ON PETITION.

CLOTHES-RETAINER.

Messrs. Morsell and Caldwell, for the applicant.

FRAZIER, First Assistant Commissioner:

This is a petition from an action of the Primary Examiner holding the aboveentitled case abandoned for failure to properly prosecute within one year from the last Office action.

The record shows that under date of March 30, 1912, the Examiner rejected all the claims in the case on certain references. A formal objection to claim 3 was made to the effect that it is not clear how the projecting portions of the engaging member can brace the trunk portion. On March 29, 1913, a telegram was received from the attorneys of record and entered in the file, reading as follows:

Reconsideration of Examiner's action dated March thirtieth nineteen hundred twelve in George H. Wheary application clothes retainer six hundred thirty-six nine thirty requested as reference do not show a retainer bar which also serves to brace the trunk body. Application of Clements [elements] as in responding to an appeal requested.

This telegram was confirmed by a letter received from the attorneys on April 4, 1913.

The response by telegram, if in substance sufficient to satisfy the requirements of the last official letter, would be, in my judgment, a responsive action within the meaning of the rules. It is to be observed that applicant in this telegram gives as a specific reason for his request for reconsideration of the claims that the

references do not show a retainer bar which also serves to brace the trunk body.

With the amendment filed March 15, 1912, applicant said:

These three claims recite a structure in which the bar engaging member is formed with a rear portion having forwardly extending side portions which are engaged by the locking means of the retainer, thereby providing, in substance, a rectangular inner reinforcing frame for the trunk which is adapted to brace the trunk in all directions of strain, both inwardly and outwardly. In the references cited, the bar engaging means is formed in two parts which are fastened to opposite sides of the trunk and are not connected together and braced on their inner ends, and on their outer end portions are only braced by the retainer bar with relation to a crushing strain from the outside, as no means are provided for preventing the sides from spreading away from each other. This feature is of great importance in trunk manufacture and is not shown in the references cited.

Trade-Marks.

STREET & SMITH, a Co-partnership, etc., Appts. v ATLAS MANUFACTURING COMPANY, et al.

APPEAL FROM CIRCUIT COURT OF APPeals-Trade-MARK CASE-CERTIORARI. An appeal to the Federal Supreme Court to review a decision of a Circuit Court of Appeals in a case arising under the trade-mark act of February 20, 1903 (33 Stat. at L. 724, Chap. 592, U. S. Comp. Stat. Supp., 1901, p. 1459), cannot be maintained under the Judicial Code, Sec. 241, as one not made final by that Code, although trade-mark cases are not included in the enumeration, in

Sec. 128 of the Code, of the decisions which shall be final (except as reviewable under Secs. 239, 240, on certified questions or by certiorari), since these sections, in view of the provisions of Secs. 292, 294, 297 of the Code, bearing upon the extent to which it was intended to affect or repeal prior laws, must be read in connection with Sec. 18 of the trade-mark act, placing trade-mark cases upon the same footing, as respects the remedy by certiorari, as cases arising under the patent laws.

[For other cases, see Appeal and Error, III, d. 2; Certiorari, 40, 41, in Digest Sup. Ct., 1908.]

[No. 618.]

Submitted November 10, 1913. Decided December 1, 1913.

Appeal from the United States Circuit Court of Appeals for the Eighth Circuit to review a decree which, reversing a decree of the District Court for the Eastern District of Arkansas, directed the dismissal of a suit to enjoin the infringement of a registered trade-mark and unfair trade. Dismissed for want of jurisdiction.

See same case below-L. R. A. (N. S.)—, 204 Fed., 398.

The facts are stated in the opinion.

Messrs. Hugh K. Wagner and Leonard J. Langbein, for appellants.
Messrs. James Love Hopkins and Nelson Thomas, for appellees.

MR. JUSTICE VAN DEVANTER delivered the opinion of the Court:

This is an appeal from a decree of a Circuit Court of Appeals, directing the dismissal of a suit to enjoin infringement of a registered trade-mark and unfair trade. —L. R. A. (N. S.)—, 204 Fed., 398. The decree was rendered and the appeal allowed after the Judicial Code, adopted March 3, 1911 (36 Stat. at L. 1087, Chap. 231, U. S. Comp. Stat. Supp., 1911, p. 128), became effective. Our jurisdiction is challenged by a motion to dismiss; and if we have jurisdiction it is solely because the case was in part one arising under the act of February 20, 1905, infra, under which the trade-mark was registered. Whether in a case so arising the judgment or decree of a Circuit Court of Appeals may be reviewed by this Court upon an appeal or writ of error, or only upon a writ of certiorari, is the question for decision.

