stands on a different footing from the usual motion in that the question which it raises is the complement of that raised by Thiem in his motion to shift the burden of proof. Thiem, in due time and if the interference is not dissolved, will have a determination of the sufficiency of his prior patent as a constructive reduction to practice of the invention in issue. If this same patent is at the same time a bar to the prosecution of this interference by Thiem this fact should also be discovered at this time. That Thiem should take advantage in this interference of a patent which disentitles him to prosecute the same is repugnant to reason. As suggested above, the availability of that patent to Thiem and its effect as a bar to a patent upon his present application are such closelyrelated matters as to constitute practically a single question. To determine the former without determining the latter might lead to the prosecution of a lengthy interference upon an artificial situation, that is, an interference which, if the ' contentions of Bowen are sound, Thiem is not entitled to defend and prosecute under the long-established practice of the Office.

It is a well-established practice that the decision of the Examiner of Interferences transmitting a motion to dissolve will not be disturbed unless there is shown a clear abuse of discretion on his part. (Winter v. Slick v. Vollkommer, C. D., 1901, 210; 97 O. G., 1837; Arbetter v. Lewis, C. D., 1902, 161; 99 O. G., 1383; Sturgis v. Hopewell, C. D., 1904, 82; 109 O. G., 1067; Harrison v. Shoemaker, C. D., 1904, 129; 109 O. G., 2170; Dunn v. Halliday, C. D., 1905, 545; 119 O. G., 2236; Pickard v. Ashton and Curtis, C. D., 1908, 241; 137 O. G. 977.) In Pickard v. Ashton and Curtis, supra, it is stated:

For the same reasons which apply to motions to amend preliminary statements (Smith and Wickes v. Emerson v. Sanders, C. D., 1908, 97; 133 0. G., 1433) and to motions with respect to the taking of testimony (Goodfellow v. Jolly, C. D., 1905, 105; 115 O. G., 1064) the question of transmitting motions to dissolve should be left largely to the discretion of the Examiner of Interferences, and where he grants a motion to transmit his decision will not be disturbed unless it be clearly shown that such discretion has been abused.

In the present case I find no such abuse of discretion. It may be noted that Rule 122 states that the motion

should, if possible, be made not later than the thirtieth day after the statements of the parties have been received and approved.

The rule does not state that the motion should not be transmitted by the Examiner of Interferences if it could possibly have been brought within the thirty days where, as in the present case, there appears to be good reasons why it should be transmitted.

As to the petition, the circumstances of the case clearly do not call for the exercise of the supervisory authority of the Commissioner. The petition is based on the contention that Bowen has no right to make the claims of Thiem suggested by the Primary Examiner. Thiem has brought a motion to dissolve on this ground, which has been transmitted to the Primary Examiner and is awaiting his action. He is the proper official to decide the matter in the first instance, and

no reason is apparent why the Commissioner should be called upon to exercise his supervisory authority.

For the reasons set forth the appeal and petition are dismissed.

OTIS v. INGOLDSBY AND BOWLING.

Decided June 12, 1909.

143 O. G., 1346.

1. INTERFERENCE-MOTION TO REOPEN-PRACTICE.

On a motion to remand an interference to the Examiner of Interferences to reopen the same and take further testimony Held that while motions to reopen an interference and take further testimony should generally be heard and determined in the first instance by the Examiner of Interferences (Robinson v. Townsend v. Copeland, C. D., 1903, 327; 106 O. G., 997) it is well settled that in order to justify remanding the case to the Examiner of Interferences the moving party should make out a prima facie case. (Estes v. Gause, C. D., 1899, 164; 88 O. G., 1336.)

2. SAME-SAME.

The fact that the junior party took no testimony, but relied on his contention that the senior party had no right to make the claims, and the further fact that on appeal the Examiners-in-Chief reversed the holding of the Primary Examiner and the Examiner of Interferences that the senior party had a right to make the claims Held to constitute no ground for reopening the case to allow the senior parties to take testimony on the question of their right to make the claims, which testimony was in their possession and could have been taken within the time set.

ON MOTION.

