Russell v. Caroline-Becker, Inc.

• Decision Date: 04 June 1957
• Docket Number: CAROLINE-BECKE,I
• Citation: 336 Mass. 161,142 N.E.2d 899
• Parties: , 114 U.S.P.Q. 84 Abraham RUSSELL v.nc.nc. v. TUFF OAK TOP LIFT COMPANY, Inc.
• Court: United States State Supreme Judicial Court of Massachusetts Supreme Court

Page 899

142 N.E.2d 899

336 Mass. 161, 114 U.S.P.Q. 84

Abraham RUSSELL v. CAROLINE-BECKER, Inc.

CAROLINE-BECKER, Inc. v. TUFF OAK TOP LIFT COMPANY, Inc.

Supreme Judicial Court of Massachusetts, Plymouth.

Argued April 1, 1957.

Decided June 4, 1957.

Harry J. Shapira, Brockton, for Russell.

James H. Fitzgerald, Brockton, for Caroline-Becker, Inc.

Before WILKINS, C. J., and RONAN, SPALDING, COUNIHAN and CUTTER, JJ.

COUNIHAN, Justice.

These are two suits in equity which were heard together. They arise out of a controversy over the ownership and use of a trade-name and trade-mark known as 'Tuff Oak' to describe a certain type of top lift or heel plate for men's shoes.

The plaintiff Russell in the first suit is the president and one of the principal stockholders in Tuff Oak Top Lift Company, Inc., hereinafter called Top Lift, a corporation manufacturing top lifts. Top Lift is the defendant in the second suit. Caroline-Becker, Inc., hereinafter called Becker, a corporation also engaged in the manufacture of top lifts and leather findings is the defendant in the first suit and the plaintiff in the second suit.

The plaintiff in each suit alleges the exclusive ownership and right to use the trade-name and trade-mark of 'Tuff Oak' in the manufacture and sale of top lifts. This trade-name and trade-mark consisted of two crossed acorns with the word 'Tuff' above them and the word 'Oak' below. Each plaintiff alleges an infringement in the use of this trade-name and trade-mark. Each sought a declaratory decree, injunctive relief and damages after an accounting.

The suits were referred to a master who after a hearing filed a single report. Upon motion this was recommitted for further specific findings. The master filed a supplemental report in which he made such findings. The judge in each case denied a second motion to recommit and ordered the entry of an interlocutory decree overruling the exceptions of Russell and Top Lift and confirming the master's reports.

In the first suit a final decree was entered adjudging '1. That the plaintiff does not possess and has never had any property rights in the trade mark and trade name 'Tuff Oak.' 2. That the trade mark and the trade name 'Tuff Oak' and bearing the emblem of two crossed acorns are the property of the defendant who had the exclusive right to the use of the same in connection with the promotion, manufacturing, selling and distribution of its top lift products bearing said trade mark and name. 3. That the plaintiff's bill of complaint be and is hereby dismissed.' It awarded costs to the plaintiff. In the second suit a final decree was entered declaring that 'the plaintiff corporation has the exclusive property in and to the trade name 'Tuff Oak' as applied to the manufacture and sale of top lifts.' It also restrained the defendant in that case from using the words 'Tuff Oak' in connection with any manufacture and sale of top lifts or as part of its corporate name. It awarded damages and costs to the plaintiff Becker. Russell and Top Lift each appealed from the interlocutory and final decrees.

Apparently through an inadvertence the final decree in the first suit dismissed the bill and awarded costs to the plaintiff. This was error because the first and second paragraphs of that decree declared the rights of the parties in the trade-name and trade-mark to that the bill should not have been dismissed. See Foley v. City of Springfield, 328 Mass. 59, 102 N.E.2d 89; Jacobson v. Jacobson, 334 Mass. ----, 138 N.E.2d 206. Because the defendant prevailed it was entitled to costs rather than the plaintiff. These matters will be corrected in the manner suggested in the rescript. Outside of this there was no error.

The master found the following facts. In 1946 Russell was employed as a saleman by W. S. Jelly Inc., also known as W.S. Jelly Company, and hereinafter called Jelly. This was a corporation also engaged in the manufacture and sale of top lifts and leather 'findings.' He was clerk, assistant treasurer and a member of the board of directors of Jelly. In 1947 while so employed he originated and designed the trade-name and trade-mark of 'Tuff Oak' hereinbefore described. Jelly paid all the expense of procuring the necessary moulds, dies and other equipment for producing the trade-mark. During the period of his employment by Jelly, Russell acted solely as a salesman and was never a jobber or an independment agent in his own right. He never made an assignment of his rights, if any, in the trade-name or trade-mark to Jelly which used them exclusively in connection with the manufacture and sale of top lifts while it was in business. Russell never registered the name or trade-mark with Federal or State authorities. Becker knew of the trade-name and mark for several years because it sold leather to Jelly. On October 17, 1952, Jelly made an assignment for the benefit of its creditors of which Becker was one. Just before this Russell unsuccessfully tried to effect a merger between Jelly and Becker. After the assignment he talked with one Gersten, the president and general manager of Becker, about getting a job with Becker. It was orally agreed that if Gersten could purchase the moulds and dies of the trade mark at an auction sale to be held by the assignee of Jelly, he would bring them to Brockton and set up a separate division of Becker for the manufacture of 'Tuff Oak' top lifts. In this event Gersten would give Russell a job as a salesman. Gersten through a straw on November 10, 1952, purchased the moulds and other equipment at the auction sale and paid for them with the money of Becker, which received a bill of sale for such goods from the assignee. Subsequent to the auction Jelly discontinued its business.

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