play upon the soap, and not the fact that a diminutive piece of metal is embedded in the product.

It may be, although not necessary for decision here, that plaintiff has acquired a valid trade-mark by the adoption and registration of the word "Tag" to identify its product. Used merely for the purpose of identification, that word may be subject to registration; but, if so, it is only because it is used arbitrarily or fancifully. Plaintiff's claim just alluded to, however, involves the use of the word descriptively, i. e., to describe the manner in which the soap is prepared for marketing, as the soap sold with a tag on it. It is too well settled for citation that a descriptive word may not become the subject of an exclusive trade-mark. Tagging articles of commerce capable of bearing such trade devices has become a very common practice, so common as to be now a method of description of a manner of commercial exploitation. It is our opinion that a soap manufacturer cannot acquire a monopoly of such a common method of marking his product for sale. Notes 55 and 56, pages 711-713, 38 Cyc., sum up the numerous decisions distinguishing the words adjudicated as descriptive, ana hence not subject to appropriation, and non-descriptive. We think the use of the word "Tag" in connection with the physical tag should be in the first category, and that the use of the Globe Company's tag, as shown, infringes no trade-mark right of plaintiff. The identifying word "Tag" nowhere is used on the Globe soap.

A similar question was raised and decided in Ohio in a case in which complainant was plaintiff. (M. Werk Co. v. Ryan Soap Co., 14 Ohio Cir. Ct. R., N. S., 122; 33 Ohio Cir. Ct. R., 629, affirmed, no report; 88 Ohio St., 539; 106 N. E., 1070.) In that case plaintiff, upon the same trade rights urged here, complained of the defendant because it put forth a soap bearing a diamond-shaped paper or cardboard tag. It was claimed there, as in the instant case, among other things, that the use of the tag tended to the confusion of purchasers who had learned to identify plaintiff's product as soap bearing a tag. The conclusion of the State appellate court is the same to which we arrive on the facts here.

It is certain that complainant has no right to recovery on the theory advanced that its trade-name is interfered with, for the Globe soap is nowhere shown to have been put forth by defendant or the manufacturer under the name of "Tag Soap."

(2) We are referred to the third ground of complaint, namely, that of unfair competition, and the inquiry quickly arises whether this case is comparable to the case decided by this court in 206 Fed. Rep., 420; 124 C. C. A., 302, De Voe Snuff Co. v. Wolff. It must be observed that in this class of cases application of very general principles, only, is possible, each case to be determined with special ref

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erence to the circumstances peculiar to it. Relief was given in the case just cited because it was thought by this court that the word Eagle" employed, together with a representation of an eagle, on the packages of snuff manufactured and sold by the complainant and its predecessors in business for more than seventy years, had become so distinctively the mark of complainant's brand of snuff that the use of the designation "White Eagle" applied to snuff, also with a figure of an eagle, although not in the same attitude and position as employed by the complainant, was sufficient to mislead ordinary purchasers and to cause a confusion of goods. As in all cases of this class, that is the real test here, for the duty is clearly upon the Globe Company to distinguish its product from that of the complainant so that the ordinary purchaser is not likely to be deceived by its appearance into the thought that he is buying the product of complainant. Considering the appearance of the rival soaps as prepared for the market and bearing in mind that nothing is claimed for the similarity in size or color or texture, it seems to us somewhat unlikely that an ordinary purchaser intending to buy Werk's "Tag" Soap and having any familiarity with its appearance would be deceived by observation alone into buying Globe soap for what was actually desired. The lettering is as different in disposition upon the cake as it is in wording, while the tag, in shape or inscription or position upon the cake bears no resemblance to the tag on complainant's article. The impression we have of distinctive dissimilarity gained by an inspection of the articles themselves as being sufficient to avoid the charge of unfair simulation is not removed by consideration of the testimony offered. There is no competent testimony that any attempt was made by the defendants to substitute the Globe soap for complainant's product nor that any person was deceived by the appearance of the Globe soap, except that one woman testifies that, at the grocery where she customarily traded, she noticed an open box of soap with tags on it differing from the "Werk" tags, and for sale at a price less than she had been accustomed to pay for the Werk soap, and that she bought some, lightly assuming that the tag had been changed and the price reduced. As this woman confesses that she noticed the difference in appearance, we do not regard her testimony, solitary as it is upon this point, as sufficient to indicate clearly, against the impression derived from a comparison of appearances of the several soaps, that a confusion between the products is probable among ordinary purchasers. There is testimony secondary in character, and hence of doubtful competency, that a child, sent to purchase complainant's soap by the name of "Tag Soap," came back with the Globe German soap; but there is no testimony as to what soap the child asked for.

