C.A. Briggs Co. v. National Wafer Co.
| Decision Date | 24 May 1913 |
| Citation | 102 N.E. 87,215 Mass. 100 |
| Parties | C. A. BRIGGS CO. v. NATIONAL WAFER CO. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
Percy W. Carver, Arthur G. Carver, and Otto C. Scales, all of Boston, for plaintiff.
W. K Richardson and J. L. Stackpole, both of Boston, for defendant.
The principal question in this case is whether the plaintiff has the right to restrain the defendant from using, outside of the territory which was specified in the former decree of this court, the words 'Boston Wafers' as the name of the articles which it manufactures and sell in competition with the plaintiff. The answer to this question depends upon well-settled principles.
It practically has been conceded in argument that the plaintiff has no exclusive right to the use of these words in connection with its product as a trade-mark strictly so called. This is correct. The word 'Boston' is merely a territorial or geographical designation; the word 'Wafers' is nothing more than the ordinary name given to the article of confectionery made by each of these parties. Neither alone nor together could either one of these words be adopted as a trademark. This is on the broad principle stated by the Supreme Court of the United States in Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536, that no sign or form of words can be appropriated as a valid trade-mark which according to its primary meaning may with equal truth and equal right be employed by others for the same purpose. Canal Co. v. Clark, 13 Wall. 311, 20 L.Ed. 581; Brown Chemical Co. v. Meyer, 139 U.S. 540, 11 S.Ct 625, 35 L.Ed. 247; Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463, 14 S.Ct. 151, 37 L.Ed. 1144; Kann v. Diamond Steel Co., 89 F. 706, 32 C. C. A. 324; Postum Cereal Co. v. American Health Food Co., 119 F. 848, 852, 56 C. C. A. 360; American Wine Co. v. Kohlman (C. C.) 158 F. 830; Cellular Clothing Co. v. Maxton [1899] A. C. 326; S. Chivers & Sons v. S. Chivers & Co., 17 R. P. C. 420.
But it is also true that a merely descriptive epithet or the name of a person or of a place may become so associated with a particular kind of goods, or with the specific product of a particular manufacturer, that the mere attaching of that word to a similar product without more would have all the effect of a falsehood; and in such a case, while the use of that word cannot be absolutely prohibited, it may be restrained unless accompanied with sufficient explanations or precautions to prevent confusion with the goods of the original manufacturer or vendor. American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 53 N.E. 141, 43 L. R. A. 826, 73 Am. St. Rep. 263; Viano v. Baccigalupo, 183 Mass. 160, 67 N.E. 641; Cohen v. Nagle, 190 Mass. 4, 8, 14, 76 N.E. 276, 2 L. R. A. (N. S.) 964, 5 Ann. Cas. 553; Elgin National Watch Co. v. Illinois Watch Co., 179 U.S. 665, 674, 21 S.Ct. 270, 45 L.Ed. 365; Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 27 S.Ct. 780, 51 L.Ed. 331, affirming with modification s. c., 146 F. 37, 76 C. C. A. 495, 14 L. R. A. (N. S.) 1182; A. Bauer & Co. v. La Société Anonyme de la Distillerie de la Liqueur Bénédicting de L'Abbaye de Fecamp, 120 F. 74, 56 C. C. A. 480; Shaver v. Heller & Merz Co., 108 F. 821, 48 C. C. A. 48, 65 L. R. A. 878; Royal Baking Powder Co. v. Royal, 122 F. 337, 58 C. C. A. 499; Wolf Bros. & Co. v. Hamilton-Brown Shoe Co., 165 F. 413, 91 C. C. A. 363; Wotherspoon v. Currie, L. R. 5 H. L. 508; Montgomery v. Thompson [1891] A. C. 217. Even though a word or a combination of words is incapable of becoming a valid trade-mark, yet if it has by a sufficiently long and exclusive use acquired such a secondary meaning as to indicate in the trade that the goods to which it is applied are made by a particular manufacturer or are put upon the market by a particular vendor, its use by another upon similar goods in such a way as to be likely to deceive purchasers will be restrained as unfair competition; and its use even in its primary meaning will be so limited as to prevent the working of a probable deception by passing off the goods of one maker as those of another. New England Awl & Needle Co. v. Marlborough Awl & Needle Co., 168 Mass. 154, 46 N.E. 386, 60 Am. St. Rep. 377; W. R. Lynn Shoe Co. v. Auburn-Lynn Shoe Co., 100 Me. 461, 62 A. 499, 4 L. R. A. (N. S.) 960; Drake Medicine Co. and Drake v. Glessner, 68 Ohio St. 337, 67 N.E. 722; Sartor v. Schaden, 125 Iowa, 696, 101 N.W. 511; Dyment v. Lewis, 144 Iowa, 509, 123 N.W. 244, 26 L. R. A. (N. S.) 73; People v. Rose, 219 Ill. 46, 76 N.E. 42; Northwestern Knitting Co. v. Garon, 112 Minn. 321, 128 N.E. 288; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 11 S.Ct. 396, 34 L.Ed. 997; American Waltham Watch Co. v. Sandman (C. C.) 96 F. 330; Computing Scale Co. v. Standard Computing Scale Co., 118 F. 965, 967, 55 C. C. A. 459; Siegert v. Gandolfi, 149 F. 100, 79 C. C. A. 142; Lowe Bros. v. Toledo Varnish Co., 168 F. 627, 94 C. C. A. 83; Guastavino Co. v. Commerma (C. C.) 184 F. 549; Gillett v. Lumsden, 4 Ont. L. R. 300; Lee v. Haley, L. R. 5 Ch. 155; Powell v. Birmingham Brewery Co. [1896] 2 Ch. 54, and [1897] App. Cas. 770.
