Union Oyster House, Inc. v. Hi Ho Oyster House, Inc.
| Decision Date | 26 June 1944 |
| Citation | 316 Mass. 543,55 N.E.2d 942 |
| Parties | UNION OYSTER HOUSE, Inc., et al. v. HI HO OYSTER HOUSE, Inc. |
| Court | United States State Supreme Judicial Court of Massachusetts Supreme Court |
OPINION TEXT STARTS HERE
Suit by Union Oyster House, Inc., and others, against Hi Ho Oyster House, Inc., to enjoin the defendant from using its present name or any name containing the words ‘oyster house’. From a decree of dismissal, the plaintiffs appeal.
Decree affirmed.Appeal from Superior Court, Suffolk County; Warner, Judge.
Before FIELD, C. J., and LUMMUS, QUA, DOLAN, RONAN, WILKINS, and SPALDING, JJ.
A. V. Harper, of Boston, for plaintiffs.
W. Kopans, of Boston, for defendant.
The three plaintiffs are separate corporations named respectively Union Oyster House Inc., Union Oyster House Company, and Union Oyster House Corporation. They are affiliated through common ownership of stock and common management. Each operates a separate restaurant or oyster house of its own in Boston, that of the first plaintiff being on Union Street and that of the second plaintiff being at 143 Stuart Street. Each makes use of the words ‘Union Oyster House’ as part of its name, in carrying on its business, and in signs upon its restaurant. The second and third plaintiffs claim the right to use those words by derivation from the first plaintiff. The defendant operates a restaurant or oyster house at 460-464 Stuart Street under the name of ‘Hi Ho Oyster House.’ It began the use of this name after the three plaintiffs had used the name ‘Union Oyster House,’ and with respect to the first two plaintiffs, many years after. The common contention of the three plaintiffs is that by reason of prior use they have acquired as against the defendant the exclusive right to the words oyster house and that they can have the defendant enjoined from using its present name or any name containing the words oyster house.
The evidence is reported. The judge made full and complete findings of fact and dismissed the bill.
The main issue in this case can be decided by the application of principles recognized over forty years ago by this court, speaking through Mr. Justice Holmes, in American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 53 N.E. 141,43 L.R.A. 826, 73 Am.St.Rep. 263, and applied in subsequent cases. Viano v. Baccigalupo, 183 Mass. 160, 67 N.E. 641;Cohen v. Nagle, 190 Mass. 4, 76 N.E. 276, 2 L.R.A.,N.S., 964, 5 Ann.Cas. 553;George G. Fox Co. v. Glynn, 191 Mass. 344, 78 N.E. 89, 9 L.R.A.,N.S., 1096, 114 Am.St.Rep. 619;Giragosian v. Chutjian, 194 Mass. 504, 80 N.E. 647,120 Am.St.Rep. 570;C. A. Briggs Co. v. National Wafer Co., 215 Mass. 100, 102 N.E. 87, Ann.Cas.1914C, 926; The Tent, Inc., v. Burnham, 269 Mass. 211, 168 N.E. 735;Jenney Manuf. Co. v. Leader Filling Stations Corp., 291 Mass. 394, 196 N.E. 852;Jackman v. Calvert-Distillers Corp. of Massachusetts, 306 Mass. 423, 28 N.E.2d 430;Herring-Hall-Marvin Safe Co. v. Hall's Safe Co., 208 U.S. 554, 559, 28 S.Ct. 350, 52 L.Ed. 616. One way of stating these principles is that no one can altogether appropriate to himself any part of the English language, and that when, through accustomed use in association with a person or his product and by common understanding in the market, words forming part of the language have come to mean, if used alone, him or his product, a competitor may nevertheless use them, if he accompanies their use with something which will adequately show that the first person or his product is not meant. For an earlier statement of the doctrine by the House of Lords, see Reddaway v. Benham, [1896] A. C. 199, and see Federal Trade Commission v. Royal Milling Co., 288 U.S. 212, 217, 53 S.Ct. 335, 77 L.Ed. 706.
Under this rule the plaintiff cannot prevail. Not only are the words oyster and house in common use in English speech, but the words oyster house in combination have in recent years obtained dictionary recognition as meaning a restaurant in which the serving of oysters is featured. There was some evidence that the three restaurants of the three respective plaintiffs were each commonly called ‘the oyster house,’ but it is not easy to prove that in a place like Boston such words as oyster house had acquired a secondary meaning so generally understood among possible patrons that whenever the words were spoken substantial numbers would think they were a name for one or more of the plaintiffs' restaurants, especially since none of the plaintiffs had ever in a true sense done business under the name and sign of ‘Oyster House’ or ‘The Oyster House,’ but all of the plaintiffs had always done business as ‘Union Oyster House.’ The attempt to prove this is too much like asking the court to find that where a business has been carried on for a term of years...
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