18 App. D. C., 142; Adams v. Murphy, C. D., 1901, 401; 96 O. G., 845; 18 App. D. C., 172; Quist v. Ostrom, C. D., 1904, 594; 108 O. G., 2147; 23 App. D. C., 69; Hillard v. Brooks, C. D., 1904, 658; 111 O. G., 302; 23 App. D. C., 526; Paul v. Hess, C. D., 1905, 610; 115 O. G., 251; 24 App. D. C., 462; Ocumpaugh v. Norton, C. D., 1905, 632; 115 O. G., 1850; 25 App. D. C., 90; Gordon v. Wentworth, C. D., 1908; 453, 135 O. G., 1125; Duff v. Latshaw, C. D., 1908, 492; 136 O. G., 658; Moore v. Hewitt, C. D., 1908, 516; 136 O. G., 1535.)

If it be assumed, however, that the work of Lawrence constituted a reduction to practice of the invention, in my opinion he would not be entitled to the award of priority under the principle of forfeiture announced in Mason v. Hepburn, (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86;) Thomson v. Weston, (C. D., 1902, 521; 99 O. G., 864; 19 App. D. C., 373;) Matthes v. Burt, (C. D., 1905, 574; 114 O. G., 764; 24 App. D. C., 265;) Gordon v. Wentworth, (C. D., 1908, 453; 135 O. G., 1125;) and other decisions of the Court of Appeals of the District of Columbia. As heretofore stated, the evidence shows that the Lawrence device was laid aside by the officials of his company on account of other business and improvements that were considered more important and was entirely forgotten and that Lawrence took no further interest in the matter. The Lawrence invention had not been given to the public, but information thereof was confined to a few officials and employees of the company, and the device was finally deposited in the model-room, to which admittance was granted only by special permission. In addition to the Chicago robberies to explain the revival of interest by the Yale & Towne officials they obtained knowledge that their rivals, the Russell & Erwin Mfg. Co., had devised a lock to prevent such robberies, as shown by the letters exchanged between said companies. The following statement by the Court of Appeals of the District of Columbia in the case of Howard v. Bowes (C. D., 1908, 547; 137 O. G., 733; 31 App. D. C., 619, 625;) is considered applicable in this case:

His invention, according to his own statement, was perfected sometime in the fall of 1904, and yet he did nothing toward asserting his rights until more than a year had elapsed, and his reason for then acting, as above stated, was that Bowes had placed his rack upon the market. Howard was under no obligation to give the public the benefit of his discovery, but by failing to do so he assumed the risk that some other inventor might do so and thus in the eyes of the law become the prior inventor, and as such entitled to a patent. (Mason v. Hepburn, C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86; Thomson v. Weston, C. D., 1902, 521; 99 O. G., 864; 19 App. D. C., 373; Matthes v. Burt, C. D., 1905, 574; 114 O. G., 764; 24 App. D. C., 265; Bliss v. McElroy, C. D., 1907, 537; 128 O. G., 458; 29 App. D. C. 120; Richards v. Burkholder, C. D., 1907, 563; 128 O. G., 2533; 29 App. D. C., 485.)

To the contention of Lawrence that activity on the part of the Yale & Towne people antedated their knowledge of the device of their rival it is sufficient to state that the original work of Bigelow and

Cundell, who were not the agents of Lawrence, cannot inure to the benefit of the latter. (Hunter v. Stikeman, C. D., 1898, 564; 85 O. G., 610; 13 App. D. C., 214, 226; Robinson v. McCormick, C. D., 1907, 574; 128 O. G., 3289; 29 App. D. C., 98, 111; Howell v. Hess, C. D., 1908, 315; 132 O. G., 1074; 30 App. D. C., 194.)

The decision of the Examiners-in-Chief is affirmed.

EX PARTE SHERMAN.

Decided June 18, 1909.

147 O. G., 237.

DESIGN-PATENTABILITY-MECHANICAL ADVANTAGES IMMATERIAL.

The possession of features having certain mechanical advantages Held to have no bearing upon the question of the patentability of a design. APPEAL from Examiners-in-Chief.

