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2. SAME-SAME-PROOF OF USE OF SUCH FEATURES.

By the passage of the Trade-Mark Act Congress did not intend to confer upon any dealer the right to register fictitious marks for the purpose of . limiting and restricting the field of registration of others. When, there fore, the Commissioner is satisfied that the applicant is attempting to register a particular feature of a registered mark, he should require evidence that the mark of the application has actually been used as a trade mark. Not having limited his claims in his original application, the applicant cannot prove statutory use of the mark of the second application

by showing such use of the registered mark. 3. SAME_" BLACK CAPSULES FOR A MEDICINE-DESCRIPTIVE.

The words “Black Capsules” are not registrable as a trade mark for a medicine of a dark color which is put up in transparent capsules, since

these words are clearly descriptive of the filled capsules. Mr. D. H. Decker and Mr. J. 1'. Ewin for the appellant. Mr. A. S. Pattison for the Canton Pharmacy Company.

ROBB, J.:

This is an appeal from the decision of the Commissioner of Patents declining to register to either of the parties to a trade-mark interference proceeding the words “ Black Caps” or “Black Capsules” as a trade-mark for medicine, the ground of the decision being that the mark is descriptive of the goods to which it is applied.

Prior to the present application of Planten he applied for and was granted registration of the following trade-mark for the same remedy to which the mark of the interference is applied:

“ PLANTEN'S
C & C or BLACK

CAPSULES.” The lettering of the registered mark, like the lettering of the mark of the application, is on a black rectangular background. Along with the application of the interference Planten filed specimens of the mark as used which were identical in form with the mark prevously registered. Thereupon counsel for the Canton Pharmacy Company moved a dissolution of the interference on the ground that there was no interference in fact between the marks as actually used by the parties. This contention was overruled, the Commissioner citing as his authority in re Standard Underground Cable Co., (C. D., 1906, 687; 123 O. G., 656; 27 App. D. C., 320.) Thereupon testimony was taken by the parties and hearings had thereon before the Examiner of Interferences and the Commissioner in turn. Each of these tribunals awarded priority of adoption and use to the Canton Company, but each held the mark descriptive and refused it registration.

The first question for determination involves the correctness of the Commissioner's ruling to the effect, that a party may segregate his trade-mark, and, by registering each of its features separately,

thereby prevent the registration by another of any particular part of the mark as actually used notwithstanding that such registration and use by another would cause no confusion to the trade and no prejudice to the first registrant. The statement of the proposition, we think, carried its own refutation. A firm may have one or a dozen marks, but, owing to the nature and object of trade-marks, it seldom happens that more than one mark is used by any dealer to designate a particular article. Thus the record shows that Planten has used the registered mark to designate the goods to which the mark of the application is said to apply. In contradiction of the statement in his application he filed with his application not the mark of the application but the mark previously registered. The TradeMark Act confers the right of registration uponthe owner of a trade mark used in commerce with foreign nations, or among the several States, or with Indian tribesproviding the applicant complies with various requirements stated in the act and files a verified declaration that the conditions entitling him to the benefit of registration exist. Statutory use of the mark is a prerequisite to the right of registration. In the Cable Co. case it was merely held that for the purpose of registration the applicant may determine of what his mark consists; but, having described and shown one thing, he cannot, when the exigencies of the situation demand, limit his claim to a particular feature of the original mark. (Johnson v. Brandau, ante, 298; 139 O. G., 732.)

By the passage of the Trade Mark Act Congress did not intend to confer upon any dealer the right to register fictitious marks for the purpose of limiting and restricting the field of registration of others. When, therefore, the Commissioner is satisfied that the applicant is attempting to register a particular feature of a registered mark, he should require evidence that the mark of the application has actually been used as a trade-mark. Not having limited his claims in his original application, the applicant cannot prove statutory use of the mark of the second application by showing such use of the registered mark. In other words, proof of the use of the words “ Planten's C & C or Black Capsules," in a case where those words have been registered as a trade-mark, does not establish the use of the words “Black Capsules” as a trade-mark, for the words eliminated from the registered mark, are, under the prior application, an essential part of that mark.

There being no evidence in the record of statutory use of the words “ Black Capsules” as a trade-mark by Planten, the Commissioner should have refused registration to Planten on that ground. Since, however, he had the right under section 7 of the Trade-Mark Act to refuse registration to both parties, (in re Herbst, ante, 331; 141 0. G., 287,) we will proceed to determine the correctness of his conclusion, that the mark of the issue is descriptive of the goods to which it is applied. The record shows that the medicine contained in these so-called “ Black Capsules” is of a dark color and that the capsules are transparent. The word “capsule” is aptly descriptive of the receptacle of the medicine. The medicine being of a dark color, we think it follows that the words “Black Capsules," in a general sense, are descriptive of the filled capsules. To permit the registration of these words as a trade-mark would deprive other dealers of the right to use them in describing their goods, and, owing to the nature of the remedy, confer a practical monopoly upon the registrant. This view is strengthened by the testimony to the effect that it was the trade and not either of the parties that first used the words “Black Capsules" in describing this remedy.

The decision of the Commissioner of Patents is affirmed, and the clerk of this court will certify this opinion and the proceedings in this court to the Commissioner of Patents, as required by law.

[Court of Appeals of the District of Columbia.]

BLUTHENTHAL & BICKART v. BIGBIE Bros. & Co.

Decided April 6, 1909.

143 0. G., 1346; 33 App. D. C., 209.

TRADE-MARRS-INTERFERENCE-OPPOSITION-RES ADJUDICATA,

Where after the determination of an interference between two applicants for trade-mark registration the unsuccessful party files an opposition to the registration by the other party, Held that the opposition was properly dismissed, as the judgment in the interference was conclusive as to every question that was or might have been presented therein.

