Where It was contended that the registrant, who is a citizen of France,
is not entitled to the benefit of the registration of Ck;tot>er, 1905, because
his application was not filed in this country within four months after his
fYench registration. Held that ** the act does not make it compulsory for
a foreign applicant to file his application in this country within four
months after the application in the country in which he is located, but
merely states that unless so filed it will not be entitled to the benefit of the
date of the foreign application."
Mr. J. L. Leiyy for the appellants.
Mr. C. P. Goepd for the appellee.
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532 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
Shepard, C, J.:
Deitsch Brothers appeal from a decision of the Commissioner of
Patents denying an application for the cancelation of flie registra-
tion of a trade-mark.
On March 20, 1906, Charles Loonen, a citizen of France, obtained
registration of a trade-mark for tooth-brushes, consisting of the
words " Red Cross " and the representation of a red Greek cross.
Deitsch Brothers first filed application to cancel this registration
May 7, 1906. This was dismissed on appeal to the Commissioner
October 10, 1908, affirming a decision to that effect by the Examiner
of Interferences. - The ground of the decision was that for the want
of a sufficient allegation of probable injury, the Commissioner had
no jurisdiction to entertain the application. December 10, 1908,
Deitsch Brothers filed a new application alleging facts which were
held sufficient to show injury. They alleged the adoption and use
of the red-cross symbol in the year 1902 and its continuous use as a
trade-mark. Loonen pleaded the decision of the former application
in bar, and, by way of answer, alleged the adoption and use of the
trade-mark in 1899 and continuously since. There was also a suit
for infringement by Loonen against Deitsch Brothers involving the
same mark, in the Circuit Court of the United States for the South -
em District of New York, the pendency of which was also pleaded.
The proceedings in that case are not in the record.
The Examiner of Interferences and the Commissioner, successively,
overruled the said pleas, but finding that Tx>onen had used the trade-
mark since the year 1899, that his use was lawful, and his registra-
tion regular, decided in his favor and dismissed the application for
cancelation.
The testimony is ample to show that Loonen used the red-cross
symbol upon his tooth-brushes first in the year 1899. It was con-
spicuously branded thereon. Quantities of those brushes were ship-
ped to his selling agent in the city of New York, and by said agent
and his salesmen sold to the trade in several States of the Unicm.
That Loonen was the manufacturer and that this was his trade-mark
was well known to the trade. As Deitsch Brothers did not allege
use of the mark until 1902, Loonen has clearly established his prior
right. Upon evidence submitted by the same parties in the infringe-
ment suit heretofore referred to as pending, and which has since been
decided, the learned district judge came to the same conclusion.
{Loonen v. Deitsch Brothers^ 189 Fed. Rep.^ 487.)
This conclusion renders it unnecessary to consider the effect of the
former decision as a bar to the second application. In passing it by,
we are not to be understood as intimating any opinion upon the ques-
tion involved. As the evidence undoubtedly shows the prior use of
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DECISIONS OF UNITED STATES COtJBTS IN PATENT CASES. 533
the trade-mark by Loonen, we prefer to rest our decision upon that
conclusion.
The question of the fraudulent or improper use of the trade-mark
is satisfactorily discussed and settled in the opinion of Judge Hand,
in the case before referred to, and we see no occasion to add anything
thereto. Tt hardly lies in the mouth of the applicants to urge as
fraudulent and improper the same trade-mark use on which they
found their claim to cancelation. As to the charge that the trade-
mark use of the red-cross symbol was against public policy, prior to
the year 1905, we entirely concur with Judge Hand, who in the opin-
ion before referred to (189 Fed. Rep., 492) says:
Tbe fifth defense is that it is against public policy to aUow the red cross to
become a trade-mark. This needs no answer after the acts of 1905 and 1910.
Whatever may have been the policy before. Congress has now definitely de-
clared in the proviso of the latter act that it would permit snch marks if they
antedated 1905. Ck)ngre8s had power so to legalize the use of it ; the question
of public policy was for it alone, and it is now finally closed.
See also ex parte Batcheller, (C. D., 1898, 656; 85 O. G., 1588.)
