RP Hazzard Co. v. Emerson's Shoes

• Decision Date: 02 February 1950
• Docket Number: Civ. A. No. 7230.
• Citation: 89 F. Supp. 211
• Parties: R. P. HAZZARD CO. v. EMERSON'S SHOES, Inc., et al.
• Court: U.S. District Court — District of Massachusetts

89 F. Supp. 211

R. P. HAZZARD CO. v. EMERSON'S SHOES, Inc., et al.

Civ. A. No. 7230.

United States District Court D. Massachusetts.

February 2, 1950.

COPYRIGHT MATERIAL OMITTED

Lee M. Friedman, Friedman, Atherton, King & Turner, Boston, Mass., for plaintiff.

Bailen, Snyder & Vernaglia, Herman Snyder, Boston, Mass., for Arlington Shoe Corporation and McElroy-Kerstein, Inc.

McCARTHY, District Judge.

This is an action for trade-mark infringement and unfair competition. The plaintiff has waived an accounting for damages and profits and seeks only to restrain the defendants from violating its rights in certain trade-marks containing the words "The Emerson Shoe" registered in the United States Patent Office on July 28, 1914 (No. 98649) and May 4, 1920 (Nos. 130711, 130712, and 130713) by the Emerson Shoe Company. All of these marks have been renewed. These trade-marks were assigned and transferred to another corporation, the Emerson Shoe Manufacturing Company, which in turn assigned and transferred them to the plaintiff on March 25, 1931, and have at all times since been owned by the plaintiff.¹

The plaintiff is a corporation organized under the laws of Maine, with its usual place of business in Augusta, Maine, but since 1933 has not been registered as doing business in Massachusetts.

The defendant Emerson Shoes, Inc., is a Massachusetts corporation having its principal place of business since July 15, 1945, in Boston, Massachusetts. This corporation conducts a retail shoe store at 169 Harvard Avenue, Allston, Massachusetts, and at 305-A Harvard St., Brookline, Massachusetts.

The defendant McElroy-Kerstein, Inc., is a Massachusetts corporation, organized in 1940, which corporation at the present time conducts a retail shoe store in Waltham, Massachusetts. Its stock is wholly owned by the defendant, Emerson's Shoes, Inc.

The defendant, The Arlington Shoe Corporation, is also a Massachusetts corporation, organized on May 27, 1946, and at the present time conducts a retail shoe store in Arlington, Massachusetts. Fifty per cent of the capital stock is owned by Emerson's Shoes, Inc., and the remainder by one Harold A. McElroy.

The amount in controversy exceeds $3,000.

The plaintiff manufactures and sells men's shoes throughout the United States and has built up a large business. "The Emerson Shoe" constitutes part of plaintiff's output.² Since approximately the year 1937, the plaintiff has ceased supplying retailers directly with shoes marked "The Emerson Shoe" but rather has sold its production of shoes stamped "The Emerson Shoe" in this area to two distributors and more recently it has confined its sales to one distributor. It does not manufacture shoes marked "The Emerson Shoe" except on a specific order from the distributor and makes up no stock to be kept for sale. It uses no distinctive dies or lasts for "The Emerson Shoe" and uses the same dies and lasts interchangeably for the manufacture of other shoes. The plaintiff will stamp on shoes manufactured on order any name requested by the distributor or wholesaler giving the order, and will use the same dies or lasts as are used in the case of "The Emerson Shoe".

The plaintiff's advertising of "The Emerson Shoe", at least on the retail level, has been negligible. With the exception of one advertisement in a Providence, Rhode Island, newspaper in June, 1949,³ no advertisements of any kind were produced subsequent to the year 1940. There was no radio advertising of any kind. The advertisements which the plaintiff offered at the trial of this case appeared in trade journals directed to the wholesale shoe trade and were published prior to 1940.

The plaintiff attempted to prove through one Frank A. Spector, a Boston wholesale shoe dealer who is the sole distributor of "The Emerson Shoe" in this area, that its "Emerson Shoe" is placed in retail stores in Lynn, Salem, Peabody, Danvers, Brookline, Waltham, Cambridge, and Arlington. I was unimpressed by Mr. Spector's testimony and the plaintiff was unable to produce any evidence, documentary or otherwise to substantiate its allegations. However, for the purposes of this case, I will assume in plaintiff's favor that its distributor did place some "Emerson Shoes" with local retailers for sale to the consuming public since 1938.

