Jenney Mfg. Co. v. Leader Filling Stations Corp.
| Decision Date | 27 June 1935 |
| Citation | 291 Mass. 394,26 U.S.P.Q. 185,196 N.E. 852 |
| Parties | JENNEY MFG. CO. v. LEADER FILLING STATIONS CORPORATION. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
Suit in equity in the superior court to enjoin the infringement of a trade-name by the Jenney Manufacturing Company against the Leader Filling Stations Corporation, wherein defendant filed a counterclaim. From adverse interlocutory and final decrees defendant appeals.
Decrees affirmed.
Aero.
Appeal from Superior Court, Suffolk County; Weed, Judge.
C. J Goldman, of Lynn, for appellant.
F. L Norton and M. Jenney, both of Boston, for appellee.
This is a suit in equity brought by the plaintiff against the defendant to establish the plaintiff's exclusive right to use the word ‘ Aero’ as a trade-name in the manufacture, sale and distribution of gasoline, and to restrain the defendant from using that word. The defendant by counterclaim seeks to establish for itself an exclusive right to the use of said name and to restrain the plaintiff from using the same word. The defendant seeks a restraining order and damages; the plaintiff seeks a restraining order only. The case was referred to a master who was directed to report his findings of fact upon all issues raised by the pleadings except the issue of damages. The master filed a report to which the defendant filed twelve objections and a motion to recommit. The judge ordered a recommittal to the master ‘ without hearing further evidence, to append to his report a brief, accurate and fair summary of the evidence which relates to the findings appearing as being numbered three, four, seven and ten in the Defendant's Objections to Master's Report.’ The master made a ‘ Report of Re-commitment,’ and an interlocutory decree was entered, wherein the defendant's first, second and sixth objections to the master's original report were sustained, the remaining objections were overruled, and the report as modified and the ‘ Report of Commitment’ were confirmed. The defendant appealed from the interlocutory decree. Thereafter the case was heard upon the master's report as modified and his ‘ Report of Re-commitment’ and a final decree was entered dismissing the defendant's counterclaim, establishing the plaintiff's right to the trade name ‘ Aero’ as prayed for, and perpetually enjoining the defendant from using the word ‘ Aero’ alone or in conjunction with other words in connection with gasoline, and from so using any other words or combination of words in imitation thereof throughout the states of Maine, New Hampshire, Massachusetts and Rhode Island. From this decree the defendant appealed.
The pertinent facts of the master's report and recommittal report are as follows: One Burwen began a gasoline and oil business in 1916, distributing the same at a filling station or stations. In 1919 he entered into a copartnership with one Milhendler under the firm name Leader Oil Company. In 1924 the defendant corporation was organized and it purchased all the assets of the partnership including its good will. Burwen, the defendant's predecessor, used and was the first to use the word ‘ Aero’ as applied to gasoline, but did not use ‘ Aero’ exclusively or rely entirely upon the word ‘ Aero’ as being applied to the high grade gasoline he was marketing, and he did not intend when he first began to use it, in 1921, to appropriate the name ‘ Aero’ or ‘ Aero gasoline’ as a trade-name. In November, 1921, the Leader Oil Company advertised the sale of one type of high powered gasoline under three names-‘ Aeroplane gasoline,’ ‘ Aviation gasoline’ and ‘ Aero gasoline.’ Burwen and the defendant, after its incorporation in 1924, continued to sell the same type of gasoline under the three names until 1927, when the company abandoned the use of the two alternative names reserving that of ‘ Aero’ to apply to such gasoline as it offered the public. The plaintiff corporation is and has been a manufacturer, distributor and dealer in gasoline, motor oils, fuel oils and other petroleum products for more than thirty-five years, selling such products at wholesale and retail throughout eastern New England. In December, 1922, it adopted the word ‘ Aero’ in its sale of fuels for motor travel to designate a gasoline of superior quality and efficiency, and in the meantime by advertising and by other means of publicity has created ‘ a public demand for said ‘ Aero’ throughout the states of Maine, New Hampshire, Massachusetts and Rhode Island as applied to gasoline and * * * a large, profitable and progressive business in said gasoline under said name * * * and the word ‘ Aero’ as applied to gasoline became well known to consumers as a type of gasoline of premium quality * * * identified with the general public and dealers in gasoline * * * as applied to gasoline and the Jenney Manufacturing Company.' The master states ‘ that the earlier use of the word ‘ Aero’ by the defendant' or its predecessor, ‘ with the limited extent and character of its use by the defendant, was not such as to require the inference that those words had acquired the secondary meaning claimed by the defendant,’ and I find it did not acquire such meaning. On the other hand, the master found that the plaintiff in the latter part of 1922 ‘ conceived and adopted the word ‘ Aero,’ as a trade-name to be applied to a type of gasoline, so treated, by a secret process of the plaintiff, as to create a gasoline of high quality and efficiency to be used as a motor fuel for automobiles.' He found that the word was advertised extensively by means of signs placed at gasoline stations, lettering on pumps, circulars and later by newspaper and radio publicity; and that by reason of this campaign the general public in New England has come to associate the plaintiff's gasoline with the word ‘ Aero.’
He found by inference, and the trial judge found that his conclusions or inferences are not inconsistent with or unwarranted by his other findings, that the defendant knew of the plaintiff's use of the word ‘ Aero’ as early as 1924, and that the defendant made no protest to the plaintiff. He specifically found that the plaintiff was in ignorance of the use of the word ‘ Aero’ by the defendant until three or four weeks prior to the commencement of this suit.
The controversy is whether the word ‘ Aero’ was used in such a manner by the defendant or its predecessor as to justify the defendant in its claim for protection against the use of the name by the plaintiff. If the name was so used it is immaterial that the plaintiff has made a more extensive use of it over a wider territorial area than the defendant or used it in ignorance of the defendant's right to use it. Regis v. H. A. Jaynes & Co., 185 Mass. 458, 462, 70 N.E. 480. The...
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