improvements are ancillary to the plan and preconceived design of the employer, the improvements will belong to the employer, and not the employee.

The able opinion of the Assistant Commissioner is sufficiently convincing to enable us to adopt his statement of fact and conclusions of law as the correct disposition of this appeal.

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

[Court of Appeals of the District of Columbia.]

IN RE ONEIDA COMMUNITY, Limited.

Decided December 1, 1913.

198 O. G., 899; 41 App. D. C., 260.

1. TRADE-MARKS-CIRCULAR FILM ON THE BACK OF A SPOON-NOT REGISTRABLE, A "circular or O shaped film having distinct edges on the back of the spoon bowl" Held not registrable as a trade-mark for spoons, since it is substantially the same as the construction shown in an expired patent.

2. SAME-FUNCTIONAL FEATURE OF A DEVICE-NOT REGISTRABLE AS A TRADEMARK.

Regardless of the patent to Blackman, this alleged trade-mark should not be registered, for clearly no functional feature of a device is a proper subject for trade-mark registration. (Herz v. Lowenstein, C. D., 1913, 438; 192 O. G., 993; 40 App. D. C., 277.)”

(For Commissioner's decision see C. D., 1913, 115; 190 O. G., 1027.)

Mr. H. L. Duncan for the appellant.

Mr. R. F. Whitehead for the Commissioner of Patents.

ROBB, J.:

This appeal is from a decision of the Commissioner of Patents refusing to register, as a trade-mark for spoons, a

circular or O shaped film having distinct edges on the back of the spoon bowl. Obviously, as ruled by the Patent Office, this is an attempt, under the guise of trade-mark registration to obtain a monopoly of a functional feature of an article of manufacture. The patent to Blackman, No. 70,156, dated October 29, 1867, long since expired, covered a means to prevent the wearing off of the precious metal from the contact points of a spoon by placing thereon an extra film of precious metal. In other words, there is no substantial difference between the "extra film of precious metal" placed on the back of the spoon at the point of contact by Blackman and the "substantially circular

or O shaped film" on the back of appellant's spoon. A monopoly may not be revived in this way. (Edna Smelting Co., C. D., 1908, 436; 135 O. G., 664; 30 App. D. C., 487; Singer Mfg. Co. v. June Mfg. Co., C. D., 1896, 687; 75 O. G., 1703; 163 U. S., 169.) Regardless of the patent to Blackman, this alleged trade-mark should not be registered, for clearly no functional feature of a device is a proper subject for trade-mark registration. (Herz v. Lowenstein, C. D., 1913, 438; 192 O. G., 993; 40 App. D. C., 277.)

Decision affirmed.

Affirmed.

[Court of Appeals of the District of Columbia.]

THE QUAKER OATS COMPANY V. MOTHER'S MACARONI COMPANY.

Decided December 1, 1913.

198 O. G., 899; 41 App. D. C., 254.

66

TRADE-MARKS-" BREAKFAST CEREALS AND MACARONI, Spaghetti, and VERMICELLI "-NOT Goods of SAME DESCRIPTIVE PROPERTIES.

Macaroni, spaghetti, and vermicelli are not goods of the same descriptive properties as breakfast cereals.

Mr. F. M. Phelps for the appellant.

Mr. F. A. Whiteley for the appellee.

ROBB, J.:

Appeal from a decision of the Patent Office dismissing the opposition of appellant to the registration to appellee of the word "Mother's" as a trade-mark for macaroni, spaghetti, and vermicelli.

The opposer is an extensive manufacturer of breakfast cereals of various kinds, which it sells under a similar mark. In the decision of the First Assistant Commissioner of Patents, from which this appeal was taken, the facts and the law are so comprehensively and satisfactorily reviewed that we are quite content to adopt it here. may conduce to a better understanding of the case if we reproduce a few paragraphs of the opinion, as follows:

It

There is also in the brief [of opposer] extended discussion of methods of manufacture and chemical analysis of the goods of opposer and applicant, but it is evident that these have no bearing upon the question here involved, which is whether the ordinary purchaser would be deceived by seeing the word "Mother's" upon applicant's products into believing that they were the products of the opposer. The ordinary purchasers of breakfast foods and macaroni would not discriminate in the purchase of goods according to methods of manufacture or chemical formulæ.

It has been the uniform practice of this Office to regard cereal breakfast foods as constituting a distinct class of goods and there is nothing adduced by

this record which would justify any different holding. It may be that on some occasions by some people macaroni is eaten for breakfast, but this fact of itself would not constitute ground for holding macaroni to be goods of the same descriptive properties as toasted corn flakes any more than the well known fact that in certain parts of the United States pie is eaten for breakfast would constitute ground for making such a holding with reference to pie and oatmeal. The uses of cereal breakfast foods and macaroni, vermicelli, and spaghetti are well known and it is not believed that any confusion would result by the use of the applicant's mark upon the latter, due to the fact that opposer had used the same mark upon the former prior to the adoption and use of it by applicant. There is no testimony in this case that any manufacturer of breakfast foods has also manufactured macaroni, vermicelli, or spaghetti.

I know of no case and have been referred to none by the opposer in which a defendant has been restrained from the use of a mark where its goods are as far removed from those of the plaintiff as in the present case, nor of any case where, under such circumstances, an opposition has been sustained.

For reasons stated in the opinion of the Assistant Commissioner, we affirm the decision.

Affirmed.

[Court of Appeals of the District of Columbia.]

BARCLEY V. SCHULER.

Decided December 1, 1913.

