Atkins v. Moore, 212 U.S. 285 (1909)

Atkins v. Moore

No. 86

Argued January 22, 1909
Decided February 23, 1909
212 U.S. 285

APPEAL FROM AND IN ERROR TO THE COURT OF

APPEALS OF THE DISTRICT OF COLUMBIA

Syllabus

Proceedings under the Trade-Mark Act of February 20, 1905, c. 592, 33 Stat. 724, and the specific provision of § 9 thereof, are governed by the same rule of practice and procedure as in the instance of patents, and decision of the Court of Appeals of the District of Columbia on appeals from the Commissioner of Patent are not reviewable by the Court. Frasch v. Moore, 211 U.S. 1, followed; Gaines v. Knecht & Son, 27 App.D.C. 530, approved.

Plaintiffs filed their application for a trademark on June 12, 1905, in which it was recited that --

The trademark consists of a symbol composed of the letters "AAA." . . . The trademark is usually displayed on the goods by etching, stamping, or otherwise marking the same upon the blade of the saw, and by inscribing same upon the packages containing such saws.

This was amended August 30, 1905, by adding the sentence -- "The trademark is shown with the letters arranged in the form of a monogram."

The examiner suggested that the description of the trademark should be amended so as to read -- "The trademark consists of a monogram composed of the letters `AAA’."

Plaintiffs declined to comply with the suggestion, and appealed from the ruling of the examiner that such amendment should be made to the Commissioner of Patents, who, on February 20, 1906, overruled the decision of the examiner, and held that the description was sufficient.

April 27, 1906, plaintiffs were notified that their

application for the registration of a trademark for a symbol composed of the letters "AAA," for saws of all kinds, filed June 12, 1905, Ser. No. 7998, has been examined and passed for publication, in compliance with § 6 of the act authorizing the registration of trademarks approved February 20, 1905. The mark will be published in the Official Gazette of May 15, 1906.

The Act of February 20, 1905, 33 Stat. 724, c. 592, § 1, provided that the applicant should file an application in writing, which should contain, among other things:

A description of the trademark itself and a statement of the mode in which the same is applied and affixed to goods, and the length of time during which the trademark has been used. With this statement shall be filed a drawing of the trademark, signed by the applicant or his attorney, and such number of specimens of the trademark, as actually used, as may be required by the Commissioner of Patents.

This act was amended by the Act of May 4, 1906, 34 Stat. 168, c. 2081, § 1, by inserting after the words "description of the trademark itself" the words "only when needed to express colors not shown in the drawing."

On June 21, 1906, the Patent Office sent plaintiffs the following communication:

Attention is directed to the Act approved May 4, 1906, providing for a description of the trademark itself only when needed to express colors not shown in the drawing.

Inasmuch as the trademark covered by this application cannot be registered until after July 1, 1906, when said act takes effect, applicant should direct the cancellation of the present description and of all of the preamble to the statement following the words "have adopted for my use," and the substitution therefor of the following words: "the trademark shown in the accompanying drawing."

If colors form a material part of the mark, a brief reference thereto should follow.

An amendment as above indicated should be promptly filed to avoid delay in the use of the certificate.

Plaintiffs refused to comply with this suggestion, and, on July 16, 1906, the examiner declined to pass the application for registration.

A petition was thereupon presented by plaintiffs to the Commissioner, seeking the overruling of the action of the examiner, and, on November 22, 1906, the petition was denied.

An appeal was prosecuted to the Court of Appeals, which affirmed the decision of the Commissioner of Patents, and directed the clerk to "certify this opinion to the Commissioner of Patents, according to law."

An appeal and a writ of error were allowed.