with the single hole in the twyer-cap. Means are further provided
for holding the plate in an adjusted position and for securing a tight
fit between the plate and the twyer-cap.

Lang claims to have conceived the invention in June 1906. He
filed his application on August 12, 1909, and claims an actual reduc-
tion to practice during the next December. Both of the lower tri-
bunals found that Kogers had established an actual reduction to
practice of the invention a few days prior to the filing of Lang's
application, and this holding is not seriously contested on behalf of
l4ing. In fact, in the assignments of error no special assignment
is predicated as to this holding. It is contended, however, that the
earliest date of conception of the invention which Rogers has estab-
lished is the latter part of July, 1909, when he began to construct a
device in accordance therewith, and that the lower tribunals erred
in holding that Rogers had established a conception of the invention
prior to Lang's ccmception thereof.

Rogers testifies positively that he conceived the invention in 1902
while working for the Salem Iron Company at Leetonia, Ohio, which
company was also referred to as McKeefrey & Company. He de-
scribes the invention in detail and states that he disclosed it to one
Sprow. who was at that time furnace foreman of the Salem Iron
Company, and that he later disclosed it to William Devlin, who was
the master mechanic of the same company. He states that he dis-
closed it to Sprow by means of sketches in a little note-book which he
had.



Digitized by VjOOQIC



884 DEOISIONS OF THE 00MMI88I0NBB OF PATENT&

Sprow corroborates Rogers as to this disclosure, states that it
in the spring of 1902, and identifies the book, which was introduced
in evidence as "Rogers' Exhibit Memorandum Book of 1902,' as
being the same or one similar to the bo<^ which Rogers showed him
and the sketches therein as being the same or similar to those shown
him by Rogers. He describes the device in detail, states that Rogers
told him there were to be two eyesight-holes and a prfce-hrfe in the
plate, and that two eyesight-plates were provided in case the glass in
one should be broken.

Devlin testifies very clearly as to the disclosure to him, stating that
Rogers explained the use of the device and that the plate was to be
held in position by a stud-bolt and a spring. Each of the witnesses
testifies he would have been able to construct a peep-sight according
to Rogers's ideas from the explanation given.

The main attack an this testimony is that it was given some time
after the alleged oral disclosure, that eadi of the witnesses states on
cross-examination that his memory had been recently refreshed about
the matter, and that the sketch in Rogers's note-book only shows one
peep-hole.

l*he testimony of these witnesses is clear and full. It does not ap-
pear what the alleged refreshing of memory was, and there is no
reason to believe that the witnesses were testifying from what they
knew of the device afterward rather than from what was disclosed
to them at the dates alleged. As to the sketches showing only one
peep-hole, it is not claimed that the sketch was anything more than a
mere outline by which Rogers conveyed his ideas to Sprow, and Sprow
testifies positively that Rogers told him that there was to be more
thnn one peep-hole in the plate. It must be held that this testimony,
while given some years after the time of the alleged disclosure, is, in
view of the simplicity of the device, amply sufficient to establi^ a dis-
closure by Rogers prior to Ijang's claimed date of conception.

As stated above, no serious contention is made as (o the liolding
that Rogers was the first to reduce to practice, and an inspection of
the testimony shows that such reduction to practice is established
thereby. Much stress is laid in the brief for Lang on Rogers^s delay
in reducing the invention to practice. Inasmuch as Rogers was the
first to conceive the invention and reduced it to practice prior to any
reduction to practice by Lang, either actual or constructive, this
delay is immaterial. It is held, therefore, that priority was properly
awarded to Rogers.

The decision of the Exarnvners-inrChief is affirmed.



Digitized by



Google



DECISIONS OF THE COMMI8SIONEE OF PATENTS. 385

Underwood Typewriter Company v. The Universal Stbnotypb Co.

Decided November 8, 1912.

186 O. G., 526.

*AMRe-MABK8 — SiMILABITT.

The owner of a mark consisting of a monogram made np of the letters
** U " and " T " filed an opposition to the registration of a mark consisting
of a monogram made up of the letters '* T/' ** U," and *' S " and the ah-
bieviaticm " Co.," the configoratfon of the letters " U " and " T " In the lat-
ter mark closely resembling that of these letters in the mark of the opposer.
Held that the applicant's mark is not sufllciently different from that of the
opposer to Justifly sustaining a demurrer to the notice of opposition on the
ground of the non-similarity of the marks.

