Gold Seal; and the goods so sold under said trade-mark have acquired a wide and enviable reputation. The trade-mark "Glass Wax" is "arbitrary, fanciful, and distinctive" of Gold Seal's goods in commerce, has a secondary meaning in the trade, and means only Gold Seal's goods and distinguishes the same from the goods of others—all within the meaning of section 2 of the act. The mark is not such a mark as is precluded from registration on the Principal Register by any provision of the act.

In 1947 (December 16) Gold Seal filed in the Patent Office an application for registration of the trade-mark "Glass Wax" and in 1948 (February 16) filed a "Petition to Make Case Special" informing the Commissioner of Patents that Gold Seal was seeking registration of "Glass Wax" under section 2 (f) of the act. Thereafter "Glass Wax" was held registrable by the Patent Office and was published in the OFFICIAL GAZETTE. Johnson & Son then filed a notice of opposition, and opposition No. 27543 was instituted. Gold Seal filed an answer and counterclaim in the opposition, and proceedings were taken in the Patent Office including the taking of depositions by Gold Seal and by Johnson & Son. Thereafter the Examiner of Interferences ruled as follows:

it is the Examiner's opinion that the opposer was entitled to institute this proceeding, and that the opposition must be sustained for the reason that the application now before the Examiner seeks registration of the word 'GLASS WAX' as a technical trade-mark,' without having been presented under section (2) (f) of the act of 1946, under which section alone, in the Examiner's opinion, applicant's mark might qualify for the Principal Register. Accordingly, the opposition is hereby sustained and it is further adjudged that the applicant is not entitled to the registration of the word 'GLASS WAX' as sought in the present application."

Finally the Commissioner of Patents, hereafter referred to as the Commissioner, in the following terms, affirmed the decision of the Examiner of Interferences: "Applicant is not precluded by the decision in this case from applying for registration under section 2 (f) of the act on a new application appropriately worded for this purpose, and the decision herein is without prejudice to consideration of registrability of the mark on such an application. The decision of the Examiner of Interferences sustaining the opposition is affirmed."

Pursuant to the described proceedings, the Commissioner and the Secretary of Commerce, hereafter referred to as the Secretary, refused to register the trade-mark "Glass Wax" and refused to issue to Gold Seal a Certificate of Registration.

The complaint contains also certain argumentative material which may be summarized as follows:

This decision of the Commissioner and the Secretary unlawfully denies to Gold Seal registration of the trade-mark "Glass Wax." The decision is erroneous in ruling that that trade-mark is not registrable in view of section 2 (e) of the act because if it contains wax it is descriptive and if it does not it is deceptively misdescriptive; and is erroneous in ruling that it is not registrable under section 2 (f) of the act because the application filed by Gold Seal can not be considered an application under section 2 (f); and is erroneous in ruling that the question of distinctiveness was therefore not in issue, and that nothing was presented to the Examiner to show a right to register the trade-mark on the basis of section 2 (f).

2 By a "technical trade-mark" is meant, in trade-mark parlance, a mark registrable because it complies with the conditions of the act other than that condition set forth in section 2 (f).

Upon the basis of the foregoing allegations and charges of error, the complaint prays for a decree by the District Court that Gold Seal is entitled to registration of "Glass Wax" as a trade-mark and to receive a Certificate of Registration therefor.

To the complaint thus filed by Gold Seal the Commissioner and the Secretary filed an answer in which they assert that Gold Seal is not entitled to the registration of "Glass Wax"; the detail of the answer is not here pertinent. An answer was filed also by Johnson & Son in which that defendant asserts that Gold Seal, because of failure to show compliance with the conditions of section 2 (a), (e), and (f) or with any of the conditions of the act, is not entitled to the registration of "Glass Wax" as a trade-mark; the detail of that answer is also not here pertinent. Johnson & Son also filed a counterclaim; its terms are not material to the issue presently before this court. Johnson & Son also filed a cross-claim against the Secretary and the Commissioner. The cross-claim alleges, so far as here pertinent, in substance and effect that:

The words "Glass Wax" sought to be registered by Gold Seal have been used on goods which in fact contain no wax, and the words thus comprise deceptive matter and therefore registration is prohibited by section 2 (a) of the act. The words "Glass Wax" have not been used by Gold Seal to identify its goods and distinguish them from those manufactured or sold by others, and therefore the words are not a trade-mark within the meaning of sections 1 and 45 of the act. The words "Glass Wax" when applied to the goods of Gold Seal are descriptive, or are deceptively misdescriptive, and therefore registration is prohibited by section 2 (e) of the act. The application by Gold Seal was not filed under the provisions of section 2 (f) and therefore the Commissioner and the Secretary can not register "Glass Wax" thereunder on the basis of the present application. Section 2 (f) can not be relied upon to overcome the prohibition of section 2 (a), and can not be relied upon to make the words "Glass Wax" a trade-mark within the meaning of section 1 or within the definition of section 45 of the act.