There have been exhibited the boxes in which the rival products are shipped and in which the soap, unwrapped, is displayed for sale. They are respectively so variously marked as to make confusion reasonably impossible.

(3) Previous to the commencement of this action, complainant had prosecuted to a consent decree an action against a retail dealer in which testimony had been received tending to show unfair substitution, and the record in this last case is offered against the defendant partnership, although no privity between it and the defendant in the former case is shown. It is our judgment that this record should not disturb our conclusion that no abuse of discretion is shown in the withholding of an order of temporary injunction, for, finding that the maker of the Globe soap—

has done its legal duty in distinguishing its own product from that of complainant,

its distributees are not responsible for the fact that tricky retailers, not in privity with them, substitute its manufacture for that of complainant. (Rathbone, Sard & Co. v. Champion Steel Range Co., 189 Fed. Rep., 26; 110 C. C. A., 596.)

It results that the ground upon which a charge of unfair competition is based is identically that which is offered to support the claim of infringement of trade-mark, and that this alleged cause of action should also be denied for reasons already given.

We find that the district court exercised its discretion respecting the motion for a temporary injunction precisely as the evidence and law indicated, and that therefore the decree below should be and is affirmed, with costs.

[U. S. Circuit Court of Appeals-Sixth Circuit.]

INDIVIDUAL DRINKING CUP Co. et al. v. PUBLIC SERVICE CUP CO. INDIVIDUAL DRINKING CUP Co. v. ERRETT. SAME v. HUDSON RIVER DAY LINE.

Decided February 26, 1918.

255 O. G., 1054; 250 Fed. Rep., 620.

1. PATENTS-INVENTION-PAPER CUP.

The Luellen patent, No. 1,032,557, for a paper cup, Held void for lack of invention.

2. SAME-VALIDITY AND INFRINGEMENT-DISPENSING APPARATUS FOR PAPER CUPS. The Luellen patent, No. 1,081,508, for a dispensing apparatus for paper cups, claims 18, 26, 34, 41, 48, and 49 Held valid and infringed by a vending-machine for cups, but not infringed by a free dispenser. Claim 16 also Held valid, but not infringed.

3. SAME-SUIT FOR INFRINGEMENT-COSTS.

There is no fixed rule governing the allowance of costs made on an accounting for infringement, but each case must be disposed of on its own merits, and the matter rests in the discretion of the court.

APPEALS from the District Court of the United States for the Southern and Eastern Districts of New York.

Suit in equity by the Individual Drinking Cup Company and others against the Public Service Cup Company. From the decree, both parties appeal. Suits by the Individual Drinking Cup Company against Charles Errett and against the Hudson River Day Line. From the decrees (226 Fed. Rep., 465; 234 Fed. Rep., 653; 237 Fed. Rep., 400) complainant appeals. Decrees modified and affirmed.

Mr. Clifford E. Dunn (Mr. J. Edgar Bull of counsel) for the plaintiffs.

Mr. Hans v. Briesen and Mr. Fred A. Klein for the defendants. Before WARD and ROGERS, Circuit Judges, and MAYER, District Judge.