Appeal from Examiner of Interferences.

TBADB-MABK FOB TYPE-WBITINO MACHINES.

Messrs. Briesen <6 Kncmth for Underwood Typewriter Company.
Mr. Henry A. Seymov/r for The Universal Stenotype Co.

Moore, Gom/nUssioner:

This is an appeal by the Underwood Typewriter Company from
the decision of the Examiner of Interferences sustaining the de-
murrer of The Universal Stenotype Co. and dismissing the notice
of opposition filed by the Underwood Typewriter Company.

The Universal Stenotype Co. has filed an application for the reg-
istration of a mark consisting of a monogram made up of the letters
t*rp„ c:^,* ugj? ^jjj ^^ abbreviation ^'Co.'' as a tradennark for
type-writing machines. It is alleged in the notice of opposition
filed by the Underwood Typewriter Company that applicant's reg-
istration and use of its alleged mark would cause confusion in the
trade and would lead the public to believe the type- writing machines
bearing said mark were the output and product of the opposer on
account of the close resemblance of applicant's mark to opposer *s
registered marks Nos. 40,806, 68,292, and 68,628 for type-writing
machines and parts thereof. Opp6ser's registration No. 40,806 is a
monogram made up of the letters ^* U " and " T." Its registration
No. 68,292 is also a monogram consisting of the letters "U" and
**T," but differently shaded from the first-mentioned mark. Its
registration No. 68,628 is a monogram consisting of the letters " U **
and " T," together with a pictorial representation of a type-writing
machine.

The demurrer filed by The Universal Stenotype Co. to the notice
of opposition alleges as the sole ground why the opposition should
be dismissed that —

the two marks are so unlike, both as to the letters used and the manner of
arranging said letters, that no confusion can arise by the use by applicant of its
published trade mark, and no damage or injury can result to the opposer, by
such use by the applicant



Digitized by VjOOQIC



386 DECISIONS OF THE C0MMI88I0NEB OF PATENTS.

The Examiner of Interferences sustained the demurrer and dis-
missed the opposition upon the ground that the addition of the letter
"S" and the abbreviation "Co." to appellant's mark sufficiently
distinguished therefrom to avoid confusion.

In this holding the Examiner of Interferences is believed to bie'in
error. The configuration of the letters " U " and " T " in applicant's
mark very closely resembles the form of these letters as u^d by
opposer. It is true that applicant has added and prominently dis-
played the letter " S " and less prominently the abbreviation ^ Co."
It is not thought, however, that this difference sufficiently distin-
guishes the marks under the laws as interpreted in the following
decisions :

In the case of T?i€ WiUiam Lea <& Sons Company v. H. C. Cole
<& Company (C. I>., 1908, 168; 135 O. G., 893) it was held that there
was not sufficient difference between the marks " F F F " and
" F F F G " to avoid confusion or to render each mark registrable.

In the case of Godillot v. American Grocery Co. (71 Fed. Bep.,
873) a mark consisting of the letters "A G" combined in a mono-
gram was infringed by a monogram composed of the letters "A"
and "G," together with the abbreviation "Co." In that case the
Court said :

It may be, indeed, that, when the two monograms are laid side by side for
inspection, they are distinguishable from each other. But, as we have seen,
this is not the true test of infringement.

In the case of the American Tin Plate Co. v. Licking Roller Mill
Co. (168 Fed. Rep., 690) a mark consisting of the letters "M F"
in monogram and inclosed within a circle was held infringed by a
mark consisting of the detached letters " M. F. H."

A case very similar to the present case is that of ex parte Elliott
Jewelry Co.^ {ante^ 317; 183 O. G., 1035,) recently decided by the
Acting Commissioner. In that case a mark consisting of the letters
"E Co." was held not registrable over a mark composed of the
letters "E.J. Co."

In the case of Carmel Wine Company v. California Winery (postj
428; 174 O. G., 586; 38 App. D. C, 1) when the mark of one party
consisted of —

the representation of a vineyard, a herd of camels, and two men bearing a
grape—

and the other mark consisted of the representation of two men bear-
ing a bunch of grapes in a similar manner the Court said :

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



Digitized by



Google



DBGISI0N8 OP THE COMMISSIONEE OP PATENTS. 387

In the case of TTie Sumrndt City Soap Works v. Tf^ Standard
Soap Company (post, 430; 174 O. G., 687; 37 App. D. C, 604) ttie
Court of Appeals of the District of Columbia stated :

This court has adopted a strict rule in refusing registration in aU cases
where the apparent similarity would probably lead to confusion In trade,
holding that the field of selection for marks is so broad that no necessity
exists for the invasion of one trader upon even the apparent rights of another,
and that the broadest protection will be afforded the purchasing, consuming .
public by the courts.

