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FALK TOBACCO COMPANY v. KINNEY TOBACCO COMPANY.

Decided March 12, 1909.

142 0. G., 567.

TRADE-MARRS-INTERFERENCE-MOTION FOR DISSOLUTION BASED ON TESTIMONY

TRANSMISSION. A motion to dissolve a trade-mark interference based on the ground that the labels introduced during the taking of testimony contain certain decep

tive statements should be denied transmission. APPEAL ON MOTION.

TRADE-MARK FOR CIGARS AND CIGARETTES.

Mr. Arthur Falk and Mr. Edward W. Cady for Falk Tobacco Company.

Messrs. Meyers, Cushman & Rea for Kinney Tobacco Company. MOORE, Commissioner:

This is an appeal from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve this interference upon the ground thatmotions for dissolution do not lie where based upon the testimony.

This interference is between a registered trade-mark of the Kinney Tobacco Company and the application for registration of the Falk Tobacco Company. Interference was declared on September 22, 1908. No motion for dissolution was filed within the time provided for by Rule 49 of the Trade-Mark Rules. It is alleged on behalf of Kinney Tobacco Company that during the examination of witnesses Moses Falk, Arthur Falk, and Robert E. Lane it appeared that the labels bearing the trade-mark sought to be registered by the Falk Tobacco Company contain certain deceptive statements, and it is stated in the motion for transmission that the reason why this motion was not brought earlier is thatthe flagrancy of the deception was not realized with the force which comes from the testimony because the testimony shows that the deceptive guise of the label was deliberately and intentionally entered upon by the designer of the label.

The reasons given are clearly not sufficient to excuse the delay in bringing the motion for dissolution of the interference. The alleged deceptive matter referred to at the hearing appears upon the labels filed as specimens in the application for registration of the Falk Tobacco Company. The Kinney Tobacco Company has had access to that application at all times since the declaration of this interference. Furthermore, for reasons similar to those stated in the decision in Ellis v. Schroeder v. Allen (C. D., 1908, 146; 134 O. G., 1803) and cases cited therein, a motion for dissolution should not be transmitted where it is based upon facts brought out in the testimony

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which if accepted as true will form a basis for the final decision in the interference.

Section 7 of the Trade-Mark Act provides, in part:

In every case of interference or opposition to interference he (the Commissioner) shall direct the Examiner in charge of interferences to determine the question of the right of registration of such trade-mark and of the sufficiency of the objections to registration in such manner and upon such notice to those interested as the Commissioner may by rules prescribe.

In the cases of Schuster v. Muller (C. D., 1907, 455; 126 0. G., 2192; 28 App. D. C., 409) and Lery & Co. v. Uri (C. D., 1908, 461; 135 0. G., 1363; 31 App. D. C., 441) the Court of Appeals of the District of Columbia held that because of the misleading statements on labels containing the trade-mark applicant for registration could claim no property right in such mark and was not entitled to the benefits provided by the Trade-Mark Act. It therefore follows that the question raised upon the motion for dissolution is one which may properly be considered upon the final hearing upon the question of the right to registration in the interference proceeding.

It is urged in behalf of the Kinney Tobacco Company that whenever it appears in any way during the course of an interference proceeding between an applicant and a registrant that a bar exists against the registration of the trade-mark to the applicant proceedings should be stopped and the interference dissolved, so that the holder of the registered trade-mark will not be subjected to needless expense in defending his prima facie right. In cases where such alleged facts are brought out during the taking of testimony the applicant should be given opportunity to explain, if possible, the character of the alleged deceptive matter. It therefore follows that a decision based upon such grounds should be rendered only at the final hearing at the interference.

The decision of the Examiner of Interferences is affirmed.

STEVENS V. PATTERSON.

Decided March 29, 1909.

142 0. G., 568.

1. BRIEFS-INTERLOCUTORY HEARINGS.

Where at a hearing on a motion for dissolution a brief was filed after the attorney had made his argument and near the close of the hearing, Held that this brief was filed in compliance with the ruling in Royce v. Kemp

shall. (C. D., 1905, 292; 116 0. G., 2011.) 2. SAME-SAME.

The question of allowing reply-briefs to be filed is one within the discretion of the tribunal before whom the hearing is had.

APPEAL ON MOTION.

SIGNALING SYSTEM FOR RAILWAYS.

Mr. George H. Benjamin and Mr. Eugene C. Brown for Stevens.

Mr. Leonard Day and Mr. Melville Church for Patterson. Billings, Assistant Commissioner:

This is an appeal by Patterson from the decision of the Primary Examiner holding that the brief filed by Stevens on the motion for dissolution should be retained.

It appears from the decision of the Primary Examiner that at the hearing on motion for dissolution both parties were represented by their attorneys and that after the attorney for Stevens had made his argument and near the close of the hearing he filed his brief and handed a copy of the same to the attorney for Patterson; that the attorney for Patterson did not indicate that he wished any further time to reply to anything contained in the brief and did not appear to regard the brief other than as substantially a transcription of the oral argument of Stevens's attorney.

Patterson's appeal is based on the ruling in Royce v. Kempshall, (C. D., 1905, 292; 116 0. G., 2011,) which requires that briefs on interlocutory motions be filed before the hearing. Rules 147 and 163, which relate to the filing of briefs, are as follows:

147. Appeals in interference cases must be accompanied by brief statements of the reasons therefor. Parties will be required to file six copies of printed briefs of their arguments, the appellant five days before the hearing and the appellee one day.

