4. COMPLETENESS AND OPERATIVENESS OF COMBINATION GO TO THE MERITS. Questions as to whether claims contain or embrace complete and operative combinations, and whether the drawing sufficiently illustrates the invention described and claimed, go to the merits of the case.

APPEAL from the primary examiner.

COTTON-OPENER.

APPLICATION filed May 21, 1880.

Mr. L. C. Rice for the applicant.

MARBLE, Commissioner :

This case is appealed from the decision of the Primary Examiner, holding, first, that the first, second, fourth, and fifth claims are incomplete and the subject-matter thereof inoperative by reason of the omission of the feeding-apron or means for feeding the cotton to the grasping-rolls; second, that the feeding-apron for feeding the cotton to the grasping-rolls should be illustrated in the drawing and described in the specification.

It is to be noted that the title of the invention-to wit, cotton-openerestablishes its identity as belonging to a class of well-known machines, in which the ordinary feature, if not the universal method, of conveying the cotton to the mechanism of the machine is by an endless apron. This feature, then, being common in machines of this character, as well as in other machines in which the material to be operated upon is continuously fed forward, it seems to me that it is unnecessary either to include it in the claim, to describe it in the specification, or to illustrate it in the drawing, as it is immaterial by what means the cotton is fed forward to the machine. The operator may feed it to the graspingrolls by hand, or it may be fed to the rolls by the apron, or by other means, and in either case the operation of the essential parts of the machine would not be modified in any degree.

Applicant's invention relates to an improvement of the operating mechanism of a cotton-opener, and does not extend to the feeding-apron, which he has not changed or attempted to change, and which performs precisely the same function in this machine that it does in any other. His claims, then, begin with his improvements, leaving the usual and necessary appendages for feeding the cotton to the machine to be understood. It is well settled that it is not necessary to include in a claim for a combination, as elements thereof, all parts of the machine which are necessary to its action, save as they may be understood as entering into the method of combining and arranging the elements of the combination. I have considered this question and expressed my opinion thereon in case of Ex parte Skinner (19 O. G., 662), and a proper regard for my views as there expressed, and supported by the authorities referred to and quoted, should have relieved applicant of the necessity for this appeal.

In the present case, as in the case of Skinner, the question before me really goes to the merits of the case, and is properly appealable in the first instance to the Board of Examiners-in-Chief. I entertained the appeal in the Skinner case, however, principally for the reason, as urged, of the necessity for some decision which might serve as a guide in future cases in which the same question might arise-that is to say, to lay down a rule of practice as far as practicable upon a subject about which there had been more or less dissatisfaction and complaint. It is the duty of the Examiner to conform his practice to the known and expressed views of the Commissioner, whether they agree with his own views or not, and there is no excuse for adhering to a practice which has been overruled on appeal.

This case was filed May 21, 1880, and it was not until May 2, 1881, on the seventh consideration of the case, that it was discovered that a model was necessary to enable the Examiner to understand the invention. I have not experienced any difficulty in understanding the construction and operation of the machine from the description and drawing without the aid of a model, and am therefore of the opinion that experts or persons skilled in the art would have no trouble in understanding it without a model. There is therefore no need, in my judgment, of a model. In this connection I must express my disapproval of the practice of multiplying actions on cases on questions of mere form without at the same time touching the merits of the case. Such practice, while it may be claimed to be according to the letter of Rule 63, is certainly not in accordance with its spirit. In the present case, for example, seven actions have been made, all confined to questions which involve, more or less, the merits of the case certainly involve the right of the applicant to a patent upon an application having all of the statutory prerequisites to constitute the same, and in no one of these actions. was there any information given by or through which the applicant could judge of the propriety or necessity for altering the specification aud claims except the ipse dixit of the Examiner that it must be done.

Section 4903 of the Revised Statutes provides that

Whenever on examination any claim for a patent is rejected the Commissioner shall notify the applicant thereof, giving him briefly the reasons for such rejection, together with such information and references as may be useful in judging the propriety of renewing his application or of altering his specification, &c.