The decision of the Examiner of Interferences is reversed.



RiNEHART V. Gibson.

Decided March 2, 1912.
186 O. G., 627.

1. INTKBFEUSNOS — PSIOUTT — ^ReDUCTIOH TO PRACTICE — SOUND-BOXES FOB PHOHO-

GBAPHS — ^TBST NECESSABY.

The invention in issue Held not to belong to that class of simple devices
which need no test and the making of which is sufficient to complete a re-
duction to practice, since the mounting of a diaphragm of this kind to suc-
cessfully reproduce music is an exceedingly delicate operation.

2. Same— Same.

Bvidenoe reviewed and Held insufficiait to establish that B., who was the
last to conceive the invention, reduced the same to practice prior to G.'s
filing date.

Appeal from Examiners-in-Chief .

BOUHD-BOX.

Mr. Horace Pettit for Rinehart.

Mr. Rudolph M. Hunter and Mr. E. H. Hunter for Gibson.

Billings, First Assistant Corwmissioner:

This is an appeal by Kinehart from a decision of the Examiners-
in-Chief affirming the decision of the Examiner of Interferences
awarding priority to Gibson upon the following issue :

1. In a sound box, the combination with a diaphragm, of a mounting therefor,
a fabric between said mounting and said diaphragm, and fricti<mally retained in
said mounting to hold said diaphragm in place.

2. In a sound box, the combination with a diaphragm, of a mounting therefor
and a strip of fabric between thei edge of said diaphragm and the surface of
said mounting, said strip being of normally uniform thickness and being fric-
tionally retained by said mounting to hold said diaphragm in place.

Rinehart in his preliminary statement alleges conception, the
making of drawings, and disclosure in the spring of 1906 and reduc-
tion to practice in the summer of 1906.



Digitized by



Google



888 DECISIONS OF THE COMMISSIOKEB OF PATENTS.

Gibson alleges conception in the latter part of 1901, drawings in
1901 to 1906, and disclosure and reduction to practice in the latter
part of 1901.

The Binehart application is assigned to the Victor Talking Ma-
chine Company, which, it appears, also controls any inventions in
sound-boxes for phonographs which Gibson may make by virtue ei
a contract in evidence, under which contract a royalty of ten cents
for each box is payable by that company as long as any of the Gibson
inventions are used in sound-boxes made by it

Kinehart testified in behalf of himself and his assignee in response
to a subpoena; but he states that he was prepared to testify volun-
tarily if called upon to do so, nor does his testimony indicate that he
is hostile to his assignee.

The testimony taken by Gibson shows that he conceived the inven-
tion as early as 1901, that he made sound-boxes embodying it in the
years 1901, 1902, and 1906. This has been found by both of the
tribunals below and is conceded by Rinehart. It establishes a concep-
tion for Gibson long prior to any date of conception alleged by Rine-
hart. The testimony is insufficient to prove that any one of these
three boxes was tested successfully.

Gibson is entitled to May 7, 1907, for constructive reduction to
practice, this being the date upon which he filed an application dis-
closing the invention and of which that herein involved is a division.
In order to prevail, therefore, Rinehart must prove a reduction to
practice prior to May 7, 1907. Otherwise Gibson will prevail as the
first to conceive and the first to reduce to practice.

The burden is upon Rinehart to prove his case by a preponderance
of evidence. Furthermore, the situation presents certain peculiari-
ties which render it necessary to inspect the proofs of Rinehart with
great care.

