Regis v. J.A. Jaynes & Co.

• Decision Date: 12 April 1904
• Citation: 70 N.E. 480,185 Mass. 458
• Parties: REGIS et al. v. J. A. JAYNES & CO. et al.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

185 Mass. 458

70 N.E. 480

REGIS et al. v. J. A. JAYNES & CO. et al.

Supreme Judicial Court of Massachusetts, Suffolk.

April 12, 1904

COUNSEL

Edward S. Beach and Arthur P. Hardy, for complainants.

Robert F. Herrick, for defendants.

OPINION

BRALEY J.

When the plaintiff, Ellen M. Regis, first compounded her preparation in the form of pills, she marked on the boxes in which they were sold the word 'Rex,' from which her family surname was derived. She not only adopted and attached it as the distinctive feature indicative of the origin identity, and proprietorship of her cure for dyspepsia, but filed it as a trade-mark, under St. 1895, p. 519, c. 462, § 1. No evidence appears that at any time she has abandoned or ceased to use it, but the contrary is true. She has formed a partnership with her son, and from small sales in its original form and within a circumscribed territory, other and more attractive combinations have been made, and the business has slowly increased in value and extended into larger fields. This is enough in the present case to establish an exclusive right of property in the plaintiffs to the device or name used in their business. Burt v. Tucker, 178 Mass. 493, 59 N.E. 1111, 52 L. R. A. 112, 86 Am. St. Rep 499; Lawrence Manufacturing Company v. Tennessee Manufacturing Company, 138 U.S. 537, 11 S.Ct. 396, 34 L.Ed. 997. It may be conceded that words which are merely descriptive of the style and quality of an article cannot be appropriated and used for this purpose by the manufacturer in the description of his wares to the exclusion of a similar use by others; but any words or devices that have for their principal object to make plain the identity of the owner with the specific goods prepared and sold by him are not so classed, but may constitute a valid trademark. Lawrence Manufacturing Co. v. Lowell Hosiery Co., 129 Mass. 325, 327, 37 Am. Rep. 362; Frank v. Sleeper, 150 Mass. 583, 23 N.E. 213; Samuels v. Spitzer, 177 Mass. 226, 58 N.E. 693; Lawrence Mfg. Co. v. Tennessee Mfg. Co., supra; Columbian Mill Co. v. Alcorn, 150 U.S. 460, 14 S.Ct. 151, 37 L.Ed. 1144. Although the subsequent origin of the mark or name used by the defendants on their cure for dyspepsia is not stated, it is found that it was not originally intended as an imitation of that of the plaintiffs, but may be considered as a fanciful term invented by the United Drug Company, and which was used to denote a particular proprietary medical compound put up and sold by it or its licensees. But if no intention to wrongfully injure the plaintiffs is manifested in the origin of 'Rexall,' this does not constitute a defense where priority of ownership and continuous use is shown of the device or mark of which it is found to be an imitation, and buyers are likely from the resemblance to be misled and purchase the defendants' cure when they desire to buy and believe they are getting the remedy made by the plaintiffs. Gilman v. Hunnewell, 122 Mass. 139; Burt v. Tucker, supra; North Cheshire & Manchester Brewery Co. v. Manchester Brewery Co. [1899] A. C. 83. A mere comparison of the different words, devices, or designs which may be used for the purpose of a trade-mark is not enough to make out the main fact to be proved, but the plaintiffs must go further, and establish the essential proposition on which a case like this depends, that, taking all the circumstances, the form of manufacture, names, labels, shape of boxes, or receptacles in which they are sold, there exists a reasonable probability that purchasers using ordinary care will be deceived by the similarity of names, and led into mistaking one medicine for the other. McLean v. Fleming, 96 U.S. 245, 24 L.Ed. 828. Among the various findings and rulings made by the master the only one now material is that in which he decides this principal issue of fact, and to which the single exception argued by the defendants was taken.

An examination of the report shows that the remedies are compounded in the form of two kinds of tablets, to be taken in connection with each other, and in this respect there was a likeness between them, though the boxes used for each in form, and the labels attached, are so dissimilar that persons of ordinary intelligence, if no further resemblance was found, could easily distinguish them; yet upon the whole, in connection with the similarity of names, the similitude becomes such that purchasers not familiar with the exact appearance of each, and the boxes and labels with which they are sold, and exercising the care and observation of the average buyer, are likely to mistake the defendants' preparation for that of the plaintiffs. This finding is well supported by the evidence and subsidiary findings stated in the report, and under our rule, where all the evidence is not reported, therefore becomes final, and is not to be disturbed. East Tennessee Land Co. v. Leeson, 183 Mass. 37, 38, 66 N.E. 427. But he further determined that within a common territorial area the United Drug Company with the knowledge and consent of the defendants, who are represented in the advertisements as sole agents for its sale, has advertised, while they to a very limited extent have sold, this medicine as a specific for the same disease; but it did not affirmatively appear that such competition in trade at the time the bill was filed had led to any actual injury to the business of the plaintiffs, and for this reason he declined to assess damages. Presumably their prompt action, which did not allow sufficient time to pass before suit to ascertain...