He explained this could be done very easily by interfering with the action of 821 on the 913. He illustrated this by using a lead-pencil on the $21, preventing it from operating the 913.

He fixes the date of this disclosure as prior to a vacation which he took from August 5th to August 13th. This testimony, while more definite as to the date than that of Miss Conkling, is also open to the objection that it fails to show that appellant was in possession of anything more than the conception of a result which he wished to accomplish.

It appears from the record that appellant disclosed to the witness Tripp the automatic totaling device, and also the idea "of taking a subtotal through the operation of the error-key." There is, however, a failure to establish the date of this disclosure prior to the filing of appellee's application. This witness was instructed by appellant to make working drawings of the invention disclosed to him. These drawings were begun on September 8, 1904, and finished on the 22nd of the same month. Tripp also testified that appellant first approached him on the subject about two weeks prior to his beginning work on the drawings, which was more than a month subsequent to appellee's filing date. After the completion of the drawings, a machine, which is in evidence, was built there from. It is self-evident, from an examination of the drawings and the machine, that, either appellant had not conceived the invention in issue, or, having conceived it, had not disclosed it to Tripp, for neither the drawings nor the machine contain means for taking a subtotal.

It must, therefore, be held, on this branch of the case, that appellant has failed to overcome the heavy burden resting upon him.

It is contended by counsel for appellant that a machine constructed in accordance with appellee's application would be inoperative, and, therefore, appellee is not entitled to make the claims of the issue. To prove that such contention is incorrect, a machine was built and offered in evidence, which corresponds to appellee's disclosure except that the slot in the pitman, instead of being L-shaped with straight edges, is made with the lower branch of the slot slightly curved. This change renders the device operative, preventing the camming action found to take place in the construction shown by the original disclosure. All three tribunals of the Patent Office held that the change made required only the skill of the mechanic, and we are not disposed to overrule their judgment on this question.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required.

[Court of Appeals of the District of Columbia.]

IN RE JOHANN HOFF.

Decided April 6, 1909.

143 O. G., 260; 33 App. D. C., 233.

1. TRADE-MARKS-PRESUMPTION AGAINST RIGHT TO REGISTRATION RAISED BY A DECREE OF A Court.

Where an applicant is confronted with a decree of a court which at least raises a strong presumption against his right to registration, that presumption is not overcome by the formal statement contained in the affidavit in support of his declaration.

2. SAME SIMILARITY-"HOFF'S" AND "LEOPOLD HOFF's."

The words "Hoff's" and " Leopold Hoff's" are so similar as to be likely to cause confusion when applied to the same class of goods, the word Hoff's" being the predominating feature.

Mr. E. T. Fenwick for the appellant.

Mr. Frederick A. Tennant for the Commissioner of Patents.

VAN ORSDEL, J.:

This is an appeal from the decision of the Commissioner of Patents refusing the registration of the name "Hoff's" as a trade-mark for malt extracts. The applicant corporation bases its right to the registration of this mark on the allegation of exclusive use of the mark for a period of more than ten years prior to the passage of the present Trade-Mark Act.

It appears that the appellant was the plaintiff in a suit in the United States Circuit Court for the Southern District of New York, brought against Tarrant & Company to restrain that company from using the word "Hoff's" as a mark for malt extracts. Tarrant & Company were agents for the goods of one Leopold Hoff, of Hamburg, Germany, and were placing said goods upon the market bearing the mark of "Hoff's Malt Extract." The court restrained Tarrant & Company from using the mark "Hoff's Malt Extract," and required them to prefix the words by the word "Leopold," making the mark" Leopold Hoff's Malt Extract." In the opinion the Court said:

The public ought to know that the defendant's extract is made by Leopold and not Johann Hoff. The defendant concedes this by the use of the perpendicular label. How can the defendant object to imparting this information in a manner so plain that no mistake can be made, and, when this is done, what further ground of complaint will the complainant have? It is thought that the defendant should be required to print the name "Leopold" before the words "Hoff's Malt Extract" on its large label, so that the line will read, in type of the same size, “Leopold Hoff's Malt Extract." (Johann Hoff v. Tarrant & Co., 71 Fed., 163.)

