D. C.]

to that product.

Opinion of the Court.

(Following Re Motz Tire & Rubber Co. 40 App. D. C. 487, and distinguishing Re Standard Underground Cable Co. 27 App. D. C. 320.)

No. 945. Patent Appeals. Submitted January 13, 1915. Decided March 1, 1915.

HEARING on an appeal from a decision of the Commissioner of Patents refusing to register a mark as a trademark for flour. Affirmed.

The facts are stated in the opinion.

Mr. James L. Steuart for the appellant.

Mr. Frank F. Reed, Mr. Edward S. Rogers, and Mr. Francis M. Phelps for the appellee.

Mr. Justice VAN ORSDEL delivered the opinion of the Court:

Appellant, Quaker City Flour Mills Company, appeals from a decision of the Commissioner of Patents in an interference proceeding wherein its application for registration of the word "Quaker" as a trademark for flour was refused.

Registrations of the word "Quaker" for flour and flour products extend back to 1895. As no evidence of abandonment of these marks appears, they must be presumed to be still in use. The tribunals of the Patent Office did not consider it necessary to pass upon the question of priority, concerning which a large volume of testimony was taken, for the reason that it does not appear that appellant company or its predecessors ever used the word "Quaker" as a trademark for flour.

The evidence shows that the mark used by appellant's predecessor in business down to 1902, when it began to use the mark, was "Quaker City Mills" and "Quaker City," but never "Quaker" alone. We do not find that the word "Quaker" has ever been used by appellant. Appellant must therefore stand

or fall upon its right to register "Quaker," though only a part of the mark actually used.

Manifestly "Quaker City" could not be registered, for it is of such a geographical signification as to bring it within the prohibition of sec. 5 of the trademark act of 1905. It is settled that the use of a trademark in connection with accessory symbols or words still constitutes a use of the mark. Walter Baker & Co. v. Delapenha, 160 Fed. 746, 750; Bass, Ratcliff & Gretton v. Feigenspan, 96 Fed. 206, 212; Walter Baker & Co. v. Puritan Pure Food Co. 139 Fed. 680, 682. On the other hand, it is equally well settled that whatever right an applicant for registration has acquired to the exclusive use of his mark must appear clearly from the use shown. The trademark law does not create a trademark right, but merely provides for the registration of marks, the right to which has accrued from actual use. It therefore appears that appellant is here asking the law to create in it a trademark right to the word "Quaker," when it has never used such mark.

The distinction here involved is sharply pointed out by Mr. Justice Robb in the case of Re Motz Tire & Rubber Co. 40 App. D. C. 487, as follows: "That the mark which the record discloses the appellant adopted and used is descriptive, and hence nonregisterable, is too plain to admit of argument. Realizing this, the applicant now seeks to register a mark which the record fails to show it has ever used. The Patent Office was therefore quite right in declining to register this fictitious mark, this mere skeleton of the real mark." Here it is sought to convert "Quaker City," an unregisterable mark, into a registerable mark by dropping the word "City." As the Commissioner in his opinion pertinently observed: "The word 'Quaker' and the word 'Quaker City' have different meanings. Use of 'Quaker City' on goods does not establish trademark use of the word 'Quaker,' any more than it establishes trademark use of the word 'City."

Reliance is placed by counsel for appellant on the holding of this court in Re Standard Underground Cable Co. 27 App. D.

