Messrs. Alexander & Green and Mr. Charles C. Deming for the demurrant.

Mr. John M. Coit for the complainant.

CROSS, J.:

This matter is before the court upon a demurrer to the bill of complaint, which is founded upon section 4915 of the Revised Statutes, and section 9 of the Trade-Mark Act, of February 20, 1905.

Briefly stated the bill shows that on or about the 29th of May, 1905, the complainant applied to the Commissioner of Patents for registration of the mark "Old Lexington Club;" that notice of opposition was filed thereto by the defendant herein, to which answer was duly made by the complainant; that upon such issue the Examiner of Interferences found in favor of the complainant, and adjudged that it was entitled to register the mark in question; that such decision was appealed from to the Commissioner of Patents, who affirmed the decision of the Examiner; that thereupon appeal was taken to the Court of Appeals of the District of Columbia, which reversed the decision of the Commissioner and determined that the complainant was not entitled to the registration of said mark.

Thereupon this proceeding was instituted under section 4915 of the Revised Statutes, which provides in part as follows:

Whenever a patent is refused, either by the Commissioner of Patents or by the Supreme Court of the District of Columbia, upon appeal from the Commissioner, the applicant may have remedy by bill in equity.

The word "patent" as used in the above statute, has been held by the Supreme Court to apply to trade-marks. (Frasch v. Moore,

of

C. D., 1908, 609; 137 O. G., 230; 211 U. S., 1; Atkins v. Moore, 212 U. S., 285.) A number of causes of demurrer were assigned, which however, the following only were argued.

1. That the alleged trade-mark is invalid because it is geographical. 2. That the alleged trade-mark is invalid because it is descriptive. 3. That the alleged trade-mark is invalid because it resembles too closely the trade-mark of another.

4. That the alleged trade-mark is invalid because it consists merely of the name of a corporation.

5. That the alleged trade-mark is invalid because it does not indicate ownership and origin.

A careful reading of the opinion of the Court of Appeals of the District of Columbia, shows that its conclusions were, to a considerable degree, if not entirely based upon the evidence before it, and it is clear to my mind that the matters involved in this suit, cannot, with a proper regard to the rights of the parties, be adjudicated upon demurrer. It is impossible to say at this time that no evidence that could be adduced might not change any conclusions thus reached,

and where such is the case a demurrer should be overruled. The invalidity of the mark in question is not upon its face obvious; the most that can be said is, that it is doubtful. Turning briefly to the causes of demurrer, it may be said as to the first, that an objection that a trade-mark is invalid because, consisting of a geographical name cannot be considered on demurrer. (Jewish Colonization Association et al. v. Solomon and Germanski, 125 Fed., 994.) And particularly is this so where, as in this case, it is alleged in the bill and admitted by the demurrer, that the words "Old Lexington Club," have been recognized for a long period, by the trade and the purchasing public as an arbitrary mark identifying the origin and ownership of the goods upon which they appear, and that the complainant is entitled to the sole use thereof. The second ground of demurrer is likewise a proposition which cannot in the absence of evidence, and in view of the allegations of the bill, be adjudicated in favor of the demurrant. The mark, may, or may not be descriptive in fact, but the bill alleges that it is not, and the demurrer admits that it is not. As to the third ground, that is a matter which clearly must be set up by way of answer and established by proof. As to the fourth ground, it is sufficient at this time, to say that upon the face of the bill the alleged trade-mark does not clearly appear to consist merely in the name of a corporation. Furthermore, the mark accepting the allegations of the bill, was in use by the complainant and its predecessors in title, long before the complainant was incorporated, while of the last ground, it may be said that it is simply a denial of a fact alleged in the bill.

Any intimation as to the ultimate merits of this controversy, has been carefully avoided. The only attempt has been to show that its merits can only be safely adjudicated here, as they were in the court of appeals, after all available light has been thrown upon the matter, by evidence.

The demurrer will be overruled, and the defendant allowed thirty days in which to answer.

[Court of Appeals of the District of Columbia.]
IN RE FULLAGAR.

Decided December 7, 1908.