DUMP-CAR.

Mr. Thomas F. Sheridan for Otis.

Messrs. Bates, Fouts & Hull for Ingoldsby and Bowling.

BILLINGS, Assistant Commissioner:

This is a motion by Ingoldsby and Bowling that the jurisdiction of the Examiner of Interferences be restored in this case for the purpose of considering a motion to reopen the case to permit Ingoldsby and Bowling to take testimony.

The record shows that this interference was declared between a patent of Otis and an application of Ingoldsby and Bowling for a reissue of their patent, the application for which was filed prior to the application upon which Otis's patent was granted.

Otis made a motion before the Primary Examiner to dissolve the interference on the ground that Ingoldsby and Bowling had no right to make the claims. This motion was denied. Thereafter Otis brought a motion that the case be set down for final hearing upon the question of priority, it being stated that Otis desired to contest the right of Ingoldsby and Bowling to make the claims in

issue under Rule 130. Times were set for taking testimony, but no testimony was taken by either party. On February 13, 1909, the Examiner of Interferences awarded priority to Ingoldsby and Bowling. From that decision appeal was taken to the Examiners-inChief, who, on May 18, 1909, reversed the decision of the Examiner of Interference and held that Ingoldsby and Bowling were not entitled to make the claims.

In support of the present motion there is filed an affidavit of the attorney of Ingoldsby and Bowling setting forth that the decision of the Examiners-in-Chief was a surprise, since it was based, in part, on the ground that they were not convinced that certain arms shown in the Ingoldsby and Bowling application would drop by gravity, and that it is desired to take testimony to show that cars have been built in accordance with the Ingoldsby and Bowling disclosure and that in such cars these arms do drop by gravity. It is further stated that as the burden of proof was upon Otis and he took no testimony it was not deemed necessary to take testimony on behalf of Ingoldsby and Bowling.

Motions to reopen an interference and take further testimony should generally be heard and determined in the first instance by the Examiner of Interferences. (Robinson v. Townsend v. Copeland, C. D., 1903, 327; 106 O. G., 997.) It is well settled, however, that in order to justify remanding the case to the Examiner of Interferences the moving party should make out a prima facie case. (Estes v. Gause, C. D., 1899, 164; 88 O. G., 1336.)

Clearly no such case has been made out here. The evidence which it is now proposed to take is in no sense of the word newly-discovered evidence. It is admitted on behalf of Ingoldsby and Bowling that this evidence was in their possession and could have been taken within the time set for taking testimony, and the only reason given. for not so taking it is that it was not thought necessary. In fact, the only surprise alleged is that the decision of the Examiners-in-Chief was adverse to the decisions rendered by the Primary Examiner and the Examiner of Interferences.

The motion is denied.

EX PARTE PENN TOBACCO COMPANY.

Decided April 16, 1909.

144 O. G., 275.

1. TRADE-MARKS-SIMILARITY OF MARKS.

The representation of a Quaker associated with the word "Penn's " Held to so nearly resemble a mark consisting of a bust picture of a Quaker with the name "Wm. Penn written thereover as to be likely to cause confusion in the mind of the public when applied to merchandise of the same descriptive properties.

2. SAME-CLASS OF GOODS-CIGARS AND SMOKING AND CHEWING TOBACCO. Cigars Held to be merchandise of the same descriptive properties as smoking and chewing tobacco.

ON APPEAL.

TRADE-MARK FOR SMOKING AND CHEWING TOBACCO.

Messrs. Fred G. Dieterich & Company for the applicant.

MOORE, Commissioner:

This is an appeal from the action of the Examiner of TradeMarks refusing to register as a trade-mark for smoking and chewing tobacco a representation of a Quaker associated with the word "Penn's."

Registration is refused on the following registered trade-marks: Penn Tobacco Company, No. 59,414, January 8, 1907; Theobald & Oppenheimer Company, No. 70,310, August 18, 1908. The first of these registrations consists of the word "Penco" for smoking and chewing tobacco. The second comprises the bust picture of a Quaker on an oval panel with the name Wm. Penn" written over it and the panel flanked on either side by Indian scenes, used as a trademark for cigars.

