and without further delay, I turned the papers over to my patent solicitor, who attended to the work of preparing the application with proper diligence, so that the application was ready for my signature a few days before July 4th, 1911. on which date I sailed for Europe.

Counsel for Saurer objects that the mental attitude of Groebli ought not to be considered on the question of diligence. They contend that there is no way to meet such evidence. While generally speaking, their position is sound, we think the circumstances here constitute an exception to the rule. That much progress was made by Mr. Groebli between October and April in working out and perfecting the details of his invention is evidenced by the April drawings, which fully and clearly disclose its every element. Those drawings, therefore, furnish tangible proof that this consumption of time was fruitful of results. We many times have ruled that an inventor is to be commended, rather than criticized, for fully perfecting the details of his invention before filing an application; and where, as here, it clearly appears that the one who first conceived and disclosed the invention has acted in good faith in perfecting it, and consumed no more time for that purpose than reasonably was necessary, the award of priority should go to him. Especially is this true in a case like this, where the invention is of an intricate nature, and minute detail of its very essence. A review of all the evidence convinces us that Mr. Groebli was reasonably diligent, and we therefore affirm the decision. Affirmed.

[Court of Appeals of the District of Columbia.]

THE KAUT-REITH SHOE COMPANY v. INTERNATIONAL SHOE COMPANY. Decided January 2, 1917.

239 O. G., 939; 45 App. D. C., 545.

1. TRADE-MARKS-SIMILARITY- —“ Goose "-" MOTHER GOOSE."

The mark consisting of the words "Mother Goose" and a picture of that character riding a broom Held not registrable in view of the prior registration of the mark consisting of the word "Goose across the picture of a goose holding a key in its mouth. The dominant feature of both marks is the word "Goose."

2. SAME-SAME-DECEPTIVE.

The entire vocabulary and the inventive imagination are at the service of one selecting a trade-mark, and no excuse is apparent for the adoption of a mark closely approximating that of an earlier user on the same class of goods. In all such cases the doubt should be resolved in favor of the prior

user.

Mr. William Small for the appellant.

Mr. James A. Carr for the appellee.

VAN ORSDEL, J.:

This is a trade-mark opposition case. Appellant, the Kaut-Reith Shoe Company, of Carthage, Missouri, sought to register a mark con

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KAUT-REITH SHOE CO. V. INTERNATIONAL SHOE CO. 163

sisting of the words "Mother Goose" and the picture of that mythical character riding a broom through the skies. Appellee, opposer, International Shoe Company, of St. Louis, Missouri, is the owner of a registered mark granted to its predecessor in business in1909 consisting of the word "Goose " printed across the picture of a goose holding a key in its mouth.

Applicant alleges use of its mark but one day prior to the date of its application for registration. Therefore, no question of priority of use is involved, the sole question being whether applicant's mark is so similar to that of the opposer as to be likely to create confusion in trade.

The dominant feature of both marks is the word "Goose." The testimony taken on behalf of opposer,—no testimony being taken on behalf of applicant,-discloses that it has built up a large business in shoes bearing the "Goose" brand. If applicant's mark should be granted, we think the marks, as shown in the record, would lead to inevitable confusion, and there would be nothing to prevent it from printing the word "Mother" in small and obscure type and the word "Goose" in bold type, so that the word "Goose" would be the feature of the mark which would impress itself upon the mind of the purchaser.

This case is one which falls clearly within a long line of decisons in the Federal courts. (Re Herbst Importing Co., C. D., 1908, 383; 134 O. G., 1565; 30 App. D. C., 297; Hutchinson v. Covert, 51 Fed. Rep., 832; Eagle White Lead Co. v. Pflugh, 180 Fed. Rep., 579; New Home Sewing Machine Co. v. Bloomingdale, 59 Fed. Rep., 284; Lever Bros. v. Pasfield, 88 Fed. Rep., 484; Chappell v. Sheard, 2 K. & J. 117; W. A. Gaines & Co. v. Turner-Looker Co., 204 Fed. Rep., 553.) In Gannert v. Rupert (127 Fed. Rep., 962) the mark "Home Comfort" was held to infringe "Comfort," though, as in the present case, the pictorial features of the marks were entirely different both as to subject-matter and to color. In the opinion the court said:

This is a trade-mark case pure and simple. It is not a case of unfair competition. It is founded on a technical, common-law trade-mark.

In Carmel Wine Co. v. California Winery (C. D., 1912, 428; 174 O. G., 586; 38 App. D. C., 1) the mark of the applicant was an oriental scene showing a vineyard and including a herd of camels and two men bearing a grape, and the opponent's mark was a picture of two men bearing a bunch of grapes. The court, sustaining the opposition, said:

We think it is apparent, without argument, that the two marks are deceptively similar within the meaning of the statute. It goes without saying that one has no right to incorporate the mark of another as an essential feature of his mark. Such a practice would lead to no end of confusion and deprive the owner of a mark of the just protection which the law accords him.

In the present case, it appears that applicant has a branch establishment in St. Louis, the same city in which opposer's business is located. In argument it was stated, and not denied, that their respective places of business are but two blocks distant from each other. Applicant claims but one day's use of the mark prior to filing its application for registration. It alone could profit by confusion. between the marks. It can have but one object in attempting to secure registration of a mark so nearly resembling that of its immediate competitor-namely, to attract the trade from opposer's goods to its own by means of a trade-mark expressely condemned by the statute, which forbids the registration of

trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resembles a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers. (Trade-Mark Act of 1905, 33 Stats. L., 724, sec. 5.)

