Cohen v. Nagle
| Decision Date | 02 January 1906 |
| Citation | 190 Mass. 4,76 N.E. 276 |
| Parties | COHEN v. NAGLE et al. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
A. Knauth and E. N. Jones, for appellants.
O. W Mitchell and A. S. Cohen, for appellee.
This is a suit in equity to obtain an injunction against the fraudulent and wrongful use of the plaintiff's trade-mark and his trade-name, which he adopted and used in the manufacture and sale of cigars, and for the recovery of damages caused by the defendants' wrongful interference with the plaintiff's trade. The justice who heard the evidence filed a 'memorandum of decision,' which is a report of his findings of fact. A preliminary question is whether this is a part of the record, which has the effect of such a report made under Rev. Laws, c. 159, § 23. We are of opinion that it is. It is a convenient and proper practice to put upon the record a report of facts found, in order to present, in a succinct form, the substance of the conclusions from the evidence on which the decree is founded. This brings directly to the attention of the court that which, in some jurisdictions, is found in long recitals in the decree. The statute just referred to makes the filing of such a report compulsory upon the justice, if an appellant requests it within four days after he has been notified of the filing of the decree. The findings stated in such a report will not be set aside unless they are plainly wrong, and we are of opinion that the presiding justice may, in his discretion file such a report voluntarily, which shall have the same effect as one filed under the statute.
The findings of the justice in the present case are as follows:
cigars are put up and sold would tend to mislead and deceive, or do mislead and deceive, the public into believing that they are buying the plaintiff's cigars, when they are buying the defendants' cigars, or some other cigars. In fact I understand counsel for plaintiff substantially to concede that, unless the defendants are restrained in the use of the word 'Keystone,' the other relief which they seek will be of no practical benefit. I think that the evidence shows that the word 'Keystone,' had been used as a brand, in connection with the manufacture and sale of cigars by manufacturers and dealers in cigars, before the plaintiff began to use it, and that that use continued down to the time when the plaintiff adopted it and began to use it. But I think, and I so find, that this use was confined in the main to the middle and western states. Some cigars were sold in Connecticut, and a few in Vermont and Massachusetts, and perhaps one or two of the other New England states as 'Keystone' cigars; but the number was not large, and the public and the dealers did not come to recognize any particular cigar as the 'Keystone' cigar, as they have come to recognize the plaintiff's cigar. The plaintiff adopted the word in 1885, in connection with a five-cent cigar manufactured and sold by him. When he adopted the name, he did not know that it had been used before, and supposed that he was the originator of it. From that time on he continued to make and use the cigars in increasing quantities, until he has worked up in New England a large trade in them; the evidence showing that he sells between 4,000,000 and 5,000,000 of them yearly, of the value of about $160,000. The cigars are well and favorably known throughout New England; many regarding them as the best five-cent cigar in the market. I doubt whether the plaintiff has established his right to the use of the word 'Keystone' as a trade-mark in the strict sense of that term. But I think that the evidence shows, and I find, that his cigars have become known to the trade in New England and to the public in New England by the name 'Keystone,' which he has adopted, and that the public in New England have come to associate the word 'Keystone' with his cigars, and not with the cigars of any other person. He has spent large sums in introducing the cigar in New England, and building up a trade there, and the name is a valuable name in the business in New England. The full name or brand which the plaintiff has adopted is 'B. C. A. Keystone,' the initials 'B. C. A.' standing for Boston Cooperative Association, which was first a corporation and then a partnership, with both of which the plaintiff was connected, and to whose business he had succeeded. The cigars are known in the trade and to the public as 'Keystone,' or 'Keystones,' and purchasers at wholesale and retail call for and order them as 'Keystone' or 'Keystones.'
'Recently, or rather a short time prior to the bringing of this bill, the defendants began to put upon the New England market a cigar called the 'Keystone Maid,' and in some cases where the plaintiff's cigar was called for this has been handed out to the purchaser instead. The cigars are purchased by the defendant from a firm by the name of H. Sommer, in East Bethlehem, Pa., which manufactures them, and that firm is defending this suit. The evidence tends to show, I think, and I find, that one object of the defendants and of the firm of H. Sommer in selecting the name 'Keystone Maid,' was to avail themselves of the popularity which has attached to the plaintiff's cigars. The defendants' cigar is not as good as the plaintiff's cigar, and it is sold for a less price. The defendants concede that, if they had no right to use the word 'Keystone,' they would have no right to use the words 'Keystone Maid,' contending that the effect of the prior use of the word 'Keystone' had been to make it common and public, and to prevent the plaintiff from acquiring any exclusive right to its use in connection with his cigars. The defendants do not contend that they have acquired any special or exclusive right to the use of the word. But I rule that prior use, of the character described above, did not and would not prevent the plaintiff from acquiring a right in the exclusive use of the word in connection with his cigars in New England, and that he is entitled to be protected in such use, if the trade and the public in New England have come to associate the word with, and to recognize it as indicating, his cigars, and not the cigars of another person. I find that the trade and the public in New England have come to associate the word 'Keystone' with the plaintiff's cigars, and to recognize it as meaning his cigars, and not those of any other person. I find that the words 'Keystone Maid,' as used by the defendants, tend to and do mislead and deceive the public by causing them to believe that the cigars sold under that name are the plaintiff's cigars, and give to dealers so disposed an opportunity to palm off, on purchasers and the public, cigars of that brand as and for the plaintiff's cigars. Instances in which such deception had been practiced or attempted, both before and since the institution of this suit, were introduced in evidence before me, subject to the objection and exception of the defendants. The price of the 'Keystone Maid' cigar sold by the defendants is such that it comes into competition with the 'Keystone' cigar sold by the plaintiff. The plaintiff duly notified the defendants and the firm of H. Sommer that the sale of the 'Keystone Maid' cigar was interfering with the sale of his 'Keystone' cigar, and requested them to discontinue the use of the word 'Keystone.' They decline to do so, and stand upon their rights. I do not think that the plaintiff has been guilty of laches, and I think that he has not done or omitted anything which could operate as an abandonment of any rights that he might otherwise have had to the exclusive use of the word 'Keystone' in New England.'
From a final decree in favor of the plaintiff, enjoining the defendants from selling or offering for sale in the New England states, cigars in packages, marked with the word 'Keystone,' and awarding him damages, the defendants appealed.
The findings of the judge show the plaintiff's acquisition of a valuable trade-name by the long-continued use of the word 'Keystone' in his business. It is not found that this word is a trade-mark, or that there has been any interference with his trade-mark. There has been no fraudulent imitation of his manner of packing and marking his cigars, unless he has acquired a certain right of property, which the law recognizes in the word 'Keystone,' as applied to cigars of his manufacture. If he has such a right, it is a fraud upon him for the defendants to use the word in selling cigars in such a way as to mislead the public, and thus deprive him of a valuable part of the trade that fairly belongs to him from those who wish to buy goods made at his factory. If he has no such right, it is not fraudulent for the defendants to use this word, if they avoid all other misleading methods, even though the reputation of the goods which have been marked with it will give the defendants profits resulting indirectly from the market which the plaintiff has helped to create. Although it is sometimes said that every trade-mark case is founded upon fraud, actual or constructive, the ultimate question is whether there is a right in the plaintiff which the law recognizes and enforces. The fraud is in the violation of such a right, through deception of the public. In determining whether the plaintiff has such a right, in a case like the present, the question is whether a name which originally had no...
To continue reading
Request your trial