George G. Fox Co. v. Glynn

• Decision Date: 03 April 1906
• Citation: 191 Mass. 344,78 N.E. 89
• Parties: GEORGE G. FOX CO. v. GLYNN et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

191 Mass. 344

78 N.E. 89

GEORGE G. FOX CO. v. GLYNN et al.

Supreme Judicial Court of Massachusetts, Suffolk.

April 3, 1906

COUNSEL

Oliver Mitchell, Chas. D. Woodberry, and Jos. T. Brennan (Roberts & Mitchell, of counsel), for plaintiff.

J. W Keith and E. D. Sibley, for respondents.

OPINION

KNOWLTON C.J.

The plaintiff corporation is a wholesale baker, and it brings this bill against a retail baker, and a firm of wholesale bakers, alleging unfair competition in trade by the defendants against the plaintiff, and infringements of the plaintiff's registered trade-mark.

The bill avers that the plaintiff originated a new kind of bread in which milk and malt were combined, and that, in order to identify it before the public, it adopted distinctive features of shape, size, proportion, and condition of surface, resulting in a distinctive visual appearance. For this novel bread the plaintiff coined and adopted the word 'Creamalt' as a trade-name, and registered it in the office of the Secretary of the commonwealth as a trade-mark. The plaintiff's loaf bore the plaintiff's trade-mark printed in blue ink upon a label of a certain size and color. The alleged unfair competition of the defendants consists in the manufacture and sale of a loaf of bread under the name 'Crown Malt,' which is practically identical in its visual appearance with the plaintiff's 'Creamalt' loaf. The master found the above facts, and, among others, made further findings as follows: 'This 'Creamalt' bread was steam glazed; that is to say, the bread was baked in an oven, into which live steam was injected during the process of baking, with the result that the upper surface of the bread, to a slight depth, was chemically affected, the starch therein being converted into dextrine, with the result that the surface became glazed and crackled in appearance. On each and every 'Creamalt' loaf there was affixed a small white label, printed in blue ink, and bearing the name 'Creamalt,' and the words 'Made with milk and malt, George G. Fox Company, Charlestown;' * * * that, prior to said date, to wit, January 1, 1904, there was no bread of any kind known as 'Creamalt'; that there was no bread in this market advertised or known to the public to contain milk and malt; that there was no bread commercially successful containing milk and malt; * * * that there was no bread made having the distinctive visual appearance adopted by the complainant; that the peculiar shape of 'Creamalt' bread is uneconomical from the standpoint of the consumer, for the reason that it does not cut in uniform slices: * * * that the complainant extensively advertised its 'Creamalt' bread by circulars, * * * and that said bread quickly became popular; * * * that all 'Creamalt' bread, made and sold by the complainant, has the distinctive visual appearance shown in Exhibit B, and that all such loaves were steam glazed and had 'Creamalt' labels affixed; that the 'Creamalt' branch of the business is a most valuable part of its business and is of large value; * * * that the public and the trade called for the complainant's bread, either by the name 'Creamalt' or by asking for 'the oval loaf,' and have learned to recognize complainant's 'Creamalt' bread by its general visual appearance; * * * that about the 1st of October, 1904, the defendants Mackenzie & Connor placed on the market, being practically the same market as that of the complainant, an oval loaf of white bread identical in size, shape, proportions, and general visual appearance with the bread of the complainant, except that no label was affixed to the loaves, and except as to the glaze, which was a corn starch wash slightly different in effect from the steam glaze, consequent upon the fact that it had no chemical action upon the surface of the bread, and gave no crackle; that in December, 1904, Mackenzie & Connor began to use a steam glaze on their bread; that in January, 1905, they adopted the name 'Crown Malt' for their bread; that beginning in May, 1905, and continuously since, they have affixed to each and every loaf of their 'Crown Malt' bread a small white label, printed in blue ink, bearing the words 'Crown Malt. Made only by Sanderson Baking Company,' and a pictorial representation of a crown; * * * that at the time of placing their oval loaf on the market said Mackenzie & Connor knew of the complainant's distinctive loaf, and made their 'Crown Malt' oval loaf in imitation of complainant's 'Creamalt' loaf, and in response to a demand caused by the sale of complainant's 'Creamalt' loaf, and that the changes the defendants Mackenzie & Connor have made since first placing their oval loaves on the market have tended to increase the similarity of their loaf to the loaf of the complainant; and I find from such gradual approximation, and from all the evidence in the case, that said defendants had a fraudulent intent to appropriate to themselves the benefit of the public demand for complainant's novel and visually distinctive loaf; * * * that the 'Crown Malt' oval loaf of the defendants Mackenzie & Connor has been substituted and palmed off as and for the 'Creamalt' bread of the complainant, by the defendant Glynn and other dealers to whom defendants Mackenzie & Connor sold their 'Crown Malt' bread; * * * that the trade-name and trade-mark 'Crown Malt' is so similar to the trade-name and trade-mark 'Creamalt,' in connection with a loaf of bread, as to be likely to create confusion, mislead the public and render easy substitution by the dealers, and that the complainant's trade-name and trade-mark 'Creamalt' have been infringed by Mackenzie & Connor's use of the trade-name and trade-mark 'Crown Malt'; * * * that the 'Creamalt' loaf of the complainant is novel and distinctive; that the demand of the public for this bread was created by the complainant, and that the shape, proportions, and color have come to be principally, if not exclusively, relied upon by ordinary purchasers as the means of identifying complainant's 'Creamalt' bread; and that the oval loaf put out by the defendants amounts to a representation to the consuming public that defendants' oval loaf is complainant's 'Creamalt' loaf; * * * that the defendants Mackenzie & Connor, having knowledge of the fact that their bread was and had been sold by the defendant Glynn and others as and for the bread of the complainant, continued to make and sell their oval loaf, and stand upon their right; that there is no necessity for the defendants Mackenzie & Connor to make their bread of the peculiar and distinctive appearance of complainant's 'Creamalt' bread, apart from the desire to benefit by the demand created by the complainant for its 'Creamalt' bread, and said defendants can and do successfully make and sell their bread in another shape.'