Mr. J. L. Atkins for the appellant.
Mr. E. T. Fenwick and Mr. S. V. Kemp for the appellee.

SHEPARD, C. J.:

This is an appeal from a decision of the Commissioner of Patents dismissing an opposition to the registration of a trade-mark.

Bigbie Bros. & Co. applied for the registration of " Old Velvet” as a trade-mark for whisky. The application was passed for publication, when Bluthenthal & Bickart filed an opposition thereto. Applicant met this opposition with a plea of former adjudication. The facts alleged in this plea and supported by the record of the proceedings referred to are substantially these: On April 4, 1905, Bluthenthal & Bickart applied for the registration of “Old Velvet” as a trade-mark for whisky. On April 17, 1905, Bigbie Bros. & Co. filed an application for the registration of the same mark. After both applications had been passed for publication an interference was declared between the parties, in which was included a third applicant. Testimony having been taken, the right to register was awarded to Bigbie Bros. & Co. The third party acquiesced in the final decision, but Bluthenthal & Bickart took an appeal to this court, which, on June 4, 1907, affirmed the decision of the Commissioner. (C. D., 1907, 664; 130 0. G., 2068; 30 App. D. C., 118.) Before registration was had under said judgment, Bluthenthal & Bickart filed this opposition. The chief ground of this objection is, that Bluthenthal & Bickart and others had for many years used the said trade-mark within the knowledge of Bigbie Bros. & Co., who had never attempted to enforce any right of exclusive use, wherefore the former will be damaged by its registration by the latter. It is further alleged that the mark as used by Bigbie Bros. & Co. is fraudulent and misleading in that said company applies it to an article that is not whisky, but a spurious imitation of the same.

The plea of former adjudication was sustained, and from the final judgment dismissing its opposition, the Bluthenthal & Bickart corporation has appealed.

The Commissioner did not err in sustaining the plea of former adjudication and dismissing the opposition.

There must be an end of litigation in the Patent Office as well as elsewhere, and it is well settled that the doctrine of res ad judicata applies to proceedings therein in the same manner as in the courts. (Blackford v. Wilder, C. D., 1907, 491; 127 0. G., 1255; 28 App. D. C., 535, 540; Horine v. Wende, C. D., 1907, 615; 129 O. G., 2858; 29 App. D. C., 415; in re Edison, C. D., 1908, 327; 133 O. G., 1190; 30 App. D. C., 321; Newcomb Motor Co. v. Moore, C. D., 1908, 332; 133 0. G., 1680; 30 App. D. C., 464, 477; Carroll v. Hallwood, C. D., 1908, 444; 135 0. G., 896; 31 App. D. C., 165.)

The parties to the opposition being the same as in the interference proceeding, and the subject-matter being the same, the judgment in the former is conclusive as to every question that was or might have been presented and determined therein.

The first ground of the opposition was substantially presented and determined in the interference proceeding. (Bluthenthal & Bickart v. Bigbie, C. D., 1907, 665; 130 O. G., 2068; 30 App. D. C., 118.) The second ground as to fraudulent use of the trade-mark by Bigbie Bros. & Co. could have been determined in the interference proceeding also, though it was not actually presented. (Schuster Co. v. Muller, C. D., 1907, 455; 126 O. G., 2192; 28 App. D. C., 409, 414; Levy v. Uri, C. D., 1908, 461; 135 O. G., 1363; 31 App. D. C., 441, 443.)

It is too late to raise that question now by a mere change in the form of the proceeding from interference to opposition. The decision will be affirmed. It is so ordered, and the clerk will certify this decision to the Commissioner of Patents as the law requires.

[Court of Appeals of the District of Columbia.]

IN RE NASH HARDWARE Co.

Decided April 6, 1909.

143 0, G., 1347; 33 App. D. C., 221.

TRADE-MARKS—“OUR WORTH” ANTICIPATED BY WORTH."

The marks “ Worth" and " Our Worth" when appropriated to goods of the same descriptive properties would be likely to cause confusion in the mind of the public and deceive purchasers.

Mr. J. G. Meyers for the appellant.
Mr. Frederick A. Tennant for the Commissioner of Patents.

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ROBB, J.:

This appeal brings into review the decision of the Commissioner of Patents refusing to register the words “Our Worth" as a trademark for hatchets, axes, saws, pocket-knives, razors, scissors, chisels, adzes, planes, and drawing-knives. The grounds for the refusal are: (1) that the mark so nearly resembles a known and registered trademark of another as to be likely to cause confusion in the mind of the public and to deceive purchasers, and (2) that it is descriptive of the quality of the goods.

During the progress of the case in the Patent Office the attention of the applicant was directed to the registration in that Office in 1899 by B. Worth & Sons, of Sheffield, England, of the word

Worth” as a trade-mark for cutlery and edge-tools. Thereupon applicant contended that B. Worth & Sons had abandoned the use of their mark, and, as evidence of such abandonment, filed an affidavit by Mr. Nash, president of the applicant company, in which he stated that he had made diligent search “both by correspondence and personal investigation " to ascertain whether or not B. Worth & Sons had any trade in this country in edge-tools under the brand “Worth,” and that he had not seen any goods under such brand. Supplementing his affidavit he filed two letters, which were referred to therein. One of these letters was from a Mr. Buch of New York, who stated that the firm of Worth was formerly represented in this country by the Supplee Hdw. Co., of Pa., but that the brand at the time he wrote was entirely obsolete, and that in order to secure more definite information he would write the Supplee Company and forward their reply to applicant. The reply does not appear in the record. There does appear, however, the other letter referred to in the affidavit of Mr. Nash. This letter was from a Mr. Quirk, of New York, and stated that he had just heard from the firm's Shef

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