MAYER, Dis. J.:

The appeals in these three cases were argued together and concern two patents, viz.: Letters Patent (a) to Luellen, No. 1,032,557, for a paper cup (the "cup patent"), applied for May 23, 1908, and granted July 16, 1912; and (b) to Luellen, No. 1,081,508, for a dispensing apparatus for paper cups (the "apparatus patent"), originally applied for April 2, 1908, later divided and granted December 16, 1913. There are three alleged infringing devices, viz.: (1) the so-called Lily cup; (2) a penny-in-the-slot or vending machine; and (3) a free dispenser.

In the suit in the Eastern District (called by the parties for convenience the "Brooklyn suit "), both patents were involved, and the court held (by final decree) the following claims of the apparatus patent valid and infringed by the Brooklyn defendants' "vendingmachine," viz.: 3, 4, 5, 7, 11, 12, 13, 14, 15, 16, 17, 18, 20, 22, 25, 26, 27, 28, 34, 35, 36, 37, 40, 41, 43, 44, 45, 46, 47, 48, 49, 50, 51, 52, 53, and 54 and also held the two claims of the cup patent valid, but not infringed.

In the suits in the Southern District (called by the parties for convenience the "New York suits ") only claims 16, 18, 26, 34, 41, 48, and 49 were in issue. In the suit against the Hudson River Day Line, the vending-machine alone was involved, while in the suit against Errett it was alleged that both the vending-machine and the free dispenser were infringements. The cup patent was not involved, but Errett was charged (in addition to direct infringement) with

contributory infringement of the apparatus patent by reason of his sale of cups to be used in connection with infringing vending-machines. The court (in interlocutory decrees) held claims 26 and 49 valid and infringed by the vending-machine, but all the other claims invalid, and further held that the free dispenser did not infringe any valid claims. The court also held Errett for contributory infringement under Henry v. Dick (C. D., 1912, 575; 176 O. G., 751; 224 U. S., 1; 32 Sup. Ct., 364.)

Plaintiff appeals from that part of the Brooklyn decree affecting the cup patent, and defendant from that part affecting the apparatus patent. Plaintiff further appeals from that part of the New York decrees holding claims invalid or not infringed; but defendant does not appeal as to the claims held valid, believing such course unnecessary (and stipulating that such course shall not be construed as any waiver), in view of the fact that the two claims held valid in the New York suits must be passed on by virtue of the appeal in the Brooklyn suit. At the conclusion of the argument, plaintiff's counsel withdrew "without prejudice" all the claims in the Brooklyn suit which were not involved in the New York suits, except 52 and 53. As this was objected to by counsel for the defendants, owing to the reservation of "without prejudice," the withdrawal cannot be permitted.

It will tend to simplify discussion concerning some of the features of the case to dispose at the outset of the claims considered in the Brooklyn suit other than those in issue in the New York suits plus 52 and 53. For the purposes of this litigation it is sufficient to state that under the most favorable construction these claims are not infringed. As to claims 52 and 53 the language is so broad that, if the construction contended for by plaintiff be given, they would be void, and, for the purposes of these suits, it is enough to hold them not infringed. Plaintiff practically conceded that claims 16, 18, 26, and 49 of the apparatus patent are not infringed by defendant's free dispenser. The controversy as to the apparatus patent, therefore, is confined as follows: (1) Validity of claims 16, 18, 26, 34, 41, 48, and 49. (2) Infringement of these seven claims by the vending-machine. (3) Infringement of claims 34, 41, and 48 by the free dispenser.

The subject-matters of the suits are the machines and paper cups familiar to the public for dispensing drinking-water, and obtainable either from a vending coin-machine, or, as in factories, clubs, etc., from a so-called "free-dispenser." The business has attained large commercial success, but, while commercial utility is often most serviceable in resolving doubt as to patentability, it is no help in this case, because of the impetus given to the business by statutes and ordinances requiring individual drinking-cups and a keener and