The next contention of the appellants is that as Loonen registered
his trade-mark in France in 1899 and did not apply for registration
in the United States within four months thereafter, he is not entitled
to the benefit of the Registration Act of 1905. The registration was
had under section 2 of that act which permits registration of a trade-
mark by one who resides in a foreign country if he makes a statement
that he has registered his mark in the foreign country, or applied for
registration therein. There is no limitation as to the time of this
prior registration or application. Section 4 is an independent pro-
vision relating to the effect of applications in foreign countries which
extend the same effect to applications and registrations by our citi-
zens. If such privilege be extended by them to citizens of the United
Staters, such an application shall be accorded the same force and effect
as would be accorded to the same application if filed in this country
on the date on which it was first filed in such foreign country ; pro-
vided that such application is filed in this country within four months
from the date on which the application was first filed in such foreign
country; and provided also that the certificate of registration shall
not be issued until registration has been made in the country in
which the applicant is located.
We agree with the Commissioner that —
the act does not make it compulsory for a foreign applicant to file his applica-
tion in this country within four months after the application in the conntry in
which he is located, hot merely states that unless so filed it will not be entitled
to the benefit of the date of the foreign application.
The decision is right and will be affirmed. It is so ordered, and
the clerk will certify this decision to the Commissioner of Patents,
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534 DECISIONS OF UNITED STATES COUBTS IN PATENT CABBCU
[Court of Appeals of the Dtstrict of Columbia.]
Jackson Corset Company t;. Cohen.
Decided April 1, 1912.
181 O. O., 268; 88 App. D. a, 482.
1. Tbade-Mabki — Mat Not be Assigked iif Oboss.
** It is elementary tliat as the primary object of a trade-mark l8 to Indi-
cate the origin of the article to which it is affixed, there is no distinct
property right in the mark separate from the article with which it has been
associated ; in other words, the trade-mark may not be assigned in gross.
2. Same — ^Tbansfeb or a Business — Cabbies Tbade-Mabk Usedi Thebein.
Where a party adopted a trade-mark, gradually extended the bosiness In
which it was used, formed a company, of which he became president, and
transferred thereto his factory, stores, goods, and business. Held that this
transfer by operation of law carried with it the right to the trade-mark
upon which the business was founded.
Mr. Arthur Steuart and Mr. J. E. Cross for the appellant.
Mr. E. T. Brandenburg^ Mr. J. F. Brandenburg^ and Mr. H. E.
StoTiebraker for the appellee.
RoBB, /.;
This is a trade-mark interference proceeding involving the letters
"J. C.-' or "J. C. C." as a trade-mark for corsets.
The evidence of the appellee tended to show that he adopted this
mark in 1891 and gradually extended his business until, in the sum-
mer of 1909, he formed the Jaysee Corset Co., a corporation, of which
he became president and to which he transferred his factory, stores,
goods, and business. That corporation thereupon proceeded to manu-
facture the "J. C." corset, which theretofore had been manufactured
by the appellee individually. No formal transfer of the trade marie,
however, was ever made to it. The corporation finally became bank-
rupt and appellee now claims that it was a mere licensee of the
" J. C." trade-mark. It is unnecessary to notice other questions.
It is elementaiy that as the primary object of a trade-mark is to
indicate the origin of the article to which it is affixed, there is no
distinct property right in the mark separate from the article with
which it has been associated ; in other words, the trade-mark may not
be assigned in gross. While, under certain conditions, a limited
interest by way of license may be created in a trade-mark, (Nelson v.
Winchell^ 208 Mass., 75,) the transfer of a plant, business, and good-
will, under such conditions as surround the transfer in the present
case, necessarily by operation of law carries with it the right to the
trade-mark upon which the business is founded. {Allegretti v.
Chocolate Cream Co., 177 111., 129; Seahrook v. Grimes, 107 Md.,
410; ToTThoh Bank v. Warren, 94 Wis., 151; Merry v. Hoops, 111
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DECISIONS OP UNITED STATES CW)XTBTS IN PATENT CASES. 535
N. Y., 415.) Such was very evidently the understanding at the time
the corporation was formed. The business and good-will purchased
amounted to little without the symbol of identification, that is, the
trade-mark.
As the evidence of the appellant establishes a use of this mark
prior to the bankruptcy of the Jaysee Company, it follows that, as
between the parties to this record, priority should have been awarded
appellant.
The decision of the Commissioner will therefore be reversed.
Reversed.
[Court of App«aUi of tiie District of Colombia.]
