John L. Whiting-J.J. Adams Co. v. Adams-White Brush Co.

• Decision Date: 24 May 1927
• Citation: 260 Mass. 137,156 N.E. 880
• Parties: JOHN L. WHITING-J. J. ADAMS CO. v. ADAMS-WHITE BRUSH CO. et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

260 Mass. 137

156 N.E. 880

JOHN L. WHITING-J. J. ADAMS CO.

v.ADAMS-WHITE BRUSH CO. et al.

Supreme Judicial Court of Massachusetts, Suffolk.

May 24, 1927.

Appeal from Superior Court, Suffolk County; Morton, Judge.

Suit by the John L. Whiting-J. J. Adams Company against the Adams-White Brush Company and others. From a decree for defendants, plaintiff appeals. Affirmed.

F. O. White, of Boston, and R. C. Rounds, of Cambridge, for appellant.

S. Maylor, Jr., of Boston, for appellees.

CARROLL, J.

In this bill in equity the plaintiff sought to restrain the defendant corporation (hereafter called the defendant) from manufacturing or selling brushes under the name of ‘Adams-White Brush Company,’ or any other name so similar to the plaintiff's as to confuse the public, and from infringing on the trade-marks ‘Adams' and ‘Whiting,’ belonging to the plaintiff.

Two men, whose surnames were Whiting and Adams, for many years carried on the businesses of brush making in Boston. The firms established by them were continued by surviving members of their families. In the year 1908 the two firms formed a corporation under the laws of Maine and adopted the name of the present plaintiff. Later this corporationwas succeeded by a Massachusetts corporation of the same name. The plaintiff manufactures brushes designated as ‘Whiting’ brushes and ‘Adams' brushes, and has trade-marks ‘Whiting’ and ‘Adams.’ The brushes are labeled ‘Whiting’ or ‘Adams.’ While the plaintiffs principal output is brushes used by painters, it also manufactures dusters, shoe brushes, hair brushes, and brushes of many classes and varieties. The paint brushes are of many types, which the trade call for by designating the surnames ‘Whiting’ or ‘Adams.’ The paint brushes are carried in stock; the other brushes are made on order.

The Adams-White Brush Company was incorporated on July 28, 1925. It was formed by Joseph Adams, James C. White, and Millins W. Prouty. For several years prior to this date Joseph Adams conducted a general brush business in Boston, catering especially to tanners and leather manufacturers. The family name of Adams was Adamsky. Adams is 50 years of age. Before he was 21 years old, while working in London, he was known by the name of Adams. Since that time he has always been known by that name. He was naturalized in 1895 under the name of Adams. The master found that in adopting the name Adams he had no fraudulent design to pass himself off as the plaintiff or to palm off his wares as those of the plaintiff. In 1922 he obtained a patent for a rotary brush under the name of Adams. With White and Prouty he formed the defendant corporation. Adams and Prouty were the holders of the stock; White was an employee of the corporation. Prouty promised White some of his (Prouty's) stock ‘as a means of stimulating White's enthusiasm.’ White agreed to become ‘a qualifying stockholder’ and consented to the use of his name. When the defendant corporation was formed, the question arose of the similarity of the proposed name and that of the plaintiff. The advice of counsel was that the name selected did not conflict with the name of the plaintiff corporation. The master also found that the use of the name ‘White’ was not prompted by any desire on the part of White or the defendant to deprive the plaintiff of its patronage.

The plaintiff contends that the use of the defendant's name is in violation of G. L. c. 155, § 9; that the name Adams-White Brush Company is so similar to that of the plaintiff as to be mistaken for it; that the similarity of the name and business is such that a reasonably prudent person interested in the brush business would be likely to mistake the defendant corporation and its goods for the plaintiff and its goods. On this question the master found that the defendant's name was not so similar to that of the plaintiff as to be mistaken for it. He was unable to find ‘that the type, context, or other visual features of the names as they appear to the public are or pretend to be similar in the slightest degree.’

The business of the plaintiff is done at wholesale and is national in scope. The copyright name, ‘Whiting’ or ‘Adaams,’ as the case may be, is impressed on its brushes; the plaintiff thus maintaining the distinction of the two names. The labels for the cartons in which the brushes are packed contain the designation ‘Whiting’ or ‘Adams,’ supplemented by the statement, ‘manufactured by John L. Whiting-J. J. Adams Co., Boston, U. S. A.’ The plaintiff's products are best known through the variety and excellence of its paint brushes. The other brushes made by it constitute but a small part of its output, but its reputation as a paint brush manufacturer is helpful to it in acquiring patronage for brushes not used by painters.

The rotary brush manufactured by the defendant is adapted to the use of tanners and leather manufacturers. The defendant's business is the promotion of a market for this brush and its present policy is to confine its whole energy to this enterprise. The plaintiff has no product which resembles the rotary brush or accomplishes its purpose and it has no appreciable trade with tanners and leather manufacturers. Certain instrumentalities used by the defendant in making the rotary brush are common to all brush makers, but the master found that the products of the defendant differ in shape, design, appearance and purpose from those of the plaintiff; that so far as the goods made by the defendant are concerned, the two companies are ‘to all intents and purposes in different lines of business.’

An officer of the defendant testified before the master that, while it was not the defendant's...