known functions, producing no novel and useful result entitling the aggregation to the protection of a patent?

It is not always easy to decide this question, as the difference of opinion in the circuit courts of appeals in this case illustrates. Generally speaking, a combination of old elements in order to be patentable must produce by their joint action a novel and useful result, or an old result in a more advantageous way. To arrive at the distinctions between combinations and aggregations definite reference must be had to the decisions of this Court. The subject was fully discussed in Palmer v. Corning (C. D., 1895, 222; 70 O. G., 1497; 156 U. S., 342), wherein the previous decisions were reviewed, The rule stated in Hailes v. Van Wormer (5 O. G., 89; 20 Wall., 353) was quoted with approval, wherein the Court said:

It must be conceded that a new combination, if it produces new and useful results, is patentable, though all the constituents of the combination were well known and in common use before the combination was made. But the results must be a product of the combination, and not a mere aggregate of several results, each the complete product of one of the combined elements. Combined results are not necessarily a novel result, nor are they an old result obtained in a new and improved manner. Merely bringing old devices into juxtaposition, and there allowing each to work out its own effect without the production of something novel, is not invention. No one by bringing together several old devices without producing a new and useful result, the joint product of the elements of the combination and something more than an aggregate of old results, can acquire a right to prevent others from using the same devices, either singly or in other combinations, or, even if a new and useful result is obtained, can prevent others from using some of the devices, omitting others, in combination. (Hailes v. Van Wormer, 5 O. G., 89; 20 Wall., 353.)

In Richards v. Chase Elevator Co. (C. D., 1895, 392; 71 O. G., 1456; 158 U. S., 299) the rule was stated as follows:

Unless the combination accomplished some new result, the mere multiplicity of elements does not make it patentable. So long as each element performs some old and well-known function, the result is not a patentable combination, but an aggregation of elements.

In Specialty Manufacturing Company v. Fenton Metallic Manufacturing Co. (174 U. S., 492) the rule was again tersely stated:

Where a combination of old devices produces a new result such combination is doubtless patentable, but where the combination is not only of old elements, but of old results, and no new function is evolved from such combination, it falls within the ruling of this court in Hailes v. Van Wormer (5 O. G., 89; 20 Wall., 353); Reckendorfer v. Faber (C. D., 1876, 430; 10 O. G., 71; 92 U. S., 347) ; Phillips v. Detroit (111 U. S., 604); Brinkerhoff v. Aloe (146 U. S., 515); Palmer v. Corning (C. D., 1895, 222; 70 O. G., 1497; 156 U. S., 342); Richards v. Chase Elevator Co. (C. D., 1895, 392; 71 O. G., 1456; 158 U. S., 299).

Applying the rule thus authoritatively settled by this Court, we think no invention is shown in assembling these old elements for the purposes declared. No new function is "evolved from this com

bination;" the new results, so far as one is achieved, is only that which arises from the well-known operation of each one of the elements.

In the gearing specified every element is old. The operations of the wringer and the washing-machine, although simultaneous, are independent one of the other. The control of the operation of the wringer is by an old and well-known method. From the coöperation of the elements, here brought together, no new result, involving the exercise of the creative faculty which is invention is achieved. Phillips may have produced a more convenient and economical mechanism than others who preceded him, but superiority does not make an aggregation patentable. (Specialty Manufacturing Co. v. Fenton Metallic Manufacturing Co., supra.) The assemblage of the old elements, and their operation in the manner indicated may save time, and the mechanism may meet with a readier sale than other similar devices, but these things may result from mechanical skill and commercial enterprise, and do not necessarily involve invention. To borrow an illustration made at the argument, we think the Phillips aggregation of elements may be likened to the operation of a number of different machines in a factory by power applied from the same line-shaft, each operation contributing its separate part to the production of a given result. So in this instance we think the combination accomplished by Phillips fails to show that exercise of invention, producing a novel and useful result from the coöperating action of the elements, which is essential to distinguish patentable combination from an aggregation of old elements so placed by mechanical skill as to do work more rapidly and economically. We agree with the conclusion reached by the court below. Affirmed.

Mr. Justice MCKENNA dissents.

[Supreme Court of the United States.]

UNITED DRUG COMPANY v. THEODORE RECTANUS COMPANY.

Decided December 9, 1918.