DESIGN FOR A NAIL.

Messrs. Alexander & Dowell for the applicant.

BILLINGS, Assistant Commissioner:

This is an appeal from the decision of the Examiners-in-Chief affirming the action of the Examiner of Trade-Marks and Designs rejecting a claim for an ornamental design for a nail.

The reference is: Catalogue for 1890, Simons Hardware Company, St. Louis, Figures C3346 and C3354.

The Examiner rejected the claim in this case, on the ground that the differences between applicant's design and that of the reference involved no invention as an ornamental design.

It is contended by applicant that the nail shown in the reference has a smooth concavo-convex head attached to a shank, the exterior surface of the head being absolutely plain, smooth, and unbroken in contour, whereas the nail shown in the application has a central circular protuberance, which imparts a stepped appearance thereto when viewed from the side and when viewed from the top the appearance of two concentric disks, one much smaller than and rising above the surface of the other. While there is a certain difference in the appearance of the two nails, it is not thought that this difference is such as to have required invention as an ornamental design.

Applicant also refers to certain advantages to be derived from the presence of the central protuberance such, for example, as protecting a skirt from injury and preventing distortion of the head when the nail is driven. These are only mechanical advantages and have no bearing upon the question of the patentability of the design. The decision of the Examiners-in-Chief is affirmed.

EX PARTE SUMNER IRON WORKS.

Decided August 27, 1909.

147 O. G., 237.

1. TRADE-MARKS-" IF NOT RIGHT-WRITE-WILL MAKE RIGHT "-ADVERTISING PHRASE NOT REGISTRABLE.

The phrase "If Not Right-Write-Will Make Right" is in the nature of a guaranty that the merchandise to which it is applied is of good quality, and it is not the proper subject of the technical trade-mark protection, (citing in re Central Consumers Company, post 329; 140 O. G., 1211; 32 App. D. C., 523.)

2. SAME-MARK CONTAINING DESTRUCTIVE PHRASE-NOT REGISTRABLE.

A mark comprising a circular figure bearing a monogram and the legend "If Not Right-Write-Will Make Right" is not registrable, since the legend is a descriptive phrase (citing Johnson v. Brandau, post, 303; 139 O. G., 732; 32 App. D. C., 348.)

ON APPEAL.

TRADE-MARK FOR SAWMILL, SHINGLE-MILL, WELL-DRILLING, PAPER-MILL, MINING, AND SMELTING MACHINERY, ETC.

Mr. E. G. Siggers for the applicant.

TENNANT, Assistant Commissioner:

This is an appeal from the action of the Examiner of Trade-Marks refusing to register a trade-mark comprising a circular figure bearing a monogram and also the legend "If Not Right-Write-Will Make Right."

The refusal of the Examiner to register the mark is based upon the fact that the legend above referred to is descriptive of the merchandise, and in view of the decision of the Court of Appeals of the District of Columbia in the cases in re Central Consumers Company (post, 329; 140 O. G., 1211) and Johnson v. Brandau (post, 303; 139 O. G., 732) is not registrable.

It is contended in behalf of the appellant that these words do not signify the grade, ingredients, or properties of the articles of merchandise, but merely suggest the general merits or excellencies of articles as coming from the applicant. It is further stated that the arrangement of these words upon the circular figure is a part of the integral design and that the mark as a whole should be permitted registration in the manner in which it is used upon the merchandise.

The phrase quoted is not merely a suggestion of the general excellence of the merchandise, as was the case in the authorities referred to by appellant, but is in the nature of a guaranty that the merchandise bearing this mark is of a good quality and that if it is not satisfactory suitable reparation will be made. It is, in my opinion, of the advertising character of which the Court of Appeals said in re Central Consumers Company, supra:

It was evidently the intention of Congress in placing these restrictions in the Trade-Mark Act to prohibit anyone from acquiring a property-right, protected

by law in its exclusive use, in a name possessing any inherent signification that would, of itself, enhance the sale or value of the article or articles to which it may be applied. In other words, it was intended to limit the selection to mere arbitrary words or designs, the value of which should consist alone in their becoming fixed in the public mind through continued use on the goods of the owner. It was not intended that the mark should lend value to the goods, but that the quality of the goods and the reputation of the owner should ultimately make the mark valuable as a symbol in the connection in which it may be used. Under the terms of this decision the phrase is clearly not the proper subject of a technical trade-mark protection.