The matters of form referred to and contemplated in Rule 63 are such ›late to putting the case in condition to go to the Examiner; such, nstance, as the filing of a drawing in cases capable of illustration, of an oath to complete the application, or to amend specification and ims which are utterly incoherent and incomprehensible, or, in other rds, an utter absence of compliance with the prerequisites of an appli tion under the law. If all the Examiner's objections had been stated his first letter, the applicant might have been able by a single amendent to remove them, whereby he would not only be saved the trouble

of making other amendments and the consequent delay in getting whatever patent he may be entitled to, but the business of the Office would be facilitated and the Examiner would be able to devote more time to the examination of other cases. The questions as to whether the claims contain or embrace complete operative combinations, and whether the drawing sufficiently illustrates the invention described and claimed, go to the merits of the case.

The appeal is therefore dismissed.

The Examiner is instructed to conform his practice in the treatment of this case to the views herein expressed, and more particularly expressed in the case of Skinner, referred to.

EX PARTE ADRIANCE, PLATT & Co.

Decided November 29, 1881.

20 O. G., 1820.

1. TRADE-MARK-NAME OF APPLICANT.

The name of the person, firm, or corporation does not acquire an arbitrary significance by association with an otherwise valid trade-mark, and cannot therefore be included as an essential feature of such trade-mark.

2. SAME-SAME-ESSENTIAL AND NON-ESSENTIAL.

It is deducible both from the act of 1870 and from the present law that others may use with impunity the name of the registrant, either by itself or in connection with other arbitrary symbols than those secured by the registration, but that the symbol itself cannot be used by others in any connection. This distinction may be expressed by the words "material" and "immaterial" or "essential" and "non-essential," according to the phraseology preferred.

APPEAL from the Primary Examiner.

TRADE-MARK-REAPING AND MOWING MACHINE.

APPLICATION filed March 30, 1881.

Messrs. A. M. Smith & Co. for the applicants.

MARBLE, Commissioner:

Applicants seek to register as a trade-mark in this case the word “Adriance,” which is the surname of one of the members of the firm, together with the symbolical representation of the upper half of a cogwheel.

Appeal is taken from the action of the Primary Examiner in refusing to permit the applicants to include the proper name "Adriance” as an essential portion of the mark.

Prior to the trade-mark act of July 8, 1870, there was some uncertainty in the decisions of the courts as to a trader's right to the exclusive use of his name as a trade-mark upon his goods. It has been held, however, as a general rule, that every one is entitled to the bona fide use of his

own name in connection with his business. Burgess v. Burgess, 17 Fur., 292; Clark v. Clark, 25 Bar., 76; Faber v. Faber, 49 Bar., 357.

In many instances traders have been enjoined from using a rival's name to the prejudice of his trade. Brooklyn White Lead Company v. Masury, 25 Bar., 416. In some instances persons have been enjoined from using their own names under circumstances showing an intention to defraud others of the fruits of their skill and reputation. Dixon Crucible Company v. Gugenheim, 2 Brewster, 321; Croft v. Day, 7 Beav., 84; Sykes v. Sykes, 3 B. & C., 541. The statute referred to, however, while leaving the question of what constitutes a lawful trade-mark precisely where it was at common law, expressly declares that for the purposes of registration in the Patent Office it shall not consist of a mere name of a person, firm, or corporation unaccompanied by a mark sufficient to distinguish it from the same name when used by others. Under this statute no mere name was registrable as a trade-mark, with the exception of those in use as such prior to the passage of the act. India Rubber Comb Company, 8 O. G., 905; Rubber Clothing Company, 10 O. G., 1011. In the practice under this statute the Office called upon the applicant for registration to discriminate between the essential and the non-essential features of his trade-mark, basing this requirement upon the provision of the law requiring an applicant for registration of a trademark to file a description thereof. Volta Belt Company, 8 O. G., 144. Under the law and practice as thus understood it has been customary, believe, to exclude applicants' names from the recital of the essential portions of the mark. Commissioner Leggett early announced that while names of persons, firms, or corporations may be used in trademarks, provided they are accompanied by original devices to which others have not an equal right, in such case the original devices really become the trade-marks. Dawes v. Fanning, 2 O. G., 27.