257 O. G., 1082; 248 U. S., 90.

1. TRADE-MARKS-APPEAL-REVIEW BY SUPREME COURT-APPEAL AND CERTIORARI. An appeal to the Supreme Court in a suit to restrain infringement of a trade-mark, allowed by one of the judges of the circuit court of appeals, dismissed under section 128, Judicial Code, as amended by act of January 28, 1915. (38 Stat., 803, ch. 22, sec. 2); but, pursuant to stipulation, the transcript of the record filed for the purposes of appeal was treated as a return to a writ of certiorari allowed by the Supreme Court.

2. SAME NATURE OF TRADE-MARK RIGHT,

A trade-mark right is not a right in gross or at large, like a statutory copyright or a patent for an invention, to either of which, in truth, it has little or no analogy. (Canal Co. v. Clark, 1 O. G., 279; 13 Wall., 311; McLean v. Fleming, C. D., 1878, 262; 13 O. G., 913; 96 U. S., 245.)

There is no such thing as property in a trade-mark except as a right appurtenant to an established business or trade in connection with which the mark is employed. The law of trade-marks is but a part of the broader law of unfair competition. The right to a particular mark grows out of its use, not its mere adoption.

8. SAME-FUNCTION OF TRADE-MARKS.

The function of a trade-mark is simply to designate the goods as the product of a particular trader and to protect his good-will against the sale of another's product as his.

4. SAME

EXCLUSIVE USE-POWERS OF STATES AND CONGRESS TO LEGISLATE, Property in trade-marks and the right to their exclusive use rest upon the laws of the several States and depend upon them for security and protection, the power of Congress to legislate on the subject being only such as arises from the authority to regulate commerce with foreign nations and among the several States and with the Indian tribes. (Trade-Mark Cases, C. D., 1879, 619; 16 O. G., 999; 100 U. S., 82.)

5. SAME SCOPE OF ACTS OF 1881 AND 1905, RESPECTIVELY.

The act of February 20, 1905 (ch. 592, 33 Stat., 724), which took the place of the 1881 act, while extending protection to trade-marks used in interstate commerce, does not enlarge the effect of previous registrations unless renewed under the provisions of its twelfth section.

6. SAME PRIORITY-SAME MARK EMPLOYED BY DIFFERENT PARTIES IN DIFFERENT

LOCALITIES.

As between conflicting claimants to the right to use the same mark priority of appropriation determines the question. (See Canal Co. v. Clark, 1 O. G., 279; 13 Wall., 311; McLean v. Fleming, C. D., 1878, 262; 13 O. G., 913; 96 U. S., 245; Manufacturing Co. v. Trainer, C. D., 1880, 464; 17 O. G., 1217; 101 U. S., 51; Columbia Mill Co. v. Alcorn, C. D., 1893, 672; 65 O. G., 1916; 150 U. S., 460.) But the reason for the rule does not extend to a case where the same trade-mark happens to be employed simultaneously by two manufacturers in different markets separate and remote from each other, so that the mark means one thing in one market and an entirely different thing in another.

7. SAME EXTENT OF PROTECTION FLOWING FROM ADOPTION AND USE.

The adoption of a trade-mark does not, at least in the absence of some valid legislation enacted for the purpose, project the right of protection in advance of the extension of the trade or operate as a claim of territorial rights over areas into which it thereafter may be deemed desirable to extend the trade.

8. SAME RIGHTS LIMITED TO LOCALITY WHERE USED.

Where the first to adopt and use the mark 'Rex registered it under the laws of Massachusetts and under the Trade-Mark Act of 1881, but not under the act of 1905, and confined its use substantially to the New England States during a long period of years, and in the meantime another in good faith and without notice of the prior adoption and use adopted and used the mark on similar goods in Louisville, Ky., and vicinity and by the expenditure of time and money built up a local but valuable trade under

it, in which locality it was recognized as his trade-signature rather than that of the first user, the former is estopped to set up continued use in such territory as infringeemnt, and an injunction denied.

ON WRIT of certiorari to and appeal from the United States Circuit Court of Appeals for the Sixth Circuit.

Mr. Frederick L. Emery and Mr. Laurence A. Janney for United Drug Company.

Mr. Clayton B. Blakey for Theodore Rectanus Company.

