[Court of Appeals of the District of Columbia.]

IN RE CHASE.

Decided June 1, 1909.

146 O. G., 960; 33 App. D. C., 441.

PATENTABILITY—INVENTION-PROCESS OF TEMPERING METALLIC ARTICLES. Where the prior art disclosed the cooling of a tempering fluid by means of a liquid circulating in a cooling-coil and it was also old to introduce ice into a tempering-bath, Held that to cool such bath by a refrigerating-coil to a "point approximating the freezing-point" involved no invention. Mr. A. E. Parsons and Mr. W. F. Hall for the appellant. Mr. F. A. Tennant for the Commissioner of Patents

SHEPARD, C. J.:

Aurin M. Chase filed an application for an improvement in a tempering process, having four claims.

Claims 1 and 2 read as follows:

1. The herein-described process of tempering metallic articles which consists in providing a bath of tempering liquid, circulating a refrigerating medium therethrough to lower the temperature of the bath to a predetermined point, approximating the freezing-point, immersing in the bath the first article or batch of articles of a series to be tempered, maintaining the circulation of the refrigerating medium to counteract the heat given off by said article or batch of articles, whereby the bath is maintained at a substantially constant temperature during the tempering treatment, removing the first article or batch of articles and treating another article or batch of articles under similar conditions of the tempering-bath.

2. The herein-described process of tempering metallic articles, which consists in providing a bath of tempering liquid, immersing therein the article or articles to be tempered, and circulating in contact with the bath an artificial refrigerant so proportioned to the bath and the heat given off by the article or articles under treatment that the said bath will be maintained at a substantially constant temperature approximating the freezing-point.

Two other claims restrict the process to the circulation of the refrigeratory medium so proportioned to the heat given off that a portion of the liquid bath, less than the whole, will be congealed and maintained in substantially a congealed condition. The last two claims were allowed, and the first two rejected. From this rejection applicant has appealed.

The apparatus disclosed for carrying out the process, and the description show that the process consists in circulating through a tempering-bath, by means of a suitable conduit, a refrigeratory fluid of such temperature that the bath shall be constantly maintained at a temperature approximating the freezing-point, the heating of the bath by the hot materials inserted therein being constantly counteracted by the lowering of the temperature through the circulation of

the cooling medium. It is well known in the art of tempering metals that it is desirable to maintain the bath at a comparatively low temperature kept as constant as practicable in order to produce uniform tempering in the articles successively immersed therein. Each successive immersion tends to increase the heat, so that each will have a different tempering. Applicant states that for the purpose of securing uniform results it had been customary to introduce ice into the tempering-bath, as well also to employ a number of tanks or receptacles for the fluid; and he notes the difficulty of preserving a uniform temperature by such methods. Simonds, who has a patent for a hardening process, issued May 15, 1883, sought to procure uniformity of temperature in the tempering-tank through a pipe in the form of a flat spiral with coils nearly abutting, arranged near the top and to one side of the tank, slightly beneath the tempering fluid. A cold circulating agent is applied through this pipe at the point where the tempering fluid is most heated by the immersed metal. The pipe is connected with an overhead tank supplied with cold water, and the length of pipe and volume of cold water should be sufficient to keep the temperature of the tempering fluid below 85 degrees. He says in his specification:

I am aware that water has been circulated through tempering-tanks in a variety of ways; and the novelty of my invention consists in the arrangement of the pipes near the top and to one side of the tank and immediately beneath the tempering fluid.

Another reference by the Office is to the patent to Gillon, March 20, 1888, for a method of tempering Bessemer-steel wire. This process consists in first treating the wire to give it shape and then submerging it in a bath of molten metal of a temperature, preferably, of about 650 degrees. It was then cooled by sudden immersion in a common tempering-bath of water, oil or other tempering fluid, the temperature of which should not be over 60 degrees; the best results being attained with the temperature between 30 and 40 degrees. Gillon shows no form of tempering-tank or means for reducing the same to the desired temperature and keeping it uniform.

Applicant and Simonds use substantially the same means for preserving the uniformity of the temperature of the tempering fluid. Both introduce a coil of pipe through which the cooling medium flows. The only difference in their processes is that Simonds indicates a temperature of about 85 degrees, instead of one approximating the freezing-point. Former processes using ice in the bath would approximate the freezing-point, and Gillon's process calls for a temperature between 30 and 40 degrees, which is approximately freezingpoint. In the light of the old methods, and these patented methods, it is clear that if there is any patentable novelty in the plaintiff's process, it consists entirely in that pointed out specifically in the claims that were allowed. While his process may be a great improvement

upon Simonds's, it involved no invention to supply the latter's apparatus with a refrigerating medium adapted to reduce the temperature to a lower point than he indicated, and especially when that lower temperature was used in the processes of others.

The appealed claims were rightly rejected, and the decision will be affirmed. The clerk will certify this decision to the Commissioner of Patents.

[Court of Appeals of the District of Columbia.]

LANG V. GREEN RIVER DISTILLING COMPANY.

Decided June 1, 1909.

48 O. G., 280; 33 App. D. C., 506.

1. TRADE-MARKS OPPOSITION-OPPOSER'S RIGHT TO REGISTRATION IMMATERIAL. Where in an opposition proceeding it appears that the opposer adopted its mark prior to the date of adoption by the applicant of his mark, the question of the registrability of opposer's mark is immaterial, the sole question to be considered being that of the similarity of the marks.

