Appeal from the District Court of the United States for the District of Connecticut.
Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
This is a suit brought under section 4915 of the U.S. Revised Statutes (35 USCA § 63) to obtain the cancellation of two trade-mark registrations of the defendant. One, No. 46,225, was a registration of "Milk of Magnesia," September 12, 1905, and the other, No. 75,501, was a registration of "Lechede-Magnesia," October 12, 1905. Each of these registrations was taken out under the so-called ten-year clause of the act of 1905. That clause allowed the registration of any mark used in interstate or foreign commerce by the applicant, or by his predecessors in title, which was in "actual and exclusive use * * * for ten years next preceding February twentieth, nineteen hundred and five."
The trial judge held that the registration of each mark was invalid because neither was in exclusive use by the defendant or its predecessors for the ten-year period. He accordingly granted a decree to the complainant canceling the registrations. The defendant has appealed and contends:
(1) That the court below was without jurisdiction to entertain this proceeding so that the bill of complaint should be dismissed for lack of jurisdiction.
(2) If that court had jurisdiction, it rendered a wrong decision, for the registrations were each valid, so that the bill should be dismissed on the merits.
We must first consider the right of the District Court to entertain this suit. After the trade-marks in question had been registered, an application to cancel the registrations was filed in the Patent Office by complainant's predecessor, June 25, 1924. The Examiner of Interferences dismissed this cancellation proceeding, and, on appeal to the Commissioner, his action was affirmed. An appeal was then taken on June 3, 1926, from the Commissioner to the Court of Appeals of the District of Columbia to which the case was submitted on November 16, 1927. They rendered a decision on December 5, 1927, affirming the Commissioner, which is reported sub nomine. McKesson & Robbins, Inc., v. Chas. H. Phillips Chemical Co., 57 App.D.C. 342, 23 F.2d 763. On October 4, 1928, this suit was started.
Section 9 of the Trade-Mark Act 1905 (15 USCA § 89) provides that, where an applicant is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, and that the same rules of practice and procedure shall prevail in every stage of the proceedings as govern an applicant to a patnet or a party to an interference.
The Supreme Court has held that under that section the procedure in applications for patents is to be applied to proceedings for the cancellation of trade-marks. United States ex rel. Baldwin Co. v. Robertson, 265 U.S. 168, 44 S. Ct. 508, 68 L. Ed. 962. Now, under section 4915 of the Revised Statutes, before its amendment in 1927, whenever an application for a patent was refused either by the Commissioner or by the Court of Appeals of the District of Columbia, the applicant might have a remedy by bill in equity.
After the complainant had taken its appeal to the Court of Appeals of the District of Columbia, and while the appeal was still pending, section 4915 was amended, on March 2, 1927 (section 11 [35 USCA § 63]), to take effect May 2, 1927, so as to read as follows: "Whenever a patent on application is refused by the Commissioner of Patents, the applicant, unless appeal has been taken from the decision of the board of appeals to the Court of Appeals of the District of Columbia, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal. * * *"
This amended section, if taken alone, would preclude the present bill in equity, for the appeal to the Court of Appeals of the District of Columbia was "pending" at the time the amendment went into effect on May 2, 1927. But the amending act contained a saving clause (44 Stat. 1335, 1337, § 15 [35 USCA § 7 note]) providing that it should "not affect appeals then pending and heard before the examiners in chief or pending before the Commissioner of Patents or in the Court of Appeals of the District of Columbia, and that in all cases in which the time for appeal from a decision of the examiners in chief or of the Commissioner of Patents * * * had not expired at the time this Act takes effect, appeals and other proceedings may be taken under the statutes in force at the time of approval of this Act as if such statutes had not been amended or repealed."
It was the object of the amendment, not (unhappily) to cut short, but to eliminate a single step in the "labyrinthine trodden ways" of patent solicitors by compelling them to rest on their appeal to the Court of Appeals of the District of Columbia, or, in the alternative, to forego it before they started on new peregrinations in a court of equity with long vistas of appeals in prospect. Yet it can hardly have been the purpose of Congress to take these particular wanderers by surprise and suddenly cut off their bill in equity for which indeed they say they have saved most of their "thunder." It must be remembered that McKesson & Robbins might well have felt forced, under the practice existing before the amendment, to take the appeal to the Court of Appeals of the District of Columbia in order to get the right to file a bill in equity at all. In spite of the alternative provision of the original section 4915, the following decisions seem to have regarded such an appeal as a condition precedent to filing a bill. Smith v. Muller (C.C.) 75 F. 612; McKnight v. Metal Volatization Co. (C.C.) 128 F. 51; Cooper v. Robertson (D.C.) 38 F.2d 852. But in any event McKesson & Robbins had the right to take such an appeal at the time when they took it, and, as the law then stood, they had the right to file their bill if the appeal was decided against them. The most appellant can say for the drastic construction of the amendment for which it contends is that McKesson & Robbins could have withdrawn their appeal after the act went into effect, and only by doing this could they acquire the right to file a bill in equity. Such an annihilation of a pending proceeding is a surprising result to flow from the saving clause of the amendment, and seems to us most unlikely. The complainant did not take its appeal to the Court of Appeals of the District of Columbia as the substitute for a bill in equity, but as a lawful and perhaps necessary step toward filing its bill in the District Court. If the words of the saving clause that "it shall not affect appeals then pending and heard * * * in the Court of Appeals of the District of Columbia" be taken to relate to no more than the particular processes then before the Court of Appeals, they were wholly superfluous, for there was nothing in the amending act that curtailed such appeals. The amending act merely gave appeals to the Court of Appeals of the District of Columbia final effect and precluded a supplementary bill in equity in the cases to which the act applied. If the words "shall not affect appeals then pending" are to mean anything, they must be taken to relate not to the mere decision of the appeals, but to their status and real effect. This effect under the old practice was, among other things, to lay a foundation for a further proceeding by bill in equity.
In addition to this, the saving clause expressly preserves not only appeals, but "other proceedings" under the existing statutes where the time to appeal from a decision of the Examiners-in-Chief, or of the Commissioner, has not expired. This clause has been construed to permit in such cases the old procedure including the filing of a bill in equity after the appeal to the Court of Appeals of the District of Columbia has been decided. Fahrenwald v. Cope (D.C.) 38 F.2d 251; Berry v. Robertson (D.C.) 40 F.2d 915; Hammel v. Robertson, 60 App.D.C. 42, 46 F.2d 839. It would seem strange that all the old rights should be saved to an applicant who had got no farther than the Examiners-in-Chief, and taken away from an applicant who had got as far as the Court of Appeals of the ...