Burt v. Tucker

• Decision Date: 04 April 1901
• Parties: BURT et al. v. TUCKER.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

178 Mass. 493

59 N.E. 1111

BURT et al. v. TUCKER.

Supreme Judicial Court of Massachusetts, Suffolk.

April 4, 1901

COUNSEL

Norman F. Hesseltine, for appellants.

S. L Whipple and C. F. Bean, for appellee.

OPINION

HOLMES C.J.

This is a bill to restrain the infringement of an alleged trade-mark consisting of the word 'Knickerbocker,' as applied to boots and shoes. In the answer a prior use and acquisition of the trade-mark by the defendant is set up. The case is here on the evidence, by appeal from a decree of the Superior Court dismissing the bill, after a finding that the facts were as alleged in the answer.

In considering whether the defence is made out, of course we shall assmue in favor of the finding that the defendant was an honest witness, as he had every appearance of being, so far as the printed answers go. It was admitted in the argument before us that the defendant was the first to use the word. It would have to be admitted also that when he resumed the use he did so in ignorance of what the plaintiffs had done in the meantime, so that in its dramatic aspect the case for the defendant is pretty strong. The plaintiffs however, deny that the defendant ever did more than to use the word as an advertising device, and insist that if he did get a trade-mark it was abandoned as matter of fact and of law, and further that the defendant now is making a use of the word not within the scope of any right which he may have acquired.

We assume in favor of the plaintiffs that they might be entitled to prevail notwithstanding the fact that the defendant first used the word in its present connection, and that the right to a trade-mark does not depend upon originality, even as against the originator of the characteristic use. Menendez v. Holt, 128 U.S. 514, 521, 9 S.Ct. 143, 32 L.Ed. 526; Banking-Powder Co. v. Raymond (C. C.) 70 F. 376. We therefore assume that the points toward which the plaintiffs have directed their argument are the points necessary to be considered, and that what we have called the dramatic aspect of the facts is not conclusive of the equities upon which the decision of the case must turn.

In the first place then it is to be considered whether the defendant ever had a trademark. Upon this question the finding of the Superior Court seems to us fully warranted by the evidence. From 1894 to 1896 the defendant used the mark, very largely, as he says, in the jobbing trade in New York and in the general retail trade, especially through the middle states and the west. He used it not to designate a particular style of shoe, but to cover a wide range of shoes which he manufactured and sold. It is true that he also used other names, but most of them were used for the special goods of particular houses only, and one which was started for general use, 'Excelsior,' became appropriated to a single firm. Without intimating that a man could not have more than one trademark for his boots and shoes, we are of opinion that the judge was warranted in finding that by the course of the defendant's business 'Knickerbocker' became his general mark for his goods, or for a large variety of them.

There is more difficulty on the question of abandonment, but in view of the testimony of the defendant we are not prepared to say that the finding of the Superior Court was wrong. If we should adopt the plaintiffs' contention that the defendant's intent is immaterial, then the question would be whether, from lapse of time, or the public abandonment of his business, or from other causes, the good will associated with the name had melted away, either gradually or at once. In July, 1896, the defendant's factory in Massachusetts was burned and he went out of business. From that time until July or August, 1900, he worked for others as a salesman in other states. During those four years of course he made no use of his trade-mark. Then he began business again on his own account in Philadelphia, selling goods of a New Jersey company as a jobber, and then he resumed the use of the name on his packages, adopting it as a title for his concern, 'Knickerbocker Shoe Company.' Certainly it is hard to believe that a name which had not been more or longer associated with the defendant's goods than this had been still should have value from any good will once attached to it. But the defendant testified, at least by implication, that it did, and the extent to which his testimony should carry credence is a matter on which we cannot undertake to revise the opinion of the judge who...