Union Oyster House v. Hi Ho Oyster House
| Citation | 316 Mass. 543,55 N.E.2d 942,62 U.S.P.Q. 218 |
| Court | United States State Supreme Judicial Court of Massachusetts |
| Decision Date | 26 June 1944 |
| Parties | UNION OYSTER HOUSE INC. & others v. HI HO OYSTER HOUSE, INC. |
December 8, 1943.
Present: FIELD, C.
J., LUMMUS, QUA DOLAN, RONAN, WILKINS, & SPALDING, JJ.
Name. Corporation Name.
Unlawful Interference. Words, "Oyster house.
"
No one can altogether appropriate to himself any part of the English language, and 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. Per QUA, J.
Evidence, in a suit in equity by corporations affiliated through common ownership of stock and common management, each making use of the words
"Union Oyster House" as part of its name in carrying on its business to enjoin a corporation named "Hi Ho Oyster House Inc.," from use of its name or any name containing the words "oyster house," did not warrant a finding that the words "oyster house" had acquired a secondary meaning referring to the plaintiffs' restaurants or any of them, and the suit properly was dismissed so far as based on the alleged existence of such secondary meaning.
Corporations using the words "Union Oyster House" in their corporate names were not entitled to relief under G. L. (Ter. Ed.) c. 155, Section 9, against a corporation called "Hi Ho Oyster House, Inc."
BILL IN EQUITY, filed in the Superior Court on June 2, 1943. The suit was heard in the Superior Court by Warner, J.
In this court the case was argued at the bar in December, 1943, before Field, C.J., Donahue, Lummus, Qua, & Cox, JJ., and after the retirement of Donahue & Cox, JJ., was submitted on briefs to Dolan, Ronan, Wilkins, & Spalding, JJ.
A. V. Harper, for the plaintiffs. W. Kopans, for the 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 , and applied in subsequent cases. Viano v. Baccigalupo, 183 Mass. 160 . Cohen v. Nagle, 190 Mass. 4 . George G. Fox Co. v. Glynn, 191 Mass. 344. Giragosian v. Chutjian, 194 Mass. 504 . C. A. Briggs Co. v. National Wafer Co. 215 Mass. 100 . Tent, Inc. v. Burnham, 269 Mass. 211 . Jenney Manuf. Co. v. Leader Filling Stations Corp. 291 Mass. 394 . Jackman v. Calvert-Distillers Corp. of Massachusetts, 306 Mass. 423 . Herring-Hall-Marvin Safe Co. v. Hall's Safe Co. 208 U.S. 554, 559. 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. Banham, [1896] A. C. 199, and see Federal Trade Commission v. Royal Milling Co. 288 U.S. 212, 217.
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...
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