The cross-claim prays for a declaration by the District Court that the words "Glass Wax" as used by Gold Seal do not constitute a lawful trade-mark and that Gold Seal is not entitled to register the same. The cross-claim prays also that the Secretary and the Commissioner be restrained from registering "Glass Wax" as a trade-mark under any of the provisions of the act, and that they be restrained from granting to Gold Seal a Certificate of Registration.

The Secretary and the Commissioner filed a motion to dismiss the cross-claim. When that motion came on for hearing before a motions judge in the District Court a colloquy occurred between the judge and counsel for the Secretary and the Commissioner and counsel for Johnson & Son, with counsel for Gold Seal present and occasionally participating, but doing so, apparently, without basis in the pleadings since no motion had been filed against Gold Seal's complaint. In the course of the colloquy it was asserted that the complaint sought to compel registration of "Glass Wax" not only upon the theory that

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the conditions of section 2 (a) and (e) of the act were fulfilled, but also upon the theory that even if the provisions of section 2 (e) were not fulfilled, the words are registrable under section 2 (f) as distinctive, i. e. as having acquired a secondary meaning. It was asserted further that in the Patent Office itself no consideration was given under the application as filed by Gold Seal to registrability of "Glass Wax" under section 2 (f) of the act. In view of this the motions judge raised the question whether or not, in view of Gilbert v. Marzall, 87 U. S. App. D. C. 1, 182, F. 2d 389 (D. C. Cir. 1950), Cherry-Burrell Corporation v. Coe, 79 U. S. App. D. C. 124, 143 F. 2d 372 (D. C. Cir. 1944), and Lucke v. Coe, 63 App. D. C. 61, 69 F. 2d 379 (D. C. Cir. 1934), the District Court could properly consider the complaint insofar as it sought relief under section 2 (f). Finally the motions judge, acting sua sponte, expressed a willingness to sign an order eliminating from the case any consideration of section 2 (f) under either the complaint of Gold Seal or the cross-claim of Johnson & Son, but leaving the pleadings otherwise standing. Counsel for the Secretary and the Commissioner indicated that such an order would satisfy them. As a result, the judgment which is the subject of the present appeal and the present motion to dismiss was entered, in the following terms:

3

"ORDERED AND ADJUDGED that the plaintiff's complaint and the cross-claim of the defendant, S. C. Johnson & Son, Inc., insofar as both relate to the claim of plaintiff, Gold Seal Company, to a registration of the alleged trade-mark "GLASS WAX" under the provisions of section 2 (f) of the Trade-Mark Act of July 5, 1946, be and the same hereby are dismissed.

"The court finds that there is no just reason for delay and this order constitutes a final judgment as to that part of plaintiff's complaint and that part of the cross claim of the defendant, S. C. Johnson & Son, Inc., which relate to plaintiff's claim to a registration under the provisions of section 2 (f) of the Trade-Mark Act of July 5, 1946, within the provisions of Rule 54 (b) Federal Rules of Civil Procedure."

II

Rule 54 (b) of the Federal Rules of Civil Procedure provides:

"Judgment Upon Multiple Claims. When more than one claim for relief is presented in an action, whether as a claim, counter-claim, cross-claim, or thirdparty claim, the court may direct the entry of a final judgment upon one or more

The cases referred to in the text rule that in an action under Rev. Stat. § 4915 (in its present form 66 Stat. 803 (1952), 35 U. S. C. A. § 145 (Supp. 1952)) the court will determine the patentability only of such claims in a patent application as have been determined by the Patent Office. The motions judge was apparently of the view that a claim for relief under the Federal Rules of Civil Procedure parallels a patent claim required by the patent statutes to be stated as a part of an application for a patent, and the motions judge apparently thought also that in view of the cases referred to the District Court was forbidden to consider the section 2 (f) aspect of the complaint until the Patent Office had ruled upon a Patent Office application by Gold Seal for registration of "Glass Wax" under section 2 (f) of the act. Upon the correctness of these views of the motions judge we make no decision.

but less than all of the claims only upon an express determination that there is no just reason for delay and upon an express direction for the entry of judgment. In the absence of such determination and direction, any order or other form of decision, however designated, which adjudicates less than all the claims shall not terminate the action as to any of the claims, and the order or other form of decision is subject to revision at any time before the entry of judgment adjudicating all the claims."

