vention involved in the issue has not been assigned and that he does not know who is paying the expenses of the proceedings. When asked if any agreement with respect to the invention had been made, he stated that he had tried to come to an agreement with the chief mechanical engineer of the American Foundry Company, with whom he took the matter up about May or June, 1907. The original statement was not executed until August 27, 1907, about three months thereafter. This testimony tends to indicate that the parties who are now interested in this case were interested at that time, and hence the plea of poverty is not borne out by the evidence upon which reliance is placed. It is to be noted also that after the discovery by appellant of the facts on which the motion is based a delay of practically a month occurred before the motion was brought. It is generally necessary to proceed with the utmost diligence when it is desired to amend a preliminary statement, and no reason is seen for relaxing the rule in this case, for had the motion been brought promptly it might have been determined before the taking of appellee's rebuttal testimony. The failure to move promptly furnishes an additional reason for denying the motion. The motion was not accompanied by the usual verified showing, reliance being placed entirely upon the testimony taken in the case to justify the admission of the amendment. The Examiner of Interferences stated in his decision that the motion was indefinite, because the opposing party was not notified of the grounds on which the motion was based; but he waived this objection and considered the motion on its merits in the absence of any authority which required the moving party in such case to point out the particular portions of the testimony he intended to rely upon. It is believed that the Examiner's objection was well taken, and he would have been justified in refusing consideration to the motion in its present form. The point is also made by appellant that inasmuch as the original statement alleged June 15, 1905, as the date of conception appelleehas not been taken at any disadvantage in the matter of presenting his testimony, for the reason that he had warning from the start that Rohlfing (appellant) intended to prove conception on June 15, 1905, the date of disclosure which he now desires to insert in his preliminary statement. It is further said that disclosure to others is not a part of the inventive act, but only evidence of conception. As to the latter point, all that need be said is, whether disclosure is a question of evidence or not, the rule requires a specific statement on this point, and it is believed that parties should be held as strictly to their original statements upon this matter as upon any other. As to the 89025-H. Doc. 1349, 60-2-7 first point, it may be that appellee took his testimony on the theory that conception could not well be shown prior to any disclosure. In such case a change in the date of such disclosure might very materially affect the attitude with respect to the character of the proofs to be adduced. The decision of the Examiner of Interferences is affirmed. GOLD V. GOLD. PATENT INTERFERENCE. Decided February 25, 1908. 133 O. G., 993. INTERFERENCE-TESTIMONY-SURREBUTTAL. The junior party took testimony as to priority, but did not attack the operativeness of the senior party's device. The senior party took the testimony of two witnesses to show that the device shown in Figure 3 of his application was operative, and certain exhibits were introduced, which one of the witnesses testified were tested by him. In rebuttal the junior party offered expert testimony to show certain structural differences between the exhibits and the invention disclosed in the senior party's application. Held that such testimony afforded no ground for allowing the senior party to take surrebuttal testimony. APPEAL ON MOTION. HOSE-COUPLING. Messrs. Arthur C. Fraser & Co. for Edward E. Gold. BILLINGS, Assistant Commissioner: This is an appeal by E. H. Gold, the senior party, from the decision of the Examiner of Interferences denying the motion for leave to take surrebuttal testimony. It appears from the record of the case that during the ex parte prosecution of E. H. Gold's application claims corresponding to the counts in issue were rejected upon the ground that the drawings did not show an arrangement which would operatively effect the functions of the claims. Upon appeal to the Examiners-in-Chief, however, this holding of the Examiner was overruled and the claims were allowed. After the declaration of the interference E. E. Gold, the junior party, moved to dissolve the interference upon the ground, inter alia, that E. H. Gold had no right to make the claims. This ground of the motion was predicated upon the questions which had been considered by the Examiners-in-Chief on ex parte appeal and was denied by the Examiner in view of their decision. It appears that the prima facie testimony taken on the part of E. E. Gold, the junior party, related to the question of priority only and did not attack the operativeness of the senior party's disclosures or his right to make the claims in issue. The senior party, however, apparently anticipating that an attack on the operativeness of his device might be made at the final hearing, took the testimony of two witnesses, Jennings and Roth, for the purpose of showing that the device disclosed in Fig. 3 of his application and involved in this interference was operative. Certain exhibits were introduced, and Jennings testifies that the exhibit devices were successfully tested by him. He also made a sketch in evidence for the purpose of showing the conditions under which the tests were made. In rebuttal E. E. Gold offered the expert testimony of one Freeman, purporting to show certain structural differences between the exhibits introduced in Jennings's testimony and the invention disclosed in E. H. Gold's application; also, that these exhibit devices were tested under conditions which did not ordinarily obtain in practice. Certain mathematical deductions were also introduced