MOORE, Commissioner:

This is a petition that the Examiner be directed to waive for the present the rejection of claims 18 and 19 and to declare forthwith an interference between this application and the patent to Dement and Hull, No. 813,360, granted February 20, 1906, claims 18 and 19 being identical with claims 2 and 16 of said patent.

The record shows that the Examiner has finally rejected these claims upon the ground that when construed broadly enough to read upon the applicant's device they are not patentable over the prior art cited. It is urged in behalf of the applicant that the patentability of these claims has been settled by reason of their allowance to the patentees, Dement and Hull, and that therefore the applicant should be permitted to contest the question of priority of invention with Dement and Hull before final action upon the patentability of these claims is made in this application. This contention is not believed to be well founded. The rejection of the Examiner is in effect a holding that the applicant has no right to make the claims, and it is well settled that an interference will not be declared except between patentable claims covering the same invention. The action of the Examiner is in accordance with the well-settled practice of the Office as set forth in the decisions in ex parte Dukes (C. D., 1905, 100; 115 O. G., 803) and in re Neill, (C. D., 1898, 332; 82 O. G., 749; 11 App. D. C., 582.)

While, as stated by the applicant, the Court of Appeals of the District of Columbia said in re Orcutt (post, 334; 141 O. G., 567) that

in view of the inadvertence of the Patent Office in granting a patent to McDonald and McDonald for the claims of the issue, which patent is now beyond the control of the Office, it would probably have been the more equitable practice to have assumed patentability in the interference proceeding for the purpose of determining the question of priority between the two parties thereto. However, it was within the scope of the Commissioner's authority to dissolve the interference, if convinced that the issue was not patentable

the facts differed from those in the present case. In that case no question was raised as to the identity of the inventions claimed by the interferants or of the meaning of the claims when read upon Orcutt's structure. Where, however, as in the present case, there appears to be a doubt whether the claims would bear the broad construction attempted to be placed upon them by the applicant, the question of patentability of the claims to him should be determined before the interference is declared. The claims referred to in this petition at the present time stand finally rejected, and proper action is appeal to the Examiners-in-Chief.

The petition is denied.

EX PARTE SHEFFIELD MILL & ELEVATOR COMPANY.

Decided July 19, 1909.

145 O. G.. 1021.

TRADE-MARKS-ALLEGED GENERIC TERM.

66

The fact that manufacturers and dealers may regard the word Diamond as having lost its distinctive character when used in trade-marks for flour constitutes no ground for registering the trade-mark "Big Diamond" when it so nearly resembles several registered marks as to be likely to cause confusion and mistake in the mind of the purchasing public. ON APPEAL.

TRADE-MARK FOR FLOUR.

Mr. George A. Byrne and Mr. Hervey S. Knight for the applicants. MOORE, Commissioner:

This is an appeal from the decision of the Examiner of TradeMarks refusing to register the words "Big Diamond" as a trademark for flour.

Registration was refused on the ground that the mark would be liable to cause confusion in the trade and to deceive purchasers in view of its close resemblance to the following prior registrations: F. A. Johnston, July 7, 1885, 12,382; Lyon & Co., September 22, 1885, 12,592; Wilcox & Hyde, March 22, 1887, 14,183; Minneapolis Flour Manufacturing Company, May 20, 1890, 17,939; North Dakota Milling Company, January 10, 1893, 22,319. The mark registered to Johnston consists of the word-symbol " Diamond Jo" and its equivalent, the figure of a diamond and the word "Jo." The mark registered by Lyon & Co. consists of the words "Diamond Mills." The registered mark of Wilcox & Hyde consists of the words " Diamond Crown" and the representation of a crown mounted upon a diamondshaped background. The mark registered to the North Dakota Milling Company consists of the word "Diamond" upon the figure of a diamond, under which appears the representation of stalks of wheat. The mark registered to the Minneapolis Flour Manufacturing Company consists of the words " Diamond Medal " and a diamond-shaped figure within a circle composed of dots or diamond-shaped figures. All of these registrations are for flour.

In the case of ex parte Snyder, (C. D., 1905, 133; 115 O. G., 1849,) in which the words "Diamond Dust " were refused registration as a trade-mark for flour in view of the registered marks of Lyon & Co. and the North Dakota Milling Company, supra, the Commissioner said:

The sole question here is whether the words “Diamonddust" so nearly resembles the previously-registered marks "Diamond" and "Diamond Mills" as to be likely to deceive purchasers as to the origin of the goods upon which

the marks appear. The word "Diamond" is undoubtedly the predominating feature of all of these marks and the one which would be likely to be remembered by the purchasers for the purpose of identifying the goods desired in making purchases subsequently. It is therefore believed that the marks so closely resemble each other that purchasers would be likely to accept goods sold under one of them supposing them to be the goods of the manufacturer using the other as a trade-mark.

Appellant contends that the word "Diamond" is so commonly used in trade-marks for flour that it has lost its special or distinctive character and has become a generic term; also, that this was not taken into account in the above decision. It may be true that manufacturers and dealers so regard the word, but in my opinion the purchasing public would undoubtedly regard the word "Diamond" as the predominating and distinguishing feature of all of these marks and that appellant's mark so closely resembles them as to be likely to cause confusion and mistake in the mind of the public and to deceive purchasers.

The decision of the Examiner of Trade-Marks is affirmed.

COLBURN AND WASHBURN v. HITCHCOCK.

Decided June 25, 1909.

