adopted by the appellant in marketing its aspirin. On July 16, 1919, after the appellant had obtained its tin boxes, the appellee placed an order with a can manufacturer adopting the appellee's tin box. It placed its trade-mark thereon and then commenced the sale of its aspirin in such packages. Its claim here is that the appellant has infringed its trade-mark and that, in selling aspirin tablets in such packages with the label or mark used by the appellant thereon, it is engaged in unfair competition, resulting in damages to the appellee.

[1] We think it was error to hold that the appellant has infringed appellee's trade-mark. The trade-mark granted shows a rectangular box with a band of about one-third the width of the box, with the initials "S. K. & F." running diagonally on the band. The statement in the Patent Office contains the following: "The representation of the box forms no part of the mark." All that the trade-mark shows is a red band with the appellee's initials on it. The form of the box having been disclaimed, there is nothing to show the size or shape of the band, and the appellee has made the initials on the band an essential and integral part of such band. It is stated that "the description and drawing presented truly represents the trade-mark sought to be registered."

The appellant's red mark is different in sufficient identifying respects. It is a solid red stripe or parallelogram, instead of a band proper. It has above the center of the band constituting a part of it, a red semicircle about one-third of the length of the red background, and of a height about equal to the width of the stripe. The initials "S. K. & F." are absent. The word "aspirin" appears, and, in the semicircle, the letters "A. D. S." In no sense can it be said that the appellant's mark has a "band." The stripe of the appellant's does not go to the edge of the box. The band of the appellee goes around and encircles the box. The registered trade-mark which the appellee possesses must be limited to the specific design shown. The mere color may be impressed in a particular design and constitute a valid trade-mark, such as a circle, square, triangle, cross, or star. Leschen Rope Co. v. Broderick & Bascom Rope Co., 201 U. S. 166, 26 Sup. Ct. 425, 50 L. Ed. 710. But with a parallelogram and not a band used, and without the initials of the appellee, but with prominent use of the initials of the appellant in the semicircle constructed above the parallelogram of the appellant and attached thereto, such would not constitute a use of the appellee's trademark. Schlitz Brewing Co. v. Houston Ice Co., 250 U. S. 28, 39 Sup. Ct. 401, 63 L. Ed. 822.

[2] In the Schlitz Case the manufacturer of beer claimed the exclusive right to use brown bottles with brown labels. It was held there that the adoption by a competitor may contribute to a wrongful deception, if combined with an imitative inscription, but that, where the label was dissimilar to the plaintiff's in shape, script, meaning, and mode of attachment, it could not be said to add appreciably to the deception. which might arise from the brown label or bottle.

"But it is true that the unlawful imitation must be what achieves the deception, even though it could do so only on the special background lawfully used."

(273 F.)

Using a green color in soap, or on a wrapper or box of soap cannot be enjoined. Omega Oil v. Weschler, 35 Misc. Rep. 441, 71 N. Y. Supp. 983. One cannot have a trade-mark monopoly in the color of paper alone. Lalance & Grosjean Mfg. Co. v. Nat. Enameling & Stamping Co. (C. C.) 109 Fed. 317. The appellee's aspirin has been called the "red band" aspirin. It therefore claims the exclusive right to use the package with the red band upon it and call it "red band" aspirin. But to use this name is merely descriptive of the appellee's mark, which the appellant does not infringe.

[3] Nor do we think that this record discloses a case of unfair competition. Prior to the adoption of a metal box, the appellee used a paper package. The paper box was thinner than the tin box. It was flat, with sharp square corners. The color was white, with a red band. The appellant had a greenish white enamel on its tin box. It had rounded corners and a convex cover, and the only point of resemblance is that on both boxes there was the red color of the label or mark. But when the appellee came into the market, and adopted the tin box, it did so after the appellant's adoption of such box. The appellee accepted the original design as selected by the appellant. It was a box of the same material, same size and shape, having the same general color scheme. The lettering was in many respects identical. The appellant placed its mark upon it, which consisted of a parallelogram and a semicircle at the top connected therewith, and its initials "A. D. S." on the semicircle. The appellee adhered to its initials placed across the red band. The appellant is enjoined from the use of the tin box. There could be no confusion between the packages by the ordinary observer. If there be an imitation or attempt to imitate, we think the appellee made the attempt. With full knowledge of the appellant's use of the red color and its label, the appellee adopted a red band as a trademark. It then, after the appellant had entered the field in using the tin box, chose a tin box resembling closely the shape and size of the appellant's, and placed its trade-mark thereon, and proceeded in competition in the sale of aspirin tablets.