In respect to the contention that the mark is registrable as a whole this case clearly falls within the ruling of the Court of Appeals of the District of Columbia in the case of Johnson v. Brandau, supra, in which it was held that where descriptive matter appears upon a mark presented for registration the mark should be refused registration; but the applicant should be allowed to disclaim or remove the objectionable features from the drawing forming part of his application for registration. In view of these conclusions it must be held that the action of the Examiner refusing the registration of this mark as presented is right.

The decision is accordingly affirmed.

CALIFORNIA FRUIT CANNERS ASSOCIATION v. RATCLIFF-SANDERS GROCER COMPANY.

Decided September 20, 1909.

147 O. G., 238.

TRADE-MARKS-OPPOSITION-FAILURE TO TAKE TESTIMONY-REOPENING.

Where a party to an opposition proceeding failed to take testimony, under the belief that a concession would be filed by the other party which would be advantageous to its interests, Held that it took the risk of the loss of its rights by such failure to take testimony and that jurisdiction would not be restored to the Examiner of Interferences to consider a motion to reopen and set new times for taking testimony.

ON PETITION.

TRADE-MARK FOR CANNED FRUITS.

Mr. W. R. Stone and Mr. Eugene C. Brown for California Fruit Canners Association.

Mr. F. T. F. Johnson for Ratcliff-Sanders Grocer Company.

TENNANT, Assistant Commissioner:

This is a petition that jurisdiction in the above-entitled interference be restored to the Examiner of Interferences to consider a motion to reopen and set times for the taking of testimony.

It appears that prior to the date upon which the present proceeding was instituted, April 13, 1909, the trade-mark claimed by the Ratcliff-Sanders Grocer Company was published in the OFFICIAL GAZETTE. Thereupon the California Fruit Canners Association filed a notice of opposition against the registration of that mark, but by failure to present testimony in the cause permitted judgment by default to be rendered against it.

It appears from the affidavit of Stone, counsel for the California Fruit Canners Association, that in January, 1909, during the pendency of the opposition proceedings, negotiations were entered into between the parties, the Ratcliff-Sanders Grocer Company offering to concede priority of use of the "Carnation " brand on canned fruits to the California Fruit Canners Association in the opposition andin the interference that will probably later be declared by the Examiner of Trade-Marks

in consideration that the California Fruit Canners Associationconcede to the Ratcliff-Sanders Grocer Company in such probable interference the use of the word "Carnation" on canned vegetables, dried fruits, pickled fruits, and vegetables and preserves

and that, upon advice of counsel, the California Fruit Canners Association did not forward a concession of the character proposed by its adversary, in view of a ruling of the Commissioner of Patents on March 15, 1909, in the case of The California Fruit Canners Association v. Knothe Wells & Bauer Company, which referred to several decisions of the Commissioner and of the Court of Appeals of the District of Columbia relating to the identity of merchandise of this character.

It appears, however, that Ratcliff-Sanders Grocer Company, in accordance with its suggestion, prior to May 10, 1909, placed in the hands of its counsel a concession of priority as to the use of the mark on canned fruits. It is stated in the affidavit accompanying this motion that

such concession of priority when executed should have been filed in the Patent Office and appear of record in the above-entitled matter that such concession, if executed, should be and is prima facie evidence of the concession of prior use to the California Fruit Canners Association by the Ratcliff-Sanders Grocer Company.

It is alleged that—

from the above statement of facts this affiant, the California Fruit Canners Association had good grounds for assuming and believing that said RatcliffSanders Company would in due time, before the time for the California Fruit Canners Association to take the necessary testimony to prove such priority, file the above-mentioned concession executed by said Ratcliff-Sanders Grocer Company, or would so amend the application for the registration of the “Carnation" brand as to eliminate all classes of goods of the same general class as those claimed by the California Fruit Canners Association.