199 O. G., 309; 41 App. D. C., 250.

1. INTERFERENCE-PRIORITY-RIGHT TO MAKE THE CLAIMS.

Issue construed and Held that S. has a right to make the claim in issue. 2. SAME-SAME-REDUCTION TO PRACTICE.

The making by hand of a garment-stay consisting of a wire bent in a certain manner and testing it by bending it across the thumb Held not a reduction to practice, since the device was not tested under conditions of actual use.

3. SAME-SAME-DILIGENCE.

B. Held lacking in diligence at the time S. entered the field and subsequent thereto and priority properly awarded the latter.

Mr. E. M. Kitchin for the appellant.

Mr. F. W. Winter for the appellee.

SHEPARD, C. J.:

This is an interference proceeding, involving priority of invention of a wire garment-stay, the issue of which is the following:

A wire garment stay, formed of a single wire bent in alternately progressive loops each extending laterally across the width of the stay, and disposed at an acute or oblique angle to the longitudinal axis of the stay.

Schuler filed his application January 2, 1909; Barcley on July 22, 1909. A patent was inadvertently issued to Barcley before the dec

laration of interference. Barcley moved to dissolve the interference on the ground that Schuler did not have the right to make the claim. The Primary Examiner denied the motion, but Barcley raised the question before each tribunal of the Patent Office, and has brought it up on his appeal.

The Examiner of Interferences agreed with the Primary Examiner that Schuler had the right to make the claim and awarded him priority.

The Examiners-in-Chief disagreed with the Examiner of Interferences on this point and in consequence reversed his decision. The Commissioner, agreeing with the Examiner of Interferences, reversed the last decision and awarded priority to Schuler.

All of the tribunals concurred in holding that Barcley was the first to conceive the invention; that he had not reduced it to practice; and had not been diligent prior to Schuler's entry in the field. Schuler's reduction to practice was constructive through the filing of his application before Barcley.

1. The first question for the consideration is Schuler's right to make the claim of the issue. The novelty of the invention consists in the diagonal arrangement of the loops extending laterally across the width of the stay.

The Examiners-in-Chief agreed with the Examiner of Interferences that Schuler disclosed loops extending laterally entirely across the width of the stay, but raising another point that seems not to have been suggested or argued, they hold that these loops are not alternately progressive as required by the count of the issue.

As a sufficient answer to this, we quote the following passage from the Commissioner's decision:

Considering the loop as extending to the edge of the stay, which finding of the lower tribunal is believed to be right, the portion of the upper wire of a loop whose closed or bulbous portion is on the left-hand side of the Schuler stay, after it crosses the lower wire of said loop and forms what may be considered the mouth of the loop, is at a considerable distance above the extreme forward portion of the adjacent loop; in other words; said portion of the first mentioned loop is in advance, or in progress, of the adjacent loop by about one-half of the width of the loop.

In construing this term of the issue, it is believed that it is satisfied if any portion of one loop is in advance of the adjacent loop. If it were held that all of the first mentioned loop must be in advance of every portion of the adjacent loop, the claim would not read upon Barcley's device, which shows the rear portion of one loop, in each instance, behind the apex portion of the next rearward loop. While it is true that the major portion of the loop having the bulbous portion on the left-hand side of the stay in Schuler's device is at the rear of the major portion of the adjacent loop, it is true, as stated above, not only that a portion of the first mentioned loop is in advance of the foremost portion of the adjacent loop, but that if the axes of the loops are considered, or if the loops be reckoned from the point where the wires cross the medial line, the first mentioned loop is in advance of the adjacent loop.

2. The next error assigned is the decision that Barcley did not reduce his invention to actual practice, as claimed in May, 1908. This consisted of the construction by hand of a sample piece of wire, bent in accordance with his conception of the invention. All of the tribunals concurred in holding that this, and the tests of its resiliency by handling were not sufficient. Concurring with them fully, we adopt the following excerpt from the Commissioner's decision as expressing our views:

This exhibit is a short portion of a garment stay formed by hand in May, 1908, and was originally about four inches long. It is wider and much shorter than the usual garment stay, tips were not placed upon the end of the stay, and it was never intended to be more than a sample or model illustrating the forming of the loops. Moreover, it was never incased in a corset or subjected to the conditions of actual use, but was subjected merely to hand tests. It appears that this sample was tested by bending it back and forth across the thumb and Barcley introduced testimony for the purpose of showing that this is the usual way of testing such devices by experts in the shop. It is clear, however, that this was not a test under the conditions of actual use, and, as pointed out by the Examiner of Interferences, it cannot be held to demonstrate that a stay of this design would give the desired results when placed in a corset where its movement would be restricted by contact with the surrounding fabric.

3. Agreeing with the unanimous conclusions of the Office tribunals that Barcley was not practising diligence at the time of Schuler's entry in the Office, we see no occasion to add to their discussion. The decision appealed from is affirmed, and the clerk will certify this decision to the Commissioner of Patents.

Affirmed.

[Court of Appeals of the District of Columbia.]

SHIELDS v. LEES.

Decided December 1, 1913.

199 O. G., 618; 41 App. D. C., 236.

INTERFERENCE-PRIORITY-DILIGENCE.

The uncorroborated testimony of Shields, who was the first to conceive the invention, but the last to constructively reduce to practice, that he was financially unable to file an application, Held insufficient to excuse his lack of diligence.

Mr. John B. Hull for the appellant.

Mr. E. L. Thurston and Mr. E. C. Browne for the appellee.

VAN ORSDEL, J.:

This is an appeal from a decision of the Commissioner of Patents in an interference proceeding relating to improvements in a cutting mechanism. The issue is defined in the following counts:

1. As a new article of manufacture, a gear-generating tool having cutting edges located in the surface of an hyperboloid of one sheet.