MOORE, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing registration of the mark "UNXLD" as a trade-mark for fishing-tackle. Registration of the mark was refused by the Examiner upon the ground that it is a misspelling of the word " unexcelled" and is "merely descriptive" within the meaning of those words as used in section 5 of the act of February 20, 1905.

In my opinion the decision of the Examiner of Trade-Marks is right. The mark “UNXLD" when pronounced has the same sound as the word "unexcelled." The mark is clearly a misspelling or a phonetic spelling of the word "unexcelled." To the purchaser the mark would ordinarily suggest that the goods upon which it is applied are "unexcelled" in quality.

A case similar to that of applicant's is in re Central Consumers Company, (post, 329; 140 O. G., 1211,) decided by the Court of Appeals of the District of Columbia on February 2, 1909, in which the mark." Nextobeer" was held a misspelling of the words "next to beer" and descriptive of the character or quality of the goods upon which it was used. In this decision the court said:

It is well settled that a device, mark, or symbol which identifies the class, grade, style, or quality of the goods on which it is used is not subject to registration. (Columbia Mill Company v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150 U. S., 460.) Neither are words that are merely descriptive of the character, qualities, or composition of an article registrable. (Brown Chemical Co. v. Meyer, C. D., 1891, 373; 55 O. G., 287; 139 U. S., 540.) Nor can a generic name descriptive of the qualities, ingredients, or characteristics of an article be registered. (Canal Co. v. Clark, 13 Wall., 311.) # *

It was evidently the intention of Congress in placing these restrictions in the Trade-Mark Act to prohibit any one from acquiring a property right, protected by law in its exclusive use, in a name possessing any inherent signification that would, of itself, enhance the sale or value of the article or articles to which it may be applied. In other words, it was intended to limit the selection to mere arbitrary words or designs, the value of which should consist alone in their becoming fixed in the public mind through continued use on the goods of the owner. It was not intended that the mark should lend value to the goods, but that the quality of the goods and the reputation of the owner should ultimately make the mark valuable as a symbol in the connection in which it may be used.

In the case of Trinidad Asphalt Mfg. Co. v. Standard Paint Co. (163 F. R., 977) the Court of Appeals for the Eighth Circuit held the mark "Ruberoid" a misspelling of "rubberoid" and descriptive of the goods-roofing-to which it was applied. The court in this case held:

To the contention that "ruberoid" is fanciful or arbitrary it must be said that no one can restrict or destroy the public right by the coinage and monopoly of a word that is a near imitation of one the use of which is open to all for the truthful description of articles of trade and commerce.

The decision of the Examiner of Trade-Marks is affirmed.

EX PARTE PERKINS.

Decided April 16, 1909.

142 O. G., 855.

DRAWINGS-DEVICE OF GENERAL APPLICATION-SUFFICIENCY.

Where an application fully discloses the construction of the alleged invention which is of general application, the illustration of the invention applied to a particular use should not be required.

ON PETITION.

HINGE.

Mr. Raymond I. Blakeslee and Messrs. Collamer & Co., for the applicant.

BILLINGS, Assistant Commissioner:

This is a petition from a decision of the Primary Examiner requiring further illustration and refusing action on the merits until the same is furnished, praying that the Examiner be advised that no further illustration is necessary and that action on the merits should be given.

The specification of the application states that:

This invention relates to hinges; and has for its objects to provide improved hinge means, or means for connecting two or more devices, things or parts for relative movement of the same, which will provide for temporarily or yieldingly locking or interlocking the same to prevent the said relative movement; and which hinge devices or hinge means, including said locking means, shall be relatively inexpensive and simple in construction, positive in operation, durable, and generally superior in point of efficiency and serviceablity.

The drawing shows two members having relative movement about a common axis. Each of these members is provided with an extended portion resembling a portion of the usual buggy-top brace. In the first action the Examiner stated that it would be impossible to make an examination upon the merits until applicant disclosed with what his device was intended to be used. Upon a repetition of this requirement applicant inserted in the specification the following statement:

The parts a and b may constitute in themselves portions of a hinged device; as, for instance, the arms or rods of a folding buggy-top of the ordinary wellknown type.

Assuming that additional illustration is necessary in this case, there is no reason why action on the merits should have been postponed until such illustration was furnished. The construction seems to be clearly described and shown, and, in fact, the Examiner does not claim that he does not understand the invention. He states that without further illustration it would be impossible to classify the application and hardly possible to examine it with accuracy. The reason

given is not regarded as sufficient to warrant the refusal to act upon the merits. If the applicant had shown his construction in connection with some special machine or device, this would not excuse the Examiner from making a reasonable search in all other places where such a construction might be found. As far as aiding the Examiner in his search is concerned, the statement in the specification inserted by amendment is as efficient as would be a further illustration.

The Examiner cites ex parte Hartley (C. D., 1901, 247; 97 O. G., 2746,) as sustaining his requirement. In ex parte Hartley the drawing did not clearly disclose the invention so as to enable one to understand the construction which was the subject of the claim. Here the invention is clearly described and shown, although its specific application is not illustrated. Moreover, in the decision cited there is no authority to refuse to act upon the merits. The decision of the Commissioner in the case of ex parte Hinkle and Ashmore (C. D., 1899, 186; 88 O. G., 2410) seems to be more nearly in point and should govern the disposition of this case. Under the circumstances the Examiner should have given an action on the merits and at the same time required a further illustration if in his opinion such illustration was necessary.

