Kaufman v. Kaufman

• Decision Date: 02 March 1916
• Citation: 223 Mass. 104,111 N.E. 691
• Parties: KAUFMAN v. KAUFMAN et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

223 Mass. 104

111 N.E. 691

KAUFMAN

v.KAUFMAN et al.

Supreme Judicial Court of Massachusetts, Worcester.

March 2, 1916.

Appeal from Superior Court, Worcester County.

Action by Benjamin H. Kaufman against Philip Kaufman and others. From a decree for plaintiff, defendants appeal. Reversed, and bill dismissed.

Louis E. Feingold and J. Fred Humes, both of Worcester, for appellants.

Charles H. Derby, of Worcester, for appellee.

RUGG, C. J.

This is a suit to restrain the defendants from simulating the plaintiff's trade-name and from imitating the general appearance of the plaintiff's stores. The case was sent to a master, whose report shows the material facts in substance as follows: The plaintiff is a seller at retail of men's hats, who opened his first store in New York in 1900, and who now has forty-one stores in nine different states, including twenty-four in New York and Brooklyn, one in Providence opened in 1908, and two in Boston opened in 1910. He is not a manufacturer, but has hats made on his orders as to quality and style. The plaintiff advertised so extensively and in such manner and combination that the ‘name ‘Kaufman’ in the way the plaintiff used it in his several stores, considering the style of lettering (back-hand script), with the use of the figures $1.50 and of the words ‘The hats they talk about,’ became so associated and identified with the plaintiff's business as to acquire a secondary meaning, and that when so used it came to mean one of the plaintiff's stores.' In other words, he had acquired a trade-name in connection with his hat business. The defendants opened a retail hat store in Worcester in 1909, and in New Haven and Woonsocket in 1914. In the conduct of their business in each of these cities, the defendants simulated the plaintiff's trade-name by conduct begun in Worcester, not when the store was first opened, but about two years after the plaintiff opened his Boston stores. The master recognizes the difficult question to be whether the plaintiff had acquired any ‘market’ in the cities where the defendants maintained their stores, and in no one of which the plaintiff has or has had a store, and in that connection reports:

‘There was no direct evidence as to the plaintiff's market for his several stores. The business was entirely retail and the territory covered by his trade was presumably much less in extent than in the case of such a business as was carried on in Cohen v. Nagle, 190 Mass. 4 [76 N. E. 276,2 L. R. A. (N. S.) 964,5 Ann. Cas. 553].

There was no evidence that the plaintiff ever advertised in Worcester, Woonsocket or New Haven, that a hat was ever sold to a person living in Worcester from any of the plaintiff's stores, that any person living in Worcester ever heard or knew of the plaintiff's Boston stores, or as to the volume of business done at either of the plaintiff's Boston stores. The master's finding in view of these facts is this:

‘I find as a fact (if such finding is justified from the other facts found) that Worcester became a part of the plaintiff's natural market after the establishment of the Boston stores, and that after the defendant Philip changed his signs, they so closely resembled the plaintiff's signs as to be calculated to mislead the Worcester public into believing that the Worcester store was one of the plaintiff's stores, and that thereby the plaintiff was likely to be deprived of a part of his trade. I also find as facts (if such finding is justified from the other facts found) that Woonsocket, which is sixteen miles from Providence, was a part of the natural market of the Providence store, and that New Haven, which is seventy-three miles from New York, was a part of the natural market of the twenty-four New York and Brooklyn stores, and that the plaintiff's trade-name was established in Woonsocket and New Haven before the defendants opened their stores there, and that the defendant'ssigns so closely resembled the plaintiff's trade-name that the public were likely to be misled into believing that the defendants' stores were stores conducted by the plaintiff, and that the plaintiff was thus likely to be deprived of trade which fairly belonged to him.’

It was decided in C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 102 N. E. 87, Ann. Cas. 1914C, 926, after ample review of the authorities and a full discussion of principles, that where a plaintiff has established a trade-name which is not strictly a trade-mark, as indicating that goods bearing it are put upon the market by him, he is entitled to protection against unfair competition in its use by others only within the territorial boundaries where he has established his trade-name by actual commercial transactions, and not outside that territory. As was said by Mr. Justice Sheldon at pages 106, 107 of 215 Mass., at pages 89, 90 of 102 N. E., Ann. Cas. 1914C, 926, the vendor who has built up a trade-name by the use of particular words, ‘has a right to be...