curring opinion of Judge Clark in Atwater v. North American Coal Corporation, 111 F. 2d 125, 126 (2d Cir. 1940) from which that language was taken. Also we have in mind the statement by Judge Clark in Dioguardi v. Durning, 139 F. 2d 774, 775 (2d Cir. 1944) to the effect that under the rules "there is no pleading requirement of stating 'facts sufficient to constitute a cause of action' but only that there be a 'short and plain statement of the claim showing that the pleader is entitled to relief.' ." But we do not understand these statements to mean that a claim for relief need not state facts which, under our legal system, are recognized as entitling the claimant to judicial action in vindication of a right or in remedying a wrong.*

III

In ruling that the instant action presents more than one claim for relief, and in directing the entry of the judgment sought to be reviewed in this appeal, the motions judge was apparently of the view that the allegations in the complaint relating to section 2 (f) of the act, i. e. the allegations that the words "Glass Wax" had acquired a distinctive or secondary meaning identifying Gold Seal's goods and distinguishing them from the goods of others, and the allegations of the complaint relating to section 2 (e) of the act, i. e. the allegations that the words "Glass Wax" are neither merely descriptive nor deceptively misdescriptive, constitute statements of two separate and distinct claims for relief either one of which might, under Rule 54 (b), be made the subject of a final judgment. Presumably the motions judge was applying a conventional test to determine whether or not two "causes" are the same, to wit, will the same evidence support both; if it will, the two "causes" are the same, otherwise not. Stone v. United States, 64 Fed. 667, 671 (9th Cir. 1894), aff'd, 167 U. S. 178 (1896), quoting from 1 Freeman on Judgments § 259 (1892); 2 Black on Judgments § 726, page 1089 (2d ed. 1902). Obviously the evidence under the section 2 (f) "claim" would be different from the evidence under the section 2 (e) "claim." That would end the dispute as to the existence of a plurality of claims if the conventional "same evidence" test were under all circumstances valid.

But by claim for relief, i. e. cause of action, for the purpose of this test of identity, is meant the same in gist or material elements. As said in Baltimore S. S. Co. v. Phillips, 274 U. S. 316, 321 (1927):

For further discussion of the meaning of the term "cause of action" in our system of law see: United States v. Memphis Cotton Oil Co., 288 U. S. 62 (1933); Georgia R. & Banking Co. v. Wright, 124 Ga. 596, 606, 53 S. E. 251, 256 (1906); Hale v. Stimson, 198 Mo. 134, 149, 95 S. W. 885, 889 (1906); Zenith Bathing Pavilion v. Fair Oaks S. S. Corp., 240 N. Y. 307, 311, 148 N. E. 532, 533 (1925); Columbia Bank v. Equitable Life Assurance Society, 79 App. Div. 601, 609, 80 N. Y. Supp. 428, 434 (1st Dept. 1903); East Side Mill & Lumber Co. v. Southeast Portland Lumber Co., 155 Ore. 367, 372, 64 P. 2d 625, 628 (1937). See also: Notes and Comments, 23 Phil. L. J. 523 (1948); Wheaton, The Code "Cause of Action": Its Definition, 22 Corn. L. Q. 1 (1936).

"The thing, therefore, which in contemplation of law as its cause, becomes a ground for action, is not the group of facts alleged in the declaration, bill, or indictment, but the result of these in a legal wrong, the existence of which, if true, they conclusively evince."'

To the same effect see United States v. California and Oregon Land Co., 192 U. S. 355 (1904); Werlein v. New Orleans, 177 U. S. 390 (1900); McKnight v. Minneapolis St. Ry., 127 Minn. 207, 149 N. W. 131 (1914). In each of those cases it was contended that differing allegations of fact in two successive suits so differentiated the causes of action involved as to make inapplicable in the second a plea of res judicata based upon the decision in the first. But in each of those cases it was held that since the facts alleged in the second suit, although different from those asserted in the first, nevertheless lent support to the same cause of action as was sued on in the first, the doctrine of res judicata was applicable. Those decisions put it beyond doubt that where in two successive suits between the same parties it is sought in the second to defeat, upon the ground that the causes of action are different, a plea of res judicata based upon the first, the test of identity, i. e., whether the same evidence will support each charge, must be applied not in terms of the mere facts, theories or pleadings specifically relied upon in each, but in terms of the ultimate wrong sued on. It is of course true that the question what wrong is sued on must be determined from the allegations in the respective plaintiff's pleadings. But if from the four corners of the pleadings in each of the two suits it appears that the wrong sued on in each is the same, then the assertion in the second suit of facts different from those asserted in the first will not defeat the plea. In short, the "same evidence" test, if applied with complete literalness, is valid as a positive but not as a negative test for determining the identity vel non of causes. Obviously, if exactly the same items of evidence would be requisite to the establishment of a plaintiff's case as pleaded in each of two suits between the same parties, the two causes relied upon must be the same because the allegations would be identical and therefore could' describe but one and the same legal wrong. But, as illustrated in the cases cited, the same legal wrong may be found relied upon in each of two suits despite the fact that the pleadings may differ—in that in one the wrong is described in terms of the assertion of but a part of the facts actually available to establish it, whereas in the other

