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After the assignment to petitioner the inventor assigned the same invention to other parties, as stated in my letter referred to above. Under such circumstances it has long been the practice of this Office to issue the patent to the inventor, and the question now presented is whether this practice should be changed.
In case of conflicting assignments it is well settled that the Commissioner has authority to ignore those assignments and issue the patent to the inventor. Not only is it recognized that the Commissioner has such authority, but the Commissioner's decision in re Moller (C. D., 1904, 70; 108 0. G., 2144) states:
It is believed that justice is best secured, as a general rule, by issuing the patent to the inventor in case of conflicting assignments.
The Court of Appeals of the District of Columbia in the decision in re Pearsall (C. D., 1908, 420; 135 0. G., 221; 31 App. D. C., 265) also said:
Having determined that a patent should issue, it is conceded he might have ignored both assignments and issued a patent in the name of the inventor, which, probably, would have been the better course for him to have followed.
From the facts before me I have no reason to believe that the conclusion expressed in the above decisions are not true at the present time nor that the interests of justice are not best subserved by the present practice.
Moreover, this Office is not authorized to render binding decisions upon matters of title. It is not provided with the necessary machinery to investigate such questions, and it has uniformly refused to undertake to settle questions in regard to assignments. Since the Office cannot go fully into the merits of the dispute, but must leave that to the courts, it is thought that it should not recognize that the title of either assignee is superior by issuing the patent to him, especially as there appears to be no necessity for so doing. By issuing a patent upon an assigned application to the inventor the Office does not hold that the title is in the inventor, for by operation of law in such case the patent vests in the assignee.. (Gaylor v. Wilder, 10 How., 477.)
For the reasons stated the petition is denied.
EX PARTE THE A. BURDSAL COMPANY.
Decided August 27, 1909.
146 O. G., 505.
TRADE-MARKS—“OOLITIC” FOR PAINT_DESCRIPTIVE OR DECEPTIVE.
The word “Oolitic" as applied to a paint is either descriptive or deceptive, and therefore not registrable,
TRADE-MARK FOR FLAT-FINISH PAINT FOR INSIDE USE.
Messrs. Taylor & Hulse and Messrs. Steuart & Steuart for the applicant. TENNANT, Assistant Commissioner:
This is an appeal from the decision of the Examiner of TradeMarks refusing to register the word “Oolitic" as a trade-mark for flat-finish paint for inside use.
Registration was refused upon the ground that the use of the word “ Qolitic” on the flat-finish paint implies that the paint contains oolite.
Oolite is defined by the Century Dictionary as follows:
A granular limestone each grain of which is more or less completely spherical, and made up of concentric coats of carbonate of lime formed around a minute nucleus, which is usually a grain of sand; so called from the resemblance of the rock to the roe of a fish.
It is obvious from this definition that it is a specific composition of calcium carbonate. It is well known that various forms of calcium carbonate are used as fillers for paint, and it is obvious that oolite is adapted for that purpose from the discussion of “fillers” in The Chemistry and Technology of Mixed Paints, by Toch, published in 1907 by D. Van Nostrand Company, of New York. In the introduction to that work the following statement occurs:
To the pigments are added many materials possessing body, hiding or covering property, which are known as inert fillers, and some of these, particularly the silicates of alumina and the silicates of magnesia, the various calcium carbonates, and silica itself, are used to counterbalance the heavy weight or the specific gravity of the metallic pigments; and whereas these inert fillers were formerly regarded as adulterants and cheapening agents, they are now looked upon as necessities, and the general consensus of opinion among practical and many scientific investigators is that a compound paint composed of lead, zinc, and a tinting pigment, to which an inert material has been added, is far more durable than paint made of an undiluted pigment.
The subsequent chapters more fully explain the advantages derived from the use of various compositions of calcium carbonate.
It is contended in behalf of the applicant that no oolite is present in the composition of the paint sold under this trade-mark. This is, however, immaterial to the question of registration, since the trademark sought to be registered leads to the inference that oolite is used, and if the paint does not contain oolite the use of the word “Oolitic” is deceptive and not registrable for that reason.
The decision of the Examiner of Trade-Marks is affirmed.
EX PARTE THE AMULET CHEMICAL COMPANY.
Decided June 24, 1909.
146 O. G., 719.
TRADE-MARKS-NAME OF APPLICANT.
Where the mark includes the name of the applicant not itself written, printed, impressed, or woven in a particular or distinctive manner, the fact that the name is associated with arbitrary features does not render the mark registrable.
TRADE-MARK FOR SKIN-LOTION, FACIAL CREAM, TALCUM POWDER, ETC.
Mr. Charles A. Rutter for the applicant.
This is an appeal from the decision of the Examiner of TradeMarks refusing to register the mark shown in appellant's drawing as a trade-mark for talcum powder and tooth paste.
The mark of appellant consists of the word "Amulet” printed in ordinary type diagonally across a shield.