138 O. G., 259. 32 App. D. C., 222.

1. JURISDICTION-COURT OF APPEALS OF THE DISTRICT OF COLUMBIA.

The jurisdiction of the Court of Appeals of the District of Columbia to entertain appeals from the decisions of the Commissioner of Patents in proceedings relating to patents is limited to two classes of cases—(1) where the claims of an application for a patent or the reissue of a patent after

having been twice rejected have been finally rejected on appeal to the Commissioner in due course of procedure; (2) where on appeal to the Commissioner in an interference proceeding there has been a final decision on priority in favor of one of the parties thereto. (R. S., secs. 4909, 4910, 4911; Westinghouse v. Duncan, C. D., 1894, 170; 66 O. G., 1009; 2 App. D. C., 131, 132; Allen v. Lowry, C. D., 1905, 643; 116 O. G., 2253; 26 App. D. C., 8, 17, 26; Union Distilling Co. v. Schneider, C. D., 1907, 613; 129 O. G., 2503; 29 App. D. C., 1.)

2. APPEAL TO THE COURT OF APPEALS OF THE DISTRICT OF COLUMBIA-DECISION ON MOTION TO DISSOLVE.

The Court of Appeals of the District of Columbia has no jurisdiction to entertain an appeal from a decision of the Commissioner of Patents on a motion to dissolve an interference between an applicant for reissue and an original application holding that appellant had no right to a reissue on the ground that his showing of inadvertence, accident, or mistake was insufficient and that he had failed to excuse the long delay of more than two years in filing the reissue application, as such judgment does not constitute an adjudication of the question of priority between the parties. 3. SAME-SAME-PARTIES TO APPEAL.

A motion by E. that he be made a party to an appeal to the Court of Appeals of the District of Columbia taken by F. from a decision of the Commissioner of Patents on a motion to dissolve holding that F. had no right to make the claims of the issue because of his delay in filing his reissue application involved in this interference denied on the ground that the Commissioner's decision did not result in an award of priority to E., and therefore F. could not bring him before the court by an appeal. For the same reasons E.'s motions to have the docket entry changed and to dismiss F.'s appeal denied.

Mr. T. F. Sheridan, Mr. G. L. Wilkinson, and Mr. W. A. Scott for the appellant.

Mr. R. N. Dyer and Mr. L. S. Bacon for Emmet.

Mr. F. A. Tennant for the Commissioner of Patents.

SHEPARD, C. J.:

While separately docketed, these cases were heard together in the Patent Office as involving substantially the same questions. They have been brought up in one transcript of the record and are to be heard thereon, at the same time, in this court.

W. L. R. Emmet, who was a party to each interference with Fullagar, has filed two motions. The first is to change the docket entry so as to read, Пugh Francis Fullagar, appellant, v. W. L. R. Emmet, appellee, and to permit him to be recognized as a party. The second is to dismiss the appeals.

The complicated history of the proceedings in the Patent Office, culminating in the decisions appealed from, is set forth in the Commissioner's decision as follows:

This interference together with a companion interference number 27,622 is before me upon appeal from a decision of the Examiners-in-Chief affirming the

action of the Primary Examiner dissolving these interferences upon the ground that Fullagar has no right to reissue his former patents upon the applications involved in these interferences.

The record of the applications involved in this interference shows that on February 24, 1902, Emmet filed the application involved in this interference. On April 18, 1901, Fullagar filed an application No. 56,462, which became a patent No. 696,867, April 1, 1902. On November 8, 1904, he filed a reissue application upon which Reissue Patent No. 12,317 was granted February 14, 1905. On October 31, 1906, Fullagar filed the application involved in this interference which is for the reissue of his Reissue Patent No. 12,317, or, in other words, is for a second reissue of his original Patent No. 696,867.

On September 16, 1901, Fullagar filed an application No. 75,651, upon which Patent No. 746,061, was granted December 8, 1903. On January 7, 1907, he filed an application No. 351,258, for the reissue of this patent, which application is involved in the companion interference.

The record shows that on May 12, 1903, an interference No. 22,666 was declared between the original application of Fullagar No. 75,651, and the application of Emmet involved in the present interference. That interference was subsequently dissolved upon the ground that the claim in issue was not readable on Fullagar's disclosure. In view of the fact that the parties at this time did not make claims to the same invention, Patent No. 746,061 was granted to Fullagar. Emmet then inserted in his application a claim corresponding to claim 16 of the Fullagar patent and interference No. 23,802 was declared May 31, 1904. Testimony was taken in this interference and a decision was rendered by the Examiner of Interferences awarding priority to Fullagar. This decision was reversed by the Examiners-in-Chief on appeal and priority of invention was awarded to Emmet. Appeal was taken to the Commissioner of Patents who, in a decision affirming the decision of the Examiners-in-Chief, rendered July 21, 1906, (C. D., 1906, 386; 124 O. G., 2178;) stated that:

"It is found that Fullagar's original application did not disclose the complete invention of the issue and therefore Fullagar has no right to the claim forming the issue of this interference. For this reason Emmet is entitled to the award of priority."