We think by no possibility could the ordinary observer be confused between the appellee's and appellant's boxes and the marks placed thereon. Whatever confusion may have resulted was brought about by the appellee's imitation and selection of the type of tin box used by the appellant. There are three incidents which are called to our attention. as evidence of confusion between the containers of the appellee and appellant. The first was a decoy order, given appellant for "red band" aspirin, and which was filled by sending the appellant's product. The second was found on exhibition, a large box, on a druggist's counter, with three containers of appellant's aspirin and six containers of appellee's therein. The third is when purchases of aspirin were made at two retail drug stores by employés of the appellee who, when they purchased, merely asked for "red band" aspirin, and were given aspirin tablets of the appellant. The circumstances which led up to each of these instances, do not justify the claim of confusion. Mere similarity is not, as a matter of law, conclusive evidence of intention to deceive.

Such intent must be inferred as a matter of fact from similarity. Form, color, and general appearance may be considered. The greater the number of points of similarity, the stronger is the inference of an intentional imitation with intent to deceive. But with the well-defined marks of each of the litigants upon the red stripe across the face of each mark we think it unlikely that the ordinary observer would be mistaken or that deception was likely. Coats v. Merrick Thread Co., 149 U. S. 562, 13 Sup. Ct. 966, 37 L. Ed. 847.

The appellant in its answer filed a counterclaim and asked for affirmative injunctive relief. The reasons which we have assigned for denying relief to the appellee hold with equal force as against the claim of the appellant, and for the same reasons the appellant cannot succeed.

Decree reversed.

REAP v. HINES, Agent, etc. (LEHIGH VALLEY R. CO.).

(Circuit Court of Appeals, Second Circuit. April 27, 1921.)

No. 194.

1. Commerce 27 (7)-Switchman, removing intrastate car to assist in making up interstate train, is engaged in "interstate commerce."

A switchman, who was injured by falling from a car containing an intrastate shipment, while it was being moved from one track to another to enable the switching crew to get other cars to make up an interstate train, was engaged in interstate business, or in an act so directly and immediately connected with such business as substantially to form a part or necessary incident thereof, and therefore could maintain suit for his injuries under the federal Employers' Liability Act (Comp. St. §§ 86578665).

[Ed. Note. For other definitions, see Words and Phrases, First and Second Series, Interstate Commerce.]

2. Commerce 27 (6)—Federal act requires hand brake on car, though used in intrastate commerce.

Under the Safety Appliance Act of March 2, 1893, as amended April 1, 1896 (Comp. St. § 8610) which by Act March 2, 1903 (Comp. St. § 8613), was made applicable to all cars used on any railroad engaged in interstate commerce, and under Act April 14, 1910 (Comp. St. §§ 8617, 8618), requiring all cars subject to the Safety Appliance Act (Comp. St. § 8605 et seq.) to be equipped with efficient hand brakes, a railroad company which is engaged in interstate commerce must equip with an efficient hand brake a car which was then being used for intrastate commerce. 3. Master and servant 286 (13) -Negligence in failing to provide hand brake held for jury.

In an action for injuries to a railroad switchman, who fell from a car while attempting to apply the hand brake, evidence that an attempt had been made to take up the slack in the brake chain by a stick of wood held sufficient to take to the jury the question whether the car was equipped with an efficient hand brake, as required by the Safety Appliance Act (Comp. St. § 8605 et seq.).

In Error to the District Court of the United States for the Southern District of New York.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(273 F.)

Action by James J. Reap against Walker D. Hines, as Agent of the United States Railroad Administration (Lehigh Valley Railroad Company), under the federal Employers' Liability Act, to recover damages for personal injuries. There was a judgment of nonsuit, and plaintiff brings error. Reversed.

John C. Robinson, of New York City, for plaintiff in error.

Allan McCulloh, of New York City (Clifton P. Williamson, of New York City, of counsel), for defendant in error.

Before WARD, HOUGH, and MANTON, Circuit Judges.