C. 320. But in that case the applicant presented two arbitrary features, and it was held that he had the right to select the portion which he believed to be his trademark. There the word "Eclipse" was printed on a dark background, representing a partial solar eclipse, and underneath this dark background were the words "Black Core." The drawing furnished in the application showed only the word "Eclipse." Holding this mark registerable, the court said: "It is within common knowledge that a trademark is ordinarily used upon a label which contains embellishments, ornamentations, and other matter which, standing by themselves, may often be proper subjectmatter for exclusive appropriation as trademarks; yet such matter is no essential part of the trademark claimed, and by which the brand in connection with which they are used becomes known. This is specially so when the trademark is a fancy name or coined word." Referring to the power of the Commissioner, the court said: "The Commissioner is vested with power to determine, in the first instance, whether the mark as described, shown, and claimed is subject to appropriation by the applicant, and may satisfy himself as to whether the trademark has been actually used in interstate or foreign commerce. When he finds that the mark as claimed has so been used, it is not for him to turn to the specimen, if one be required by him, and, seeing other matter than the mark claimed, shown on the specimen, require applicant to add any such matter." But the difficulty here is that "the mark as claimed" has not been used. It is only part of the mark which actually designated the product to which it was applied. If appellant, for example, had shown a design with the word "Quaker" surrounded by a scroll, and underneath the picture of a man in Quaker dress, undoubtedly it would have the right to declare in the Patent Office which design it claimed as its trademark; and that, we think, illustrates the distinction between this and the Underground Cable Co. Case.

We think that the law requires that the mark applied for must be the same as the mark shown to have been used. To hold otherwise would permit appellant, in this instance, to convert

a mark which the statute prohibits from being registered, because of its geographical signification, into a technical trademark by eliminating the word which makes it geographical, while the geographical term is the one which has actually been used. The law will not permit that which it expressly prohibits to be legally accomplished by indirect methods.

The decision of the Commissioner of Patents is affirmed, and the clerk is directed to certify these proceedings as by law required. Affirmed.

HEATON-PENINSULAR BUTTON FASTENER COMPANY v. INDEPENDENT BUTTON FASTENER COMPANY.(1)

TRADEMARKS; TEN YEARS' USE; PATENTS.

The registration, under the ten-year clause of the trademark act of Congress, by the former owner of an expired patent, of a pictorial representation of the patented device, is properly canceled on application of a manufacturer of the same device, as upon the expiration of a patent the right to manufacture the article passes to the public, and the monopoly cannot be prolonged by the claim of a trademark descriptive of the article. (Citing J. A. Scriven Co. v. H. Towles Mfg. Co. 32 App. D. C. 321.)

No. 950. Patent Appeals. Submitted January 13, 1915. Decided March 1, 1915.

HEARING on an appeal from a decision of the Commissioner of Patents canceling the registration of a trademark.

Affirmed.

The COURT in the opinion stated the facts as follows:

This is an appeal from the decision of the Commissioner of

Patents granting the cancelation of the registration of a trademark.

The Heaton-Peninsular Button Fastener Company registered, under the ten-year clause of the trademark act, as a trademark for certain button fasteners consisting of a pictorial reproduction of a staple-like button fastener August 9, 1909.

This alleged trademark is a correct illustration of a button fastener patented to one Vinton February 10, 1891, which patent expired February 10, 1908. The Heaton-Peninsular Button Fastener Company was the owner of the patent, and manufactured the articles under this patent, to which it had the exclusive right. The label affixed to the boxes of fasteners was an exact reproduction of one of the figures of the button showing a staple-like fastener. About the time of the expiration of the patent, the Heaton-Peninsular Button Fastener Company began to use the word "trademark" in connection with the figure.

It appears from the evidence that it is the general custom of manufacturers to stamp on the packages of goods of the kind to describe the goods of the package. This custom of stamping the packages is regarded as the only practical way of identifying the contents without breaking the package, and distinguishes it from articles of the same general class.

The Independent Button Fastener Company, commencing to manufacture the same fastener, put them in boxes with a label showing this reproduction of the article. The Heaton-Peninsular Button Fastener Company gave notice to the customers of the Independent Company not to infringe its trademark, and actually filed bills against some of them, which seriously interfered with the sales of the Independent Button Fastener Company, and caused it serious loss.

It thereupon filed its application to cancel the registration of the Heaton-Peninsular Button Fastener Company.

Mr. Melville Church for the appellant.

Mr. Ellis Spear, Jr., Mr. J. M. Spear, and Mr. W. F. Hall for the appellee.