Soon after this decision of the Commissioner, Fullagar filed application Serial No. 341,509, for the reissue of his first patent No. 696,867, and inserted therein the claims forming the complete subject-matter of the two interferences now before me. Fullagar's claim of this application corresponding to count 4 was subsequntly incorporated in his other release application Serial No. 351,285, and interference No. 27,362 was declared May 23, 1907, embodying this claim, and including both of Fullagar's reissue applications.

Motions to dissolve were brought by Emmet in both interferences upon several grounds, including, first, the insufficiency of Fullagar's oath to excuse the delay between the grant of his original patents and the date upon which he filed the respective reissue applications; second, that intervening rights had accrued against a grant of a reissue of the patents to Emmet; and, third, that Fullagar had no right to make the claim corresponding to count 4 of this interference in his original application because the invention defined is indivisible from the invention claimed in his Patent No. 696,867. The Primary Examiner granted the motion as to the first and second grounds, but denied it as to the third. Upon appeal the Examiners-in-Chief affirmed the action of the Examiner in respect to the first ground, holding that the specification of errors in the Fullagar oaths did not justify the allowance of the appealed claims to him "either as establishing inadvertence, accident or mistake,” or excusing his delay." They, however, revised the decision of the Examiner as to the ground of intervening

rights. Fullagar has appealed from the decision of the Examiners-in-Chief affirming the decision of the Primary Examiner and Emmet has also filed an appeal from the decision of the Examiners-in-Chief holding that no intervening rights had accrued which would bar the grant of the reissue patents to Fullagar.

Emmet's appeal has no standing, whether it be considered an appeal from a favorable decision or an appeal from the reasons which are the basis of a decision in his favor, even though such reasons in part are adverse to him. (Rule 124.) (Breul v. Smith, C. D., 1898, 124; 84 O. G., 809.) Emmet's appeal is therefore dismissed.

In respect to Fullagar's appeal the only question before me is as to the sufficiency of the Fullagar oaths to warrant the granting to him of reissue patents containing the claims in controversy.

After stating this single issue, the Commissioner proceeded to consider whether Fullagar's applications for reissue, founded on inadvertence, accident, or mistake, had been filed within a reasonable time. After reviewing the questions of law and fact involved, he said:

I do not find in the oaths to the Fullagar applications, either the original or his supplemental oath, which was permitted to be incorporated in the Fullagar cases after the first decision upon the motion for dissolution had been rendered by the Examiner, any sufficient grounds to excuse the long delay which intervened between the allowance of Fullagar's original interference and the date of filing of his original application. It appears that in the first instance Fullager intentionally omitted presenting claims commensurate in scope with the present interference in view of certain alleged information concerning an invention of one Rateau, and he avers that he did not until recently discover that Rateau's invention did not preclude him from broadly claiming the structure set forth in his application. It does not appear, however, why Fullagar might not have obtained the same information he now possesses at the time he applied for his first reissue.

A careful review of the authorities cited by counsel fails to disclose any case in which a reissue application was allowed or a reissue patent held valid where the reissue applicant having knowledge of the broader claims of his opponent to the invention neglected to assert such claims until more than two years after the granting of his original patent. Upon the contrary, it appears that where an applicant for reissue asserted broader claims than those comprehended in his original patent, the failure to assert such claims within two years from the date of his patent was not excused unless caused by some special reason which could not have been foreseen or could not have been avoided by the exercise of reasonable diligence.

I therefore fully concur with the reasons and the conclusion ably stated by the Examiners-in-Chief that the verified showing made in support of Fullagar's reissue applications is insufficient to warrant the granting of reissue patents to him and that these interferences should be dissolved upon the ground that Fullagar has no right to the claims in issue.

The decision of the Examiners-in-Chief is affirmed.

It is from this decision that the appeal has been prosecuted by Fullagar, who caused it to be docketed as an ex parte appeal. Under the practice of this court the Commissioner is permitted to appear