123 F.2d 65 | D.C. Cir. | 1941
Appellant is a manufacturer of furniture. It sought to register as a trade-mark the name The Williamsburg Galleries. Its trade-mark was at first held to be registrable, and was published in the Official Gazette of the Patent Office, November 3, 1936. On December 1, 1936, an opposition was filed to the registration by Colonial Williamsburg, Inc. Appellant in an appendix to its brief on this appeal incorporated a decision of the Examiner of Interferences on April 8, 1938, sustaining this
Appellee contends that except in an ex parte case where the applicant is the only party involved, the Commissioner cannot be made a party to a proceeding under Section 4915, R.S.,
The contention and argument are based upon the theory that when in an ex parte case the Patent Office refuses to grant a patent or to register a trade-mark, it acts in the public interest; but that in an inter partes case it acts in a quasi-judicial capacity and renders a decision adjudicating the rights of opposing parties. But no such line of distinction can properly be drawn.
The proceeding by bill in equity under Section 4915, R.S., is “a part of the application for the patent”
Again, the language of the statute upon which the Commissioner relies is not satisfied in the present case. Appellant brought this suit against the Commissioner alone. In other words, there was no opposing party in the proceeding in the District Court from which this appeal was taken. A proceeding under that section is a new proceeding in equity.
We held recently in Radtke Patents Corp. v. Coe,
This is even more true in the present case. The fact that an opposer of the request for registration was named in the body of the complaint does not result in requiring that the suit be dismissed as to the Commissioner. Appellee relies upon the decisions of this court in Coe v. Hobart Mfg. Co.
Justice Edgerton, speaking for the court in the Hobart case, pointed out that whether or not the Commissioner was a proper party he was not an adverse party within the meaning of the statute. Although the motion to dismiss was made on the ground that the Commissioner was not a proper party, that question was not decided. Justice Edgerton went on to observe that the Commissioner has not the slightest interest adverse to either rival claimant for a patent; whether one or the other gets a patent “the Commissioner neither gains nor loses.” That is true, of course, in all cases arising under Section 4915. The Commissioner acts in the public interest; not to protect -any interest of his which is adverse to a claimant.
In the Eno case, the question was not whether the Commissioner was a proper party but whether a rival claimant, whose application for registration of a trade-mark had been granted by the Patent Office, was an indispensable party. This court decided that he was; that the com
Our conclusion is supported, also, by the decision of the Circuit Court of Appeals for the Third Circuit in Drackett Co. v. Chamberlain Co.
In this connection it will be noted that Section 4915 contains no general limitation against suing the Commissioner. It speaks affirmatively as to when service must be made upon the Commissioner. It says nothing about the propriety of suing the Commissioner, even when there is an opposing party.
Reversed.
That decision reads in part as follows: “This term has been' used by the opposer in connection with its affairs * * * and it is accordingly further held that the latter can qualify under the ‘geographical’ clause of Section 5.”
That decision reads in part as follows: “I am convinced that applicant’s use of the trade-mark proposed to be registered would lead numerous members of the public to believe that applicant’s furniture was in some way sponsored by opposer, and that opposer may thereby suffer injury.”
See also, Colonial Williamsburg, Inc. v. Tomlinson of High Point, 40 U.S.P.Q. 563.
35 U.S.C.A. § 63.
See Radtke Patents Corp. v. Coe, — App.D.C. —, 122 F.2d 937, decided June 30, 1941; and authorities cited in n. 52. See also, Veaux v. Southern Oregon Sales, Inc., D.C., 33 F.Supp. 605, 610.
Grant v. Raymond, 6 Pet. 218, 241-243, 8 L.Ed. 376; Dr. Miles Medical Co. v. John D. Park & Sons Co., 220 U.S. 373, 401, 31 S.Ct. 376, 55 L.Ed. 502; Woodbridge v. United States, 263 U.S. 50, 55, 44 S.Ct 45, 68 L.Ed. 159; Dennis v. Pitner, 7 Cir., 106 F.2d 142, 144, certiorari denied, 308 U.S. 606, 60 S.Ct. 143, 84 L.Ed. 507. Cf. Pennock v. Dialogue, 2 Pet. 1, 19, 7 L.Ed. 327; Vanore v. Improta, 58 App.D.C. 130, 135, 25 F.2d 918, 923; Four Roses Products Co. v. Small Grain Distilling & Drug Co., 58 App.D.C. 299, 300, 29 F.2d 959, 960. Cf. also, Veaux v. Southern Oregon Sales, Inc., D.C., 33 F.Supp. 605, 610; Townsend, The Protection of Intellectual Property at International Expositions, 2 Calif.L.Rev. 291, 302, 303; H. A. Toulmin, Jr., Invention and the Law (1936) 20.
