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Opinion of the Court.

[43 App.

Whital! also seeks to escape the effect of his signature to the caveat, on the ground that the same did not disclose the ribs of the issue. It appears that these were well known to both McArthur and Whitall at the time, and that it was understood to be part of the construction. Moreover, the ribs had been used in other construction well known, and were at the time public property. It is clear that when Whitall signed the caveat he knew that it contained substantially all of the design work which Whitall and McArthur had presented to the attention of the contractors engaged in the construction of the New York aqueduct.

The Examiners in Chief noted the limitation put upon Blaw by his preliminary statement, and it is said that this point might be waived by McArthur.

Holding that Blaw was limited by that statement, McArthur was awarded priority over Blaw.

The Examiner of Interferences had decided in favor of Blaw on the ground that McArthur could not claim the reduction to practice that was made by the Blaw company at the time of his employment, and that he was not diligent in reducing to practice; wherefore Blaw was awarded priority.

The Examiner held that McArthur's employment was by Blaw, and that the reduction to practice could not redound to his benefit, as Blaw was his employer. The Examiners in Chief found that both Blaw and McArthur were employees of the Blaw company; that McArthur had only recognized Blaw's claim of priority to the extent that he took the word of Blaw and the word of the executive officers of the company to the effect that Blaw conceived the invention at a date before he did, and that this was not the recognition of an adverse right of an employer, and does not, therefore, constitute an estoppel against McArthur. They further held that the Blaw company was in effect from the beginning the assignee of McArthur, and any reduction to practice by the Blaw company in which MeArthur had a part should accrue to the benefit of McArthur. The Blaw company reduced the invention to practice. The record shows that the reduction to practice did not commence

D. C.]

Opinion of the Court.

until after McArthur came into the employment of the company, and that without question it shows that McArthur was the moving spirit and designer in this reduction to practice. Therefore it was held that he was entitled to the reduction to practice, whereupon they reversed the Examiner of Interferences, and awarded priority to McArthur.

Afterwards McArthur waived the protection afforded to him by Blaw's preliminary statement with respect to his date of disclosure, and agreed that, in so far as McArthur is concerned, Blaw should be entitled to any date of disclosure which the Commissioner of Patents should find has been adequately proved by Blaw's record. On appeal to the Commissioner, he affirmed the finding as between McArthur and Whitall, and refused to consider the waiver of McArthur of the date of the preliminary statement of Blaw, and affirmed the decision awarding priority to McArthur.

The matter of permitting an amendment to a preliminary statement is one that is in the discretion of the Commissioner of Patents, and there seems to be no abuse of it in this instance. The Commissioner was also right in not entertaining the waiver of McArthur because Whitall was still a party and was also affected by that waiver, notwithstanding the finding of the Examiner of Interferences and the Examiners in Chief.

With that statement in the way, Blaw's evidence of an earlier conception was not entitled to consideration, and therefore the award to McArthur was right.

The decision is affirmed, and the clerk will certify this decr sion to the Commissioner of Patents as required by law.

Affirmed.

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SIMPLEX ELECTRIC HEATING COMPANY v. GOLD CAR HEATING & LIGHTING COMPANY.

TRADEMARKS; OPPOSITION; REGISTRATION; SIMILARITY OF GOODS; USE OF MARK; CORPORATE NAME; WAIVER.

I. A thermostatic steam trap used in connection with a steam car-heating apparatus, and a thermostatically operated relief valve upon an electrically heated hot water boiler are within the same general class, so as to require the denial by the Commissioner of Patents, on opposition, of the registration, for the former, of a word in use as a trademark for the latter. (Citing Walter Baker & Co. v. Harrison, 32 App. D. C. 272.)

2. A mark in use by one person as a general trademark for a general class of goods will not, upon opposition by him, be registered, on the application of another, for goods within that class, which the opposer has not manufactured, or to which he has not directly applied the mark, since one should not, in justice, be permitted, by adoption and use of another's mark, to invade his present field, or the domain to which he may legitimately extend the use of his mark.