Prior to January 10, 1938, a retail shoe store was conducted by one Mark D. Emerson at 169 Harvard Avenue, in Allston, under the name of "Emerson's Shoe Store", together with certain other stores owned by Mr. Emerson. Edward Kerstein⁴ of Brookline, Massachusetts, was conducting a hosiery counter in the Allston store. On January 10, 1938, Kerstein purchased from Mark Emerson the assets, stock in trade and good will of the Allston store. Included in the purchase was the use of the trade name, together with the right on the part of Kerstein to assign, transfer and license unto others the privilege of using the name "Emerson". Kerstein continued to conduct the retail shoe store business in Allston under the same trade name as before. The business prospered and in 1940 a second store was opened at 470 Massachusetts Avenue, Arlington, Massachusetts. In 1944 a store was opened in Newtonville, Massachusetts, but this store was subsequently closed. In 1945 a retail shoe store was opened at 305-A Harvard Street, Brookline, Massachusetts, and at or about the same time Kerstein caused to be organized the defendant Emerson's Shoes, Inc. Finally, in 1946, a retail shoe store was opened at 246 Moody Street, Waltham, Massachusetts. All of these stores are conducted under a uniform policy. Kerstein licensed each of the stores to use the trade name of "Emerson's Shoes" and, accordingly, all are conducted under the trade name of "Emerson's Shoes" and business certificates to that effect were duly filed.

The defendant's stores carry only nationally advertised branded shoes. They do not carry "The Emerson Shoe". In the field om men's shoes they carry, among others, "Bostonian" and "Roblee"; in women's shoes, "Vitality" and "Enna Jettick"; in boys' shoes, "Boy Scout"; in children's shoes, the "Stride-Rite".⁵ These are all nationally advertised brands, well known to the average consumer of retail shoes. The defendants, in their advertising and in their display-windows, feature these nationally advertised brands.

On the outside of each of the defendants' stores is a large sign, "Emerson's Shoes". In the case of two of the signs, the names of some of the trade-marked brands carried in the store appear in smaller letters on the sign. On the windows of each of the stores appears the name of the store as on the sign. The name also appears on price tags, wrapping paper, and stationery used by the defendants. In the windows of the defendants' stores there is a display of men's, women's and children's shoes. On some of the footwear displayed there are price tags bearing the word "Emerson's". On other shoes there are price tags bearing the brand name of the shoe, e. g., "Stride-Rite", "Roblee". Whenever the price tag bears only the word "Emerson's", the shoe bearing such a tag is to be found in the vicinity of a card or other form of advertisement bearing the name of a nationally advertised brand. In some instances a pair of shoes is marked with both the "Emerson's" price tag and a tag bearing the name of the national branch such as "Bostonian Jr." Many of the shoes are turned so that the brand name is visible. On no shoe is the name "Emerson's" stamped or marked.

In the interior of these stores there are signs which in each instance indicate some of the brands carried, e. g., "Enna Jetticks, America's Smartest Walking Shoes", "Roblee, Shoes for Men", "Vitality Shoes for Women". The stock is kept fully visible. The shoes are kept in their original shoe box and placed in tiers, one upon another. The boxes are so placed that the names of the shoes contained therein are clearly visible to the customer. In every instance the names displayed are those of nationally advertised branded shoes. No carton or shoe box is stamped or marked "Emerson's".

The defendants' stores specialize in the sale of children's shoes and a large part of their gross business consists of the sale of shoes to children.

The defendants advertise in the various local newspapers circulated in the areas where the stores are located. The total dollar volume of advertising has been approximately $3,500 per year. The four outside signs placed on each of the stores involved an expenditure of approximately $5,000.

The defendants conduct a local retail business, that is to say, their customers are largely within a 25 mile limit and there are no charge-account customers located outside of Massachusetts. No sales have been made outside the Commonwealth of Massachusetts; on perhaps half a dozen occasions, after a sale of children's shoes, the defendants' store would, as a matter of convenience to the customer, ship the shoes purchased to a boys' or girls' camp located outside the Commonwealth.

Until the fall of 1947 no complaint was made by the plaintiff to the defendants with respect to the latters' use of the word "Emerson's" in their trade name, although the witness Spector testified that he had known for ten years defendants were in the shoe business and "might have told" the plaintiff's sales manager. In October, 1947, the plaintiff called upon them to cease the use of that word and, upon refusal, brought this action.

The first issue involved is whether the plaintiff has shown a right to relief under the trade-mark statutes of the United States, Trade-Mark Act of 1946, Lanham Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq., which repealed the Trade-Mark Act of 1905, 33 Stat. 724, 15 U.S.C.A. § 81 et seq.

Section 32 of the Act reads, in part: "(1) Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering...