which consists merely in * * * devices which are descriptive of the goods with which they are used shall be registered.' As suggested in brief of counsel for the Patent Office, 'the most accurate way of describing an article is possibly by the article itself.'"
The same conclusion was reached in Re Barrett Co., 48 App.D.C. 586. It was there held that a design applied to the surface of roofing material, and formed by horizontal and vertical lines embossed or indented into the material in such manner as to leave the surface corrugated in squares, is a mere structural feature of the goods and is not registrable as a trade-mark. The court quotes the Assistant Commissioner as follows: "The applicant suggests that if its mark had been one or two squares stamped in the corner of the sheet of roofing, there would have been no objection to its registrability if new, and asks what reason there is for refusing registration merely because the applicant has applied the mark all over the surface of the goods. The answer to this is that, by applying the mark all over the surface, the mark ceases to be a mark on the surface and becomes the surface itself. The mark, if there was one, is entirely lost by the mere fact of uniform repetition over the whole surface.It is no longer capable of appealing to the beholder as a mark of origin, but would inevitably create the impression that it was something else."
The plaintiff uses the mark on its baits and lures. It becomes an intregal part of the lure, but the plaintiff argues that the mark has no value or function. It seeks to support this contention by expert testimony and liberal quotations from the remarks of Judge Tuttle during the Michigan trial. It will serve no useful purpose here to quote at length from the testimony of the experts, nor to quote the comments of Judge Tuttle. Let one quotation from the deposition of Lyell J. Wooster, Sales Manager and Vice-President of the plaintiff, suffice. This deposition was presented by the plaintiff in the opposition hearing in the Patent Office and is found in plaintiff's exhibit M. At page 31 of the exhibit, the following questions were asked and answers given by Mr. Wooster on crossexamination by Mr. Caplan:
"XQ160. Now getting back to the point where we were before, from which we digressed; would you say that this herringbone pattern has anything to do with the fish-getting quality of the bait on which it appears? A. None other that I stated before. This is repetition.
"XQ161. Would you review what you stated before and give your qualifications for your answer? A. You recently objected to repetition.
"Mr. Wood: I believe this is entirely repetitious.
"Mr. Caplan: Would you answer my question, please?
"The Witness: I guess you will have to give it to me again.
"(Whereupon Question 161 was here read by the court reporter, as above recorded.)
"Mr. Wood: The question is entirely too indefinite and vague. He has not said anything upon which he could be called upon to qualify.
"XQ162. I will rephrase the question and ask him once more whether the herring-bone pattern on the sides of the bait affects the fish-getting quality of the bait on which it appears.
"Mr. Wood: The same objection.
"A. No, as stated before the most important features as to the fish-getting qualities are action and color and markings are secondary, of a secondary importance.
"XQ163. Are they of any importance? A. That is hard to say, no two fishermen agree on just what factors in a bait catch the fish. I don't believe you ever could get two fishermen to agree on exactly what get the fish. It is a matter of personal opinion.
"XQ164. Do you have a personal opinion as to whether the markings of the side of the bait affect the fish-getting qualities of the bait? A. I don't think I do any more than any other factors, as far as I am concerned."
Mr. Mooster would not say that the herring-bone markings on the lure did not have fish-getting qualities. Indeed, he said he did not have a personal opinion whether they did or did not. His answers may be said to summarize the testimony before the court in this connection.
The fact femains that the plaintiff has made liberal use of this marking on its products and frequently placed the mark on both sides of the lure. When so used the mark becomes a very essential part of the lure.
The court agrees with the Patent Office tribunals and finds that the marking is an essential element in giving the lure the desired appearance and serves a useful purpose. Therefore, it is not entitled to registration as a trade-mark and the complaint must be dismissed.
It is so ordered and counsel for defendant will prepare and submit appropriate findings of fact and conclusions of law in accord herewith.
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