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[Court of Appeals of the District of Columbia.]

IN RE WRIGHT & TAYLOR. IN RE C. H. GRAVES & SONS.
E. H. TAYLOR, JR., & SONS.

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IN RE

PROPERTIES-WHISKY,

"Straight" whisky, “blended" whisky, and " 'compound" whisky are goods of the same descriptive properties within the meaning of the TradeMark Act.

2. SAME

TEN-YEARS CLAUSE-CONTEMPORANEOUS USE-FRAUDULENCY THEREOF. A mark cannot be registered under the ten-years clause of section 5 of the Trade-Mark Act of February 20, 1905, when substantially the same mark was used by others on goods of the same descriptive properties during the ten-year period, even though such use was fraudulent or deceptive. Mr. A. E. Wallace for Wright & Taylor.

Mr. F. W. Hackett, Mr. Samuel L. Powers, and Mr. Clifford O. Warren for C. H. Graves & Sons.

Mr. George W. Rea and Mr. J. G. Carlisle for E. H. Taylor, Jr., & Sons.

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

VAN ORSDEL, J.:

These cases come here on appeals from a decision of the Commissioner of Patents in a trade-mark interference, involving the right to the registration of trade-marks for whisky, the dominating feature of each being the word "Taylor." All of the applications were refused by the Commissioner. The marks sought to be registered are indicated opposite the names of the respective applicants, as follows: Taylor & Williams, "Old Taylor; " Wright & Taylor, " Kentucky Taylor; " C. H. Graves & Sons, "G. A. Taylor;" and E. H. Taylor, Jr., & Sons, "Taylor." No appeal was taken by Taylor & Williams; hence they are eliminated from this inquiry.

The Commissioner found that the marks sought to be registered are not technical trade-marks. Each of the parties claims the right to register under the following provision of section 5 of the TradeMark Act of February 20, 1905:

That nothing herein shall prevent the registration of any mark used by the applicant or his predecessors, or by those from whom title to the mark is derived, in commerce with foreign nations or among the several States, or with Indian tribes, which was in actual and exclusive use as a trade-mark of the applicant or his predecessors from whom he derived title for ten years next preceding the passage of this act.

It is clear that the marks before us are not registrable as technical trade-marks. The right to registration under the above statute is

the sole question to be considered. It is conceded that each of the marks in question was used continuously by the party here claiming it for more than ten years prior to February 20, 1905.

The Commissioner of Patents found from the evidence that Wright & Taylor and C. H. Graves & Sons had been using their mark on goods purporting, from the advertisements and representations contained on the labels, to be pure whisky, when, in fact, the whisky was either a blend or a compound. The fraud thus practiced upon the public was held upon the authority of Levy v. Uri (C. D., 1908, 461; 135 O. G., 1363; 31 App. D. C., 441) to be sufficient to divest these parties of any standing in the Patent Office. We agree with the Commissioner that the evidence shows that the marks were used by Wright & Taylor and C. H. Graves & Sons on whisky represented to be pure, when, in fact, construing the evidence most liberally in their favor, it was only entitled, in the case of the former, to be marked a compound, and, in the latter, a blend. We also find no fraudulent or deceptive use of the mark by E. H. Taylor, Jr., & Sons.

Having established this fact as to their opponents, E. H. Taylor, Jr., & Sons insist that they have had exclusive use of the trademark in issue for ten years next preceding the passage of the TradeMark Act, inasmuch as the opposing parties are shown to have used their marks deceptively during that period. This contention is based upon the theory that compound and imitation whiskies are not goods. of the same descriptive qualities as pure, straight whisky. This argument would have great force in a court of equity in a suit for infringement or unfair competition, but we are considering the express terms of a statute. In section 1 of the Trade-Mark Act, we find that registration may be procured for a mark to be used on a "class of merchandise," and the applicant must name—

the class of merchandise and the particular description of goods comprised in such class to which the trade-mark is appropriated.

Section 5 forbids the registration of a mark the same as one known to be in use by another on "merchandise of the same descriptive properties," or which resembles closely the mark of another "appropriated to merchandise of the same descriptive properties." In section 16, one may render himself liable for damages for using a colorable imitation of the trade-mark of another on merchandise of "substantially the same descriptive properties." It will be observed that Congress used liberal terms in placing limitations upon the registration and use of similar trade-marks. This is to protect the owner in a liberal use of his mark, but more particularly to protect the public from imposition arising from confusing goods of the same general class bearing the same or similar marks.

It is insisted by counsel for E. H. Taylor, Jr., & Sons that the proviso to section 5 of the Trade-Mark Act is to protect rights already acquired at the time of the passage of the law. The mark in question being non-technical, no right could have been asserted to it as a trade-mark; hence, Congress took no right away. So long as there was not a right to be divested, there was none to be reserved. Congress, by this act, was not preserving an existing right, but providing a method by which a right that did not exist before might be acquired. Hence, it was within its province to place any restriction upon those seeking its benefits that it might deem proper. Since, therefore, E. H. Taylor, Jr., & Sons are here claiming a privilege, and not asserting a right, we think they come within the limitations of the statute.

The act of Congress of June 30, 1906, known as the "Food and Drugs Act," was aimed at the suppression of the manufacture and sale of adulterated food and drugs, and also to prevent their misbranding. The classification of whisky and the proper branding of it under this act, has been the source of considerable contention. Attorney General Bonaparte, in a decision interpreting this feature of the act (26 Opinions of Attorney General, 216) said:

The definition of "whisky" as a neutral spirit involves as its corollary that there can be such a thing as "imitation whisky." If the same process were followed of which we spoke in connection with artificial wine, namely, if ethylalcohol, either pure or mixed with distilled water, were given, by the addition of harmless coloring the flavoring substances, the appearance and flavor of whisky, it is impossible to find any other name for the product, in conformity with the pure-food law, than “imitation whisky."

