Skil Corp. v. Barnet

Citation150 N.E.2d 551,337 Mass. 485
Parties, 117 U.S.P.Q. 461 SKIL CORPORATION v. James R. BARNET.
Decision Date07 May 1958
CourtUnited States State Supreme Judicial Court of Massachusetts

Gerald May, Boston, for plaintiff.

Robert S. Sanborn, Boston (George P. Dike and Joseph F. O'Connell, Jr., Boston, with him), for defendant.

Before WILKINS, C. J., and SPALDING, WILLIAMS, COUNIHAN and CUTTER, JJ.

CUTTER, Justice.

This is a bill in equity to enjoin the defendant from using the trade mark 'Skill Built' and the name 'Skill Built Tool Company' and for an assessment of damages and accounting. The trial judge made findings, stated below. From a final decree dismissing the bill, the plaintiff appeals.

The plaintiff has branch offices in thirty-three states. Starting in 1924 it, or a predecessor corporation, sold portable electric saws under the trade mark 'Skill Saw' and 'for at least the past ten years' it has had 'a complete line of portable electric hand tools and accessories,' all of which are sold under the trade mark Skil. The trade mark Skil Saw was registered in the patent office in 1925 and 'the registration * * * is subsisting.' The mark Skil was registered in Massachusetts in 1947. See G.L. (Ter.Ed.) c. 110, § 8.

The defendant engages in business in Wellesley as an individual under several names. He 'registered the business style Skill Built Tool Company' with the town clerk in 1953. In 1954 he began a radio advertising campaign for an indoor outdoor thermometer, selling for $3.98 at retail, on which he uses the trade mark Skill Built. In 1955 he applied this mark to a protable charcoal grill which sells at retail for $5.95. The defendant also sells hand saws which do not bear the trade mark Skill Built. The thermometer and broiler are sold throughout Massachusetts in many hardware stores carrying the plaintiff's Skil products.

The judge's principal conclusions were (a) that the 'plaintiff and the defendant are not business competitiors'; (b) that the thermometer and grill differ from the plaintiff's power tools; (c) that 'if the word Skil has obtained a secondary meaning * * * it has applied only to the plaintiff's power tools'; (d) that no evidence was offered by the plaintiff of 'injury to its business reputation or dilution of the distinctive quality of its trade mark'; (e) that 'the only testimony of confusion was that of three people * * * in Massachusetts' by events occurring after the bill was filed; (f) that, 'except in two isolated instances,' Skill Built 'has not misled anybody, and * * * is not likely to mislead those * * * [among] whom the parties * * * look for business'; and (g) that the 'defendant has not attempted to pass off his goods as the plaintiff's or to deceive the public' into thinking 'that they are * * * [dealing] with the plaintiff.'

1. The judge filed his findings of fact and order for decree on November 29, 1956. He resigned from the Superior Court on December 1, 1956. The plaintiff contends that it was thereby deprived of a report of material facts under G.L. (Ter.Ed.) c. 214, § 23, as appearing in St.1947, c. 365, § 2. The findings were obviously the facts relied upon by the judge in framing his order for a decree. See Fields v. Paraskis, 318 Mass. 726, 727-728, 63 N.E.2d 906. If the judge had adopted these findings as a report under § 23 (see Acacia Mutual Life Ins. Co. v. Feinberg, 318 Mass. 246, 247, 61 N.E.2d 122), the plaintiff at most could have requested the judge to amplify his findings. He would not have been bound to do so. Adams v. Adams, 308 Mass. 584, 587, 33 N.E.2d 314; Colby v. Callahan, 311 Mass. 727, 728, 42 N.E.2d 801. See Berman v. Coakley, 257 Mass. 159, 161-162, 153 N.E. 463; Plumer v. Houghton & Dutton Co., 277 Mass. 209, 214-215, 178 N.E. 716. Compare Birnbaum v. Pamoukis, 301 Mass. 559, 561-562, 17 N.E.2d 885.

Since the evidence is reported, we must decide the case according to our judgment as to the facts, giving due weight to the judge's findings. Lowell Bar Association v. Loeb, 315 Mass. 176, 178, 52 N.E.2d 27. See Carroll v. Markey, 321 Mass. 87, 88, 71 N.E.2d 756. Little, if any, of the oral testimony seems conflicting and much evidence was documentary. We thus are more nearly than in many cases in as good a position as the trial judge to appraise the evidence. See Bratt v. Cox, 290 Mass. 553, 557-558, 195 N.E. 787; Berry v. Kyes, 304 Mass. 56, 57-58, 22 N.E.2d 622. See also First National Stores, Inc., v. First National Liquor Co., 316 Mass. 538, 540, 55 N.E.2d 940; Mendelsohn v. Leather Mfg. Corp., 326 Mass. 226, 236-237, 93 N.E.2d 537; Mellon National Bank & Trust Co. v. Commissioner of Corporations & Taxation, 327 Mass. 631, 632, 100 N.E.2d 370. In view of the scope of the available review, the plaintiff has not been prejudiced by the fact that the findings were not technically a report under § 23.