145 O. G., 1022.

1. INTERFERENCE-MOTION TO DISSOLVE-TRANSMISSION.

Where the applications involved in an interference were involved in a prior interference, Held that a motion to dissolve was properly refused transmission as to any grounds which were or might have been raised on a motion to dissolve in the prior interference.

2. SAME-SAME-SAME.

A motion to dissolve on the ground of irregularity in the declaration of the interference was properly refused transmission where the ground relied on to show irregularity raises a question which relates to the merits of the case.

3. SAME-SAME-ADDITIONAL GROUND OF IRREGULARITY RAISED ON APPEAL. Points alleged to constitute irregularity in the declaration of an interference and raised for the first time in the brief filed at the hearing on appeal from the decision of the Examiner of Interferences refusing to transmit a motion to dissolve can receive no consideration.

APPEAL ON MOTION.

MANUFACTURE OF SHEET-GLASS.

Messrs. Mauro, Cameron, Lewis & Massie for Colburn and Washburn.

Messrs. Christy & Christy and Mr. D. S. Wolcott for Hitchcock. BILLINGS, Assistant Commissioner:

Both parties to this interference have appealed from the decision of the Examiner of Interferences rendered on the motion of Colburn

and Washburn to transmit a motion to dissolve. Colburn and Washburn appeal from the portion of the decision refusing to transmit grounds 1 (a), 1 (c), 1 (d), and 3 thereof. Hitchcock appeals from so much of the decision as transmits certain grounds of the motion to dissolve. Colburn and Washburn also appeal from the decision of the Examiner of Interferences denying their motion to shift the burden of proof.

Rule 122 expressly provides that no appeal from the decision of the Examiner of Interferences on a motion to shift the burden of proof will be entertained, but that the motion may be reviewed on appeal from the final decision upon the question of priority of invention. The appeal from the decision denying the motion to shift the burden of proof is accordingly dismissed.

The record shows that as originally declared the issue of this interference consisted of three counts. The interference was dissolved as to count 1, on the ground that there was no interference in fact as to said count. Colburn and Washburn brought a motion to dissolve, on the ground that Hitchcock had no right to make any of the claims forming the issue, which motion was denied by the Primary Examiner. After the resumption of proceedings the case was recalled by the Primary Examiner, and the interference was dissolved, on the ground that Hitchcock's device was inoperative in certain particulars. Hitchcock took no appeal from this decision dissolving the interference. The application of Colburn and Washburn was subsequently passed to issue and matured into a patent containing the claims forming the present issue. Following the dissolution of the interference Hitchcock continued the prosecution of his application ex parte. On March 18, 1909, this interference was redeclared, and the motion of Colburn and Washburn for dissolution was filed within thirty days thereafter.

The Examiner of Interferences refused to transmit the grounds of the motion to dissolve which allege that Hitchcock has no right to make the claims of the issue (a) because his device is inoperative, (b) because his reissue application as originally filed was for a different invention than his patent, and (c and d) because Hitchcock's reissue application is invalid in that he has failed to comply in certain particulars with the laws and rules of procedure with regard to reissue applications, for the reason that Colburn and Washburn might have raised them or did raise them in a former motion to dissolve in this interference and on this identical issue. He held that whether Colburn and Washburn failed to include them in their former motion to dissolve or whether they were denied in the decision on said motion Colburn and Washburn are now precluded from urging them, under the practice set forth in Townsend v. Thullen v. Young, (ante, 15; 138 O. G., 768.)

In the case cited, where the counts against which the motion was directed were identical with the counts of prior interferences in which opportunity was afforded to urge the same grounds for dissolution, it is stated:

Thullen clearly had the right therefore to urge the non-patentability of claims corresponding to all the counts in the earlier interferences, and he is now estopped from moving dissolution upon this ground for the reasons stated in the decision in the case of Townsend v. Ehret v. Young v. Strubel, (C. D., 1908, 261; 137 O. G., 1484.) The motion therefore should not have been transmitted as to the first ground.

The practice set forth in this decision is believed to be correct and necessary to expedite the final disposition of cases in this Office. The same reasons exist for the application of the doctrine of res adjudicata in this Office as in the courts. Colburn and Washburn do not contend that these grounds of their motion might not have been included in their former motion to dissolve, nor do they attempt to offer any excuse for their failure to so include them.

The Examiner of Interferences also refused to transmit the ground of the motion to dissolve which alleges such irregularities in the declaration of the interference as will preclude a proper determination of the question of priority. The irregularity is stated in the motion to consist

in an alleged redeclaration of an interference which has been finally determined by a decision dissolving the interference and from which decision neither party appealed.

The Examiner of Interferences properly refused to transmit this part of the motion, on the ground that the question raised relates to the merits and is not one of form. It is noted, moreover, that this question is urged as a ground why Hitchcock has no right to make the claims of the issue, which ground of the motion was transmitted by the Examiner of Interferences.

In their brief filed at the hearing Colburn and Washburn urged six additional grounds of irregularity. It is found upon examination, however, that these grounds allege irregularities in the prosecution of the Hitchcock application and not informalities in the declaration of interference. These grounds do not properly relate to irregularity in the declaration of the interference, but to the right of Hitchcock to make the claims, and most, if not all, of them were also urged under the latter ground of the motion. In any event these points alleged to constitute irregularity in the prosecution of the interference and raised for the first time in the brief filed at the hearing can receive no consideration in an appeal from the decision. of the Examiner of Interferences refusing to transmit a motion to dissolve, which motion alleges no such irregularity in declaring the interference.