I

It is the opinion of the ablest jurists that a person's name cannot be an essential element of his trade-mark, and such is the settled practice of the Patent Office. Brown on Trade-Marks, paragraphs 197-206.

The name and corporation cannot be regarded or registered as an essential part of the mark. Ex parte Alcide F. Poirrier, manuscript decisions, July 24, 1879.

Reference is made by the appellants to the peculiar phraseology of the act of 1870 as support for the position that when the name of a person or firm is accompanied by a mark sufficient to distinguish it from the same name when used by others the name itself may become an essential portion of the mark. I am unable to see the force of this position. The law clearly makes a distinction between the name and the mark (trade-mark) which accompanies it, and it is therefore clearly evasive of the law to place both name and mark upon the same footing and to regard each as equally essential. Ex parte Pace, Talbott & Co., 16 O. G., 909. The effect of the law, as it seems to me, was to announce what is clearly deducible from the decisions of the courts, that the applicant's name is matter of description which, in the absence of proof that it has become

a lawful trade-mark, others who have an equal right may use. The full text of the law would have been that no mere descriptive or general term, or mere name of the person, firm, &c., unaccompanied by a mark, shall be registered; but while the principles relating to the use of descriptive terms generally are well established and therefore not referred to specifically in the act, there was supposed to be some uncertainty at common law as to the status of a manufacturer's name. The very emphasis of the law, therefore, in specially prohibiting such names from registration is laid hold of as an argument to avoid it. The law has clearly made that distinction between proper names which others may have equal right to use and trade-marks, which has always been recognized by the courts as existing between descriptive matter in general and arbitrary symbols, and which in the Patent Office is expressed by the terms "essential" and "non-essential." It is deducible both from the act of 1870 and from the present law that others may use with impunity the name of the registrant, either by itself or in connection with other arbitrary symbols than those secured by the registration, but that the symbol itself cannot be used by others in any connection. This distinction may be expressed by the words "material" and "immaterial," or "essential" and "non-essential," according to the phraseology preferred.

In the case of Ex parte Farnum & Co., 18 O. G., 412, I had occasion to hold that a geographical term acquired no. arbitrary significance from association with an arbitrary symbol; and in the present case I feel constrained to hold, by parity of reasoning, that the name of the person, firm, or corporation does not acquire an arbitrary signification by association with an otherwise valid trade-mark, and cannot therefore be included as an essential feature of such trade-mark. This conclusion, I think, will be found to be in harmony with the decisions of the courts so far as they are applicable to the subject. An examination of the authorities will show that in those cases where the manufacturer's name has been associated in use with an arbitrary symbol the courts have uniformly refused to enjoin others who had an equal right from using the name alone, and have disregarded, as immaterial, changes in, alterations, or omissions of the name where the use of the symbol has been retained; and, in short, have treated the use of the symbol as the test of infringement and the symbol itself as the vital portion of the mark. Amoskeag Manufacturing Company v. Spear, 2 Sand., 605; Boardman v. Meriden Print Company, 35 Conn., 402; Walton v. Crowlet, 3 Blatchf., 440; Millington v. Fox, reported in Cox's Trade-Mark Cases, 338; Burnett v. Phalon, 9 Beav., 192; Fitridge v. Merchant, 4 Abb. Pr., 158; Davis v. Kendall, 2 R. I., 569; Upton on Trade-Marks; Knott v. Morgan, 2 Keen, 213.

I am unable to see any force in the point raised by counsel that the word "Adriance" is not the full name of the firm, but only of one member of the firm. This fact does not establish for the name an arbitrary