Fries & Fries Co. v. Excel Co. , 16 F.2d 542 ( 1926 )

YAN ORSDEL, Associate Justice.

This is a trade-mark interference between two applications for trade-marks to be used on denatured alcohol for massage purposes. The mark of the appellant company is “X L —Rub” and the mark of the appellee company is

In its application the Fries & Fries Company, the senior party, alleges its earliest date of use February 1, 1922. The junior party, the Excel Company, established use of its mark at á date prior to the date claimed by the appellant company. The tribunals below held that the marks were confusingly similar, and consequently were not both entitled to registration, and accorded registration to “Excel — Rub,” the mark of appellee company.

It is now urged on behalf of appellant company that the mark “X L — Rub” was used by the X. L. Pharmaeal Company prior to 1913, and that under an assignment of said mark, dated March 14, 1924, they are entitled to date their title back to 1913, a date prior to the earliest date claimed by appellee company.

It will be observed that this assignment was acquired almost two years after the application of appellant company was filed, but in any event it could not be made to relate back to the use of the mark by the X. L. Pharmaeal Company, since the business of that company was not transferred, and the good will of the business did not accompany the assignment of the mark. All that the appellant company acquired was the right to use that mark as against its prior owner. It acquired no such right from the prior owner as would enable it to attach its use to the use made by its assignor. The Commissioner was therefore right in holding that appellee company was entitled to no earlier date than February, 1922.

It is contended, however, that the Excel Company is not entitled to register the mark “Excel — Rub,” for the reason that it is descriptive of the quality of the goods to which the mark is applied. This question cannot be raised in this case, since priority of use is the only issue involved in an interference proceeding. The right of appellee company to register its mark “Excel — Rub” may be challenged in the Patent Office by a competent party in a proper action.

The decision of the Commissioner is affirmed.