It is believed, however, that no further illustration should be required, as the invention claimed is clearly described and shown. The petition is granted.

CRESCENT OIL COMPANY v. W. C. ROBINSON & SON COMPANY.

Where counsel was of the opinion that certain testimony which it was proposed to take might be introduced in rebuttal and after the expiration of the time set for taking rebuttal testimony, upon a motion to extend such time, the Examiner of Interferences denied the motion, upon the ground that the testimony sought to be taken was not proper rebuttal, but was part of the case-in-chief, and thereupon a motion to reopen was filed for the purpose of taking such testimony as newly-discovered evidence, Held that the excuse for the delay was insufficient.

2. SAME-SAME-SAME EVIDENCE MUST BE SHOWN TO BE MATERIAL.

In order to warrant the grant of a motion to take newly-discovered evidence, it must appear that the proposed evidence is material.

3. SAME-MOTIONS-PIECEMEAL PROSECUTION.

The piecemeal prosecution of motions places an unnecessary burden upon the Office and upon the parties, and the practice is strongly condemned.

APPEAL ON MOTION,

LUBRICATING-OIL.

Messrs. Minturn & Woerner for Crescent Oil Company.

Messrs. Steuart & Steuart for W. C. Robinson & Son Company.

BILLINGS, Assistant Commissioner:

This is an appeal by the Crescent Oil Company from the decision of the Examiner of Interferences refusing to reopen the case for the purpose of taking alleged newly-discovered evidence.

The motion was denied on two grounds-first, because of delay in bringing the same, and, second, because it was piecemeal in nature.

The alleged newly-discovered evidence relates to the use of the mark in issue by a third party, with the permission of W. C. Robinson & Son Company, which, it is alleged, is shown by the testimony taken on behalf of W. C. Robinson & Son Company on September 23, 24, and 25, 1908.

The motion was not brought until December 26, 1908. The excuse offered for the delay is that counsel was of the opinion that it was proper to take testimony upon this question in rebuttal and that it was their intention to do so. They permitted their time for taking rebuttal testimony to expire, and a motion was brought to extend the time for taking such testimony, particularly for the purpose of showing such use by a third party; but this motion was denied by the Examiner of Interferences upon the ground, among others, that the testimony sought to be introduced was not proper rebuttal evidence, but was admissible, if at all, as a part of the case-in-chief. Thereupon this motion was brought to reopen the case for the purpose of taking this evidence as newly-discovered evidence. The excuse given is not regarded as sufficient.

Moreover, as stated by the Examiner of Interferences, the motion is piecemeal and was properly refused on this ground. As stated in my decision dated February 2, 1909, three motions were brought to reopen the case to take newly-discovered evidence, upon which decisions were rendered by the Examiner of Interferences, dated, respectively, October 24, November 6, and November 18, 1908. It is obvious. that the present motion should have been presented with the previous motion for reopening, and the fact that the newly-discovered evidence presented in the previous motion related to a different matter is immaterial. The piecemeal prosecution of motions places an unnecessary burden both on this Office and upon the parties, and the practice cannot be too strongly condemned.

There is another ground upon which the Examiner of Interferences might properly have refused to grant the motion-namely, that the alleged newly-discovered evidence has not been shown to be material, which is necessary to be shown to warrant the reopening of a case for 21895-H. Doc. 124, 61-2——7

the purpose of taking additional testimony. The testimony proposed to be taken does not appear to have any possible bearing upon the right of the Crescent Oil Company to registration, and as the mark of W. C. Robinson & Son Company has been registered its right to registration is not a matter for investigation in this proceeding, except in so far as it may be necessary to a consideration of the rights of the Crescent Oil Company.

The decision of the Examiner of Interferences is affirmed.

IN RE THE VACUUM SPECIALTY COMPANY.

Decided April 15, 1909.

142 O. G., 1114.

ACCESS TO ABANDONED APPLICATION-ACCESS GRANTED.

Where suit is brought on a patent the file-wrapper of which shows that all the claims thereof were the allowed claims of a prior application belonging to the same assignee, which were transferred to the patented application, the prior application at the same time being formally abandoned, and the only discussion of the merits of the claims was in the prior application, Held that the defendants are entitled to inspect and obtain copies of the prior application if it can be identified by the Office, although neither the patent itself nor the file-wrapper identifies it by the name of the applicant, the serial number, or the date of filing.

ON PETITION.

Mr. Hillary C. Messimer for the Vacuum Specialty Company. Mr. Park Benjamin for the American Thermos Bottle Company. BILLINGS, Assistant Commissioner:

This is a petition to inspect and obtain copies of an abandoned application referred to in the patent to Hubert Henn, No. 884,582, April 14, 1908, for a vessel with double walls and protective case, on which petitioner alleges suit has been brought charging it with infringement.

The file-wrapper of the application on which the patent involved in the suit was granted shows that the only action in the case on the part of the Office was a requirement for division, accompanied by the citation of three patents to show the state of the art. In the next action a substitute specification and five claims were filed, accompanied by the statement that the claims had all been passed upon as allowable in a copending application and that such application had been abandoned. This statement did not indicate from what application these allowed claims were transferred; but the records of the Office show that on the same day on which this substitute specification was filed a formal abandonment was filed in the application of Charles S. Reed, No. 397,553, filed October 15, 1907, for bottles, signed by the applicant and the American Thermos Bottle Company, as assignee. A com