MARCUS P. NORTON. APPEAL FROM PRIMARY EXAMINER. April 22, 1871. In the matter of the applications (cases A and B,) of Marcus P. Norton for letters patent for HAND STAMP, filed August 1, 1870. LEGGETT, Commissioner: It appears from an examination of the papers in these cases that the applications cannot be admitted as a renewal either of the fictitious application of M. P. Norton, of March 21, 1857, or of the joint application, or of any portion of the joint application of M. P. Norton and C. A. Haskins, filed October 15, 1857. The petitions, therefore, should be so amended, by erasing all reference to, the above-named cases, as to present the present applications as original and not renewed cases. It is accordingly ordered that further action on the cases be suspended, to await such amendment on the part of the applicant. C. L. HAUTHAWAY & SONS. APPEAL FROM PRIMARY EXAMINER. April 24, 1871. In the matter of the application of C. L. Hauthaway & Sons for the REGISTRY OF A TRADE-MARK. LEGGITT, Commissioner: The applicants seek to register the words "beeswax oil" as a trademark. The primary design of a trade-mark is to point out the origin or ownership of the article offered for sale; the one proposed indicates neither. There must also be some word or sign, or device, other than the generic name and words descriptive of quality. The name "oil" is generic. The word "beeswax" is doubtless intended to be more or less descriptive of the quality or nature of the oil. Generic names and words descriptive of quality are common property, and no one has a right to an exclusive appropriation of them. The decision of the examiner is affirmed, and the registry refused. PORTER BLANCHARD'S SONS. APPEAL FROM PRIMARY EXAMINER. April 24, 1871. In the matter of the application of Porter Blanchard's Sons for the REGISTERING OF A TRADE-MARK FOR CHURNS. LEGGETT, Commissioner: The applicants seek to have registered as a trade-mark the words "The Blanchard Churn," to be stenciled on the side or lid of the churns they manufacture and sell. The examiner refused the application, and gave as a reason for the refusal, "The label of applicant is not sufficient to entitle it to registry as a trade-mark; the words should be accompanied by some sign or mark to distinguish the same from the mere words alone, to the use of which latter other possible parties of the name in the like business might have an equal right." Section 79 of the act approved July 8, 1870, in the second clause provides that "the Commissioner of Patents shall not receive and record any proposed trade-mark which is not and cannot become a lawful trade-mark, or which is merely the name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons," &c. The question, what constitutes a lawful trade-mark, is left by the statute just where the common law leaves it, with a single limitation, that it shall not be the mere name of a person, firm, or corporation only, unaccompanied by a mark sufficient to distinguish it from the same name when used by other persons. The only thing about this limitation that is at all ambiguous is the meaning of the word "mark." The examiner seems to understand by this word some device, figure, or emblem, something other than mere words. In this interpretation of the word "mark," I am clearly of the opinion that the examiner is wrong. Every man in the United States who is engaged in trade or manufacturing is entitled to the registry of a trade-mark if he chooses to adopt one; and to require each person to invent a device or symbol differing from all others in the same trade would be to require an impossibility; and Congress certainly never thought of attaching such a meaning to the word "mark." This word had obtained a technical meaning before the act of July 8, 1870. The term "trade-mark” was in very general use, and by such use, and by the constructions and rulings of courts, was made to include not only devices, and emblems, and symbols, but single words, and all manner of combinations of words, without devices. Congress took this word "mark," with the meaning it had obtained in the compound word " trade-mark," and introduced it into the statute. Previous to the passage of this law the courts had not been uniform in their decisions as to the mere names of persons, firms, or corporations being legal trade-marks, and the statute settled this question by saying that the mere name of a person, firm, or corporation only, unaccompanied by some other "mark," that is, some other word or words, or letter, or figure, or sign, or symbol, or device—in short, something in addition to the mere name only-should not be registered as a trade-mark. I am clearly of the opinion that any word or any combination of words, with the single exception named, that would constitute a trademark under the common law, may be registered as such under the statute of July 8, 1870. The expression, "The Blanchard Churn," certainly is not the mere name of a person only, but the name is accompanied by the marks "The" and "Churn,” hence it is not excluded by the limiting clause of the statute. The only question, then, is as to whether it is a legal trade-mark at common law. In the case of The Amoskeag Manufacturing Company, 2 Sand., S. C. R., 599, the court says: Every manufacturer and every merchant for whom goods are manufactured has an unquestionable right to distinguish the goods that he manufactures or sells by a peculiar mark or device, in order that they may be known as his in the market for which he intends them, that he may thus secure the profits that their superior repute, as his, may be the means of gaining. The principle is well settled that a manufacturer may, by priority of appropriation of names, letters, marks, or symbols of any kind to distinguish his manufactures, acquire a property therein as a trade-mark. (Stokes vs. Landgraff, 17 Barb., 608.) A manufacturer of goods who, in order to designate his own manufacture, has adopted names, marks or labels, which are peculiar and not before used, is entitled to be protected in a court of equity in their use. (Williams vs. Johnson, 2 Bosworth, 6.) Though the mark has no other meaning than to distinguish their manufacture from others, if the party has given it out as his mark and by it the article has acquired reputation and sale, he is entitled to protection in it. (Ibid., 6.) Any contrivance, design, device, name, or