3. The manufacturer of thermostatically controlled electric heating apparatus may, at any time, manufacture electrically heated steam car-heaters, and extend the use of his general trademark to thermostatic steam traps upon them; and therefore a prior manufacturer of thermostatic steam traps in connection with steam car-heating apparatus will, on the other's opposition, be denied registration, as a trademark for such traps, of the word already in use by the opposer as his trademark.

4. Ignorance of a competitor's application of his trademark to a particular kind of goods is no excuse for knowingly appropriating the mark for use upon the same general class of goods; and registration will not be granted, on opposition, to the appropriator. (Citing Phonix Paint & Varnish Co. v. John T. Lewis & Bros. Co. 32 App. D. C. 285.)

5. Objection to the use by another, as a trademark, of the distinguishing part of the opposer's corporate name, is waived by failure to set out the objection in the notice of opposition. (Citing Rookwood Pottery Co. v. A. Wilhelm Co. ante, 1.)

No. 936. Patent Appeal. Submitted November 13, 1914. Decided January 4, 1915.

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HEARING on an appeal from a decision of the Commissioner of Patents dismissing an opposition to the registration of a trademark. Reversed.

The COURT in the opinion stated the facts as follows:

Appellant, Simplex Electric Heating Company, appeals from the decision of the Commissioner of Patents dismissing its opposition to the registration by appellee, Gold Car Heating & Lighting Company, of the word "Simplex" as a trademark for thermostatic steam traps.

It is alleged in the notice of opposition that appellant, long prior to any use of the mark by appellee, used the word "Simplex" as a trademark for goods of the same descriptive properties as those set forth in the application of appellee company. Appellant further alleges that appellee company manufactures and sells both steam and electric heating apparatus, and is a competitor of appellant in the manufacture and sale of electric heating apparatus, including the thermostatic devices therefor. It is also alleged that appellant would be damaged, in that the use of the mark by appellee would be likely to deceive purchasers and cause confusion in trade.

It appears that appellee company only uses the mark on its thermostatic steam trap, which is used in connection with its steam car-heating apparatus. But it must be conceded that the granting of registration would authorize it to extend its use to any thermostatic steam trap it might devise or use in the future.

On the other hand, the word "Simplex" is appellant's general trademark for its electrical and steam apparatus. It must be remembered that appellant's business is not confined alone to the manufacture and instalment of electrical heating, but to steam appliances also. In fact, as stated in the opinion of the Examiner of Interferences: "It is pointed out for opposer that it makes certain electrically heated boilers or water heaters, and that some of these have a thermostatically operated relief valve. But there is no proof that opposer manufactures

Opinion of the Court.

[43 App.

such a valve, per se, or uses the trademark 'Simplex' thereon, and it is freely admitted that the relief valve is not put on the market separately by applicant.'

""

It also appears that appellant makes a thermostatically controlled apparatus as a regular product. The witness Ayer testified on behalf of appellant: "We make frequent applications of thermostats to control a variety of our product in the development of special work for special customers; in such cases thermostats are frequently applied to our standard apparatus usually sold without thermostats." The witness also testified to the use of thermostats with hot water boilers manufactured and sold by appellant company, and to one particular type of thermostatic valve which operates automatically to prevent generation of steam if the boiler is neglected. He described it as a device which may be operated to open a steam valve to permit the flow of steam in the same manner as is adapted to permit the flow of water to prevent the generation of steam. In other words, like appellee's device, it is a temperature controlled relief valve, and is used for the same general purpose, to control the overflow or discharge of water or steam.

Mr. Nathan Heard and Mr. Frederick A. Tennant for the appellant.

Mr. Arthur C. Frazer and Mr. E. Myers for the appellee.

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

Thus it will be observed that the product of appellant is within the same general class as that of appellee. "The intent of the statute is to protect the rightful owners of trademarks in their valuable property rights; and it seems to tax the courts to the utmost to protect those rights against the ingenuity of counsel and the designs of sharp competitors. A mark should be denied not only when used upon goods of the same descriptive properties as a similar registered mark, but when used on goods belonging to the same general class." Walter Baker &

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