(269 F.) DENVER GAS & ELECTRIC LIGHT CO. v. ALEXANDER LUMBER CO. (Court of Appeals of District of Columbia. Submitted November 8, 1920. Decided January 3, 1921.) No. 1324. 1. Trade-marks and trade-names 43-Portable buildings manufacturer may have same trade-mark as building material manufacturer. Portable buildings, ready-cut frame buildings, and knockdown frame buildings do not possess the same descriptive properties as building construction materials, such as roofing pitch, roofing compounds, paints, and other products, so that a manufacturer of the portable buildings can have registered as a trade-mark a mark similar to that used by the manufacturer of the building materials. 2. Trade-marks and trade-names 44-Enumeration of uses substantially excludes other uses. An applicant for a trade-mark, who enumerates the articles to which the mark is to be applied as knockdown frame buildings, portable buildings, and ready-cut buildings, substantially complies with the opposer's request that the applicant state that no claim is made to the mark in connection with building materials similar to opposer's. Appeal from the Commissioner of Patents. Application by the Alexander Lumber Company for registration of a trade-mark, opposed by the Denver Gas & Electric Light Company. From a decision of the First Assistant Commissioner of Patents, dismissing the opposition, the opposer appeals. Affirmed. E. G. Borden and W. H. Small, both of New York City, for appellants. George B. Jones, of Chicago, Ill., for appellee. SMYTH, Chief Justice. This is an appeal from a decision in a trade-mark case. The appellee applied for registration of a mark for portable buildings, ready-cut frame buildings, knock down frame buildings, and other frame buildings ready to set up. The mark of the opposer is applied to building construction materials, such as roofing pitch, roofing compounds, heat-insulating compounds, boiler covering compounds, building paints, paints for wood preservation, paints for roofing purposes, and other products which are made from by-products of the distillation and treatment of gas tar. [1] It is conceded that the marks are similar and that the only question which we are called on to decide is as to whether the goods upon which the marks are used possess the same descriptive properties. The First Assistant Commissioner held that they did not, and sustained a motion to dismiss the opposition. We think he was right. Applicant's mark, according to the application, is applied to the building; opposer's mark is not applied to the building but to building material. A portable or knockdown building does not possess the same descriptive properties as the material of which it is composed. A structure is one thing and the materials out of which it was erected, when considered apart from the building, are quite different things. For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes The controller in an electric street car or the paint on the car does not possess the same descriptive properties as the car, yet each is a part of its composition. We have held that rubber tires used on an automobile, when considered by themselves, do not possess the same descriptive properties as the automobile. G. & J. Tire Co. v. G. J. G. Motor Car Co., 39 App. D. C. 508, 511. In Rookwood Pottery Co. v. A. Wilhelm Co., 43 App. D. C. 1, 4, the applicant sought registration of the word "Rookwood" as a trade-mark for use in connection with enamel paint of the kind used in glazing pottery. Opposer used the same mark on pottery which was glazed with the same enamel. In rejecting the opposition the court said: "While it is true that enamel is an element used in manufacturing the product of appellant, yet the completed article is of a nature manifestly different from the enamel used. They cannot be applied to the same general use We have no difficulty in agreeing with the Commissioner of Patents that the paint of appellee and the pottery ware of appellant are not merchandise of the same descriptive properties." [2] Appellant, through its counsel, says it will be satisfied if the appellee states in its application that— "No claim is made to the mark sought to be registered in connection with the specific building materials as distinguished from completed buildings.” We think the appellee has done that substantially, for it enumerates the things to which the mark is to be applied, and they do not include building material before being worked into buildings or parts of buildings. It seems that the appellee has a prior registration of the same mark for composition roofing and lime, and the opposer says that these materials, or some of them, do possess the same descriptive properties as the merchandise upon which it is entitled to apply its mark. But with this we have nothing to do in the present proceeding. That may be a matter for a future contest. We decide only that the merchandise specified in the application which we are now considering does not possess the same descriptive properties as that mentioned in the opposition paper. Therefore the opposition is not well founded. The decision of the First Assistant Commissioner of Patents is affirmed. Affirmed. SMITH v. UNITED STATES. (Court of Appeals of District of Columbia. Submitted December 6, 1920. Decided January 3, 1921.) No. 3286. Criminal law 829 (6)-Requested charge on intoxication as affecting intent held covered by instructions given. In a prosecution for homicide, a charge given by the court of its own motion that voluntary intoxication was generally not a justification for crime, but that if defendant was so intoxicated he could not entertain the specific intent, he would not be guilty of murder in the second degree, For other cases see same topic & KEY-NUMBER in ali Key-Numbered Digests & Indexes (269 F.) sufficiently and correctly covered the instructions requested by accused on the issue of intoxication as affecting intent, so that it was not error for the court to refuse to give the instructions requested in the language of accused. Appeal from the Supreme Court of the District of Columbia. Isaiah Smith was convicted of murder in the second degree, and he appeals. Affirmed. Hannis Taylor, Jr., of Washington, D. C., for appellant. J. E. Laskey, Morgan H. Beach, and J. P. Schick, all of Washington, D. C., for the United States. SMYTH, Chief Justice. Smith was convicted of murder in the second degree and sentenced to imprisonment in the penitentiary. There is testimony that at the time of the homicide he was intoxicated, and it is contended that his condition was such that he was incapable of forming an intent, was utterly unconscious of what he was doing, and therefore not guilty of any crime. There are two assignments of error, both relating to the failure of the court to grant certain instructions requested by the defendant. He asked that the jury be told that drunkenness "tends to excuse" a crime, "by