The record shows that in the applicant's response to the Examiner's first letter of rejection he stated that—

Applicant's mark does not include necessarily the photograph of William Penn but merely includes the photograph of a Quaker, in the garb of a Quaker with a Quaker hat on.

It is noted, however, that in the reasons for appeal it is alleged:

3rd: That the Examiner erred in refusing to register the trade-mark "Penn's" with the portrait of William Penn, as shown in the drawing accompanying the application.

The applicant in his brief states as follows:

Now it is submitted that the word "Penn's" in connection with the pictorial representation of a Quaker necessarily indicates to the trade that that pictorial representation is a pictorial representation of a person by the name of "Penn," not necessarily the individual William Penn, but any male member of the Penn family.

The vacillating attitude of the counsel for the appellant renders it difficult to determine the true character of the mark claimed by the applicant-that is, whether it comprises a fanciful picture or the portrait of a particular individual. However, in the present case it is immaterial, since there is clearly such resemblance between the mark of the applicant and the registration of Theobald & Oppenheimer Company as to cause confusion in the mind of the public. Each represents a Quaker, and each is accompanied by the word. "Penn " or " William Penn," and each would have the same signifi

cance to the purchasing public. The following statement of the Court of Appeals of the District of Columbia in the case of Wayne County Preserving Co. v. The Burt Olney Canning Company (post, 318; 140 O. G., 1003) is clearly applicable to the present case:

Just what degree of resemblance is necessary to bring about confusion in trade is incapable of exact definition. About all that can be said is, that no person engaged in trade can adopt a trade-mark so resembling that of another trader, when applied to the same class of goods, as will mislead a purchaser when buying with ordinary caution. The rule announced by the Supreme Court in McLean v. Fleming (C. D., 1878, 262; 13 O. G., 913; 96 U. S., 245) is as follows:

"Two trade-marks are substantially the same in legal contemplation, if the resemblance is such as to deceive an ordinary purchaser giving such attention to the same as such a purchaser usually gives, and to cause him to purchase the one supposing it to be the other.

These marks, when appearing on the canned goods of the respective parties, exposed to the public on the shelves of the retailer, are so similar as to be likely to cause confusion; and where, as in this case, there is no evidence on that subject except the marks themselves, it is the duty of the court to protect the prior registrant and user from the probability of any such occurrence. It is strangely coincident that appellee, engaged in the same business as appellant and located in the adjoining county to where appellant has used his mark for many years, should select a mark so similar. The property right in trademarks is a valuable one, and is entitled to protection from those who would profit by its imitation, and the courts should resolve the doubt, if any exists, in favor of the prior registrant and user in good faith.

It is contended in behalf of the applicant that these marks are used upon goods of different descriptive properties. I am aware that it was held in ex parte Egyptian Tobacco Company (C. D., 1898; 659; 85 O. G., 1741) that cigars and cigarettes were goods of different descriptive properties and also that the same mark has been registered for cigars and smoking-tobacco. (Ex parte Palmer, 22 Ms. Dec., 386.) I am of the opinion, however, that under the rulings of the Court of Appeals of the District of Columbia in the case of Walter Baker & Company, Limited, v. Harrison (post, 284; 138 O. G., 770) and Phoenix Paint & Varnish Co. v. John T. Lewis & Bros. Company (post, 303; 139 O. G., 990) cigars and smoking and chewing tobacco should be considered to be merchandise of the same descriptive properties. In the latter case the Court said:

We think two trade-marks may be said to be appropriated to merchandise of the same descriptive properties in the sense meant by the statute when the general and essential characteristics of the goods are the same. To rule that the goods must be identical would defeat the purpose of the statute and destroy the value of trade-marks. The test is whether there is such a sameness in the distinguishing characteristics of the goods as to be likely to mislead the general public. If there is, only one mark should be registered. Congress evidently intended to prevent the second registration of a mark that would enable an unscrupulous dealer to obtain the benefit of a valuable trade reputation established by conscientious effort and fair dealing to the injury of the public as well as the owner of the mark.