Bluthenthal & Bickart v. Bigbie Bros. & Co.

U.S. Court of Appeals for the D.C. Circuit
Bluthenthal & Bickart v. Bigbie Bros. & Co., 33 App. D.C. 209 (D.C. Cir. 1909)
1909 U.S. App. LEXIS 6051

Bluthenthal & Bickart v. Bigbie Bros. & Co.

Opinion of the Court

Mr. Chief Justice Shepard

delivered the opinion of the Court:

The Commissioner did not err in sustaining the plea of former adjudication and dismissing the opposition.

There must be an end of litigation in the Patent Office as well as elsewhere, and it is well settled that the doctrine of res judicata applies to proceedings therein in .the same manner as in the courts. Blackford v. Wilder, 28 App. D. C. 535, 540; Horine v. Wende, 29 App. D. C. 415; Re Edison, 30 App. D. C. 321; United States ex rel. Newcomb Motor Co. v. Moore, 30 App. D. C. 464, 477; Carroll v. Hallwood, 31 App. D. C. 165.

The parties to the opposition being the same as in the interference proceeding, and the subject-matter being the same, the judgment in the former is conclusive as to every question that was or might have been presented and determined therein.

The first ground of the opposition was substantially presented and determined in the interference proceeding. Bluthenthal v. Bigbie, 30 App. D. C. 118. The second ground, as to fraudulent use of the trademark by Bigbie Brothers & Company could have been determined in the interference proceeding also, though it was not actually presented. Schuster Co. v. Muller, 28 App. D. C. 409, 414; Levy v. Uri, 31 App. D. C. 441, 443.

It is too late to raise that question now by a mere change in the form of the proceeding from interference to opposition. The decision will be affirmed. It is so ordered, and the clerk will certify this decision to the Commissioner of Patents, as the law requires. Affirmed.

Reference

Full Case Name
BLUTHENTHAL & BICKART v. BIGBIE BROTHERS & COMPANY
Status
Published
Syllabus
Patents; Former Adjudication; Trademarks. 1. The doctrine of res judicata applies to proceedings in the Patent Office in the same manner as in the courts. (Following Blackford v. Wilder, 28 App. D. C. 535; Horine v. Wende, 29 App. D. C. 415; Re Edison, 30 App. D. C. 321; United States ex rel. Newcomb Motor Co. v. Moore, 30 App. D. C. 464; and Carroll v. Hallwood, 31 App. D. C. 165.) 2. The plea of former adjudication to an opposition to an application for registration of a trademark is properly sustained by the Commissioner of Patents, where, in a previous interference proceeding between the opposer and applicant, decided in favor of the applicant, one of the questions raised in the opposition was determined, and the other question could have been determined, although it was not actually presented. (Citing Bluthenthal v. Bigbie, 30 App. D. C. 118, and following Schuster Co. v. Muller, 28 App. D. C. 409, and Levy v. Uri, 31 App. D. C. 441.)