Section 128 of the Judicial Code declares that, except as provided in Secs. 239 and 240, "the judgments and decrees of the Circuit Courts of Appeals shall be final * * * in all cases arising under the patent laws, under the copyright laws, under the revenue laws, and under the criminal laws, and in admiralty cases." Section 239 permits the certification to this Court of questions of law by a Circuit Court of Appeals concerning which it desires instruction for the proper decision of a case within its appellate jurisdiction, and is not important here. Section 240 reserves to this Court the discretionary power to require, by certiorari, upon the petition of a party, that any case in which the decision of a Circuit Court of Appeals is made final by the Code be certified here for review and determination, with the same power and authority in the case as if brought here by appeal or writ of error. Section 241 declares that any case in which the decision of a Circuit Court of Appeals is not made final by the Code may be brought here, as of right, by appeal or writ of error, if the matter in controversy exceeds $1,000, besides costs.

These provisions, it is said by counsel for the appellants, enabled them to appeal, as of right, the statutory amount being involved, and did not remit them to the discretionary writ of certiorari; the argument being that Sec. 128 enumerates the cases in which the decisions of the Circuit Courts of Appeals shall be final, and does not include among them cases arising under the trade-mark laws, and that Sec. 241 gives an appeal or writ of error, as of right, in any case in which the decision of the Circuit Court of Appeals is not thus made final, if, as here, the requisite amount is in controversy. If the question turned entirely upon the Code provisions relied upon, the argument probably would be convincing. But there are other statutory provisions which must be considered, some within and others without the Code.

The Code does not purport to embody all the law upon the subjects to which it relates. It contains some new provisions and some that are modifications of old ones; but much of it is merely a re-enactment of prior laws with appropriate regard to their proper classification and orderly arrangement. Among others, it contains the following provisions bearing upon the extent to which it was intended to affect or repeal prior laws:

"Sec. 292. Wherever, in any law not contained within this act, a reference is made to any law revised or embraced herein, such reference, upon the taking effect hereof, shall be construed to refer to the section of this act into which has been carried or revised the provision of law to which reference is so made. * * *

"Sec. 294. The provisions of this act, so far as they are substantially the same as existing statutes, shall be construed as continuations thereof, and not as new enactments, and there shall be no implication of a change of intent by reason of a change of words in such statute, unless such change of intent shall be clearly manifest. * * *

* *

"Sec. 297. The following sections of the Revised Statutes and acts and parts of acts are hereby repealed: * [many sections, acts, and parts of acts are here enumerated]. Also all other acts and parts of acts, in so far as they are embraced within and superseded by this act, are hereby repealed; the remaining portions thereof to be and remain in force with the same effect and to the same extent as if this act had not been passed." Sections 128, 239, 240, and 241 of the Code, as before described, substantially, almost literally, repeat the provisions of Sec. 6 of the Circuit Courts of Appeals act of March 3, 1891 (26 Stat. at L. 826, Chap. 517, U. S. Comp. Stat., 1901, p. 488). There is but a single change deserving mention here, and it is that cases arising under the copyright laws are in Sec. 128 added to the enumeration of cases in which the decisions of the Circuit Courts of Appeals are declared final. But this has no bearing upon cases arising under the trade-mark laws, save as it indicates that Congress was extending, rather than contracting, the list of cases in which finality attaches to the decisions of the Circuit Courts of Appeals. Passing his consideration, there is nothing in the Code denoting a purpose to change the existing appellate jurisdiction in trade-mark cases: it is left as it was before.

The trade-mark act of February 20, 1905 (33 Stat. at L. 725, Chap. 592, U. S. Comp. Stat. Supp., 1911, p. 1459), dealt with the subject we are considering. By Sec. 17 it invested the Circuit Courts of Appeals with appellate jurisdiction of cases arising under that act, and by Sec. 18 declared that writs of certiorari might be

granted by this Court for the review of decisions of those Courts in such cases “in the same manner as provided for patent cases" by the Circuit Courts of Appeals act. In placing such trade-mark cases upon the same footing as cases arising under the patent laws, as respects the remedy by certiorari, Congress undoubtedly intended that this remedy should have the same attributes in the one class of cases as in the other. We already have seen that the Circuit Courts of Appeals act, in Sec. 6, made it exclusive in cases arising under the patent laws. Before the adoption of the Code, this Court said in Hutchinson, P. & Co. v. Loewy, 217 U. S., 457, 460, 54 L. Ed., 838, 839, 30 Sup. Ct. Rep., 613, a case like this: "We are of opinion that this appeal will not lie, and that the remedy by certiorari is exclusive. * * * We think that the language of Sec. 18 places suits brought under the trade-mark act [February 20, 1905] plainly within the scope of the act establishing the Court of Appeals [March 3, 1891], and that a final decision of that Court can be reviewed in this Court only upon certiorari."

Of course, that case and this are not to be confused with others arising under earlier trade-mark laws not containing any provisions respecting appellate jurisdiction such as are embodied in the act of 1905.