This court has repeatedly said that the whole vocabulary, as well as the inventive imagination of the mind, is at the command of one selecting a trade-mark for his goods, and no excuse is apparent for the adoption of a mark closely approximating that of an earlier user on the same class of goods. Indeed, but one conclusion can be drawn from such conduct, and that is that the applicant is attempting through the color of law to obtain an unfair advantage over his competitor. We deem it our duty, therefore, in all such cases to resolve the doubt in favor of the prior user.

The decision of the Commissioner of Patents is 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 ARMSTRONG CORK COMPANY.

Decided January 9, 1917.

239 O. G., 1209; 46 App. D. C., 4.

1. TRADE-MARKS" NONPAREIL "-DESCRIPTIVE.

66

Nonpareil" Held to be a descriptive English word and non-registrable. 2. SAME-SAME-SAME-EVERY-DAY USE IMMATERIAL.

While "Nonpareil" is a fancy word not in every-day use by persons to describe the superlative qualities of articles, the Trade-Mark Act leaves no discretion to determine when a word, which is, in fact, descriptive, is sufficiently understood or accepted as to be considered descriptive of the quality of certain goods by a whole people.

3. SAME-DESCRIPTIVE-REGISTERED UNDER "TEN-YEARS PROVISO."

The contention that by the large exclusive use of " Nonpareil aud registration under the "ten-years proviso" for one class of goods the word has acquired a secondary meaning, as designating simply such goods as applicant's and as such is registrable for another class of goods, is overruled. The Trade-Mark Act cannot be expanded so as to permit a descriptive word to be registered.

Mr. C. P. Byrnes and Mr. G. H. Parmelee for the appellant.

Mr. W. R. Ballard for the Commissioner of Patents.

COVINGTON, J.:

The applicant, the Armstrong Cork Company, has appealed from a decision of the Assistant Commissioner of Patents refusing registration of the word "Nonpareil" as a trade-mark

for tiles, tiling for floors, wainscoting, and other structures,

containing cork. The decision of the Assistant Commissioner was in affirmance of the decision of the Examiner of Trade-Marks and Designs refusing registration.

66

The single question presented by this appeal is whether the word "Nonpareil" as applied to cork tiling and the like is descriptive of the character or quality of such cork tiling within the meaning of section 5 of the existing Trade-Mark Act. Nonpareil" is undoubtedly a fancy word. It is not an adjective in every-day use by persons to describe the superlative qualities of various articles. The Trade-Mark Act leaves to the court, however, no judicial discretion to determine when an English word, which is in fact descriptive, is sufficiently understood or accepted as to be considered descriptive of the quality of certain goods by a whole people. Section 5 of the act provides broadly that no mark consisting merely of words— which are descriptive of the goods with which they are used, or of the character or quality of such goods,

shall be registered under the terms of this act. The word "Nonpareil" is to-day an English word. It is true that it is a combination of the two French words "non" and "pareil," but very many other words in our language have been likewise etymologically evolved. It is found in all our leading dictionaries as an adjective, and is defined as "having no equal," "of unequaled excellence," and "of unrivaled excellence." It is therefore unquestionably an English word descriptive of such quality as might well want to be claimed by any manufacturer of cork tiling.

This court affirmed a decision of the Commissioner of Patents, holding that the word "Trophy," associated with a picture of a loving-cup, as a trade-mark for coffee, was descriptive and therefore not entitled to registration because intended to indicate that the goods were of a superior quality. (In re Meyer Bros. Coffee & Spice

Co., C. D., 1912, 490; 179 O. G., 579; 38 App. D. C., 520.) The word Sterling" as a trade-mark for ale was also held descriptive and declared unregistrable. (Worcester Brewing Corporation v. Rueter & Co., C. D., 1908, 329; 133 O. G., 1190; 30 App. D. C., 428.) Likewise unregistrable was said to be the word "Crystal" as applied to beer. (In re New South Brewery and Ice Co., C. D., 1909, 364; 142 O. G., 291; 32 App. D. C., 591.) These cases are in full harmony with the other decisions of this court since the existing Trade-Mark Act became law.

The applicant urges, however, that having been in exclusive use of the word "Nonpareil" as a trade-mark for heat-insulating materials containing cork for more than ten years prior to the passage of the Trade-Mark Act of February 20, 1905, registration has already been had for it under the section of that act known as the "ten-years proviso," and that by reason of the large exclusive use of such trademark, "Nonpareil," in interstate and international commerce as applied to heat-insulating materials, the mark, even if it can be considered abstractly as a descriptive word, has in fact acquired a secondary meaning in respect of cork materials as simply designating such goods as the applicant's. The Trade-Mark Act cannot be expanded so as to permit a descriptive word to be registered. To permit such a construction would be to say that a clearly descriptive word, registered as a trade-mark on certain particular goods of an applicant, would begin to acquire such a secondary, and non-descriptive meaning, as to be registrable for all classes of similar goods which in years thereafter might be produced by the same applicant. That would entirely nullify the clear legislative intention as to the ten-years proviso.

The decision will be affirmed and this decision certified to the Commissioner of Patents.

Affirmed.

[Court of Appeals of the District of Columbia.]

THE O. & W. THUM COMPANY V. DICKINSON.

Decided April 2, 1917.

240 O. G., 337; 46 App. D. C., 306.

1. TRADE-MARKS-SIMILARITY-DECEPTIVE.

There is no excuse for an even approximate simulation of a well-known trade-mark appropriated to goods of the same descriptive properties. When it is apparent that such an attempt has been made, the two marks should not be examined with a microscope to detect minute differences, but should be viewed, as the public would view them, as a whole. The points of similarity are more important than the points of difference.