Worden v. Cannaliato, 1519.
| Decision Date | 02 January 1923 |
| Docket Number | 1519. |
| Citation | 285 F. 988 |
| Parties | WORDEN et al. v. CANNALIATO. |
| Court | U.S. Court of Appeals — District of Columbia Circuit |
Submitted November 16, 1922.
L. F Randolph, J. F. Byrne, and H. M. Sterling, all of Washington D.C., for appellee.
Before SMYTH, Chief Justice, and ROBB and VAN ORSDEL, Associate justices.
Cannaliato had registered for him in the Patent Office a trade-mark for hair tonic, a predominant and essential feature of which was the name 'X-Ray.' He claimed to have used the mark on his goods continuously from May, 1913. Appellants, claiming to have adopted the same mark for a like product in 1915 petitioned the commissioner to cancel appellee's mark, on the ground that he was not entitled to it, and that the registration of it caused them damage. Both tribunals of the Patent Office found against them, and dismissed the application. They appeal, asserting (1) that they had adopted and used the mark before the appellee did; and (2) that he never made a sufficient use of it in interstate commerce to entitle him to have it registered.
Cannaliato established that he commenced the preparation of his hair tonic in 1912; that, at the instance of a person connected with a barber supply company, for which Holzer, one of the appellants, was then working, he adopted the name 'X-Ray' as a mark for his tonic; that at first he used handwritten labels, which were written by a friend, who corroborates him; that he kept the tonic for sale in his barber shop, and distributed it from there to those whom he could induce to purchase it; that he sold many bottles of it with the trade-mark attached during the year 1914, and continued to sell it wherever he could up to the time when he made application to have the mark registered; that a barber doing business in Richmond, Va., purchased a half gallon of the tonic from him in Baltimore, and shipped it to his place of business in Richmond; that the container bore Cannaliato's trade-mark; that in the same year he sold two gallons of the tonic under the same label and shipped it to a person in New York; and that he used the mark uninterruptedly on his product up to the time the mark was registered. There is testimony which tends very strongly to show that Holzer had knowledge of the appellee's use of the mark long before it was adopted by Holzer and his partner. We are satisfied that the appellee has clearly established that he was the first to use the mark.
The use of the handwritten label was sufficient. It was not necessary to have it printed. Regis v. Jaynes & Co., 185 Mass. 458, 70 N.E. 480. The statute does not require it.
This brings us to consider whether or not Cannaliato's use of the mark in interstate commerce was sufficient to satisfy the statute. We do not think the shipment to Richmond helps him in that regard. It appears that the purchaser came to Baltimore, there received delivery of the goods, and then shipped them to himself in Richmond. This was not a shipment by Cannaliato, and we put it aside as having no tendency to establish interstate use of the mark by him. The shipment to New York, however, is in a different category. It was made by Cannaliato in 1914, and establishes the use of the mark in interstate commerce before the appellants came into the field. He was ready from that time on to supply any demand that might come to him for shipment between the states. We think this was...
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...indicate an intent to continue the use, has been held sufficient to justify registration of a trade-mark. Worden v. Cannaliato, 1923, 52 App.D.C. 254, 285 F. 988, 990; Montgomery Ward & Co. v. Sears, Roebuck & Co., 1931, 49 F.2d 842, 18 C.C.P.A., Patents, 1386. Moreover, the mere fact of pl......
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