Jackman v. Calvert-Distillers Corp.

Decision Date02 July 1940
PartiesJACKMAN v. CALVERT-DISTILLERS CORPORATION.
CourtUnited States State Supreme Judicial Court of Massachusetts Supreme Court

OPINION TEXT STARTS HERE

Action by F. Howard Jackman against the Calvert-Distillers Corporation of Massachusetts, to restrain the defendant from using the word ‘Calvert’ as a trade-mark or trade-name for whisky. The Maryland Distillery, Inc., and the Calvert Distilling Company intervened, and filed counterclaims. From a final decree, establishing the right of the interveners to the use of the word ‘Calvert’ as a trade-mark for whisky, and restraining any use of such word by the plaintiff, the plaintiff appeals. The case comes to the Superme Judicial Court of Massachusetts upon findings and rulings and upon a report of all the evidence.

Reversed, and final decree ordered to be entered dismissing the bill and giving the defendants relief on their counterclaims.Appeal from Superior Court, Suffolk County; Morton, Judge.

M. H. Sullivan and J. F. Sullivan, both of Boston, for plaintiff.

L. A. Janney, of New York City, and C. Ryan, of Boston for defendant.

LUMMUS, Justice.

This controversy concerns the right to use in Massachusetts the word Calvert as a trademark or trade name for whiskey. For the meaning of those expressions see George G. Fox Co. v. Glynn, 191 Mass. 344, 352, 78 N.E. 89, 9 L.R.A., N.S., 1096, 114 Am.St.Rep. 619;American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317;Neva-Wet Corp. of America, Inc., v. Never Wet Processing Corp., 277 N.Y. 163, 169, 13 N.E.2d 755; Nims, The Law of Unfair Competition and Trade-Marks, 3d Ed. 1929, §§ 198, 199; Chafee, 53 Harv.L.Rev. 1289, 1297, 1298; Handler & Picket, 30 Columbia Law Rev. 168, 759.

The plaintiff sought to restrain the use of that word by the defendant Calvert-Distillers Corporation of Massachusetts. His bill was dismissed. The intervenors Maryland Distillery, Inc., and the Calvert Distilling Company on their counterclaims under Rule 32 of the Superior Court (1932) obtained a final decree, establishing their right to the use of the word Calvert as a trademark for whiskey, and restraining any use of it by the plaintiff. The plaintiff appealed. The case comes here upon the findings and rulings that appear to be neither complete nor made under the statute, G.L.(Ter.Ed.) c. 214, § 23; Birnbaum v. Pamoukis, Mass., 17 N.E.2d 885, and upon a report of all the evidence. G.L.(Ter.Ed.) c. 214, § 24. Rule 76 of the Superior Court (1932).

The word Calvert is primarily a family name. To give the right to use it in a particular business and to exclude another from a similar competing use, the word must have acquired such a secondary meaning indicative of the business or its product that the use of the word by another would constitute unfair competition. 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;C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 102 N.E. 87, Ann.Cas.1914C, 926;Kaufman v. Kaufman, 223 Mass. 104, 111 N.E. 691;Economy Food Products Co. v. Economy Grocery Stores Corp., 281 Mass. 57, 60, 61, 183 N.E. 49;Jenney Mfg. Co. v. Leader Filling Stations Corp., 291 Mass. 394, 196 N.E. 852;General Fruit Stores, Inc., v. Makarian, 30 Mass. 90, 13 N.E.2d 929.

The plaintiff concedes that for many years and up to the advent of national prohibition in 1919, 27 U.S.C.A. § 1 et seq. (Act of November 21, 1918, c. 212, 40 U.S.Sts. at Large, 1045; Amendment 18 to the Constitution of the United States; Hamilton v. Kentucky Distilleries & Warehouse Co., 251 U.S. 146, 40 S.Ct. 106, 64 L.Ed. 194) the word Calvert was a trade-mark for whiskey of Maryland Distilling Company, was registered as such by that company under Federal Law, was used by that company as such in interstate commerce, and had acquired a secondary meaning indicative of whiskey produced by that company.

In 1921 that company was liquidated and dissolved. But its trademarks remained as undistributed assets in the hands of its surviving directors who under Maryland law were trustees for the stockholders. The use of the trademark in question was suspended during national prohibition, by force of law, but without any intent to abandon the trademerk. We need not consider whether Maryland Distilling Company,had it remained in existence, could have revived it.1 In 1933, when the national prohibition amendment was about to be repealed, one of the two surviving directors took part in the formation of Maryland Distillery, Inc., and assumed to convey to it the undistributed assets of the old corporation, including its trademarks. The word Calvert was registered by Maryland Distillery, Inc., as a trademerk for whiskey under Federal law on October 9, 1934, on the strength of its use by the old corporation before its dissolution and by the new corporation since August, 1934, in Maryland, in Massachusetts, and in interstate commerce. Maryland Distillery, Inc., organized its subsidiary the Calvert Distilling Company, and transferred to it the trademark in question. The latter company organized another subsidiary, Calvert-Distillers Corporation of Massachusetts, to aid in selling its whiskey in this Commonwealth. All three corporations are controlled by another holding corporation.

A trademark or trade name, indicating that goods are manufactured or sold by a certain business organization (Nelson v. J. H. Winchell & Co. 203 Mass. 75, 82, 89 N.E. 180, 23 L.R.A.,N.S., 1150) can have no existence in gross, unconnected with some business in which it is used. Chadwick v. Covell, 151 Mass. 190, 23 N.E. 1068,6 L.R.A. 839, 21 Am.St.Rep. 442;Weener v. Brayton, 152 Mass. 101, 102, 103, 25 N.E. 46,8 L.R.A. 640;Covell v. Chadwick, 153 Mass. 263, 26 N.E. 856,25 Am.St.Rep. 625;Jenney Mfg. Co. v. Leader Filling Stations Corp., 291 Mass. 394, 398, 196 N.E. 852;United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97, 39 S.Ct. 48, 63 L.Ed. 141;American Steel Foundries v. Robertson, 269 U.S. 372, 380, 46 S.Ct. 160, 70 L.Ed. 317. Fairness to the consuming public requires the rule that a trademark or trade name cannot be assigned to one who has no connection with that business as successor or otherwise. A. Bourjois & Co., Inc., v. Katzel, 260 U.S. 689, 692, 43 S.Ct. 244, 67 L.Ed. 464, 26 A.L.R. 567;Ph. Schneider Brewing Co. v. Century Distilling Co., 10 Cir., 107 F. 2d 699, 703. The business of the defendants, in our opinion, has too tenuous a connection with the pre-prohibition business of Maryland Distilling Company to...

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