Four Roses Products Co. v. Small Grain Distilling & Drug Co., 58 App.D.C. 299, 300, 29 F.2d 959, 960.
Gandy v. Marble, 122 U.S. 432, 439, 7 S.Ct. 1290, 1292, 30 L.Ed. 1223.
Trade-Mark Act of February 20, 1905, 33 Stat. 727, 15 U.S.C.A. § 89; United States ex rel. Baldwin Co. v. Robertson, 265 U.S. 168, 179, 44 S.Ct. 508, 68 L.Ed. 962; Hygienic Products Co. v. Coe, 66 App.D.C. 98, 99, 85 F.2d 264, 265. See Pennzoil Co. v. Hercules Powder Co., 95 F.2d 339; 341, 25 C.C.P.A, Patents, 968, 970.
American Steel & Wire Co. v. Coe, 70 App.D.C. 138, 140, 105 F.2d 17, 19. See General Talking Pictures Corp. v. American Tri-Ergon Corp., 3 Cir., 96 F.2d 800, 812; Globe-Union, Inc. v. Chicago Tel. Supply Co., 7 Cir., 103 F.2d 722, 724; Nichols v. Minnesota Min. & Mfg. Co., 4 Cir., 109 F.2d 162, 166.
Butterworth v. United States ex rel. Hoe, 112 U.S. 50, 61, 5 S.Ct. 25, 28 L.Ed. 656; Gandy v. Marble, 122 U.S. 432, 439, 7 S.Ct. 1290, 30 L.Ed. 1223.
35 U.S.C.A. § 63: “* * * In all cases where there is no opposing party a copy of the bill shall be served on the commissioner; * • *.”
- App.D.C. —, 122 F.2d 937, decided June 30, 1941.
Hill v. Wooster, 132 U.S. 693, 698, 10 S.Ct. 228, 33 L.Ed. 502.
Cf. 35 U.S.C.A. § 63.
Gandy v. Marble, 122 U.S. 432, 439, 7 S.Ct. 1290, 30 L.Ed. 1223; Cleveland Trust Co. v. Berry, 6 Cir., 99 F.2d 517, 520.
70 App.D.C. 2, 102 F.2d 270, 271.
70 AppJD.C. 337, 106 F.2d 858.
Act of March 3, 1927, 44 Stat. 1394. 35 U.S.C.A. § 72a.
70 App.D.C. 337, 338, 100 F.2d 858, 859.
81 F.2d 866, 867. See also, Century Distilling Co. v. Continental Distilling Co., 3 Cir., 106 F.2d 486, where the same court said (page 489): “The Examiner of Trade Mark Interferences, and the Commissioner of Patents, on appeal, sustained the appellee’s oppositions, and adjudged that the appellant’s trade marks were confusingly similar to the appellee’s admittedly prior registered trade marks.”
"In this case there was an opposing party. The defendant had filed an opposition to the registration of the contested trade marks before the Examiner of Interferences in the Patent Office. It had continued its opposition when an appeal was taken and prosecuted by the plaintiff to the Commissioner of Patents, who affirmed the decision of the Examiner of Interferences; and it also filed an answer to the proceedings in equity under Section 4915 before the court below.” (Page 488.)
Cf. United States ex rel. Baldwin Co. v. Robertson, 265 U.S. 168, 44 S.Ct. 508, 68 L.Ed. 962; American Steel Foundries v. Robertson, 262 U.S. 209, 43 S.Ct. 541, 67 L.Ed. 953; Vermont Farm Machine Co. v. Marble, C.C.D. Vt., 20 F. 117; Bernardin v. Northall, C.C.D.Ind., 77 F. 849; Richards v. Meissner, C.C.W.D.Mo., 163 F. 957, appeal dismissed, 8 Cir., 178 F. 1004; Lewis Blind Stitch Co. v. Arbetter Felling Mach. Co., C.C.N.D.Ill., 181 F. 974. But cf. Gold v. Gold, C.C.S.D.N.Y., 181 F. 544, affirmed, 2 Cir., 187 F. 273.
15 U.S.C.A. § 102.
35 U.S.C.A. § 66.
United States ex rel. Baldwin Co. v. Robertson, 265 U.S. 168, 181, 44 S.Ct. 508, 510, 68 L.Ed. 962: “The argument is made that section 9 should not be held to authorize the use of a suit in equity for all of the four cases in which appeals are provided to the Court of Appeals from the Commissioner and are unsuccessful, because by section 22 of the same act * * * there is a special provision for a remedy in equity where there are interfering registered trademarks. It is said this excludes the inference that such a remedy is also provided in section 9, on the principle express!o unius exclusio alterius. An examination of section 22 shows that it refers to an independent suit between claimants of trademarks both of which have already been registered. The Commissioner is not a party to such litigation but is subject to the decree of the court-after it is entered. It is just like