In the first place, no attempt was made by the Victor Talking
Machine Company to establish the dates alleged in Rinehart's pre-
liminary statement, which, it appears, was made by an official of that
company, nor is this official or any other called to explain the dis-
crepancy. Again, it is testified by Gibson that the sound-boxes made
by him in 1901 and 1902 were turned over to the Victor Talking
Machine Company through one of their officials, either Mr. Johnson
or Mr. Douglass. This is equivalent to an allegation of disclosure
by Gibson to that company, and no witness was put upon the stand
to deny the fact as testified to by Gibson. Furthermore, a formal
request by counsel for Gibson that the company produce the sound-
boxes in question apparently received no response whatever. It ap-
pears, further, that Rinehart had access to the private laboratory of
Gibson on and after February 13, 1907, and, as will appear herein-
after, it is very doubtful whether Rinehart had at that time a con-



Digitized by



Google



DBOISIONS OF THB OOMMISSIONEB OF PATENTS. 889

ception of the invention in question. When Rinehart was asked
upon cross-examination whether at the time he was given access to
the Gibson laboratory he found a sound-box there in use embodying
the construction specified in the counts of this interference, he was
instructed by counsel not to answer the question and did not answer
it It further appears that the witness Coleman, called on behalf of
Binehart, who made the sound-boxes upon which Kinehart relies for
reduction to practice, had, pri(H* to his employment by Sinehart,
worked for Gibson in the shop of W. W. Morton and had assisted in
constructing the boxes for Gibson which he had made in 1901 and
1902.

These circumstances, if in fact not proving derivation of the in-
vention by Rinehart fr<Mn Gibson, certainly raise such doubt as to
his originality in the matter as justifies a close inspection of the testi-
mony purporting to establish his priority.

The only claim to reduction to practice by Rinehart prior to Gib-
son's filing date is that found in the testimony of the witness Royal^
called on behalf of Rinehart, wherein it is stated that shortly after
his (Royal's) return from Europe on or about the 12th of November,
1906|^ visited the private room of Rinehart and was shown a sound-
box embodying the invention. His testimony oa this point is as
follows:

I asked bim what he had done in the way of Improying the sound boxes.
He pat one on a machine which to me appeared very good. I aiAced bim what
be bad done to improve it He said seyeral things, one in particalar was the
way in which he liad the diaphragm mounted. He explained to me how this
was done, but I did not clearly see how it was possible to mount it as be said,
and be got his man to rig up a machine to show me bow this diaphragm was
mounted in a casing with the fibrous material between the casing and the edge
of the diaphragm. I told bim I did not think it was possible to mount a dia-
phragm in that way without destroying the diaphragm, but he assured me that
this could be done and that be bad done a number without ever destroying or
alTectlng the diaphragm in the least The rest of the conversation I don't
remember exactly.

As pointed out by the Examiners-in-Chief, it will be found upon
careful inspection that there is no statement in this testimony that
the sound-box actually tried embodied the construction here in issue*
It would seem that if it had been the purpose of the witness to avoid
a statement to this effect without making the omission too obvious
he could not have chosen better language. Counsel for Rinehart
calls attention to answer 8, in which Boyal stated that an exhibit
shown to him and which embodies the issue looked like the one he
saw in Rinehart's room in November, 1906, except as to the color of
the material. There is nothing in this question or answer, however^
to indicate whether reference is made to the construction of the box
which was tested or to the crude device which it is elsewhere stated



Digitized by VjOOQIC



890 DECISIONS OF THE COMMISSIONEB OF PATENTS.

Rinehart had assembled for Royal to show him how the diaphragm
could be inserted without damage thereto.

It has been argued on behalf of Rinehart that the inventicm be-
longs to that class of simple devices which need no test and the mak-
ing of which alone is sufficient to complete a reduction to practice.
With this I cannot agree. The mounting of a diaphragm of this
kind to successfully reproduce music is an exceedingly delicate
operation, and it is clear that slight changes may produce marked
and unexpected results. It must be held, therefore, that proof of a
test is necessary to establish reduction to practice. If it were held
otherwise, however, Gibson would obviously prevail by virtue of
his 1901 and 1902 sound-boxes, as to which he was uncorroborated
only in his testimony concerning the successful tests.

It is also to be noted that the only evidence as to the success of the
device, assuming that it was tested at that time, is the statement of
Royal that Rinehart ^^ put one on a machine which to me appeared
very good." Rinehart himself does not claim a successful test in
November, 1906, and his testimony, taken as a whole, indicates that
he believes no box embodying the invention was made by him as
early as that The testimcmy is considered insufficient to establish
that the structure was a success at that time, even if tested.

Upon a consideration of all of the evidence submitted on behalf
of Rinehart I am convinced that it fails to established that any de-
vice was made by him which embodied the present issue prior to the
filing date of Oibson.