163. Briefs in all contested cases shall be submitted in printed form, and shall be of the same size and the same as to page and print as the printed copies of testimony. But in case satisfactory reason therefor is shown to the Office, type-written briefs may be submitted. Briefs shall be filed three days before the hearing, except as provided in Rule 147. By consent of the parties they may be filed later, but in any case must be filed before the hearing. If either party fail to comply with this regulation, no extension of time will be granted for the purpose, except upon consent of the adverse parties.

These rules were construed in Newcomb v. Lemp, (C. D., 1904, 134; 109 0. G., 2171,) where it was held that type-written briefs might be received on motions and on interlocutory appeals and that it was not necessary to file six printed copies, as required by Rule 147, except for the final hearing. The rule was also construed in Royce v. Kempshall, supra, where it was held that there was no necessity for filing briefs on interlocutory motions five days before the hearing and that such briefs might be filed at any time before the hearing. In the decision of the Commissioner in Thompson v. Bliss, (MS. Dec., vol. 92, p. 107,) rendered September 27, 1908, it was pointed out that the reason for requiring briefs to be filed before the hearing was to prevent one party taking an undue advantage over the other by preparing and filing briefs after the hearing which might be prepared in the light of the oral argument of the opposing party. In the present case it is evident that the brief must have been prepared before the hearing and not in the light of the oral arguments. For this reason it is believed that Stevens's attorney has substantially complied with the ruling of Royce v. Kempshall as interpreted in Thompson v. Bliss, and that therefore the Examiner was right in holding that the brief would be accepted.

The attorney for Patterson has requested as an alternative to the briefs being stricken out that he be allowed the privilege of submitting a reply-brief. As pointed out in Thompson v. Bliss it was the duty of counsel for Patterson at the time of the hearing to have requested permission to see the brief filed by Stevens and to make such reply thereto as he might see fit. If the Examiner had refused this request, he might then have been in a position to urge the technical objection that the brief was not filed before the hearing, as required by Royce v. K’empshall. Furthermore, if counsel for Patterson wished to file a reply-brief he should have requested permission of the Primary Examiner to do so when the brief of Stevens was filed, and it was within the discretion of the Examiner to grant such request. No reason is seen for granting this request at this time.

The decision of the Primary Examiner is affirmed.

EX PARTE DIETERICH.

Decided April 6, 1909.

142 (). G., 568.

RECOMMENDATION OF THE EXAMINERS-IN-CHIEF-ACTION BY PRIMARY EXAMINER

REOPENING OF THE CASE. Where the Examiners-in-Chief stated that a claim was patentable over the references cited against it, but recommended that it be rejected upon another reference, and the Examiner rejected the claim on this reference, Held that while this action reopened the case such reopening was merely as to the subject-matter of the rejected claim.

ON PETITION.

PNEUMATIC EXPANSION-TANK WITH LIQUID-RELIEF.

Messrs. Fred. G. Dieterich & Co. for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition from the action of the Examiner refusing to enter and consider a certain amendment filed in the above-entitled application.

This case was appealed to the Examiners-in-Chief, who rendered a decision affirming the rejection by the Examiner as to all of the

appealed claims except claim 6. As to that claim they held that it was not met in the reference cited against it by the Examiner, but was met in another reference of record and should have been rejected thereon. When the application came before the Examiner, he adopted the suggestion of the Examiners-in-Chief and rejected the claim. Applicant thereafter filed the amendment above referred to, which the Examiner refused to admit.

The Examiner based his objections on Rules 68 and 139. Rule 68 provides, in part, as follows:

After decision on appeal amendments can only be made as provided in Rule 142, or to carry into effect a recommendation under Rule 139, and Rule 139 provides, in part, as follows:

The Examiners-in-Chief in their decision will affirm or reverse the decision of the Primary Examiner only on the points on which appeal shall have been taken. (See Rule 133.) Should they discover any apparent grounds not involved in the appeal for granting or refusing Letters Patent in the form claimed, or any other form, they will annex to their decision a statement to that effect, with such recommendation as they shall deem proper.

As pointed out in ex parte Burrowes, (C. D., 1904, 155; 110 O. G., 599,) the Examiner by adopting, the suggestion of the Examiners-inChief to a certain extent reopened the case. He did not, however, reopen the case for general prosecution, but merely as to the subjectmatter of claim 6, which he rejected on a new reference. The applicant was therefore clearly entitled to amend that claim, so as to avoid the reference, if possible, or to present another claim or claims in lieu thereof; but he was not entitled to present claims directed to subject-matter other than that covered by this claim and to obtain further prosecution of such subject matter. The amendment which the Examiner refused to admit was not limited as above indicated, and for that reason it was properly refused admission. If, however, the applicant will present an amendment either amending claim 6 or presenting a claim or claims limited to the subject-matter covered by that claim, the same may be entered and considered.

The petition is denied.

EX PARTE CLARK-I IORROCKS COMPANY.

Decided March 6, 1909.

142 0. G., 855.

TRADE-MARKS—“UNXLD”-DESCRIPTIVE.

The mark “UNXLD Held to be a misspelling of the word "unexcelled," and therefore not registrable, since such word is “merely descriptive.” ON APPEAL.

TRADE-MARK FOR FISHING-TACKLE,

Messrs. Robinson, Martin & Jones for the applicant.

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