Great Scott Food Market, Inc. v. Sunderland Wonder Inc.

• Decision Date: 05 January 1965
• Citation: 203 N.E.2d 376,348 Mass. 320
• Parties: , 144 U.S.P.Q. 333 The GREAT SCOTT FOOD MARKET, INC v. SUNDERLAND WONDER INC.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

Page 376

203 N.E.2d 376

348 Mass. 320, 144 U.S.P.Q. 333

The GREAT SCOTT FOOD MARKET, INC v. SUNDERLAND WONDER INC.

Supreme Judicial Court of Massachusetts, Worcester.

Argued Nov. 6, 1964.

Decided Jan. 5, 1965.

Calvin C. Gould, Worcester (William J. LeDoux, Worcester, with him), for defendant.

Harry Zarrow, Worcester, for plaintiff.

Before WILKINS, C. J., and SPALDING, WHITTEMORE, KIRK, and REARDON, JJ.

REARDON, Justice.

This bill in equity brought by The Great Scott Food Market, Inc. (Great Scott), seeks to enjoin the defendant from using the name 'The Big G' in connection with any store or business within the Commonwealth of Massachusetts. The plaintiff is a Rhode Island corporation which first engaged in the retailing of food sometime in the late 1930s, doing business under the name of 'Great Scott Food Markets.' A Massachusetts corporation was formed several years ago and an additional store was operated in Fall River under the same name. Early in May of 1963, Great Scott began to convert its stores in Rhode Island to a discount method of operation. ¹ As each store was converted, at three to four week intervals, it was named a 'Big G. Discount Food Store.' On June 3, 1963, the plaintiff registered the trade mark 'The Big G Discount Food Stores' in Massachusetts under G.L. c. 110, § 8, and a certification of registration was issued to it. In October, 1963, a seventh Rhode Island store was acquired (in Pawtucket) and was opened as a 'big G' supermarket. On November 6, 1963, the Fall River store was also converted to a discount operation under the name 'Big G.' Continued expansion of the chain in Rhode Island, as well as construction of an additional store at Seekonk, Massachusetts, was in immediate prospect. For some time prior to trial consideration had been given to expansion into the Worcester area, but no negotiations for a specific site had been undertaken.

Accompanying the plaintiff's change in trade name was a transformation in merchandising technique to an 'every-day low price concept' whereby every item in the store was discounted for sale. An intensive advertising campaign to promote 'Big G' was begun through the newspaper and radio media contemporaneous with the store conversions. ² There was extensive use of billboards in the greater Providence area. Numerous trade journals carried articles on the plaintiff's 'Big G' stores which, according to the plaintiff's treasurer, have been 'extremely successful,' the dollar volume in sales having tripled.

The defendant, Sunderland Wonder Inc. (Sunderland), is a family-owned complex of five supermarkets operating in the Worcester area. On or about September 10, 1963, the largest of Sunderland's markets, all of which had been operated under the name 'Wonder Markets,' adopted the name 'Big 'G' Discount Foods' and advertised 'Across-the-Board Food Discounting' in a Worcester newspaper. Officers of the defendant knew of the Rhode Island 'Big G' chain and had visited the Warwick store prior to the opening of the defendant's 'Big 'G." The exhibits show close similarity between the plaintiff's and defendant's trade names and newspaper advertising. ³

The distance between that store of the plaintiff's in Rhode Island nearest to Worcester and the defendant's 'Big 'G" store is approximately twenty-five miles. A specialist in marketing, testifying for the defendant as an expert, stated that the 'trading area' of typical discount food store in New England is no more than six miles; that no more than ten or fifteen per cent of such business would come from beyond such a radius; and that no more than five per cent would come from twenty miles away.

On September 10, 1963, the plaintiff's attorney served notice on the defendant, by certified mail, to discontinue the use of the name 'Big G.' On October 17, this suit was instituted alleging unfair competition under G.L. c. 110, § 7A, inserted by St.1947, c. 307.

The court found that the name 'Big G' 'has become associated by the general public with the plaintiff and has acquired a secondary meaning which is a valuable asset of the plaintiff's business'; that the defendant 'has wrongfully assumed and appropriated the trade name 'Big G' for the purpose of appropriating for its own profit the reputation, good will and value connected with the plaintiff's trade name'; and that the defendant's use of the name 'Big G' has injured and will injure the plaintiff's business reputation and will cause 'dilution of the distinctive quality of the plaintiff's registered trade name and mark.'

The defendant has appealed from a final decree enjoining it 'from using the name 'Big G' in any form or combination similar to the mark as registered by the plaintiff in connection with any food store within the County of Worcester, Commonwealth of Massachusetts.' The evidence is reported.

1. The plaintiff bases its claim to relief on G.L. c. 110, § 7A, inserted by St.1947, c. 307, which provides: 'Likelihood of injury to business reputation or of dilution of the distinctive quality of a trade name or trade-mark shall be a ground for injunctive relief in cases of trade-mark infringement or unfair competition notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services.' Under the principles stated in Jays, Inc. v. Jay-Originals, Inc., 321 Mass. 737, 740, 75 N.E.2d 514, and cases cited, we are of opinion that the plaintiff might in this instance be entitled to relief without reference to the statute. We note also, but express no view, on, the possible applicability of the doctrine of reasonably expectable expansion of business. See Restatement 2d: Torts (Tent. draft No. 8, April 22, 1963), § 732. Since some question is present as to whether the defendant is or is likely to become a business rival of the plaintiff (see Skil Corp. v. Barnet, 337 Mass. 485, 488, 150 N.E.2d 551), we conclude that the disposition of this case calls for application of the statute and that the plaintiff, falling within its express terms, is entitled to the relief granted by the trial court.

2. The defendant urges that the plaintiff has not shown the acquisition of secondary meaning in its Rhode Island trading area and that, therefore, no secondary menaing had been acquired in the defendant's trading area. Without expression of opinion as to whether we agree with the defendant in its contention that proof of a secondary meaning is requisite in order to gain relief under the statute (see Mann v. Parkway Motor Sales, Inc., 324 Mass. 151, 157, 85 N.E.2d 210), we are satisfied that in this case such proof existed. We cannot disagree with the judge's finding that the plaintiff had acquired secondary meaning in the name 'Big G.' The fact that its business tripled in dollar volume sales shortly after the conversions is indicative of the success of its discount merchandising techniques and the impact of its name and style upon the public. That this took place in less than six months, although a factor to be considered, does not lead to a necessary finding of no secondary meaning....