This statement is quoted from Chobanian v. Washburn Wire Co., 33 R. I. 289, 302, 80 Atl. 394, 400, 29 Ann. Cases 730, 735 (1911), the opinion in which was quoting from Columbus v. Anglin, 120 Ga. 785, 48 S. E. 318 (1903), the opinion in which, in turn, was quoting from Sibley, Right to and Cause for Action, 48.

The cases referred to are stated and pertinent portions of the opinions are quoted in the separate opinion of the present writer in United States v. United States Gypsum Co., 51 F. Supp. 613, 615-639. See in particular pages 621 to 626, including footnote 17 at pages 623-626. The discussion in the present opinion of the cases referred to also appears in that separate opinion.

those facts are omitted and the remainder stated. In such event, obviously, the evidence admissible under the pleadings in the two suits will be different; yet the causes of action are the same. Putting this still otherwise: There is a totality of facts out of which every legal wrong grows; but a single wrong cannot be made the basis of a plurality of actions by alleging in one case but a part of that totality and in another or other cases the remainder thereof. A fortiori, a single wrong cannot be made the basis of a plurality of actions by alleging in one case but a part of the totality of facts out of which the wrong grows and in another alleging that part plus the remainder. As said in Baltimore S. S. Co. v. Phillips:

...

"The number and variety of the facts alleged do not establish more than one cause of action so long as their result, whether they be considered severally or in combination, is the violation of but one right by a single legal wrong. "The facts are merely the means, and not the end. They do not constitute the cause of action, but they show its existence by making the wrong appear. . . (274 U. S. at 321.)

While in the cases cited the question of identity of causes of action arose under pleas of res judicata filed in the second of two separate suits, whereas in the instant case the question arises, under the present motion to dismiss, in respect of different allegations in the same complaint in the same suit, and while the subject matter of the actions in the cases cited and in the instant case are different, nevertheless the theory underlying the decisions in the cases cited is fundamental in our system of law. And the reasoning and rulings in those cases are obviously as fully applicable to different allegations in the same complaint in the same suit as they are to different allegations in complaints in successive suits, if the legal wrong sued on is the same.

If we apply the reasoning and rulings reviewed to the question arising under the present motion to dismiss the appeal, the answer is, we think, clear that the section 2 (f) allegations in Gold Seal's complaint to the effect that the words "Glass Wax" have acquired a secondary or distinctive meaning, and the section 2 (e) allegations therein to the effect that the words "Glass Wax" are neither merely descriptive nor deceptively misdescriptive, do not state separate claims for relief. For patently the legal wrong sought to be remedied under each of the two sets of allegations is one and the same, to wit, the allegedly wrongful refusal of registration as a trade-mark of the words "Glass Wax." Putting this in terms of legal "right" and legal "duty" the trade-mark act creates a statutory right of registration of a mark, certain conditions set forth in the act being complied with; it is this right which Gold Seal seeks to vindicate. The act imposes a correlative duty upon the Commissioner and the Secretary to register a mark if the statutory conditions are complied with. It is this duty a wrongful breach of which Gold Seal seeks to remedy. The allegations of compliance with

section 2 (e) of the act and the allegations of compliance with section 2 (f) are but the statement of two different grounds for vindication of the same statutory right of registration, or of two different grounds for the remedying of the same statutory wrong—refusal of registration. The "claim for relief" under the section 2 (f) allegations is therefore not a claim for relief separate and distinct from the other claim or claims presented in the action and is not, therefore, the proper subject of a final judgment under Rule 54 (b).

The fact that the motions judge, in the order sought to be reviewed, characterized the same as a final judgment upon a separate claim can not make the order such a judgment or the claim such a claim, if the claim fails to meet the standard of separateness or distinctness required by the law and the judgment fails to meet the standards of finality so required. Flegenheimer v. General Mills, 191 F.2d 237 (2d Cir. 1951); Audi Vision, Inc. v. RCA Mfg. Co., 136 F. 2d 621 (2d Cir. 1943). Cf. Federal Trade Commission v. Minneapolis-Honeywell Regulator Co., 344 U. S. 206 (1952). For a contrary ruling see Bendix Aviation Corp. v. Glass, 195 F. 2d 267 (3d Cir. 1952). With due deference to our colleagues in the United States Court of Appeals for the Third Circuit we feel obliged to follow the position taken in the cases decided in the Second Circuit.