Mr. Justice PITNEY delivered the opinion of the Court.

This was a suit in equity brought September 24, 1912, in the United States District Court for the Western District of Kentucky by the present petitioner, a Massachusetts corporation, against the respondent, a Kentucky corporation, together with certain individual citizens of the latter State, to restrain infringement of trade-mark and unfair competition.

The district court granted an injunction against the corporation defendant pursuant to the prayer of the bill. (206 Fed Rep., 570.) The circuit court of appeals reversed the decree and remanded the cause with directions to dismiss the bill. (226 Fed. Rep., 545.) An appeal was allowed by one of the judges of that court, and afterward we allowed a writ of certiorari. Pursuant to a stipulation, the transcript of the record filed for the purposes of the appeal was treated as a return to the writ. Under section 18, Judicial Code, as amended by act of January 28, 1915, (38 Stat., 803, ch. 22, sec. 2,) the appeal must be dismissed, and the cause will be determined on the writ of certiorari.

The essential facts are as follows: About the year 1877 Ellen M. Regis, a resident of Haverhill, Mass., began to compound and distribute in a small way a preparation for medicinal use in cases of dyspepsia and some other ailments, to which she applied as a distinguishing-name the word "Rex"-derived from her surname. The word was put upon the boxes and packages in which the medicine was placed upon the market, after the usual manner of a trademark. At first alone, and afterward in partnership with her son under the firm-name of "E. M. Regis & Company," she continued the business on a modest scale; in 1898 she recorded the word "Rex" as a trade-mark under the laws of Massachusetts, (acts 1895, p. 519, chap. 462, sec. 1); in 1900 the firm procured its registration in the United States Patent Office under the act of March 3, 1881, (ch. 138, 21 Stat., 502); in 1904 the Supreme Court of Massachusetts sustained their trade-mark right under the State law as against a concern that was selling medicinal preparations of the present petitioner under the designation of "Rexall Remedies," (Regis v. Jaynes, 185 Mass.,

458); afterward the firm established priority in the mark as against petitioner in a contested proceeding in the Patent Office; and subsequently, in the year 1911, petitioner purchased the business with the trade-mark right, and has carried it on in connection with its other business, which consists in the manufacture of medicinal preparations, and their distribution and sale through retail drug stores, known as "Rexall Stores," situate in the different States of the Union, four of them being in Louisville, Ky.

Meanwhile, about the year 1883, Theodore Rectanus, a druggist in Louisville, familiarly known as "Rex," employed this word as a trade-mark for a medicinal preparation known as a "blood purifier." He continued this use to a considerable extent in Louisville and vicinity, spending money in advertising and building up a trade, so that except for whatever effect might flow from Mrs. Regis's prior adoption of the word in Massachusetts, of which he was entirely ignorant-he was entitled to use the word as his trade-mark. In the year 1906 he sold his business, including the right to the use of the word, to respondent; and the use of the mark by him and afterward by respondent was continuous from about the year 1883 until the filing of the bill in the year 1912.

66

Petitioner's first use of the word "Rex" in connection with the sale of drugs in Louisville or vicinity was in April, 1912, when two shipments of "Rex Dyspepsia Tablets," aggregating 150 boxes and valued at $22.50, were sent to one of the Rexall stores in that city. Shortly after this the remedy was mentioned by name in local newspaper advertisements published by those stores. In the previous September, petitioner shipped a trifling amount-five boxes-to a drug store in Franklin, Ky., approximately 120 miles distant from Louisville. There is nothing to show that before this any customer in or near Kentucky had heard of the Regis remedy, with or without the description "Rex" or that this word ever possessed any meaning to the purchasing public in that State except as pointing to Rectanus and the Rectanus Company and their "blood purifier." That it did and does convey the latter meaning in Louisville and vicinity is proved without dispute. Months before petitioner's first shipment of its remedy to Kentucky, petitioner was distinctly notified (in June, 1911) by one of its Louisville distributers that respondent was using the word "Rex" to designate its medicinal preparations, and that such use had been commenced by Mr. Rectanus as much as sixteen or seventeen years before that time.

There was nothing to sustain the allegation of unfair competition, aside from the question of trade-mark infringement. As to this, both courts found, in substance, that the use of the same mark upon different but somewhat related preparations was carried on by the