In be Wenzelmann and Overhoi/f.
Bedded AprU i, 191t.
181 O. Q., 268 ; 88 App. D. C, 62a
iNmrERsncE — ^Final Decision — Res Adjudicata — ^Not Affeoted bt Subse-
quent Public-Use Pboceedings.
Wbere after a final decision on priority a proceeding was instituted to
determine whether the invention had t>een in public use more than two
years prior to the filing of the application of the successful party. Held the
Judgment in the interference is res adjudicata and that the testimony taken
in this proceeding cannot affect this Judgment
{For Commissioner's decision see ante, 218; 180 O. G., lS9i.)
Mr. C. L. Parker for the appellants.
Mr. W, R. Ballard for the Commissioner of Patents.
Van Obsdel, J.:
This is an appeal from a decisiwi of the Commissioner of Patents
rejecting certain claims of appellants for a patent for wagon-dmnp-
ing apparatus.
The material claims were involved in an interference proceeding
between appellants and one Oilman, wherein a final judgment was
entered awarding priority of invention to Oilman. After the termi-
nation of the interference, a proceeding was instituted in which it
appeared that the invention involved in the interference had been
in public use for more than two years prior to the filing date of
Oilman. Oilman was, therefore, refused claims corresponding to
the issue.
It is contended by appellants in this proceeding that, inasmuch as
the evidence in the public-use proceeding established that the judg-
ment in the interference was erroneous, they are, therefore, the prior
inventors of the invention covered by the claims before us. It was
properly held by the tribunals of the Patent Office that the result
54282°— 13 37
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636 DECISIONS OF UNITED STATES COURTS IN PATENT CASES.
of the proceedings touching public use cannot affect the judgment
of priority in the interference proceeding. That judgment is res
ddjudicata against appellants, and to sustain their present conten-
tion would be equivalent to a retrial of the question of priority or a
second interference, when they have been foreclosed by a final judg-
ment in the first.
The decwion is aifirmed^ and the clerk is directed to certify these
proceedings as by law required.
Affirmed.
[Coart of Appeals of the District of Colombia.]
In re Maas.
Decided May 30, 1912.
181 O. O., 269 ; 89 App. D. C, 142.
Patentability — Mechanical Skill.
Where the basal flange In applicant's structure is flat and straight, while
In the Haarmann reference It is slightly curved. Held that "given the
Haarmann structure, any skilled mechanic, if informed that there was not
sufficient bearing-surface upon the flanges to prevent the rocking or move-
ment of the tie, would have had no difficulty In doing precisely what
api)ellant has done."
(For Commissioner's decision see ante, 2i2; 180 O. G., 11S8,)
Mr. C. J. O'Neill for the appellant.
Mr. W. S. Ruckman for the Commissioner.
RoBB, /.;
This is an appeal from the decision of the Commissioner of Patents
rejecting the following claim relating to a metal cross-tie for rail-
ways:
The herein described metal cross tie for railways adapted to support both
rails of a track, having its sides terminating In broad flat straight basal
flanges flaring outward and which are not entirely horizontal but are Inclined
upwardly slightly from their free edges, for the puri>ose described.
The art to which this alleged invention relates was well developed
when appellant entered the field. The Haarmann patent of January
2, 1900, is alone sufficient, in our view, to constitute anticipation.
Every detail of this claim save one is found in the Haarmann struc-
ture. In the Haarmann structure the basal flange is slightly curved,
while in this it is flat and straight. While other patents were cited
by the Patent Office for the purpose of showing that there was noth-
ing new in this detail, we think that regardless of those patents it
did not amount to invention to make this slight change in the basal
flange. Given the Haarmann structure, any skilled mechanic, if
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DECISIONS OF UNITED STATES 00UBT8 IN PATENT OASES. 537
informed that there was not sufficient bearing-surface upon the
flanges to prevent the rocking or movement of the tie, would have
had no difficulty in doing precisely what appellant has done.
The decision of the Commissioner is therefore affirmed.
Afilrmedt
[Court of Appeals of the District of Colombia.]
Putnam v. Wetmore and Niemann.
Decided May SO, 1912,
181 O. a, 260; 39 App. D. C, 13&
1. INTCBFBRENCE — PbIORITT — ^APPEAL — QUESTION OF PATENTABILITT WILL NOT BI
GONSIDEBED.
