Jays, Inc. v. Jay Originals, Inc.

• Decision Date: 05 November 1947
• Citation: 321 Mass. 737,75 N.E.2d 514
• Parties: JAYS, Inc. v. JAY ORIGINALS, Inc.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

321 Mass. 737

75 N.E.2d 514

JAYS, Inc.

v.JAY ORIGINALS, Inc.

Supreme Judicial Court of Massachusetts, Suffolk.

Nov. 5, 1947.

Action by Jays Inc. against Jay Originals Inc. to enjoin the defendant from using the name ‘Jay-Originals Boston’ or any similar name in connection with its business. From a decree dismissing the bill, the plaintiff appeals.

Reversed and new decree ordered to be entered.Appeal from Superior Court, Suffolk County; Harold P. Wiliams, Judge.

Before QUA, C. J., and LUMMUS, RONAN, and SPALDING, JJ.

H. B. Ehrmann, of Boston, for plaintiff.

I. M. Libman, of Boston, for defendant.

SPALDING, Justice.

The plaintiff brings this bill to enjoin the defendant from using the name ‘Jay-Originals Boston’ or any similar name in connection with its business. The bill seeks relief on the ground of unfair competition and under the provisions of G. L. (Ter.Ed.) c. 155, § 9, as appearing in St. 1943, c. 295. But the latter ground is not now relied on. From a decree dismissing the bill, the plaintiff appealed. The evidence is not reported, but the judge made a report of the material facts found by him. G. L. (Ter.Ed.) c. 214, § 23. The question to be decided is whether the facts found support the decree, ‘from the entry of which no fact not expressly found may be implied.’ Carilli Construction Co. v. John Basile & Co., Inc., 317 Mass. 726, 727, 59 N.E.2d 706, 707.

The report contained the following: The plaintiff has continuously, since the date of its incorporation in 1918, been engaged in the sale at retail in Boston of women's, misses' and juniors' wearing apparel, including sportswear. It is not a manufacturer. The plaintiff has at great expense advertised its business in Boston and throughout the Commonwealth, and also in magazines of national circulation. In all of this advertising it has used the name ‘Jays,’ which it acquired from its founder, Jay Abrams. The plaintiff has also used this name on its circulars, stationery, boxes, price tags, and labels. By such advertising and use the name ‘Jays' or ‘Jay’ throughout New England and New York, and in other sections of the United States, has become so associated with the plaintiff's business as to acquire a secondary meaning as descriptive of the plaintiff, its business and the merchandise sold by it, and the plaintiff has thus acquired a valuable property right in the name.

The defendant is a Massachusetts corporation which was organized in August, 1943, by Jacob Donath and Hyman Isenberg. At that time Donath and Isenberg knew that the plaintiff was conducting a shop on Temple Place specializing in women's wearing apparel, and that ‘Jays' commonly meant that store. Donath had been in the ‘women's wear business' for approximately eighteen years. During that period he had been employed by various concerns as a designer, salesman, and adviser on styles. ‘He was well known in New England and the eastern part of New York by buyers and owners. They knew him as ‘Jay.” When the defendant was formed in 1943 the name ‘Jay-Originals Inc.’ was adopted. It is engaged exclusively in manufacturing junior sizes of women's sportswear. The manufacturing is done in Brockton but its business office is in Boston. The defendant sells its product to many of the well known retail stores in Boston and in other cities and towns. Its goods are marked with a label stating the name of the corporation.¹ The defendant does its advertising through the same media as the plaintiff uses.

At about the time this suit was commenced, merchandise manufactured by the defendant and similar in style to that sold by the plaintiff appeared in the stock of certain well known retail stores in Boston and New York. ‘Doubtless, the defendant's goods are sold in many other stores in localities where sales would be in competition with those sold by the plaintiff.’ The business of the defendant has steadily increased.

Two or three letters directed to the defendant at the plaintiff's address were delivered to the plaintiff.

After stating that ‘there was no evidence that from 1943 to date the plaintiff has been actually injured by the use of the defendant of its name in connection with its advertising or sale of goods,’ the judge concluded that he was ‘unable to find from a comparison of the respective names of the parties that any reasonable likelihood of injury exists as to the future.’

We are of opinion that on this record the plaintiff was entitled to relief and that the decree dismissing the bill was erroneous. The governing principles of law are now well established in this Commonwealth and no useful purpose would be served in restating them. See 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;Summerfield Co. of Boston v. Prime Furniture Co., 242 Mass. 149, 136 N.E. 396;General Fruit Stores, Inc., v. Markarian, 300 Mass. 90, 94, 95, 13 N.E.2d 929, and cases collected; Blair's Foodland, Inc., v. Shuman's Foodland Inc., 311 Mass. 172, 40 N.E.2d 303;Cain's Lobster House, Inc., v. Cain, 312 Mass. 512, 45 N.E.2d 397;Staples Coal Co. v. City Fuel Co., 316 Mass. 503, 55 N.E.2d 934; 265Tremont Street, Inc., v. Hamilburg, 321 Mass. 353, 73 N.E.2d 828;Healer v. Bloomberg Bros., Inc., 321 Mass. 476, 73 N.E.2d 895. Under the principles set forth in these cases the plaintiff is entitled to relief if it can be said that there is a reasonable probability that the public will be induced to purchase goods manufactured by the defendant in the belief that they are those of the plaintiff. Proof of actual deception of the public is not required. It is enough if a reasonable probability of such deception exists. Reading Stove Works, Orr, Painter & Co. v. S. M. Howes Co., 201 Mass. 437, 440, 87 N.E. 751, 21 L.R.A., N.S., 979; Norton v. Chioda, 317 Mass. 446, 451, 58 N.E.2d 828;Restatement: Torts, § 728 and comments.

It cannot be said here, we think, that the name adopted by the defendant was so unlike the plaintiff's that there was no reasonable likelihood that the public would be misled. General Fruit Stores, Inc., v. Markarian, 300 Mass. 90, 13 N.E.2d 929;Blair's Foodland, Inc., v. Shuman's Foodland, Inc., 311 Mass. 172, 40 N.E.2d 303;Healer v. Bloomberg Bros., Inc. 321 Mass. 476, 73 N.E.2d 895. See Samuels v. Spitzer, 177 Mass. 226, 58 N.E. 693. See also Nims, Law of Unfair Competition & Trade Marks, 3d Ed., § 54. If there is doubt whether confusion will result, then it should be...