As construed and applied by the courts Rule 54 (b) is applicable only in instances in which more than one claim for relief is presented in an action, and in which the claim upon which a final judgment is to be entered under the rule is itself a claim distinct from the other claim or claims. Reeves v. Beardall, 316 U. S. 283 (1942); Town of Clarksville, Va. v. United States, 198 F. 2d 238 (4th Cir. 1952), certificate denied, 344 U. S. 927 (1953); Western Contracting Corp. v. National Surety Corp., 163 F. 2d 456 (4th Cir. 1947); Collins v. MetroGoldwyn Pictures Corp., 106 F. 2d 83 (2d Cir. 1939). In Reeves v. Beardall a complaint embraced three counts, the first containing a claim upon a promissory note executed by the respondent's decedent; the second containing a claim seeking specific performance or damages under an alleged contract between the petitioner and the respondent's decedent whereby the latter, in consideration of the petitioner's return of certain securities and of the petitioner's agreement not to press for payment of the note, agreed not to change her will; the third containing a claim for an accounting against a third party who was alleged to hold certain assets of the decedent to which the petitioner was entitled by reason of the contract on which the second count was based. A judgment dismissing the second count was held appealable under Rule 54 (b) as a final judgment upon a claim distinct from the claims in the first and third counts. In Town of Clarksville, Fourth Circuit ruled that a claim for compensation for a condemnation taking of a sewer system and a claim for the cost of construction of a sewage Va. v. United States the Court of Appeals for the treatment plant and for the cost of operation and maintenance of lift stations not needed under that system were separate claims, so that an adverse judgment upon the latter claim was the proper subject of an appeal in view of Rule 54 (b). In Western Contracting Corp. v. National Surety Corp. the Court of Appeals for the Fourth Circuit ruled that the claim of a surety of non-liability upon its secondary obligation is not a claim distinct from that of the principal of non-liability on its primary obligation, and that therefore an adjudication of non-liability of the surety prior to a judgment as to the liability of the principal was not appealable as a final judgment on one of a plurality of claims under Rule 54 (b). In Collins v. Metro-Goldwyn Pictures Corp. the Court of Appeals for the Second Circuit regarded as distinct, one from the other, within the purview of Rule 54 (b), two claims, one of which was for an infringement of a copyrighted book called "Test Pilot" by a

motion picture of the same name, and the other of which was for unfair competition in using the title "Test Pilot" as the title of the picture. The court ruled that an order dismissing the infringement claim when the court below had not disposed of the unfair competition claim was appealable.

The claim for relief referred to in Rule 54 (b) is of course the claim for relief referred to in Rule 8 (a) of the Federal Rules of Civil Procedure. As such it must show that the claimant is "entitled to relief." That is to say, the claim for relief must indicate the existence of a cause of action. By cause of action in this context is meant a claim that facts exist which, under our legal system, are recognized as entitling the claimant to judicial action in vindication of a right or in remedying a wrong. Patten v. Dennis, 134 F. 2d 137 (9th Cir. 1943), cited with approval in Pierce v. Wagner, 134 F. 2d 958 (9th Cir. 1943). In Patten v. Dennis the Court of Appeals for the Ninth Circuit affirmed, because it was impossible to spell out from various petitions and motions filed by the appellant Patten as plaintiff in the action any "clear theory of liability," a judgment dismissing the appellant's case. In so doing the court said:

"Rule 8, Federal Rules of Civil Procedure, 28 U. S. C. A. following section 723c, provides that a pleading which sets forth a claim for relief shall contain '(1) a short and plain statement of the grounds upon with the court's jurisdiction depends, unless the court already has jurisdiction and the claim needs no new grounds of jurisdiction to support it, (2) a short and plain statement of the claim showing that the pleader is entitled to relief, and (3) a demand for judgment for the relief to which he deems himself entitled'. In Baltimore S. S. Co. v. Phillips, 274 U. S. 316, 321, 47 S. Ct. 600, 602, 71 L. Ed. 1069, it is said: 'A cause of action does not consist of facts, but of the unlawful violation of a right which the facts show'. See also: Hurn v. Oursler, 289 U. S. 238, 246, 53 S. Ct. 586, 77 L. Ed. 1148.

"The requirements of a complaint may be stated, in different words, as being a statement of facts showing (1) the jurisdiction of the court; (2) ownership of a right by plaintiff; (3) violation of that right by defendant; (4) injury resulting to plaintiff by such violation; and (5) justification for equitable relief where that is sought. See: United States v. Humboldt Lovelock Irr. Light & P. Co., 9 Cir., 97 F. 2d 38, 42; United States v. McIntire, 9 Cir., 101 F. 2d 650, 653, The complaint is completed by a demand for relief." (134 F. 2d at 138.) A view that a claim for relief need not state a cause of action as above defined, would be an abandonment of a fundamental premise of our system of law, to wit, that the courts administer justice not according to the personal notions of the judge but according to law. Courts are not authorized to require a party defendant to defend against a "cause" not recognized by law as involving the vindication of a legal right or the remedying of a legal wrong. We take note of the statement in Reeves v. Beardall, supra, that the rules make it clear that it is "differing occurences or transactions, which form the basis. of separate units of judicial action." We take note also of the con