2. SAME-SAME-SIMILAR MARKS-" GREEN RIBBON," "GREEN RIVER."

Held that registration of the words "Green Ribbon" as a trade-mark for whisky was properly refused in view of the prior use of the words "Green River" on the same class of goods, as the similarity of the marks is such as to be likely to cause confusion in the mind of the public.

Mr. E. T. Fenwick for the appellant.

Mr. F. M. Phelps for the appellee.

SHEPARD, C. J.:

The appellant, Sam Lang, made application for the registration of a trade-mark for whisky consisting of the words "Green Ribbon" in large printed letters, beneath which is a monogram consisting of the letters S. L. within a circular wreath. After some amendments to the application, unimportant to mention, the application was allowed and passed to publication on April 22, 1907. June 6, 1907, the Green River Distilling Company filed an opposition to the registration. It alleged that the words "Green River," had been adopted and used as a trade-mark for whisky by J. W. McCulloch in 1890, and continuously used thereafter by him and his successor, said company, of which corporation McCulloch was the president. The right to use said mark had been assigned to said company at the time of its organization in 1903. It was alleged that he had registered the words as a trade-mark on December 25, 1900; that the company had registered it on August 8, 1905, and reregistered it on January 13, 1907. The final allegation was that the words " Green Ribbon," which

Lang sought to register, are so nearly like "Green River" in sound and appearance as to be likely to cause confusion in the trade, and to permit applicant's goods to be substituted for opposer's, to the damage of the business and reputation of the latter.

The Examiner of Interferences was of the opinion that the real question was whether the respective words "Green Ribbon" and "Green River" were so nearly alike as to be liable to confuse the public.

Much testimony was taken, from which it clearly appears that' "Green River" had been adopted as a trade-mark and used since 1890 by McCulloch and his successor, on a high-grade distilled whisky made in a distillery owned by McCulloch and by him sold to the company that was located near the Green river in Kentucky. It also appears that the said whisky, so marked, had been widely advertised throughout the United States, and has been sold extensively in this country and abroad. It appears that Sam Lang is a retail dealer in liquor in the cities of Denver and Cripple Creek, in the State of Colorado. He applied the mark "Green Ribbon" to whisky bottled by him, the place of manufacture of which was not shown. Nor does it appear at what date Lang commenced the use of the mark. This whisky does not appear to have had an extensive sale, and there are some circumstances in evidence which would lead to an inference that Lang adopted the mark with a view to obtaining the benefit of the reputation of the Green River whisky which was well established in Denver and other places in the State of Colorado. The testimony of manufacturers and dealers in whisky, on behalf of the appellee, tended to show that the general public would likely be confused and deceived by the similarity of the respective marks. Testimony of witnesses on behalf of Lang, among whom were barkeepers in his employ, and users, and sellers of whisky, tended to show that there would be no confusion in the marks by the public. The Examiner held that there was no resemblance sufficient to produce confusion, and dismissed the opposition. On appeal to the Commissioner, this decision was reversed, and the opposition sustained.

Under the testimony we think it immaterial to inquire into the registration obtained by the appellee under the ten-years clause of the Trade-Mark Act, or to consider whether the appellant would be entitled to registration of “Green Ribbon" as a technical trade-mark. The substantial question, as stated by the tribunals of the Office, is as to whether the proposed trade-mark, "Green Ribbon," so nearly resembles the trade-mark of the appellee

as to be likely to cause confusion in the mind of the public, or to deceive purchasers. (Sec. 5, Trade-Mark Act.)

As said by Mr. Justice Bradley:

Similarity, not identity, is the usual recourse when one party seeks to benefit himself by the good name of another. What similarity is sufficient to effect the object has to be determined in each case by its own circumstances. We may say, generally, that a similarity which would be likely to deceive or mislead an ordinary, unsuspecting customer, is obnoxious to the law. (Celluloid Mfg. Co. v. Cellonite Mfg. Co., C. D., 1887, 571; 41 O. G., 693; 32 Fed., 94, 97.)

The dominating feature of appellant's mark is the words, “Green Ribbon," printed in large letters. Green River whisky had been well advertised and had an established reputation as an excellent article. As intimated above there are some circumstances to indicate that when Lang undertook to introduce his whisky he had in mind the mark of the appellee. The word "Green" is the first object that attracts the eye of the purchaser when seen, and the ear when uttered. "River" and "Ribbon" are somewhat similar when represented or sounded. That Lang used the monogram and a label differing in color of background from that of appellee, does not weaken the inference as to his intention in adopting the conspicuous feature of the mark. Had he wanted to avoid all confusion with appellee's mark, he could readily have found another, and as attractive a name for his product. There is nothing in the evidence tending to show any other circumstance suggesting the name adopted, other than its resemblance to the well-known mark of the appellee.

As was said by the Commissioner, the similarity of the labels is far more striking than their dissimilarity. And we agree in his conclusion as thus stated:

The words as pronounced are not easily distinguishable, and the appearance of" Green Ribbon" upon a bottle of whisky, without opportunity for comparison with a bottle containing the label bearing the mark Green River" would be likely to cause confusion in the mind of the public.

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We have not deemed it important to review the many cases in which the question of similarity and confusion has been considered. These, or most of them, will be found in the decisions below and in the briefs of counsel. In the application of the general principle which is embodied in the statute, each particular case turns upon its own special facts and circumstances and it would be practically impossible to find another substantially identical in respect of these.

Being of the opinion that there was no error in the decision it will be affirmed; and the clerk will certify this decision to the Commissioner of Patents.