The motion to dismiss the appeal is granted.

Motion to dismiss appeal granted.

[United States Court of Appeals, District of Columbia Circuit]

COOK v. WATSON, COMMISSIONER OF PATENTS

No. 11675. Decided November 19, 1953

679 O. G. 5; 208 F.2d 529; 99 USPQ 330

APPEAL TO U. S. COURT OF APPEALS-PATENT OFFICE UNSUCCESSFUL-PLAINTIFF MUST PAY PRINTING EXPENSES INCURRED BY OFFICE.

Held that the clear language of the statute requires that the plaintiff in a trade-mark application suit under R. S. 4915 pay the printing expenses incurred by the Patent Office in an unsuccessful appeal taken by the latter to the Court of Appeals, but that under the circumstances of the instant case, even though Rule 17 (h) has no direct application to this case, the rate fixed by that rule ($3.25 per page) should not be exceeded.

APPEAL from the United States District Court for the District of Columbia. Remanded.

A. Yates Dowell (A. Yates Dowell, Jr. of counsel) for Cook.

E. L. Reynolds for the Commissioner of Patents.

Before EDGERTON, FAHY, and WASHINGTON,
Circuit Judges

PER CURIAM:

The question here is whether the plaintiff in a trade-mark application suit under Rev. Stat. § 49151 must pay the printing expenses incurred by the Patent Office in an unsuccessful appeal taken by the latter to this court. We think the clear language of the statute requires us to answer in the affirmative. The result may be harsh, but that is a matter for Congress. At the time this suit was brought, Rev. Stat. § 4915 provided that "In all cases where there is no opposing party a copy of the bill shall be served on the Commissioner; and all the expenses of the proceedings shall be paid by the applicant, whether the final decision is in his favor or not." 3 Here there was in substance no opposing party. The "proceedings" in a suit must be held to include an appeal, by whichever party taken. And "expenses" are not limited to costs. Reasonable printing expense must be deemed includable. A reasonable rate for printing is fixed, for purposes of allowing costs in this court, at $3.25 per page. See Rule 17 (h) of our General Rules. Though that rule has no direct application here, the scale it sets should not be exceeded in the present context. As the record does not show whether or not the sum allowed by the District Court exceeded that scale, we will remand so that it may be applied. So ordered.

Remanded.

5

1 Suit was brought under Rev. Stat. § 4915 (1875), as amended, 35 U. S. C. § 63 (1946). That section was repealed by section 5, act of July 19, 1952, c. 950, 66 Stat. 815, and is now replaced by 66 Stat. 803, 35 U. S. C. A. § § 145, 146.

2 Marzall v. Cook, 90 U. S. App. D. C. 423, 196 F. 2d 241 (1952).

8 By the act of July 19, 1952, supra note 1, at c. 950, § 1, 66 Stat. 803, 35 U. S. 'C. A. . § 145, this language was changed to read simply: "All the expenses of the proceedings shall be paid by the applicant." The parties argued their case in the District Court and in this court on the basis of the old wording, and we rule on that basis.

Mrs. Cook sued not only the Commissioner of Patents but also the Newark Jewelry Company. That company had been named by the Patent Office when it set up an opposition proceeding during the course of Mrs. Cook's attempt to obtain registration of her trade-mark. Newark Jewelry Company did not at any time, however, regard Mrs. Cook's trade-mark as being in conflict with its own mark. After Mrs. Cook's suit was brought that company filed an answer in which it stated that it did not consider a conflict to exist, and that it joined in Mrs. Cook's prayer that registration of her mark be granted. The Jewelry Company and Mrs. Cook were in fact represented by the same attorney, who entered appearances for both in the District Court. Under these circumstances, we do not believe that there was an "opposing party" in Mrs. Cook's suit, within the meaning of the statute.

Robertson v. Cooper, 46 F. 2d 766, 769 (4th Cir. 1931).

Appellant urges that the District Court was without jurisdiction to enter its order. We cannot agree. This court made no ruling as to expenses when the case was here previously. We denied appellant's motion, made after the rendition of our prior opinion affirming the District Court's grant of registration, that costs be not assessed against her. This was a ruling as to costs, and was not a determination of the present controversy. In any event, it was adverse to appellant, and cannot aid her here. After the amount of the Government's expenses (as distinguished from costs) had been ascertained, it could properly go to the District Court for relief.