth Powder, Shaving Sticks and Shaving Soap and all trade-marks, copyrights and privileges of every name and nature whatsoever appurtenant to the ownership thereof. The statement quoted above from the former contract shows that the applicant considered that these goods were known as "Woodbury's goods," and the testimony shows that they are so considered by the public and that the "Facial Soap" was often ordered from the opposer and its predecessor as "Woodbury's Soap." Furthermore, it is clearly shown by the testimony that in advertising this soap the name "Woodbury" was made a prominent feature of the advertising, and that this was done with John H. Woodbury's knowledge and consent. In view of these facts it must be held that when Andrew Jergens & Co. acquired from John H. Woodbury all right, title, and interest in the commodity known as "Facial Soap" and all privileges of any name and nature whatsoever appurtenant thereto it acquired the right to use the name "Woodbury" therewith. The contract of June 13, 1901, also gave Andrew Jergens & Co. the right to use the "necklesshead" trade-mark on "Facial Soap." This trade-mark was the head of John H. Woodbury and was so known and recognized. The mark which applicant seeks to register includes as a prominent feature thereof the word "Woodbury," and the merchandise in connection with which the mark is used-viz., toilet soap-is merchandise of the same descriptive properties as the "Facial Soap" of the opposer. The mark which applicant seeks to register, therefore, so nearly resembles a "known trade-mark owned and in use by another and appropriated to merchandise of the same descriptive properties" that its registration is prohibited by section 5 of the act of February 20, 1903. The name "Woodbury" is the name of the applicant, and, generally speaking, a man has the right to use his own name in all legitimate ways; but, as pointed out by Mr. Chief Justice Fuller in Howe Scales Co. v. Wyckoff, Seamans & Benedict, (C. D., 1905, 717; 116, O. G., 299; 198 U. S., 118,) he has this right only "in the absence of contract, fraud, or estoppel." The facts above stated bring this case clearly within that limitation. The decision of the Examiner of Interferences is affirmed. PRICE v. BLACKMORE. PATENT INTERFERENCE. Decided March 2, 1908. 133 O. G., 514. INTERFERENCE-MOTION TO DISSOLVE-DELAY IN Bringing. The pendency of a motion to shift the burden of proof is no excuse for the delay in bringing a motion to dissolve. APPEAL ON MOTION. ELECTRODE. Messrs. Byrnes & Townsend for Price. Mr. J. R. Nottingham for Blackmore. MOORE, Commissioner: This is an appeal by Blackmore from the decision of the Examiner of Interferences refusing to transmit to the Primary Examiner a motion to dissolve the above-entitled interference. The reason for the appeal is stated to be— that the Examiner of Interferences erred in holding that the showing made for the delay in bringing a motion within the time prescribed by the rule was not satisfactory. The record shows that the time for filing a preliminary statement expired on November 4, 1907. On October 24, 1907, Blackmore filed a motion to shift the burden of proof, which motion was granted by the Examiner of Interferences on November 27, 1907. On December 26, 1907, Blackmore filed a motion to dissolve, which was denied transmission on the ground that it was brought late and that no showing in excuse for the delay accompanied the motion. On January 17, 1908, Blackmore filed a second motion to dissolve, accompanied by the affidavits of himself and his attorney, setting forth certain reasons in excuse for the delay. The reasons, stated briefly, are that the attorney for certain reasons thought it proper that the motion to shift the burden of proof should be decided before the motion to dissolve was brought, that he thought he had thirty days from the date of the decision on the motion to shift the burden of proof within which to bring the motion to dissolve, and that owing to the fact that the applicant was away from his place of business the attorney was unable to communicate with him until within a few days of the bringing of the motion. These reasons are clearly insufficient to excuse the delay. In the first place, the pendency of one motion is no excuse for the delay in bringing another, as was stated in McArthur v. Gilbert, (C. D. 1904, 314; 111 O. G., 1624,) where the motions were the same as in the present case-namely, a motion to shift the burden of proof and a motion to dissolve. Furthermore, it does not appear why it was necessary to have a conference between the applicant and the attorney prior to filing the motion. In both the affidavits it is stated that as soon as access to Price's file was had the attorney was instructed to bring both motions, but that he postponed bringing the motion to dissolve for the reason above stated. The decision of the Examiner of Interferences is affirmed. DEGEN V. PFADT. PATENT INTERFERENCE. Decided February 11, 1908. 133 O. G., 514. INTERFERENCE-MOTION TO DISSOLVE-RES ADJUDICATA. A decision refusing to dissolve an interference on the ground of res adjudicata is a favorable decision on the merits and will not be reviewed on appeal. (Rule 124.) APPEAL ON MOTION. CENTRIFUGAL PUMP. Messers. Prindle & Williamson for Degen. BILLINGS, Assistant Commissioner: This is an appeal by Pfadt from a decision of the Primary Examiner denying his motion to dissolve the above-entitled interference. The ground of the motion is that the question of priority is res adjudicata. The motion relates to Degen's right to make the claims constituting the issue. If the motion were sustained upon that ground, it would be necessary to reject Degen's claims, and therefore it is clear that the ground involves the merits. The Examiner's decision being in favor of Degan's right to make the claims, there is no appeal permitted by the rule. (Rule 124.) A limit of appeal should not have been set from the Examiner's decision. In the case of Blackford v. Wilder a similar motion was made, and an appeal from the decision of the Examiner denying the motion was dismissed. (See Blackford v. Wilder, C. D., 1906, 304; 124 O. G., 319.) The question can, however, be raised under the provisions of Rule 130 at final hearing before the Examiner of Interferences and on appeals from his decision. The appeal is dismissed. O'BRIEN v. GALE v. ZIMMER v. CALDERWOOD. PATENT INTERFERENCE. Decided February 11, 1908. 133 O. G., 514. 1. INTERFERENCE-SETTING ASIDE RECORD JUDGMENT APPEAL. No appeal will be entertained from a decision of the Examiner of Interferences setting aside a record judgment and fixing a time for final hearing. 2. SAME-RULE 130. The fact that on appeal from a decision on a motion to dissolve the Examiners-in-Chief have held that a party has a right to make the claims does not prevent the question being raised before the Examiner of Interferences at final hearing under Rule 130. APPEAL ON MOTION. CURRENT-CONTROLLING APPARATUS. Mr. Robert Watson for O'Brien. Mesrs. Brown & Darby and Mr. C. M. Nissen for Gale. |