The questiim of the patentabUlty of the issue of an interference will not
be considered by the court of appeals. " In interference cases we do not
determine whether either party shall receive a patent. The question pre-
sented to us is, conceding there is a patentable invention, which party was
the first to invent or discover the same."
Z Same — Same — Reduction to Practice.
Evidence that W. and N. built a full-sized machine embodying all the
features of the invention by hand and that subsequently other machines
were built which were exact copies of the hand-made machines and put in
commercial use Held sufficient to establish a reduction to practice, notwith-
standing that the testimony does not show in detail the several acts or test^
which demonstrated the success and that no samples of work done on the
machine were preserved.
{For Commissioner's decision see ante, 190; ISO O. Q , 321.)
Mr. Frank Parker Davis for the appellant.
Mr. Henry Love Clarke for the appellee.
Smepard, C. J.:
This is an interference proceeding involving the invention of an
improvement in adding-machines. The character of the invention
is thus stated by the Examiner of Interferences :
The object which it is sought to attain by the invention is the provision of a
machine which may be " split " at any desired point by the person operating
the same. In adding machines as they are ordinarily constructed there are
keys corresponding only to the digits of the numbers to be recorded. If there
is no digit in a particular place in a number to be entered, no key is struck
but the machine automatically prints a cipher in the place which would other-
wise be vacant It seems therefore that If only the first figure in a number
is a digit the machine must automatically print ciphers in the other places to
the right. This is accomplished ordinarily by a chain of co5peratlng elements
each of which actuates its successor.
If it is desired to have the machine print two parallel columns of figures the
chain of elements miut clearly be broken at some specified point This ia
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538 DECISIONS OP UNITED STATES COUBTS IN PATENT CASES.
termed " splitting " the machine and heretofore it has be«i possible to do this
only at one point previously determined by the maker. The present invention
seeks to provide a machine which may be selectively split by the operator from
the keyboard at any desired point
The issue of the interference is contained in three counts as follows:
1. In a machine of the character described, the combination of a series of
impression means cooperatively related for the printing of ciphers to right of
numerals in decimal places where the amounc to be recorded has no units,
with provisions for discontinuing the cooperative relationship between adja-
cent members of the series of impression means and manipulative means con-
trolling said cooperative relationship and adjustable to effect discontinuance
thereof between one or another pair of adjacent members of the series of im-
pression means.
2. In a machine of the character described, the combination of a series of
separately acting Impression devices; movable couplers between the members
of said series for securing cooperative action between the same In the printing
of ciphers; and means for selectively displacing said couplers.
3. In a multiple-order adding machine, in combination, adding and printing
mechanisms, automatic cipher printing mechanism, and optionally operable
means whereby the automatic cipher-transfer to the right of either of a plu-
rality of orders may be prevented.
Putnam filed his application December 14, 1906, and alleges con-
ception in December, 1905, disclosure to others about December 16,
1905, and a reduction to practice February 6, 1906.
Wetmore and Niemann filed their joint application April 24, 1907,
and allege conception and disclosure in April, 1905, and reduction
to practice in July, 1905. As junior parties the burden of proof was
cast upon them.
Putnam moved to dissolve the interference on the ground that the
issue was not patentable because of the state of the prior art as shown
by the application of one Peters with whom Putnam had previously
been in interference. The motion was denied by the Primary Ex-
aminer, and the Commissioner refused a rehearing thereof.
Upon the testimony taken, the Examiner of Interferences decided
priority in favor of Wetmore and Niemann. On appeal to the
Examiners-in-Chief they were requested by Putnam to recommend
to the Commissioner that the issue was not patentable. This they
refused to do, and aflirmed the decision of the Examiner of Inter-
ferences. Putnam on appeal therefrom raised the question of pat-
entability before the Commissioner, who declined to hold that it
was not patentable, and aflBrmed the award of priority to Wetmore
and Niemann. From this final decision Putnam has appealed.
The appellant again presents the question of the patentability of
the issue. We must decline to consider this question in an interfer-
ence case. It is well settled that —
In interference cases we do not determine whether either party shall receive
a patent The question presented to ns is, conceding there is a patentable in-
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DECISIONS OF UNITED STATES OOUBTS IN PATENT OASES. 539
vention, which party was the first to invent or discover the same. {8ohey Y.
