Tiffany & Co. v. Boston Club, Inc.

• Decision Date: 02 July 1964
• Docket Number: Civ. A. No. 62-117-C.
• Citation: 231 F. Supp. 836
• Court: U.S. District Court — District of Massachusetts
• Parties: TIFFANY & CO., Plaintiff, v. The BOSTON CLUB, INC., d/b/a Tiffany's, and 46 Beacon Street, Inc., d/b/a Tiffany's, Defendants.

231 F. Supp. 836

TIFFANY & CO., Plaintiff, v. The BOSTON CLUB, INC., d/b/a Tiffany's, and 46 Beacon Street, Inc., d/b/a Tiffany's, Defendants.

Civ. A. No. 62-117-C.

United States District Court D. Massachusetts.

July 2, 1964.

COPYRIGHT MATERIAL OMITTED

Lane McGovern, Boston, Mass., for plaintiff.

Arthur H. Bloomberg, Boston, Mass., for defendant.

CAFFREY, District Judge.

This is a civil action brought by Tiffany & Co., a corporation organized under the laws of the State of New York, with a principal place of business in New York City, against the Boston Club, Inc., d/b/a Tiffany's, a corporation organized under the laws of Massachusetts with a principal place of business in Boston, and against 46 Beacon Street, Inc., d/b/a Tiffany's, a corporation organized under the laws of Massachusetts with a principal place of business in Boston.

The amended complaint is in two counts, one of which seeks relief against the Boston Club, Inc. and the other against 46 Beacon Street, Inc. In each count plaintiff makes three distinct claims for relief (1) that defendant's use of "Tiffany's" in the name of the Restaurant and Lounge at 46 Beacon Street, Boston, infringes the plaintiff's federally registered trademarks within the meaning of Sec. 32 of the Trade-Mark Act of 1946, 60 Stat. 437, as amended, 1962, 76 Stat. 773, 15 U.S.C.A. § 1114; (2) that the defendant's use of "Tiffany's" also infringes upon the right which plaintiff has acquired at common law in conjunction with Mass.Gen.Laws, ch. 110, sec. 7A, to protect its common law trademarks and trade names "Tiffany" and "Tiffany & Co."; and (3) that the defendant's use of "Tiffany's" on the facts proven at the trial constitute a use which is properly enjoinable under the so-called anti-dilution provision of Mass.Gen. Laws, ch. 110, sec. 7A. Plaintiff asserts that this Court has jurisdiction as to the Lanham Act claim on the basis of 28 U.S.C.A. § 1338(a) and that it has jurisdiction of the other two causes of action both on the basis of pendent jurisdiction as set out in 28 U.S.C.A. § 1338 (b) and on the basis of diversity of citizenship and the jurisdictional amount being involved herein.

At the conclusion of the evidence defendant filed a motion to dismiss, challenging the Court's jurisdiction on the grounds (1) that less than $10,000 was involved herein, and (2) that defendant was not engaged in interstate commerce in the use of the name "Tiffany's Restaurant and Lounge." The motion also asserted that plaintiff had failed to prove a claim upon which relief could be granted.

It appears that plaintiff is now and for many years has been engaged in the business of selling at retail and at wholesale a substantial variety of merchandise, including silverware, jewelry, cutlery, china and glassware. Plaintiff was incorporated in 1868 and succeeded to a business previously carried on in New York City since the year 1837 by co-partnerships successively known as Tiffany & Young; Tiffany, Young & Ellis; and Tiffany & Co. Plaintiff also acquired upon incorporation the good will, trademarks and trade names of its predecessors. Plaintiff and its predecessors have operated a retail store in New York City continuously since 1837. Plaintiff now owns and operates a nationally known retail store at the corner of Fifth Avenue and 57th Street in New York City. Plaintiff owns the trademarks and trade names "Tiffany" and "Tiffany & Co." and has used these trademarks and trade names continuously since its incorporation in 1868 in interstate, intrastate and foreign commerce, on articles it sells which include silverware, jewelry, china, glassware, leather goods, clocks, watches, brushes and lamps. Plaintiff has registered its trademarks "Tiffany" and "Tiffany & Co." in accordance with applicable federal trademark registration statutes, including the Act of March 3, 1881, 21 Stat. 502, the Act of February 20, 1905, 33 Stat. 724, and the Lanham Act, 60 Stat. 427 et seq. (1946). Plaintiff has also registered its trademark and trade names in foreign countries and in many States of the United States, including Massachusetts, where plaintiff is the owner of Registration Nos. 9156 and 9157 issued on March 18, 1920.

