The opinion of the court was delivered by: AVIS
This action was originally instituted by plaintiff upon an allegation that defendant, in the manufacture and distribution of a cleaning product under the mark "Oxol," infringed plaintiff's product "Oxydol," having similar properties and uses.
Defendant, answering, denied the infringement; asserted its right to market "Oxol"; and counterclaimed, alleging that plaintiff had violated the rights of the defendant in manufacturing a soap product called "Chipso" in view of defendant's trade-mark "Chase-O," under which it marketed a product having similar qualities and uses.
In the main case the testimony has been heard and argument had, but decision has not yet been rendered.
In the meantime, and while the principal issues were pending, the defendant-counterclaimant filed a petition in the Patent Office at Washington, D.C., praying for the cancellation of the trade-mark "Chipso" which had been theretofore registered by the plaintiff, and proceeded to hearings thereon before the examiners and the Commissioner of Patents. While that matter was in progress of being heard, counsel for defendant-counterclaimant amended its counterclaim by setting up the proceedings being had in the Patent Office, and practically adding a new cause of action. The prayer of this amendment was as follows: "That the Court order the Certificate of Registration of the Plaintiff for the world 'Chipso,' No. 141,205, to be delivered up to the Commissioner of Patents for cancellation." The amendment was entered on November 20, 1931.
Later, on August 4, 1933, counsel for defendant-counterclaimant again moved to amend by inserting in the counterclaim, and in support of the prayer for cancellation of the trade-mark "Chipso," the decision of the First Assistant Commissioner of Patents upon an appeal taken from the decision of the acting examiner of trade-mark interferences.
This motion was granted, and an order entered on February 7, 1934, allowing the amendment nunc pro tunc as of September 18, 1933.
The decisions of the examiner, the acting examiner of trade-mark interferences, and the commissioner all were favorable to the contentions of the defendant-counterclaimant, and recommended the cancellation of the trade-mark "Chipso," registration No. 141,205.
From this decision of the Commissioner of Patents the plaintiff appealed to the United States Court of Customs and Patent Appeals, and that court on May 27, 1935, rendered a decision [ 77 F.2d 98, 104], holding that the plaintiff in the instant case was not entitled to the use of the mark "Chipso," and affirming the decision of the commissioner. On June 12, 1935, the order affirming was duly entered.
Counsel for defendant-counterclaimant now moves to amend by setting up this decision of the United States Court of Customs and Patent Appeals, and claims that because of the various facts and matters set up in this and the previous amendments, the cause of action set forth in defendant-counterclaimant's "Amendment to Counterclaim," filed November 19, 1931 (apparently should be November 20, 1931), has now become res adjudicata.
In conjunction with, and in support of, the motion to amend, and the request of a finding of res adjudicata, counsel offers in evidence all of the record, of petitions, testimony, and other proceedings presented to and considered by the examiners and commissioner, and the United States Court of Customs and Patent Appeals.
I am satisfied that the amendment should be allowed, and that the evidence should be received, and I hold that the order of the United States Court of Customs and Patent Appeals is res judicata.
However, I do not believe that the effect of such amendment and evidence is to justify this court in entering a decree in favor of counterclaimant ordering a cancellation of the trade-mark. On the other hand, I am satisfied that the result bars the counterclaimant from any recovery in this court on that ...