Registration of the mark was refused for the reason that it includes the word “Amulet,” which is the distinctive feature of appellant's name and is not written, printed, impressed, or woven in any particular or distinctive manner. The holding of the Examiner is in accord with the ruling of the Court of Appeals of the District of Columbia in Kentucky Distilleries & Warehouse Company v. Old Lexington Club Distilling Company (C. D., 1908, 417; 135 O. G., 220; 31 App. D. C., 223) and with the decisions of the Commissioner in ex parte Union Carbide Company (C. D., 1908, 160; 135 0. G., 450) and ex parte The Champion Safety Lock Company (ante, 99; 143 0. G., 1109.) In the case first cited the Court said:
There are several provisions of the statute, which, we think, forbid the registration of the mark in question. Section 5 of the act of Congress of February 20, 1905, among other things, provides :
“That no mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term shall be registered under the terms of this act.”
It will be observed that the trade-name here sought to be registered is almost a reproduction of the corporate name of the applicant. In fact, it seems probable, from an examination of the record in this case, that the corporate name of the appellee company was derived from the mark sought to be regis
21895—H. Doc. 124, 61-2--11
tered, since “Old Lexington Club” was a name applied to liquor distilled and sold by the predecessors in business of appellee.
Appellant contends that its firm-name is “ The Amulet Chemical Company” and that the word "Amulet” is not its firm-name, but merely constitutes one word of that name and without the other words is meaningless so far as it identifies said firm. In reply to a similar contention made in the case of ex parte The Champion Safety Lock Company, supra, I stated :
It is urged by the appellant that these cases do not apply, for the reason that the word “ Champion” forms a smaller portion of the name of the applicant than did the marks in question in the cases above cited. The word “ Champion," however, forms substantially the name of the applicant, and as it is not written in any distinctive manner the case falls clearly within the ruling of the decisons cited.
Appellant further contends that the word " Amulet” is “ printed in a particular manner in connection with a heraldic device” and is therefore registrable under the law. An examination of the mark shows that the word "Amulet ” is printed in ordinary type and not in a particular or distinctive manner, as required by the statute. The fact that the word is associated with other features in the mark does not remove it from the prohibition contained in section 5 of the Trade Mark Act. A similar contention was made in the case of ex parte Union Carbide Company, supra, and in that case it was held :
That the words “Union Carbide" form the controlling and distinguishing feature of appellant's mark cannot be seriously questioned, and it is settled that this feature must be registrable in order to render the mark as a whole registrable by the following decisions of the Court of Appeals of the District of Columbia : in re Hopkins, (C. D., 1907, 549; 128 0. G., 980; 29 App. D. C., 118;) in re Crescent Typewriter Supply Company, (C. D., 1908, 318; 133 0. G., 231.)
The decision of the Examiner of Trade-larks is affirmed.
EX PARTE SEISSER.
Decided August 6, 1909.
146 0. G., 719.
REOPENING A REJECTED CASE-SHOWING INSUFFICIENT.
Where the claims in a case were properly finally rejected and it was thereafter sought to amend and as a reason for not amending earlier it was alleged that the applicant, who was a foreigner, was not sufficiently familiar with the patent practice of the United States to fully appreciate the scope of the claims originally presented and that the attorney was not informed until after the final rejection that the subject-matter of the proposed claims was an important part of the invention, Held that the showing does not warrant reopening the case for further prosecution before the Examiner.
PROCESS OF TREATING COFFEE
Mr. Max Georgii for the applicant. MOORE, Commissioner:
This is a petition that, this application be reopened for the purpose of considering the above claims and that the Primary Examiner be directed to examine and act on these claims in the usual manner.
The record of this application shows that after a large number of actions applicant's claim 5 was allowed and claims 1 to 4 were finally rejected. On May 15, 1909, applicant appealed to the Examinersin-Chief and on the same day filed an amendment containing five additional claims. The Primary Examiner refused to enter this amendment on the ground that the prosecution of the case before him was closed. At the hearing before the Examiners-in-Chief on the appeal applicant requested them to recommend the admission of said claims. The Examiners-in-Chief declined to make any recommendation and affirmed the action of the Examiner on the appealed claims. Applicant now presents the above petition for the reopening of the case under Rule 142.
In a sworn statement counsel for petitioner states that so far as he is aware the inventor, who is a foreigner, is not sufficiently familiar with the patent law and practice of the United States to fully appreciate the scope and effect of the claims originally presented to him when he executed the application. Petitioner's attorney further states that he was not informed until after the final rejection that the subject-matter of the claims, which he desires to insert, was an important part of the invention.
It is well settled that after a final rejection, and especially after a decision on appeal, an application will not be reopened for further prosecution before the Primary Examiner except under unusual circumstances, where a proper showing is made and where the interests of justice plainly demand it. (Ex parte Beckwith, C. D., 1901, 43; 95 0. G., 1451; ex parte Raymond, C. D., 1902, 170; 99 O. G., 1386; ex parte Harrison, C. D., 1902, 347; 100 O. G., 3013; ex parte Brown, C. D., 1903, 418; 107 O. G., 269; ex parte Bourne, C. D., 1904, 247; 110 O. G., 2510; ex parte Auer, C. D., 1905, 164; 116 O. G., 595; ex parte Lesler, C. D., 1905, 309; 117 O. G., 2631; ex parte Marks, C. D., 1905, 439; 118 0. G., 2253.) The circumstances in this case are analogous to those in ex parte Beckwith, supra, where the Commissioner said:
The showing consists of an affidavit by the original attorney and one by the associate setting forth, in effect, that prior to the final rejection the value and importance of certain features of the invention were not appreciated and that