2. There was no direct competition between the parties on like products. On this account, the plaintiff might not have been entitled to injunctive relief under the Massachusetts authorities prior to the enactment of St. 1947, c. 307, inserting a new § 7A in G.L. c. 110, despite suggestions, in 265 Tremont Street, Inc., v. Hamilburg, 321 Mass. 353, 356-358, 73 N.E.2d 828, that the trend of decisions was they away from any requirement of direct competition as a basis for relief from unfair competition. See Silbert v. Kerstein, 318 Mass. 476, 479-482, 62 N.E.2d 109; National Fruit Product Co., Inc., v. Dwinell-Wright Co., D.C.Mass., 47 F.Supp. 499, 509, affirmed sub nom. Dwinnell-Wright Co. v. National Fruit Product Co., Inc., 1 Cir., 140 F.2d 618. 1

The plaintiff, however, seeks relief under § 7A, which reads: 'Likelihood of injury to business reputation or of dilution of the distinctive quality of a trade name or trade-mark shall be a ground for injunctive relief in cases of trade-mark infringement or unfair competition notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services.' The legislative history of the section throws little light upon its purpose, 2 and thus far the Massachusetts courts have had little occasion to consider the section. See 265 Tremont Street, Inc., v. Hamilburg, 321 Mass. 353, 356-358, 73 N.E.2d 828; Healer v. Bloomberg Bros. Inc., 321 Mass. 476, 73 N.E.2d 895; Jays, Inc., v. Jay-Originals, Inc., 321 Mass. 737, 742, 75 N.E.2d 514; Mann v. Parkway Motor Sales, Inc., 324 Mass. 151, 157, 85 N.E.2d 210; New England Telephone & Telegraph Co. v. National Merchandising Corp., 335 Mass. 658, 666, 141 N.E.2d 702.

Section 7A has been considered more comprehensively by the Federal courts. In Food Fair Stores, Inc., v. Food Fair, Inc., D.C.Mass., 83 F.Supp. 445, 450-451, it was held (1) that § 7A created a new ground of injunction and also substantive rights; (2) that 'the statute was * * * designed to make the Massachusetts law go at least as far as the unfair competition rules laid down in federal courts before * * * Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S.Ct. 817, 82 L.Ed. 1188, * * * and as far as the Restatement of Torts'; (3) that the reference to 'likelihood of injury to business reputation' in the statute authorized relief (notwithstanding the absence of direct competition) against a person borrowing a plaintiff's trade name; even though the borrower 'does not tarnish it, or divert any sales by its use'; 'even though [the] defendant's [product] is of premier quality and even though only a few average customers would be confused'; and (4) that the statutory words 'likelihood of dilution of the distinctive quality of a trade name' authorized the protection by injunction of 'not merely a distinctive trade name such as a coined word but also the * * * characteristic quality inherent in any valid trade name after it has acquired a distinct secondary meaning.' The Court of Appeals (3 Cir., 177 F.2d 177) affirmed the District Court's decree prohibiting the defendant from using the name Food Fair in connection with its Brookline retail grocery store unless such words were prefaced by a descriptive word or words to distinguish it from connection with the plaintiff's out-of-State stores. See Libby, McNeill & Libby v. Libby, D.C.Mass., 103 F.Supp. 968, 970.

Esquire, Inc., v. Esquire Slipper Manuf. Co., Inc., D.C.Mass., 139 F.Supp. 228, involved the efforts of the magazine Esquire to enjoin the use of that name in connection with the defendant's corporate name and its men's slipper business. The judge declined to enjoin under § 7A use of the word 'Esquire' in the defendant's corporate name partly because of the defendant's assurances that it would discontinue the use of the name on merchandise. The Court of Appeals (1 Cir., 243 F.2d 540, 546) vacated the judgment of the District Court and ordered an injunction entered prohibiting the defendant from using the name Esquire on products in violation of its assurances. It also construed § 7A as permitting, but not as requiring, injunctions grounded on dilution consistently with the 'traditionally flexible equity practice of granting or withholding injunctive relief in the exercise of sound judicial discretion' (at page 544). 3

For present purposes, it is sufficient to state that § 7A goes at least as far as the Food Fair, Libby, and Esquire cases suggest, without determining what are the limits of its applicability. Under § 7A, injunctive relief is permissible in the present case, if the plaintiff has proved (a) that Skil as applied to power tools, accessories, and related hardware, although not a unique trade name, has come to have a secondary meaning in Massachusetts as referring to the plaintiff's products, for persons trading in or purchasing such items; and (b) that there is reasonable probability that the defendant, even in the absence of actual competition with the plaintiff, by use of the name may detract from the reputation created by the plaintiff in connection with its trade name or marks....

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