These findings show that the plaintiff has a valuable good will in the business of manufacturing and selling this peculiar kind of bread. This good will is property, and is a valuable asset in the plaintiff's business. For cases recognizing property in good will, see Cruttwell v. Lye, 17 Vesey, 335; Hitchcock v. Coker, 6 Ad. & E. 438; Knott v. Morgan, 2 Keen, 213; Potter v. Com. of In. Rev., 10 Ex. 147; Weddaburn v. Weddaburn, 22 Beav. 84; Griffith v. Kirley (Mass.) 76 N.E. 201; Hutchinson v. Nay, 183 Mass. 355, 67 N.E. 601; Id., 187 Mass. 262, 72 N.E. 974, 68 L. R. A. 186, 105 Am. St. Rep. 390; Moore v. Rawson, 185 Mass. 264, 70 N.E. 64; Crossman v. Griggs, 186 Mass. 275, 71 N.E. 560. For cases recognizing the right in connection with a trade-mark, trade-name, or other designation of origin, see Waltham Watch Co. v. U.S. Watch Co., 173 Mass. 85, 53 N.E. 141, 43 L. R. A. 826, 73 Am. St. Rep. 263; Flagg v. Holway, 178 Mass. 83, 59 N.E. 667; Samuels v. Spitzer, 177 Mass. 226, 58 N.E. 693; Marsh v. Billings, 7 Cush. 322, 54 Am. Dec. 723; Hildreth v. McDonald, 164 Mass. 16, 41 N.E. 56, 49 Am. St. Rep. 440; Russia Cement Co. v. Le Page, 147 Mass. 206, 17 N.E. 304, 9 Am. St. Rep. 685; Viano v. Baccigalupo, 183 Mass. 160, 67 N.E. 641; Regis v. Jaynes & Co., 185 Mass. 458, 463, 70 N.E. 480; Cohen v. Nagle (Mass.) 76 N.E. 276. This good will is connected with, and dependent upon, the use of the name 'Creamalt' and the combination of features in the manufacture of the bread which give it a distinctive visual appearance unlike that of any other bread in the market. These indicate the place of manufacture of the loaves as they are sold, and give them a peculiar value in the market. The right to have the benefit of the reputation of its products, which are designated as above, is important to the plaintiff, and it is a right of property which the courts will guard as carefully as it would visible, tangible property. This right necessarily includes a right to the use of the trade-name, trade-mark or other proper designation of its bread, thus acquired by appropriation and public recognition. Any one who attempts to deprive one of such a right, by palming off goods of his own manufacture for others which have acquired a valuable reputation, is a wrongdoer whose fraudulent attempt will subject him to the restraining and retributive orders of the court.

The practical difficulties which arise in such cases come from conflicting rights, where the plaintiff's right to use his chosen means of designation of his products is not exclusive. One way of designating articles of manufacture as coming from a particular maker is by a trade-mark. This, to be an effectual protection to one who has adopted and used it, must be something to which the user may have an exclusive right. It, therefore, cannot be anything to the use of which for a similar purpose, others may also have a right. The courts will not recognize trade-marks which are not chosen in such a way as not to...