Holsclaw, O. D., 1907, 465 ; 126 O. G., 3041 ; 28 App. D. C, 65-82 ; Hisey v. Peters,
O. D., 1895, 349; 71 O. G., 892; 6 App. D. C, 68-71; Johnson v. Mueser, C. D..
1909, 437 ; 145 O. G., 764 ; 29 App. D. C, 61-64, ana cases there cited. See also
Oliver v. Felhel, C. D., 1902, 565 ; 100 O. G., 2384 ; 20 App. D. C, 255. 258.)
The tribunals of the Patent Ofl5oe successively decided that Wet-
more and Niemann conceived the invention in the summer of 1905,
several months before the earliest date claimed by Putnam; and
there can be no doubt that the evidence fully sustains the conclusion.
Nor does the appellant now controvert the fact. They also concurred
in holding that Wetmore and Niemann reduced the invention to prac-
tice early in December, 1905. The appellant contends that the evi-
dence is insufficient to establish this fact. Aside from the weight
to be accorded the concurring decisions of the Patent Office tribunals,
we are satisfied from an examination of the evidence that they were
right.
The well corroborated testimony of the inventors, who were em-
ployees of the Comptograph Company, shows that inmiediately upon
the conception of the invention, in July, 1905, a machine embodying
all the features of the invention was made by hand, tested and found
to work satisfactorily. This was a full-sized machine. It is called
a model in the testimony, not because it was in fact a model such as
is frequent in illustrating an invention, but because it was intended
to be followed in the construction of tool-made machines for sale
to the trade. It was complete in itself and required no alteration
or improvement. Having been adopted for manufacture, many
screws, taps, etc., to be used in manufacture were ordered and received
from others engaged in such manufacture. Complete sets of tools
were made, and other necessary parts manufactured in the Compto-
graph shops. The first tool-made machine, a copy of the hand-made
model, was tested in all of its parts. It was al^o taken around to
different customers, and used, temporarily by them. The Comto-
graph Company proceeded to manufacture others and has con-
tinued to make them and sell them to the trade. The objection to
the testimony is that it does not show in detail the several acts of
test which demonstrated success; and no samples of the work done
on it were preserved. It is true that the evidence might have been
more specific. In some cases it has been held essential. (Robinson
V. Thresher, C. D., 1906, 743; 123 O. G., 2976; 28 App. D. C, 22;
Daggett v. Kcmfmarm, C. D., 1909, 444; 145 O. G., 1024; 38 App.
D. C., 450, and others cited by the appellant.) But there were
special conditions and circumstances in those cases that called foi
the specific facts and made them necessary.
None of those are found in this case. The hand-made model was
preserved and was produced in taking the testimony. The first tool-
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540 DECISIONS OF UNITED STATES COUBTS IN PATENT CASES.
made machine for commercial use was procured and likewise pro-
duced. They were in the same condition as when originally com-
pleted. Both were operated in the presence of the counsel for
Putnam and others while the witnesses were being examined, and
found to act with perfect satisfaction. The Comptograph Com-
pany had, in the meantime, been manufacturing the same machines
and selling them to the trade. We agree with the Conmiissioner
that the evidence of reduction to practice in December, 1905, was
amply sufficient to sustain the burden of proof. As Wetmore and
Niemann were the first to conceive the invention, and with due
diligence reduced it to practice, they were entitled to the award of
priority.
The decision will he af^rm^d^ and this decision is ordered to be
certified to the Commissioner of Patents.
A-ffirmed.
[Court of AppealB of the IMRtrlct of ColiimbU.]
CouKsoN V, O'Connor.
Decided April 1, 1912,
181 O. G., 544; 38 App. D. C, 484.
IlfTEBFEBENCE — PBIOBITT — DILIGENCE.
O'C. conceived the Invention in November, 1908, and immediately set
about reducing it to practice, and filed bis application on February 4, 1909.
C, who bad conceived the invention in 1898, made devices and tested them;
but such tests were Insufficient to establish a reduction to practice. The
last of these tests was just prior to O'C/s conception. C. did nothing fur-
ther with the invention till his application was signed on January 19, 1909.
which application was not filed UU February 8, 1909. Held that as C. had
every facility at hand to enable him to speedily reduce his invention to