The opinion of the court was delivered by: MOSCOWITZ
This is a motion made by the plaintiff for the following relief:
'1. Striking from the answer the 'separate and independent defense' entitled 'res judicata' on the ground that it is immaterial and presents no defense to the complaint herein.
'2. Striking from the answer the defense entitled 'estoppel' on the ground that it is immaterial and presents no defense to the complaint herein.
'3. Striking from the answer the counter-claim on the ground that it fails to state a claim upon which relief can be granted or, in the alternative, directing the defendant to state its said counter-claim more definitely.
'4. Granting to the plaintiff such other and further relief as to the court may seem just and proper.'
In this action the plaintiff is seeking to revoke the cancellation of plaintiff's trade-mark 'Dandy-Dun' which was registered on June 21, 1938. In connection with defendant's application for registration of its trade-mark 'Dan-Dee', an interference was declared with plaintiff's trade-mark 'Dandy-Dun' and the trade-mark 'Dan-D-Shyne', registered by G. C. Danielson. During the pendency of the interference proceeding, the defendant obtained an assignment of the trade-mark 'Dan-D-Shyne' from G. C. Danielson. The Examiner of Interferences decided that the defendant was entitled to registration of its trade-mark 'Dan-Dee'. The defendant instituted a proceeding for the cancellation of plaintiff's trade-mark. The Examiner of Interferences rendered a decision cancelling plaintiff's registration; such determination was affirmed by the Commissioner of Patents. It is plaintiff's claim that the Commissioner of Patents' determination was erroneous.
This action is brought under 35 U.S.C.A. 63, § based upon three grounds: '(1) plaintiff's user was prior to that of the defendant, (2) there is no conflict or confusion between the trade marks, and (3) the markets in which the parties sell their merchandise are separate and distinct.'
The motion herein relates to the insufficiency of the two separate defenses and the counterclaim. The first defense is that of res judicata. It is as follows:
'Thirtieth: That the issue of priority between the Plaintiff and this Corporate Defendant was definitely settled by the decision of the Examiner of Interferences in the interference proceeding alleged by the Bill of Complaint, and no appeal was taken therefrom, and as consequence, the property rights in the trade-mark involved have been judicially determined as being in the Corporate Defendant.'
The second defense is estoppel. It is as follows:
'Thirty-First: The Corporate Defendant alleges that the plaintiff is estopped from denying the exclusive property right of Defendant in the trade-mark involved by reason of the record in the interference proceeding alleged in the Bill of Complaint.'
These two defenses may be considered together, as they are in effect the same.
United States Code Annotated Title 35, Section 63 in part provides:
'In all suits brought hereunder where there are adverse parties the record in the Patent Office shall be admitted in whole or in part, on motion of either party, subject to such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court may impose, without ...