Suit by Antonine Sambataro against Domenico Caffo and another. From a decree staying plaintiff's cause to await action of municipal court, plaintiff appeals. Decree reversed, and cause remanded, with directions.

H. W. Wheatley, of Washington, D. C., for appellant.

E. F. Colladay and J. C. McGarraghy, both of Washington, D. C., for appellees.

Before MARTIN, Chief Justice, and ROBB and VAN ORSDEL, Associate Jus

tices.

ROBB, Associate Justice. This is a special appeal from a decree in the Supreme Court of the District of Columbia staying appellant's cause in that court. On August 16, 1922, appellees executed a lease of premises No. 347 Cedar street, Takoma Park, D. C., to take effect September 1, 1922, and to run for a term of three years, with the following renewal privilege: "And it is further agreed between the parties of the first part [appellees] and the party of the second part [appellant] that this lease may be renewed for three more years at the expiration of this present lease, and is transferable when the business is

sold."

Appellant conducted a shoemaker shop on the leased premises and seasonably notified appellees of his election to renew the lease. Appellees' agents informed appellant "that there was no necessity for a renewal of said lease, because the lease renewed itself, by reason of its terms." After the expiration of the original term, appellant continued to pay rent as before. Finally appellees notified appellant that they desired possession of the premises for the purpose of conducting a shoe repair place thereon. This was followed by a 30 days' notice to vacate. Thereupon appellant filed his bill, setting out the foregoing facts, and praying that the court enjoin appellees from bringing action, in the municipal court or elsewhere, for recovery of possession of the premises until the expiration of the renewal term granted by the lease. The bill also prayed that, if need be, appellees be required to execute a renewal of the lease in accordance with its tenor, and for general relief.

A motion to dismiss was filed, for want of equity in the bill, and because upon its face appellant, if entitled to any relief, had a plain and adequate remedy at law. The court overruled the motion to dismiss, but, "being of the opinion that the municipal court has jurisdic

tion under section 1535c of the Code of Law for the District of Columbia, to consider a plea upon equitable grounds based upon the facts set forth in the bill of complaint, con- . currently with this court," stayed the case, "to await the action of the municipal court, on such plea being filed."

[1,2] That appellant in his bill stated a cause for equitable cognizance is plain, and it is equally plain that, if the averments of his bill are supported by requisite proof, he will be entitled to a decree for specific performance. Why, then, should the equity court, having first acquired jurisdiction, defer action to await the bringing of another proceeding in a court of inferior jurisdiction?

The learned trial justice evidently based his opinion upon the Act of March 4, 1923, 42 Stat. 1506, providing that "hereafter section 1535c of the Code of Law for the District of Columbia, permitting equitable defenses to be interposed in actions at law, shall be applicable to proceedings now pending in the municipal court of the District of Columbia as well as to actions hereafter brought in said

court."

In International Exch. Bank v. Pullo, 52 App. D. C. 199, 285 F. 933, we ruled that the language of section 1535c, Code, did not disclose an intent on the part of Congress to enlarge the jurisdiction of the municipal court, because that court was without general equitable jurisdiction. While the amendment of March 4, 1923, followed, it will be observed that this amendment merely permitted equitable defenses to be interposed in the municipal court. There was no attempt to clothe While the defendant, in an action of ejectthat court with general equitable jurisdiction. ment, therefore might interpose an equitable defense, the court would be without jurisdicof a decree for specific performance. Inastion to grant affirmative relief in the nature much as appellant, under the terms of the lease, was not only entitled to a renewal for the period of three years, but privileged to

transfer the lease if he sold the business, we think it apparent that a decree for specific

performance would constitute a more adequate remedy than a negative decree in an action of ejectment.

The decree is reversed, with costs, and the cause remanded, with directions to restrain

action in the municipal court, pending final action in the municipal court, pending final decree in the court below.

Reversed and remanded.

MARTIN, Chief Justice, dissents.

In re HAWKINS. Court of Appeals of District of Columbia. Submitted May 10, 1927. Decided May 26, 1927.

No. 1953.

1. Patents 36(1)-Application for patent for cigarette of crinkly-cut tobacco and of method for making it held to disclose invention.