The decree in this ease was entered January 4, 1896, and was affirmed by the Court of Appeals of the Second Circuit October 21, 1896. (Tarrant & Co. v. Johann Hoff, C. D., 1897, 795; 78 O. G., 1107; 76 Fed., 959.)

It is conceded that the word "Hoff's" would not be registrable as a technical trade-mark, but it is insisted by the appellant that there is nothing in this record to show that the word "Hoff's," without any prefix, was used by any other than appellant during the period of ten years prior to the passage of the Trade-Mark Act of February 20, 1905. It is insisted that while the decree entered in the circuit court in 1896, and affirmed by the circuit court of appeals in October of the same year, restrained Tarrant & Company from using the word "Hoff's," there is no evidence in the record to show conclusively that Tarrant & Company used this mark within the period of ten years prior to February 20, 1905. It will be observed that the decree affirmed by the circuit court of appeals was entered almost a year after the period within which the applicant is required to show exclusive use of the word sought to be registered. The decree entered against Tarrant & Company restraining it from using the words "Hoff's Malt Extract" stated that it, the defendant company, hadcontinuously sold in the United States a malt extract manufactured by Leopold Hoff in the city of Hamburg, in the Empire of Germany, in bottles with labels affixed thereto having printed on the front thereof, the words Hoff's Malt Extract."

66

Conceding, as appellant does, that it has no right to the registration of its mark as a technical trade-mark or because it was successful in its suit against Tarrant & Company, it is confined to the sole question of whether or not it has had exclusive use of the mark for more than ten years immediately prior to February 20, 1905. It is insisted that the affidavit filed in support of the application, to the effect that appellant has had such exclusive use, casts the burden of proving the contrary upon the Commissioner of Patents. We are not impressed with this contention. The applicant for registration of a trade-mark is required to satisfy the Commissioner by clear and convincing proof that he is entitled to the claim made. When the applicant is confronted, as in this case, with a decree of court, which, at least, raises a strong presumption against his right to registration, the presumption is not overcome, or the burden of proof shifted, by the formal statement contained in the affidavit in support of his declaration.

The circumstances of the suit of appellant against Tarrant & Company and the language of the decree are sufficient to create a presumption against the right of appellant to have its mark registered, until removed by competent evidence, as to justify the Commissioner in refusing registration. Appellant being a party to the former suit, was in position to have easily furnished such proof if

21895-H. Doc. 124, 61-2-26

it was available, and, in the absence of any attempt on its part to do so, the reasonable presumption is that it does not exist. This court has held that to authorize the registration of a non-technical trademark, the applicant must have had sole use of the mark, to the exclusion of all others, for ten years next preceding the passage of the Trade-Mark Act of February 20, 1905. (Worcester Brewing Co. v. Reuter & Co., C. D., 1908, 329; 133 O. G., 1190; 30 App. D. C., 428; Brown-Forman Co. v. Beech Hill Distilling Co., C. D., 1908, 384; 134 O. G., 1565; 30 App. D. C., 485; Kentucky Distilleries & Warehouse Co. v. Old Lexington Club Distilling Co., C. D., 1908, 417; 135 O. G., 220; 31 App. D. C., 223.)