The provisions of that act upon this subject are not among those enumerated in Sec. 297 of the Code as thereby repealed, and neither do they appear to have been embraced within and superseded by the Code. And while the Circuit Courts of Appeals act, to which Sec. 18 of the act of 1905 makes reference, has been superseded by being incorporated into the Code, that section has not thereby lost any of its original effect, for Sec. 292 of the Code requires the reference to be construed as if naming the very sections of the Code into which the Circuit Courts of Appeals act has been carried.

It follows that the motion to dismiss the appeal must be sustained, as was done in Hutchinson, P. & Co. v. Loewy, supra.

Appeal dismissed. (From Advance Opinions, U. S. Sup. Ct., Lawyers' Co-op. Pub. Co., Jan. 1, 1914.)

International Union.

Official Journals. Contents for March.

LA PROPRIÉTÉ INDUSTRIELLE.

OFFICIAL PART. Domestic Legislation: ARGENTINE. Decree of Dec. 11, 1912, concerning the documents to be included with patent applications based on prior foreign patents.-FRANCE. Order of Jan. 23, 1914, fixing the time when declaration of priority shall be effected.-ITALY.' Decree of Jan. 4, 1914, approving the new regulation for the execution of the law concerning manufacturers' designs and models.—HOLLAND. Ordinance of Aug. 29, 1912, concerning trade-marks in the colonies and in the Auxiliary Bureaus of Industrial Property.-PERU. Decree. of Aug. 9, 1912, concerning the indication of the products on the deposit of manufacturers' or trade-marks.-Decree of Jan. 19, 1913, concerning the payment of fees due to experts in matters of patents of invention. Decree of Feb. 1, 1913, authorizing the Minister of Public Industry to extend protection to certain manufacturers' marks.-Ordinance of Feb. 28, 1913, concerning the prolongation of the period for opposition in trade-mark matters.

Circulars and Administrative Notices: ITALY. Circular of Nov. 10, 1913, concerning the regulation for the application of the law concerning patents. UNOFFICIAL PART. Correspondence: LETTER FROM ITALY.

Miscellaneous News: BULGARIA. Legislation concerning designs and models; rectification.-CHILE. Proposed law concerning manufacturers' marks and designs and models.-UNITED STATES. Report of the Commissioner of Patents for the year 1913.-RUSSIA. Revision of legislation concerning industrial property.— Modification of procedure relative to pharmaceutical products.

Bibliography: L'OEUVRE DE LA CONFERENCE DE WASHINGTON, par Marcel Plaisant, Paris, 1913; ANNUAIre de la Propriété Industrielle, Aristique et LitTÉRAIRE POUR 1914, par G. Vander Haeghen, Liège, 1914.

Statistics: UNITED STATES. Industrial property, 1912 and 1913.

LE DROIT D'AUTEUR.

OFFICIAL PART. International Union: GREAT BRITAIN. Adhesion to the Convention of Berne for the Channel Islands and India.

Domestic Legislation: GREAT BRITAIN. Order in Council of Feb. 9, 1914, concerning the agreement with Italy concerning the revised Convention of Berne. UNOFFICIAL PART. General Considerations: THE LAW CONCERNING "LA PLUS-VALUE" (NET PROFITS) OF WORKS OF ART.

Jurisprudence: GERMANY. Subscription Forms; A Protectable Writing if it Reveals Real Intellectual Activity.-BELGIUM. Ring Without Artistic Character; Simple Combination of Forms; Inapplicability of the Law of 1886; Warrant of Seizure; Lack of Caution; Convention of The Hague; Validity.—FRANCE. German Poster Advertisement; Chromolithograph; Protection as a Work of Industrial Art, and not as a Mark. Convention of Berne; Italian-German Treaty of 1907; Suppression of Formalities.-SWITZERLAND. Postal Card; Panorama;

Protection by the Law of 1883; Pretended Piracy; Experts.

Miscellaneous News: FRANCE. Adoption, by the Chamber, of the Legislation Proposed for the Abrogation of the Law of 1866 concerning Mechanical Musical Instruments.

Miscellaneous Documents: UNITED STATES. Manner of Protection of New Editions of a Work.

Adjudicated Patents.

No 989,976. Hunnicutt. For seed corn grader. Claims 1, 2 and 4 held void for lack of novelty. Claims 3 and 5 held not infringed if valid. 207 F. R., 585. No. 925,146. Weinschenk. For a sweater. Held valid and infringed. 206 F. R., 902.

No. 559,614. Watson. For a corrugated metal culvert. Held void for lack of patentable invention and also not infringed if conceded validity. 207 F. R., 837. No. 819,373. Olmstead. For an ice-cream dipper. Claim I construed and held valid and infringed. 207 F. R., 825.

No. 644,664. Daley. For a furnace. Held valid and infringed on motion for preliminary injunction. 207 F. R., 963.

Nos. 688,789 and 785,070.

Monahan and Kieren. For grass-twine machines. Held valid but not infringed. 207 F. R., 937.