Plaintiff sells at wholesale to various jewelry stores in Massachusetts articles manufactured by plaintiff which bear the trademarks "Tiffany" and "Tiffany & Co." These articles are then resold at retail to Massachusetts customers by those jewelry stores. Tiffany & Co. also does a mail order business from its New York headquarters to various customers within the Commonwealth of Massachusetts. Since 1956 plaintiff has conducted a series of public exhibitions presenting table settings reflecting good taste and imagination designed by persons prominent in the field of interior decorating. In 1960 plaintiff caused the publication of a book called "Tiffany Table Settings" and in 1961 published a book entitled "Tiffany's Table Manners for Teen Agers." Both of these books have been sold at retail in bookstores located in Massachusetts and other states, and I find that the public generally, in Massachusetts and elsewhere, associates the plaintiff and its china, silverware and stemware with dining of excellence and quality.

For many years plaintiff has expended very substantial amounts of money to promote its trademark and trade names and products and to maintain existing good will attributable thereto all over the United States as well as in Massachusetts. It has done so through the medium of advertisements in magazines of national circulation, in newspapers of multi-state circulation, and by direct mail advertising. As a result of these expenditures to keep its name and reputation favorably before the public, and as a result of its long business experience and the general excellence of the products it merchandises, its trade names "Tiffany" and "Tiffany & Co." have acquired a secondary meaning and have become widely and favorably known to the general public as identifying the plaintiff and the merchandise sold and distributed by it as being of high quality. Plaintiff has acquired and possesses highly valuable good will for its trade names and its products.

To particularize on the foregoing, I find that in the forty-year period ending in 1931 plaintiff's total sales exceeded $350,000,000; that during the last fifty years plaintiff's retail sales alone amounted to $429,214,669; and that for the years 1950 to 1963 plaintiff's sales (including both retail and wholesale) were as follows:

                      1950      $6,664,712.62     1957-8      $ 9,767,139.59
                      1951       6,940,347.12     1958-9       10,379,823.42
                      1952       6,595,687.71     1959-60      11,461,801.53
                      1953       6,708,441.80     1960-61      11,415,677.72
                      1954       7,123,132.47     1961-62      13,434,368.70
                *1955-56    9,032,361.35     1962-63      12,800,433.56
                      1956-57    9,397,075.87     1963-64      13,171,675.64
                

The advertising referred to above consists of advertising in Vogue magazine from 1907 to 1947 and from 1956 to date; in Harper's Bazaar from 1917 to 1947 and from 1956 to date; and in the New Yorker from 1932 to date. The advertising in newspapers with multi-state circulation referred to above includes advertising in the New York Times from 1912 to date, in the New York Herald Tribune from 1912 to date, in the Wall Street Journal from 1925 to date, and in the Christian Science Monitor from 1959 to date. In the 28-year period since 1935 plaintiff has spent $5,146,752 in advertising its business and products.

Plaintiff sells at wholesale products bearing the trademarks "Tiffany" and "Tiffany & Co." to the following Massachusetts retailers who in turn sell plaintiff's products at retail, Bigelow-Kennard Co., Boston; Thomas Long Co., Boston; Romm & Co., Brockton; Hall Galleries, Springfield; and F. A. Knowlton, Inc., Worcester. Plaintiff's sales to Bigelow-Kennard Co. for the years 1952 through 1963 totaled $157,878. Plaintiff's sales to Thomas Long Co. for the years 1960 through 1963 totaled $34,881. Plaintiff's sales to Romm & Co. for the years 1960 through 1963 totaled $8,522. Plaintiff's sales to the Hall Galleries for the years 1957 through 1963 totaled $12,103. Plaintiff's sales for the years 1960 through 1963 to F. A. Knowlton, Inc. totaled $2,848. In addition, Tiffany sells at wholesale in Alabama, Arkansas, California, Connecticut, Delaware, the District of Columbia, Florida, Georgia, Illinois, Indiana, Louisiana, Maryland, Michigan, Minnesota, Missouri, New Jersey, Ohio, Oklahoma, Oregon, Rhode Island, South Carolina, Texas, Virginia, Washington, Wisconsin, and Canada.

Plaintiff also has what was described by its comptroller at the trial as a considerable charge account relationship with residents of Europe and all over the world. It has about 132,000 charge account customers, over 3,000 of whom live in Massachusetts as of April 1, 1964. Plaintiff has had about the same number of Massachusetts charge account customers for the past three years.

In addition to the retail business it conducts in New York and the wholesale and mail order business described above, Tiffany opened a branch store in San Francisco, California, in September 1963; a branch store in Houston, Texas, in October 1963; and a branch store is scheduled to open in Beverly Hills, California, in September of this year. At the time of trial, representatives of Tiffany were negotiating for the opening of a Tiffany branch in Boston which has been under consideration for a period of four or five years.

The defendant's activities other than advertising would appear to be largely if not completely intrastate. Defendant has placed advertisements on radio stations WHDH, WBOS, WORL, WCRB, and on television station WBZ. Programs from all of these stations are transmitted in interstate commerce and are received by residents of States located to the North and South of Massachusetts.

Defendant urges that because plaintiff in...