From the foregoing, we have no difficulty in finding a concurrent use of the word "Hoff's" as a mark by appellant and Tarrant & Company within the ten years' period. The suit, however, against Tarrant & Company did not involve the use of the word as a trademark, but was to prevent unfair competition. This leaves the question open for our consideration, whether the word "Hoff's" and the words "Leopold Hoff's," when applied to malt extracts, are so nearly similar as to create confusion in trade. A trade-mark is determined by its dominant feature. In these marks, the word "Hoff's" is the dominant feature; and we think the goods marked "Hoff's Malt Extract" might easily be mistaken by the purchasing public for the goods of Leopold Hoff, and, on the other hand, the goods of Leopold Hoff might be mistaken for the goods of appellant. Applying the rule announced by this court in Kentucky Distilleries & Warehouse Co. v. Old Lexington Club Distilling Co., supra, neither the mark" Hoff's " nor the mark" Leopold Hoff's" is entitled to registration. In that case we said:

There can be no doubt but what the use of the trade-mark "Old Lexington Club" would tend to mislead and confuse the public with the words "Lexington Club," which are shown to have been widely used by appellant for a long period of time. Confusion is not only forbidden between registered trademarks, but between a registered mark and a mark known to be in use. Both of the marks in question have long been in general use, and the registration of either one would tend to confuse the public mind with the other. (In re S. C. Herbst Importing Co., C. D., 1908, 383; 134 O. G., 1565; 30 App. D. C., 297.) Where two marks are so nearly identical as to tend to confuse and mislead the public, neither is entitled to registration, even under the ten-years clause of the act of 1905.

Viewing this case from any standpoint, there is such a total failure on the part of appellant to establish exclusive use of the mark here sought to be registered during the ten years' period as to justify the refusal of its application.

The decision of the Commissioner is affirmed, and the clerk is directed to certify these proceedings as by law required.

[Court of Appeals of the District of Columbia.]

ROLFE v. KAISLING v. LEEPER.

Decided March 2, 1909.

143 O. G., 562; 32 App. D. C., 582.

1. INTERFERENCE-REDUCTION TO PRACTICE-TEST-SIMPLE DEVICES.

The mere construction, without test, of an electrical-circuit protector comprising means operable upon an excess of current for protecting the circuit and having provisions whereby it is automatically reset and resoldered in reset condition Held to constitute a reduction to practice in view of the condition of the prior art.

2. SAME

PRIORITY-DELAY IN FILING

PRACTICE.

APPLICATION

AFTER REDUCTION TO

In the absence of evidence showing actual abandonment of the invention a mere failure to file an application for patent for about four years will not be considered as an estoppel by concealment within the meaning of Mason v. Hepburn (C. D., 1898, 510; 84 O. G., 147; 13 App. D. C., 86) and Warner v. Smith, C. D., 1898, 517; 84 O. G., 311; 13 App. D. C., 111.)

3. SAME-SAME-EVIDENCE-ALLEGED DISCLOSURE TO OPPOSING PARTY-FAILURE

TO TESTIFY.

Where a party to an interference testifies that he described to the opposing party certain experiments which he had made involving the invention of the issue and it appears that such party at the time of such disclosure was highly skilled in the art and that prior thereto he was not in possession of the invention, the failure of such party to testify in his own behalf justifies the conclusion that the testimony is true.

Mr. A. M. Belfield, Mr. L. S. Bacon, and Mr. J. H. Milans for the appellant.

Mr. W. C. Jones, Mr. R. L. Ames, Mr. A. B. Seibold, and Mr. G. R. Hamlin for the appellee.

ROBB, J.:

This is an appeal by Rolfe from the decision of the Commissioner of Patents awarding priority of invention to Leeper, the junior party to an interference proceeding. The claims of the issue are stated in the following counts:

1. An electrical controller comprising thermally-operable securing means releasable on a change in electrical-circuit conditions, and having provisions whereby it is automatically resecured in operable condition preparatory for another operation.

2. An electrical-circuit protector comprising solder-controlled devices for protecting the circuit on the passage of an unduly strong current, and having provisions for automatically resoldering itself preparatory for another operation.

3. An electrical-circuit protector comprising a movable part, a solder joint for normally securing said part in position, a thermal device for releasing said solder joint, and means for moving said movable part, said protector having provisions for automatically resoldering said joint with the protector in operative condition.