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The Attorney General properly held that "blend," "compound and "imitation " whiskies are all entitled to the name of "whisky." They all belong to the one general class. They are " merchandise of the same descriptive properties." This view of the Attorney General is impliedly supported by a number of later decisions of the Federal courts. (Union Distilling Co. et al. v. Bernhard Bettman et al., not yet reported; Woolner & Co. et al. v. Percival G. Rennick, collector, et al., not yet reported; Levy v. Uri, supra.)

In Taylor Company v. Taylor, (85 S. W. Rep., 1085,) a suit between two of the parties to this interference, the Court of Appeals of Kentucky, considering the propriety of designating a mixture of whisky and ethyl-alcohol as "a blend," to protect the public from being defrauded by confusing it with "straight " whisky, said:

The defendant may properly sell his brand of "Old Kentucky Taylor," provided he so frames his advertisement as to show that it is a blended whisky; but he cannot be allowed to impose upon the public a cheaper article, and thus deprive appellant of the fruits of his energy and expenditures by selling his blended whisky under labels or advertisements which conceal the true character of the article, for this would destroy the value of appellant's trade.

This defines what we conceive to be the purpose, both of the TradeMark Act and the pure-food law; to prevent unfair competition, and to protect the public from being imposed upon by designing manufacturers and traders.

We have held to a liberal interpretation of those clauses of the Trade-Mark Act, forbidding the registration of similar marks to be used on the same general class of merchandise. In the case of Phoenix Paint & Varnish Co. v. John T. Lewis & Bros. Co., ante, 303; 139 O. G., 990; 32 App. D. C., 285; we said:

We think two trade-marks may be said to be appropriated to merchandise of the same descriptive properties in the sense meant by the statute when the general and essential characteristics of the goods are the same. The rule that goods must be identical would defeat the purpose of the statute and destroy the value of trade-marks. The test is whether there is such a sameness in the distinguishing characteristics of the goods as to be likely to mislead the general public.

The statute requires exclusive use, which we have held to be sole use. In Worcester Brewing Corporation v. Reuter, (C. D., 1908, 329; 133 O. G., 1190; 30 App. D. C., 428,) this court, considering the meaning of the word "exclusive," as used in section 5 of the TradeMark Act, said:

Inasmuch as the word is used in the statute in connection with the words "actual use," and both expressions are used to qualify the special right conferred by this provision of the act, we hold that an actual use must be shown to have been possessed and enjoyed by the applicant to the sole exclusion of all others. The use could not be exclusive if, during the period, it appears that another was using the same word as a trade-mark upon the same character of goods.

We have adhered to this ruling in many decisions since rendered. It cannot be said that there has been sole use by E. H. Taylor, Jr., & Sons of the word "Taylor" as a trade-mark for whisky when the record discloses the use of this mark by at least three others during the ten-years period on goods of the same descriptive properties.

A non-technical mark cannot be registered under this provision of the statute, when it is so similar to another mark in use during the same period as to cause confusion in trade. Assuming that Wright & Taylor are producing a whisky compound, and should advertise and mark it as such, and C. H. Graves & Sons are producing a whisky blend, and should advertise and mark it as such, they would doubtless have the right to use their respective marks without infringing the use of the mark of E. H. Taylor, Jr., & Sons. Can it be said that these three brands of whisky, though marked as above described, could come into the market, all bearing the "Taylor" mark, and not create confusion? This is inconceivable, and this is what the statute aims to prevent. They are all whiskies-" merchandise of the same descriptive properties "-produced and used for the same purpose. The difference is one of quality, and not of description. While it is

perhaps unfortunate that one honestly complying with the law is compelled to suffer at the hands of commercial sharks, there is no relief afforded in this proceeding. It must be found in another forum.

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.]

MOORE v. UNITED STATES, ex rel. LINDMARK.

Decided November 2, 1909.

149 O. G., 310; 33 App. D. C., 597.

1. PATENT LEGISLATION-FUNCTION OF THE COMMISSIONER OF PATENTS. "The Commissioner of Patents in passing upon applications or deciding controversies between rival applicants for patent of the same invention, exercises power that is essentially judicial. For that reason, Congress has the power to provide for a review of his decisions by appeal to the courts." 2. MANDAMUS.

The writ of mandamus cannot be used to perform the office of an appeal or writ of error or granted in any case where there is another adequate remedy.

3. SAME-FINAL ORDER-RIGHT OF APPEAL.

In an interference between F. and L. the decision of the Commissioner in favor of L. was reversed by the Court of Appeals of the District of Columbia. Thereafter L. filed with the Commissioner a petition that the interference be reopened for the purpose of taking further testimony. This petition was denied, but an order directing a patent to issue to F. was not entered. Held that mandamus would not lie to compel the Commissioner to reopen the case, since upon the entry of such final order L. would have the right of appeal to the court of appeals.

Mr. Webster S. Ruckman for the Commissioner of Patents.

Mr. George R. Hamlin, Mr. Frank S. Busser, and Mr. George J. Harding for the appellee.

SHEPARD, C. J.:

This is an appeal by the Commissioner of Patents from an order directing a writ of mandamus to issue commanding him to vacate a decision rendered in an interference proceeding in the Patent Office.

It is unnecessary to recite the allegations of the petition and return as there is no dispute concerning the facts which are matters of record.

Relator, Lindmark, filed an application for a patent for an exhaustheater for compound motors on January 19, 1903. October 31, 1903, one de Ferranti filed an application for patent for an improvement in steam-turbines and on March 9, 1905, filed another application as a division of the first. Pending this rival application and without. declaration of interference between the two, a patent was issued to

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