to show that the practical operativeness of the device was impossible. It was contended in behalf of E. H. Gold that Freeman's testimony is in the nature of new matter in avoidance but not in denial of the testimony of Jennings and Roth and that opportunity should be given to him to present evidence controverting the statement of this witness. This contention is not well founded. By his introduction of testimony relative to the operativeness of the device E. H. Gold, in effect, challenged the production of testimony to the contrary upon the part of his adversary. The testimony of Freeman, it is believed, is strictly rebuttal testimony, and there is no showing of reasons why this testimony is in the nature of a surprise or that it is new evidence. Inasmuch as E. H. Gold recognized that the operativeness of his device would be likely to be attacked and offered testimony to show that his device was operative, it would seem that reasonable prudence should have induced him to present all the testimony necessary to establish the successful operativeness of the device at that time. Exhibits were presented in support of this position, and it was the duty of E. H. Gold to anticipate and guard against all ordinary attacks upon the same. No reason therefore appears for granting him leave to take surrebuttal testimony in this case. The decision of the Examiner of Interferences is affirmed. G. W. COLE Co. v. MARSHALL OIL Co. OPPOSITION. Decided February 29, 1908. 133 O. G., 994. 1. TRADE-MARKS OPPOSITION RESEMBLANCE OF MARKS. Applicant's mark consists of the representation of two hands above the figure “5” and the words "To One" associated therewith. The mark of the opposer consists of the numeral "1" with the numeral "3" and the word "In" contained within the numeral “1” and the words "Three in One" associated therewith. Held that these marks do not so resemble each other that purchasers would be likely to be deceived thereby. 2. SAME-SAME-ACTUAL CONFUSION. Where the marks of the opposer and the applicant do not so nearly resemble each other that it is apparent that confusion in trade would be likely to arise from their use, registration of applicant's mark will not be refused in the absence of proof that confusion has taken place. APPEAL from Examiner of Interferences. TRADE-MARK FOR GUN-OIL. Messrs. Steuart & Steuart for G. W. Cole Company. BILLINGS, Assistant Commissioner: This is an appeal by the G. W. Cole Company from a decision of the Examiner of Interferences dismissing its opposition to the registration by the Marshall Oil Company of a trade-mark for oil consisting of the representation of two hands above a figure "5" and the words "To One" associated therewith. The opposition is based on the ground that this mark so nearly resembles a mark owned and used by the opposer and applied to the same class of goods that the use of the two marks would cause confusion in trade and deceive purchasers. The mark used by the opposer, as appears from the testimony and from certain certificates of registration, consists of the numeral “1” having the numeral "3" and the word "In" contained within the numeral "1" and the words "Three in One" associated therewith. The testimony shows that the G. W. Cole Company, the opposer, has used its mark since 1894 and that the Marshall Oil Company, the applicant, has used its mark since 1904. The only question to be considered, therefore, is whether there is such a resemblance between the marks that purchasers are likely to be deceived, since if there is, registration must be refused in view of the opposer's prior use. The Examiner of Interferences held that the marks did not so resemble each other in appearance, sound, or significance and pointed out that there was no testimony that actual confusion had taken place. It is evident from an inspection of the marks that they do not so nearly resemble each other in appearance that confusion would be likely to arise from their use. It is argued by the opposer that he is entitled to use his mark in the form of the numeral "3" with the "In" and the numeral "1" placed in the lower curve of the “3," in which case the resemblance between the marks would be quite close. In both of the certificates of registration of the opposer, however, it is stated that the numeral "3" is placed within the numeral "1," and there is no proof that it was ever used in any other manner. There is a greater similarity in the sound of the spoken words "Three in One" and "Five to One" than there is in the appearance of the marks; but even here it is not believed that the similarity is such as to justify a refusal to register the applicant's mark in the absence of proof of actual confusion in trade. It is well settled that in cases where the marks are so alike that it is evident confusion is likely to arise it is not necessary for the opposer to prove actual confusion in order to prevent the applicant's registration. This, however, is not such a case. As pointed out above, there is a decided difference in the appearance of the marks, and while the difference between the sounds of the spoken words is less it is nevertheless a substantial one. If confusion had arisen, it would apparently not have been very difficult to establish that fact. The record shows that the opposer's attention was called to applicant's use of the mark very soon after such use commenced; but the president of the G. W. Cole Company, the opposer, admits that he did not know of a single instance in which the oil of the Marshall Oil Company had been substituted for that of the opposer. Furthermore, it appears from the record that on February 28, 1905, the attorneys for the G. W. Cole Company notified the Marshall Oil Company that the mark was considered to be an infringement of the "Three in One" mark and threatened to bring suit if such infringing use was not discontinued. It appears from the testimony on behalf of the Marshall Oil Company that no such suit was ever brought. The decision of the Examiner of Interferences dismissing the opposition and holding that applicant is entitled to register its mark is affirmed. |