serted between the words "certificates" and "issued," so that the sentence would read to the effect that certificates of registration in force at the date at which the Act of 1905 took effect should be renewable "as certificates are issued under the provisions of this Act," thus requiring, for a renewal of old certificates a compliance with all the manifold requirements of the first eleven sections of the Act of 1905 including the question of interference with any known trade-mark owned and used by another, although such ownership and user may have come into existence after the Government had legalized and protected the trade-mark of the applicant for renewal.

This construction of the clause in question is deemed to be erroneous. That it is, is apparent both from a study of the Act itself, from the nature of trademark legislation, and from the results which would follow such an interpretation.

In Section 12 is taken up for the first time the method of renewal of certificates of registration. The sentence preceding the one in question provides that they "may be from time to time renewed for like periods on payment of the renewal fees required by this Act, upon request of the registrant, * * * and

such request may be made at any time not more than six months prior to the expiration of the period for which the certificates of registration were issued or renewed." This, of course, applies to certificates issued under the Act of 1905. Then follows:

"Certificates of registration in force at the date at which this Act takes effect shall remain in force for the period for which they were issued, but shall be renewable on the same conditions and for the same periods as certificates issued under the provisions of this Act." * *

*

To interpret that language as requiring for a renewal of old certificates any other conditions than those which are imposed for renewals of certificates issued under the Act, is to reconstruct and not to construe the language of the Act on this point.

The whole history of the law of trade-marks negatives the idea that, where a statute has provided for their registration for a definite period, with provision for renewal, we should expect to find in such legislation a requirement that all conditions pre-requisite for original registration should be complied with when a renewal is sought. At common law trade-marks did not expire by lapse of time. The rights acquired thereby were limited only by the period of their use, and ceased only with their abandonment. When, therefore, legislation required their registration, renewals were made necessary for the sole purpose of negativing their abandonment. And when the fact of a continued user was manifested by the application for renewal, it would seem to be logical that the renewal should issue as a matter of course, without going through the elaborate procedure which was a pre-requisite to their original registration.

Again, the section heretofore quoted gives the holder of a certificate of registration the right to make application for a renewal “at any time not more than six months prior to the expiration of the period for which" it was issued. Thus, while he cannot make his application for renewal prior to six months before the expiration, he can make it six weeks, or six days before its expiration. Now the prior sections of the statute provide for original registration by steps which contemplate and necessitate considerable delay. It is to be presumed that many applications are filed and that they are taken up in regular order which alone would cause considerable delay. Then references are, or may be cited, requiring explanation or investigation. When the application is passed by the Patent Office

it is printed in the Official Gazette. During thirty days "after the publication of the mark sought to be registered, any person who believes he would be damaged by the registration may oppose the same by filing a written notice of opposition,” which is heard in due course. Without reciting further the various steps provided for by the Statute and the rules governing the registration made pursuant thereto, it is obvious that a much larger time than six months might be consumed in prosecuting an application through the Patent Office. Now as pointed out by counsel, the result might naturally be that there would be a gap between the expiration of a certificate and its renewal, provided the application for renewal had to follow the steps of an original application. By the pleadings, it is admitted that in practically all foreign countries, a continuous registration in this country is a condition precedent to protection by foreign registration. Therefore, if there is a gap between the expiration and the renewal of an American trade-mark, the foreign registration becomes of no effect, and an unscrupulous foreigner may avail himself of the trade established by the citizen of this country under an American trade-mark by appropriating the trade-mark.

As Chief Justice Marshall said in U. S. v. Fisher, 2 Cranch, 358:

"Where great inconvenience will result from a particular construction, that construction will be avoided."

For the reasons given, there will be a decree for complainant.

Hearings by the Commissioner.

Washington, D. C., January 20, 1914.

When an appeal or petition to the Commissioner is taken in an ex parte case, the date of hearing may be selected by the party or his attorney, subject to approval by the docket clerk, provided the date selected does not fall on a Saturday, that five days is allowed for the Examiner's statement when required, and the hearing is set within a period of two months. When no date is indicated, the docket clerk will set the hearing approximately two weeks after the appeal or petition is filed.

The foregoing may be applied to inter partes appeals upon motion or stipulation. Otherwise the docket clerk will set the hearing approximately one month after the appeal is taken.

Inner partes motions may be set for hearing on reasonable notice.

(Signed) THOMAS EWING,

Commissioner.

Labels.

Commissioner's Decision.

EX PARTE PINGREE-TRAUNG Co.

Decided November 28, 1913.

LABELS-TITLE-MAY BE PLACED ON THE BACK.

It is necessary that the title of a label appear on the copies filed in order to identify them with the application and certificate of registration; but it is sufficient if such title appear on the back of the labels.

ON PETITION.

LABEL FOR APPLES.

Messrs. Mason, Fenwick & Lawrence, for the applicant.

EWING, Commissioner:

This is a petition from the requirement of the Examiner that the title appear upon the labels filed by applicant.

The labels filed with the application fail to show thereon the title "Bowl of Apples," which appears in the application papers. The Examiner's requirement that the title be placed upon the labels is based upon Rule 19, which provides that— the title of the print or label must appear on the copies filed.

Applicant states that the label submitted is the label to be employed, and it objects to disfiguring it with the title.

A copy of the label is attached to the certificate of registration issued by this Office. In order to identify the labels with the application and certificate of registration, it is necessary that the title appear upon the label. This purpose will be served and the rule satisfied by the placing of the title upon the back of the label.

The petition is granted to the extent that applicant may place the title upon the back instead of the face of the label, if it so desires.

Patents.

EX PARTE, MOORE.

Decided December 2, 1913.