negativing the mental capacity necessary for the specific intention known in the law as malice, which is necessary for the commission of the crime of murder in any of its degrees"; that motive was one of the facts for the jury to consider along with the other facts as bearing on the mental condition of the defendant, in order to determine whether the act was due to his mental condition "as affected by intoxication or otherwise"; that "intoxication may reduce or wipe out guilt, depending on its degree"; and "that what would constitute murder in the first or second degree may be reduced to manslaughter by partial intoxication"; also "that the defendant might be completely excused by intoxication which entirely destroys for the time being the reason and the will." Thus it appears that all the requests dealt with the effect of the defendant's intoxication upon his mental condition and his ability to form an intent at the time of the homicide. The court, on its own motion, after stating the contentions of defendant's counsel as outlined in his requests, said to the jury that voluntary intoxication, speaking generally, was "no excuse or justification for crime," and that it is only to be considered "when the evidence in the case tends to show that the condition of the man's mind produced. by the intoxication was of such a character as rendered him quite incapable of forming such an intent as is requisite where the charge of murder in the second degree is made"; that if the defendant was so intoxicated that he could not entertain the specific purpose required by the statute where murder in the second degree is charged, he would not be guilty of that offense and should be acquitted of it, but, notwithstanding this, if he was moved to sudden passion and anger, and in that state struck down his victim, he would be guilty of manslaughter. However, if his intoxication was such "that he could entertain no rational idea at all," "could not have had an intent to kill," and did not strike the blow in sudden passion and anger, he should be acquitted. Counsel for the appellant does not challenge any of these instructions, and we do not see how he could have well done so, in view of the settled condition of the law upon the subject. A comparison of the court's instructions with the requests of the defendant will reveal that the former embrace the substance of the latter. Where that is so, no error follows from a failure to give the requests. The circumstance that the court expressed the same principles in his own language, rather than in the language of the defendant's counsel, is immaterial. Pickford v. Talbott, 28 App. D. C. 498, 510; Travers v. United States, 6 App. D. C. 450, 462; Finney v. District of Columbia, 47 App. D. C. 48, 52, L. R. A. 1918D, 1103. The case was well defended, and every right of the accused was carefully guarded by the court. In consequence we must affirm the judgment, with costs; and it is so ordered. Affirmed. REPLOGLE v. KIRBY. (Court of Appeals of District of Columbia. Submitted November 15, 1920. Decided January 3, 1921.) No. 1327. 1. Patents 91 (1)—Junior applicant, filing after senior patent issues, has heavy burden of proof. An applicant, who filed his application two months after an interfering patent was issued, has a very heavy burden to establish his priority. 2. Patents 91 (4)-Evidence held to show junior applicant first conceived invention. In a patent interference proceeding, evidence held to show that the junior applicant, whose application was not filed until two months after the issuance of patent to the senior applicant, was the first to conceive the invention in issue, and that he reduced his conception to practice and commercial exploitation with reasonable diligence. 3. Patents 109-Junior applicant has two years within which to copy claim of senior application. The junior applicant has two years after the issuance of the senior patent within which to copy the claim in issue from the senior patent without being estopped to claim priority. Appeal from the Commissioner of Patents. Interference proceeding between Daniel Benson Replogle and James B. Kirby, as assignee of Shujei Noguchi. From a decision of the Commissioner of Patents, awarding priority to Noguchi, Replogle appeals. Reversed. Daniel Benson Replogle, of Berkeley, Cal., in pro. per. VAN ORSDEL, Associate Justice. Appeal by Replogle from the decision of the Commissioner of Patents awarding priority to Noguchi for an invention relating to dust collectors for pneumatic cleaning devices as defined in the following count: For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes (269 F.) "A porous paper bag adapted to be secured to the discharge pipe of a penumatic cleaner, in combination with a mesh bag adapted to loosely envelop the paper bag, and means for securing the bags to the discharge pipe." [1] Noguchi was granted a patent May 9, 1916, upon an application filed May 1, 1914. Replogle filed his application July 5, 1916. It will be observed that Noguchi's patent was issued over two months before his opponent filed. This, of course, casts a very heavy burden upon the junior party, Replogle. Noguchi took no testimony, but relied upon his filing date for his date of conception and reduction to practice. [2] It appears that Replogle made and tested the device in issue in March, 1914. This, we think, is conclusively established by the testimony. The Board of Examiners in Chief, in a very able opinion in which we concur, after a full review of the evidence, reached the following conclusion: "We must hold, therefore, that Replogle was the first to conceive the invention in issue, and that he followed his conception with a final reduction to practice and commercial exploitation of his invention with reasonable and commendable diligence. Therefore, Replogle is entitled to prevail unless he has in some manner become estopped from receiving a patent with the claim in issue." [3] The Board, however, decided against Replogle on the ground of estoppel, in that he had not copied the claim in issue from the Noguchi patent until fifteen months after the patent was issued. This ruling was based upon the cases of Rowntree v. Sloan, 45 App. D. C. 207, and Wintroath v. Chapman, 47 App. D. C. 428, in which we held that such an amendment must be made within one year. Since the present case left the Patent Office, the Supreme Court has reversed this court, extending the period to two years. Chapman v. Wintroath, 252 U. S. 126, 40 Sup. Ct. 234, 64 L. Ed. 491. Therefore, Replogle's amendment incorporating the claim of the issue into his application was timely, and the rule of estoppel does not apply. With this obstacle removed, we adopt the opinion of the Board of Examiners in Chief, and hold that Replogle is entitled to the award of priority. The decision is reversed. Reversed. The cost of printing the return to certiorari will be paid by the appellee, Kirby. |