MANTON, Circuit Judge. On May. 15, 1919, the plaintiff in error was employed by the defendant in error as a brakeman at or near Coxton, state of Pennsylvania. He suffered a severe injury by being thrown from a car which was being taken out of the classification yard of the railroad company. He had been engaged for four or five months prior to the date of his accident in this yard. His duty was, with other members of the crew, to ride upon cars in making up trains in this yard. This work was called classification, and consisted of pushing strings of cars along tracks in the classification yard as were required for the making up of trains to leave for destination in other states. At the time in question, a string or "push" of coal cars was moved down from Austin Junction, and the cars were distributed to the various tracks. In this string of cars there was one which it was desired to remove from the track, and which was not bound west out of the yard. It was taken out to be placed on another track, called a "B. O. track back of the shanty," so as to make up other "pushers." Plaintiff in error testified that he mounted the car in question after the engine had reversed and pushed the car back over the hump (a track on which the cars were allowed to run down by gravity and were switched into the various tracks), and as it was proceeding by its own momentum down the grade he turned on the brakes in order to see if they took hold properly and found they did not. As he was putting some strength into the attempt to turn the wheel, it suddenly was released; he lost his balance and fell off the car and was injured. After the accident, it was discovered that a stick of wood was inserted in the chain which connected the brake and shaft with the brake lever. The plaintiff in error said:

"I twisted it up a little on the chain, and it seemed as though something had catched it or something, and would not let the chain come any more, and still it was not holding, was not operating the brake, and I pulled harder and harder, and all at once it left go and went around in the direction that I was twisting it, and just let go right in a sudden and throwed me off the car." "I intended to check the car up, and still the brake did not hold."

The block of wood which was found was about nine inches long, and was put in there for the purpose of shortening or taking up the slack in the brake chain; and although there was a mechanical device on the car, called the "brake adjuster," whose "purpose is that, if a brake is slack and don't take hold on the wheels, to take up slack of the brake, and you won't have to use so much chain," it was not used. It was not the plaintiff in error's duty to inspect the cars or brakes.

It was testified that the chain was wrapped around the piece of wood. One of the defendant in error's witnesses and employés testified that, if the chain was looped around the wood as described, the brakes would not apply.

[1] The first question presented is whether the evidence discloses that the plaintiff was engaged in interstate commerce at the time, or in work so closely related to it as to be practically a part of it, and thus be entitled to the benefits of the federal Employers' Liability Act (Comp. St. §§ 8657-8665). There were 13 tracks in this classification yard, and it was testified that the freight cars bound for Western points outside the state of Pennsylvania were brought up in large strings into the yard from the East, and there were separated and switched into the different classification tracks in accordance with the ultimate destination of each car. There was a leader track, which ran over the hump and then down a grade. It was the duty of the brakeman to apply the brakes while descending this grade. There is testimony that the coal that morning was bound for Auburn, Wendey, and Suspension Bridge, N. Y.; but the particular car on which the plaintiff in error was riding and attempting to brake, at the time he fell and was injured, was not destined for a point outside of the state. was, however, necessary to remove this car from track No. 17, and shift it so that the balance of the cars on that track might be made up into a train which would leave Pennsylvania and go west into New York. The balance of the cars on this track consisted of about 30, and "all went west, all but that one." It is thus apparent that the purpose of removing this one car was to make way for a train of cars intended for interstate commerce.

It

In New York Central R. v. Carr, 238 U. S. 260, 35 Sup. Ct. 780, 59 L. Ed. 1298, a brakeman on a freight car running on a train between points in New York state had in the train some cars which were carrying interstate freight. While in New York state a movement was engaged in to uncouple the train and pull these cars from the track and back them into a siding, there to remain until picked up by another train which would carry them on in their interstate movement. While engaged in this movement, the brakeman was injured. In sustaining a right of recovery, the court said that the brakeman while so engaged, was engaged in interstate commerce.

"The scope of that statute [federal Employers' Liability Act] is so broad that it covers a vast field about which there can be no discussion. But, owing to the fact that, during the same day, railroad employés often and rapidly pass from one class of employment to another, the courts are constantly called upon to decide those close questions, where it is difficult to define the line which divides the states from interstate business. But the matter is not to be decided by considering the physical position of the employé at the moment of injury. If he is hurt in the course of his employment while going to a car to perform an interstate duty, or if he is injured while preparing an engine for an interstate trip, he is entitled to the benefits of the federal act, although the accident occurred prior to the actual coupling of the engine to the interstate cars. Each case must be decided in the light of the particular facts, with a view of determining whether, at the time of the injury, the employé is engaged in interstate business, or in an act which is so directly and immediately connected with such business as substantially to form a part or a necessary incident thereof."