symbol which points out the true source and origin of the goods to which it is applied, or which designates the dealer's place of business, may be employed as a trade-mark, and the right to its exclusive use will be protected by the courts. (Filley vs. Fassett et al., Superior Court of Missouri, vol. 8, United States Am. Law Reg., 402.) The books are full of authority establishing the proposition that any device, name, symbol or other thing may be employed as a trade-mark which is adapted to accomplish the object proposed by it, that is, to point out the true source and origin of the goods to which said mark is applied. (Ibid.) These quotations state the broad doctrine on the subject of trademarks as held by the courts. The following are a few among many trade-marks that have been sustained by the courts, and that would not be excluded by the limiting clause of the law of July 8, 1870, viz: "Cocoaine" as the name of hair oil, (Burnett vs. Phalon, 9 Bosworth, 192;) "303" as a mark for pens, (Gillott vs. Esterbrook, 47 Barb., 545;) "Sykes' Patent," as a mark for shot bolts, (Sykes vs. Sykes, 3 Barn. & Cres., 543 ;)" Bell's Life," as the name of a newspaper, (Clement vs. Maddick, 22 Law Rep., 428;) "H, H, C," as a mark on plows, (Remson vs. Bental, 3 Law of N. S., 161;) "Roger Williams' Long Cloth," (Burrows vs. Knight, 6 R. I., 434;) "Anatolia," as a brand for liquorice, (McAndrews vs. Bassett, 10 Jurat N. S., 550; "Revere House," as the name of a hotel, (Marsh vs. Billings, 7 Cush., 322;) "Burgess' Essence of Anchovies," (Burgess vs. Burgess, 17 Eng. Law & Eq. R., 257;) "Morrison's Universal Medicines," (Morrison vs. Salmon, 2 Man. & Gran. 385.) It is proper here to remark that most of the trade-marks here referred to were used in connection with the names of the persons claiming them, or with their place of business, or both, and sometimes in connection with other words. There seems, then, to be no more restriction against the choice of words, combinations of words, or names (other than the mere name of a person, firm, or corporation only) for a trade-mark than of symbols or devices. The only limitation at common law in the selection of words or devices for trade-marks is, that they be so far original as, when known in the market, to distinguish the goods of one merchant or manufacturer from those of another, and that they are not generic in their use, nor description of quality, nor calculated to deceive the public as to their true origin or ownership. The object of a trade-mark is to point out the origin and ownership of the article offered for sale; and the more clearly the words or devices selected do this, the less objection there should be to their selection and registration as trade-marks, so they avoid the limitations named. The combination of the three words, "The Blanchard Churn," seems to possess the necessary characteristics of a trade-mark, and is not excluded by the limitations. The decision of the examiner is therefore reversed. R. J. ROBERTS. APPEAL FROM PRIMARY EXAMINER. April 24, 1871. In the matter of the application of R. J. Roberts for REGISTRY OF TRADE-MARK. LEGGETT, Commissioner: The applicant seeks to register the following label as a trade-mark, viz: 66 A Luxury. R. J. Roberts' Razor-steel Scissors. The best in the world. The best is the cheapest. For sale here." The examiner rejects the application, on the ground that the above is not a lawful trade-mark under the law of July 8, 1870. I find nothing in the law referred to, nor elsewhere, to sustain the examiner's opinion. His decision is therefore reversed. ROBERT J. ROBERTS. APPEAL FROM PRIMARY EXAMINER. April 25, 1871. In the matter of the application of R. J. Roberts for the REGISTRY OF A TRADE-MARK. LEGGETT, Commissioner: The applicant seeks the registry of the following as a trade-mark, viz: "An exquisite pleasure to shave with R. J. Roberts' Diamond-edged Razors." The objections of the examiner in this case having in substance been fully considered in other cases, further consideration is unnecessary here. The examiner's decision is reversed, and the registry is granted. ROBERT J. ROBERTS. APPEAL FROM EXAMINERS-IN-CHIEF. April 25, 1871. In the matter of the application of Robert J. Roberts for the REGISTRY OF A TRADE-MARK. LEGGETT, Commissioner: The applicant asks for the registry of the following as a trade-mark, viz : "R. J. Roberts' Diamond-edge Razor. Every razor warranted." The examiner's decision in this case is reversed for reasons stated in other cases, and the registry will be granted. RILEY vs. BAUMANN. Interference. APPEAL FROM EXAMINERS-IN-CHIEF. April 25, 1871. In the matter of the interference between the application of John Riley for letters patent for a COMPOSITION FOR COATING STEAM BOILERS, and a patent granted to C. A. Baumann for a similar invention. DUNCAN, Acting Commissioner: The gist of the invention upon which the present controversy arises, as stated by the applicant Riley, is the mixture of asbestos and limeputty to form a composition, with which boilers and steam pipes and other highly heated surfaces may be coated, and the loss of heat by radiation be largely prevented. The asbestos being fibrous and incombustible, binds the particles of the lime-putty together and prevents its disintegration when dried by the heat; and the lime-putty being thus held in contact with the heated surface, a non-conducting coating is secured. Other substances, as calcined plaster, black lead, pumice stone, asbestos, or paper pulp, may be used in connection with the two ingredients named, and in practice both parties propose to use such; but as the lime-putty and the asbestos can be used to advantage without admixture with the other substances, these two are to be regarded as the indispensable elements of the composition; and the issue presented is, who first invented a composition for coating boilers which derives its distinctive character from these ingredients; or, rather, as Baumann has already secured a patent upon his invention, which the Office has no power to revoke, the question to be determined is, whether a patent shall also be granted to Riley upon the theory that he is the first inventor. Riley is one of two joint inventors, Charles H. Bissell being the other, to whose assignees a patent was granted on the 5th day of October, 1869, and upon the invention which formed the basis of that patent a |