An application for patent for cigarette to be filed with crinkly-cut tobacco and of method for making it held to disclose invention, warranting issuance of patent.

reciprocations, so that shreds of that width are produced. Applicant has discovered that a saving of more than 10 per centum of the tobacco filler or shreds heretofore required and an improved draft may be effected by making the cigarette of a wrapped filler containing crinkly shreds of tobacco. He says: "Crinkly shreds, as used herein, means shreds having inherent bends or wrinkles. Such a cigarette may be produced by first cutting tobacco to form crinkly shreds, and subsequently forming filler containing such shreds and wrapping said filler, either simul

A single invention may include process and product, where both are new.

Appeal from Commissioner of Patents. In the matter of the application of Wilford J. Hawkins for patent. From a decision of the Commissioner of Patents, rejecting the application, applicant appeals. Reversed in part, and affirmed in part.

tinuous rod type, or consecutively as in making individual cigarettes."

Applicant's knife, according to his specification, "differs from the flat-surfaced and shred tobacco. It is shown at 12 (the drawstraight-edged knives heretofore used to ing) as having not a flat surface and a straight edge, but a serrated surface and edge."

Before MARTIN, Chief Justice, and ROBB and VAN ORSDEL, Associate Justices.

ROBB, Associate Justice. Appeal from a decision of the Patent Office rejecting claims Nos. 1, 2, 3, 5, 7, and 8 of an application for patent on a cigarette and the method of making it. In our view, all claims except Nos. 2 and 8 may be eliminated from consideration, since those two claims sufficiently define the invention, as follows:

"2. The method of making cigarettes which consists in cutting tobacco to form crinkly shreds, and subsequently forming and wrapping filler containing said crinkly-cut shreds."

"8. A cigarette comprising a wrapper, and an assemblage within said wrapper, of shreds cut on crinkly lines from assembled tobacco leaves, separated, and differently assembled to form a fluffy filler."

[1] In his specification, applicant states that heretofore it has been customary to arrange a mass of tobacco leaves in superposed condition and then slice from the mass a series of straight shreds by means of a reciprocating knife having a flat surface and a straight edge, the mass being advanced about one-sixteenth of an inch between knife

the Patent Office is that all tobacco leaves,
either fresh or cured, are by nature curved
or crinkled. But, conceding this to be meas-
urably true, we think it apparent that to-
bacco prepared by applicant's method-that
is, cut with a knife having a serrated surface
and edge-will be quite different in structure
from that cut with a straight knife as here-
tofore. Tobacco cut on straight lines tends
to remain in parallel layers, while crinkly-
cut tobacco naturally will tend to maintain
the shreds in a fluffy condition. We there-
fore think that the term "crinkly-cut" dis-
tinguishes applicant's shreds from the
shreds of the ordinary cigarette. This term
originated with him and should be given a
meaning in harmony with his disclosure.
Rajah Auto Supply Co. v. Belvidere, Screw
& Machine Co. (C. C. A.) 275 F. 761.
[2] That a single invention may include
process and product, where both are new, is
familiar law. Merrill v. Yeomans, 94 U. S.
568, 24 L. Ed. 235; Miller v. Eagle, 151 U.
S. 186, 14 S. Ct. 310, 38 L. Ed. 121. Being
of the view that applicant has produced both
a new method and product, we think he is
entitled to adequate protection. The decision
is reversed as to claims Nos. 2 and 8, and
affirmed as to claims 1, 3, 5, and 7.

Reversed as to claims 2 and 8.
Affirmed as to claims 1, 3, 5, and 7.

PRODUCTS CO.

Court of Appeals of District of Columbia.
Submitted May 10, 1927. Decided
May 26, 1927.

No. 1951.

Trade-marks and trade-names and unfair competition 43-Dessert powder and canned fruits held not goods of same descriptive properties as affecting right to registration of trade-marks; "property" (Trade-Mark Act, 5[b], being Comp. St. § 9490).

A prepared dessert powder for use with milk, to make puddings, fillings, etc., and canned fruits, held not goods of same descriptive properties, as affecting right to registration of trade-marks, under Trade-Mark Act, § 5 (b), being Comp. St. § 9490; "property" meaning a peculiarity, nature, or quality, a character always present in an individual or class, an essential attribute, a peculiar quality, or distinguishing quality, characteristic, or mode of any substance.

[Ed. Note. For other definitions, see Words

canned fruits and dessert powder are goods of the same descriptive properties, and sustained the opposition. The Commissioner, in a carefully prepared opinion, found that the goods were not of the same descriptive properties, and dismissed the opposition.