I. APPLICATION-PROTECTION-FINAL REJECTION.

Where in response to the rejection of a claim on the ground that it covers new matter the applicant filed an argument, an amendment to the specification, and a "supplemental" oath, Held that if the Examiner were still of the opinion that the claim covered new matter he properly made his rejection final.

2. SAME-SAME-Same-PETITION TO SET ASIDE NOT BROUGHT WITHIN A YEARAPPLICATION ABANDONED.

Where after a final rejection the proceedings before the Examiner are not such as would save the case from abandonment under the provisions of Rule 171, a petition brought more than a year after that rejection to have it set aside as premature raises a moot question.

ON PETITION.

HEATING AND VENTILATING SYSTEM.

Messrs. C. A. Snow & Co., for the applicant.

EWING, Commissioner:

This is a petition from the action of the Examiner refusing to enter an amendment filed after a final rejection and holding the case abandoned.

After each rejection applicant canceled the claims and presented others. On March 23, 1912, the Examiner rejected the claim then in the case as covering new matter, pointing out specifically what features were not described in the application as originally filed. The specification was then amended to describe the features held to constitute new matter, and it was stated that certain of these features were shown in the drawing. As to others it was said:

In view of the fact that the drawings and specification fail to disclose whether or not the spaces are open or closed at their upper and lower

ends, it is thought that the Examiner should accept applicant's statement to the effect that the spaces are open at their ends particularly if said statement is accompanied by a supplemental oath.

An affidavit of the applicant was attached to the amendment.

On September 12, 1912, the Examiner made his rejection final.

An amendment was filed August 1, 1913, canceling the previous amendment to the specification and the claim which has been finally rejected and presenting a new claim. This amendment the Examiner refused to enter. On September 11, 1913, a request for reconsideration was filed. The Examiner then held the case abandoned for lack of responsive prosecution.

Applicant contends that the final rejection was premature, since his second amendment was accompanied by a supplemental oath which it was presumed would overcome the Examiner's rejection, and that he should have been given an opportunity either to insist upon the admission of the matter referred to in the supplemental oath or to acquiesce in the Examiner's position and eliminate this

matter.

The contention is not well taken. The office of a supplemental oath is not to justify the introduction of new matter, but to cover matter disclosed but not substantially embraced in the statement of invention or in the original claims. (Stewart v. Ellis, 49 O. G., 1983; ex parte Lillie, 53 O. G., 2041.) The Examiner being still of the opinion that the claim included new matter properly made his rejection final.

Rejection having been properly made final and no appeal having been taken within one year from the date thereof, the application now stands abandoned.

This petition has been considered, though not brought within one year of the final rejection, because of the ruling in ex parte Fowler, (127 O. G., 1578), in which it was held that in a case like the present the fact that applicant asked for reconsideration of the Examiner's refusal to admit an amendment within the year from the final rejection was sufficient to entitle his petition to consideration, even though not brought until more than a year after that rejection.

That ruling, however, is, in my opinion, not in conformity with Rule 171, which reads in part as follows:

Prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require. The admission of an amendment not responsive to the last official action, or refusal to admit the same, and any proceedings relative thereto, shall not operate to save the application from abandonment under section 4894 of the Revised Statutes.

When the proceedings before the Examiner do not operate to save a case from abandonment, a petition brought after the expiration of the year from the final rejection that such rejection be set aside raises a moot question. If the fact that applicant asked for reconsideration within the year is sufficient, as held in ex parte Fowler, it will only be necessary to bring the petition within a year from the Examiner's second refusal to set aside his final rejection. The result of such a practice would be a two years' delay after the final rejection.

The decision in ex parte Fowler, supra, is overruled to the extent indicated. The petition is denied.

Patents.

Commissioner's Decisions.

EX PARTE THOMAS.

Decided December 12, 1913.

1. APPLICATION-PROSECUTION.

Where an applicant waits until about the last day of the year to file a response, he does so at his own risk; but where the amendment is filed in ample time the applicant is entitled to some consideration.

2. SAME-SAME-PETITION-DELAY IN FILING.

Where an application is held abandoned for lack of responsive prosecution, the applicant should take steps at once to bring the case before the Commissioner on petition, since the delay in filing the petition, if unexcused, will be fatal to a reinstatement of the application if the amendment was unresponsive. ON PETITION.

CIRCUIT-BREAKER.

Mr. George H. Stockbridge and Mr. Charles A. Terry, for the applicant. EWING, Commissioner:

This is a petition from the Examiner's holding that the application is abandoned. This was dated December 6, 1912.

An examination of the history of the application down to December 6, 1912, satisfies me that the Examiner's action in holding the case abandoned was premature, and it is therefore set aside and the case remanded to him for further prosecution.

It is noted also that the response which the Examiner held to be insufficient was filed in the Office on October 1, 1912, more than a month before the expiration of the last year from the next preceding Office action. One who waits until about the last day to file a response does so at his own risk; but where the amendment is filed in ample time the applicant is entitled to some consideration.

On the other hand, after the second letter by the Examiner, reiterating his holding that the application was abandoned, dated March 11, 1913, the applicant should have taken steps at once to bring the case before the Commissioner on petition. Instead, he waited until December 2, 1913, to file his petition. If on examination of the case I had concluded that it had become abandoned and that the question was one of reinstatement, I would have had to hold the case abandoned because of this delay.

The petition is granted.

Trade-Marks.

Commissioner's Decisions.

UNIVERSAL MOTOR TRUCK Co. v. THE UNIVERSAL MOTOR CO.

Decided October 29, 1913.

TRADE-MARK-OPPOSITION-ANSWER UNDER OATH-DOES NOT HAVE EFFECT AS

EVIDENCE.

Held that under the new equity rules an answer under oath does not have effect as evidence. If the applicant would have any weight given at final hearing to the allegations in the answer, he must substantiate them by proper proof.