Rinehart himself testifies:

Q. 14. state if yoa can, how many sound boxes embodying the construction
which yon have above described yon liad made at the time when you showed
the said box to Mr. Royal and Mr. Jolmson?

A. Six.

It appears practically certain from Rinehart's testimony when
recalled that these six boxes were made between March 13 and
June 21, 1907, and were not tested until sometime afterward. Rine-
hart states that prior to the time of working upon the diaphragm
mounted in accordance with the present invention he was working
upon the mounting of diaphragms within the box by means of a
lead gasket. (Rinehart's record, p. Ill, XQ. 17.) It seems quite
probable that the device tested before Royal on the occasion of his
visit to Rinehart's room in 1906 was one of these lead-mounted
diaphragms or some other construction not here in issue.

It appears conclusively, therefore, that Rinehart has failed to
establish a reduction to practice prior to the date upon which Gib-
son's original application was filed, and the latter must prevail
upon the question of priority as being the first to conceive and the
first to reduce to practice.



Digitized by



Google



DECISIONS OF THE COMMISSIONER OF PATENTS. * 891

I am further strongly inclined to the opinion that the record indi-
cates the derivation of the invention by Kinehart from Gibson. It
is unnecessary, however, in view of the conclusion above reached to
decide the question raised by the evidence upon this point.

T?ie decision of the Examinera-in-Chief is ccfflrmed.



The Voegeli Brothers Drug Company v. Knox,

Decided January 6, 1912.
185 O. G., 628.

TbADK-MaBKB — INTEBFBRENCE — TeSTIMONT.

Where the witnesses testified to facts concerning the adoption of a trade-
mark which are peculiarly within their knowledge and such testimony
was not impeached, Held that it is sufficient to establish the use of the
mark notwithstanding that it is not supported by the records of any sale
or corroborated by the testimony of any customers to whom sales were
made.

On Appeal.

TBADE-MARK FOR MEDICINE.

Mr. F. A. Whitely for The Voegeli Brothers Drug Co.
Mr. Langdon Moore for Knox.

Tennant, Assistant Commissioner:

This is an appeal from the decision of the Examiner of Interfer-
ences awarding priority of adoption and use to The Voegeli Brothers
Drug Company and judging that that corporation is entitled to
register the trade-mark shown in its application.

The trade-mark of The Voegeli Brothers Drug Company is the
word " Roxie,'' used as a trade-mark for certain remedies. The reg-
istration of George A. Knox, No. 38,080, for the word " Rox " was
effected April 8, 1902, and it appears from the statement of that
registrant that the mark has been used in business by him since
March 1, 1896. The registrant Knox has taken no testimony and is
therefore restricted to his date of registration, April 8, 1902, as his
date of adoption and use of the mark. That the marks are used
on goods of the same descriptive character is not questioned.

The testimony presented on behalf of The Voegeli Brothers Drug
Company consists of the depositions of Thomas Voegeli, president
and treasurer of the company ; Rudolph Heck, pharmacist and direc-
tor of the company; Henry Voegeli, secretary and vice-president,
and William Ralke, bookkeeper and buyer for said company.
Thomas Voegeli, Rudolph Voegeli, and Heck each testifies that the
54282*— 13 ^28



Digitized by



Google



892 DEOISIONS OF THE OOMMISSIONEB OF PATENTS.

trade-mark was first used in 1892 and that it has been continuously
used from that time to the present upon the merchandise specified.
Ralke testifies that he entered the employment of the company in
1898 and that at the time he entered the employment of the said
company the preparation " Koxie " was on sale by said company and
that it has always been on sale and that to his knowledge the stock
has never been exhausted.

It is contended on behalf of Knox that the testimony presented by
The Voegeli Brothers Drug Company consists merely in the deposi-
tions of interested witnesses, which is not supported by the records
of any sale or corroborated by the testimony of any customers to
whom sale was made. It is also contended that the testimony is
insufficient to establish a trade-mark use of the word " Roxie."

As to the first contention, the testimony of these witnesses, while
oral, is concerning facts which are peculiarly within their knowledge.
The witnesses were not cross-examined. Their testimony is not im-
peached, nor are the statements of such witnesses of such uncertain
character as to warrant a presumption that the facts stated by them
are erroneous or untrue. I find no reason for ignoring the positive
statements of these witnesses. The decisions which are cited by coun-