Section 5 (b) of the Trade-Mark Act (33 Stat. 724 [Comp. St. § 9490]) provides that:

"Trade-marks which are identical with a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, or which so nearly resemble a registered or known trade-mark owned and in use by another, and appropriated to merchandise of the same descriptive properties, as to be likely to cause confusion or mistake in the mind of the public, or to deceive purchasers, shall not be registered."

"Property," according to Century Dictionary, is "a peculiarity, peculiar nature or

Appeal from Commissioner of Patents. Application by the Everett Fruit Products Company for registration of trade-mark, opposed by the D. & C. Company, Inc. From a decision of the Commissioner of Patents, dismissing the opposition, the opposer appeals. Affirmed.

E. W. Leavenworth, of New York City, for appellant.

A. E. Wallace, of Chicago, Ill., for appellee.

Before MARTIN, Chief Justice, and ROBB and VAN ORSDEL, Associate Justices.

ROBB, Associate Justice. This is a trademark opposition proceeding, in which the opposition was overruled, and registration granted the applicant, appellee here.

Appellant, a New York corporation, adopted "My-T-Fine" as a trade-mark in 1915 for prepared dessert powder, or, as described on the sample package, "a powder for use with milk to make puddings, fillings, etc." Appellee, a corporation located in the state of Washington, adopted the same mark in 1916, and since has used it in the quite extensive sale of canned fruits.

The Examiner of Interferences ruled that

individual or a class; any essential attribute; a peculiar quality." The New Standard Dictionary defines "property" as "a distinguishing quality, characteristic, or mode of any substance; a peculiarity; also, a permanent or necessary quality."

We must assume that Congress used the term "descriptive properties" in this registration statute in the natural and ordinary sense. We said in Phoenix P. & V. Co. v. John T. Lewis & Bros., 32 App. D. C. 285, that "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." A similar ruling was made in G. & J. Tire Co. v. J. G. Motor Car Co., 39 App. D. C. 508. See, also, Beich Co. v. Kellogg Toasted Corn Flakes Co., 49 App. D. C. 186, 262 F. 640, and National Cash Register Co. v. National Paper Products Co., 54 App. D. C. 278, 297 F. 351.

Having in mind the foregoing, we do not see how it reasonably can be said that dessert powder and canned fruits are goods of the same descriptive properties. As we have observed in other cases, there is a sharp distinction between a statutory registration proceeding and a suit for unfair competition. The decision is affirmed. Affirmed.

MARTIN, Chief Justice. Appeal in a trade-mark opposition proceeding.

In May, 1924, the Empire Paper Company applied for a registration of the notation "Treasury Bond" as a trade-mark for use as a watermark upon writing paper. Applicant claimed continuous use of the mark since February, 1913. The application was opposed by the Carew Manufacturing Company, which claimed continuous use of the identical mark as a watermark for similar goods for a period commencing prior to February, 1913. There is no question as to the identity of the marks or the goods for

which they are used; the sole question being one of ownership of the mark.

It appears from the testimony that the opposer is a manufacturer of paper, and that long prior to the year 1913 it used the notation "Treasury Bond" as a watermark upon its paper, it being used as a trade-mark and not merely as a grade-mark, and that it has continued this use up to the present time. In 1913 opposer entered into an arrangement with the applicant, whereby the latter undertook the sale in the Chicago markets of opposer's paper, which was to bear the special notation "E. P. C. Treasury Bond." The letters "E. P. C." are the initials of applicant's corporate name, and were placed upon the Chicago goods at applicant's request. Under this arrangement, applicant began and continued to sell opposer's paper in the Chicago trade. The applicant had not made use of such a trade-mark prior to its arrangement with opposer. During the time when applicant was selling opposer's paper, the latter continued otherwise to make use of the trade-mark "Treasury Bond" as before. Afterwards applicant ceased to buy opposer's products, and procured paper from other manufacturers. This paper, by appellant's order, also bore the watermark "Treasury Bond."

These and other circumstances are relied

upon by applicant to establish its claim of ownership of the mark in question. The Examiner of Interferences, however, held upon the evidence that opposer was the prior user and owner of the mark, and that it did not part with its title thereto because of the transactions between the parties, but merely gave to applicant the right to sell opposer's goods bearing the mark in the Chicago trade. The Examiner, therefore, sustained the opposition. This decision was reviewed upon appeal by the Commissioner of Patents, and was affirmed.

We are satisfied that these decisions of the lower tribunals are correct, and we find it unnecessary to enlarge upon the reasoning set out in them. The decision of the Commissioner is therefore affirmed.