The master has found that in some of the states of the 'outside territory,' that is, the states not covered by the decree in the former case, the words 'Boston Wafers' had when this bill was filed acquired such a secondary meaning in the trade as to indicate that the wafers to which these words were applied were the product of the plaintiff, manufactured and sold by it; that this was the case in Ohio, Michigan, Virginia and portions of West Virginia; but he has not found that in the other states included in the 'outside territory' the plaintiff has by its use of these words gained for them the secondary meaning which has been stated. The defendant has applied these words to its own goods in the states which have been mentioned as well as elsewhere, with the intention of diverting to itself the trade of the plaintiff; that is, as we feel bound to interpret the language of the report, with the intention of availing itself of the reputation of the plaintiff's goods and procuring sales of its own goods to purchasers either at wholesale or at retail, who may be led to believe that they are buying goods made by the plaintiff. Under these circumstances, the plaintiff contends that this constitutes unfair competition, against which it is entitled to be protected in the whole of the United States.
In Cohen v. Nagle, 190 Mass. 4, 76 N.E. 276, 2 L. R. A. (N. S.) 964, 5 Ann. Cas. 553, it appeared that the plaintiff manufactured and sold cigars under the name 'Keystone,' and that, although this word did not constitute a trade-mark, it had come to be understood in New England to indicate cigars made by the plaintiff. It was held that he had a right to be protected, at least in New England, against the acts of the defendant, who was applying that name to cigars of his own make. A final decree was entered in the case, enjoining the defendant from using that word in the New England states; and only the defendant appealed from that decree. The decree was affirmed; and it was said in the opinion of the majority of the court that, as the plaintiff had not appealed from the decree, it was not open to the defendant to complain that the decree was too narrow and that it should have been made without geographical limitations. But three of the justices considered that as it had not been shown that the secondary or acquired meaning of the words 'Keystone' extended beyond New England, the injunction rightly was confined to that territory. That is, three of the justices were strongly of the opinion that one who uses a name not strictly a trade-mark, and who has procured for that name a secondary meaning which entitles him to protection against unfair competition in its use, is entitled to such protection only within the territorial boundaries beyond which he has not succeeded in extending the meaning upon which his rights depend; and four justices did not find it necessary to express any opinion upon the subject. That question now must be decided.
We do not doubt that the plaintiff is entitled to relief within the four states which have been mentioned, unless some of the specific objections which have been made by the defendant are to be sustained. The point is settled in favor of the plaintiff by Cohen v. Nagle, ubi supra. The case, as to these four states, comes within the general doctrine applicable alike to trade-marks and to cases of this kind, that one has a right to be protected in selling his goods against the unfair competition of any others who may seek by imitating his brands or the style of his packages to palm off their goods as his. Hildreth v. D. S. McDonald Co., 164 Mass. 16, 41 N.E. 56, 49 Am. St. Rep. 440; George G. Fox Co. v. Glynn, 191 Mass. 344, 78 N.E. 89, 9 L. R. A. (N. S.) 1096, 114 Am. St. Rep. 619; George G. Fox Co. v. Hathaway, 199 Mass. 99, 85 N.E. 417, 24 L. R. A. (N. S.) 900; Reading Stove Works v. S. M. Howes Co., 201 Mass. 437, 87 N.E. 751, 21 L. R. A. (N. S.) 979; Forster Manuf. Co. v. Cutter-Tower Co., 211 Mass. 219, 97 N.E. 749; Taendsticksfabriks Akticbolagat Vulcan v. Myers, 139 N.Y. 364, 34 N.E. 904; Gorham Co. v. White, 14 Wall. 511, 20 L.Ed. 731; McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828; American Tin Plate Co. v. Licking Roller Mills (C. C.) 158 F. 690; Holeproof Hosiery Co. v. Wallach Bros. (C. C.) 190 F. 606; Coca-Cola Co. v. Gay-Ola Co. (C. C. A.) 200 F. 720; Notaseme Hosiery Co. v. Straus (C. C. A.) 201 F. 99; Saxlehner v. Appolinaris Co. [1897] 1 Ch. 893.
As a matter of sound reasoning, it seems difficult to extend the rights of the plaintiff beyond the groung on which those...
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