Burt v. Tucker, 178 Mass. 493

Burt v. Tucker

178 Mass. 493 | Mass. | 1901

Holmes, C. J.

This is a bill to restrain the infringement of an alleged trade-mark consisting of the word “ Knickerbocker,” as applied to boots and shoes. In the answer a prior use and acquisition of the trade-mark by the defendant is set up. The case is here on the evidence, by appeal from a decree of the Superior Court dismissing the bill, after a finding that the facts were as alleged in the answer.

In considering whether the defence is made out, of course we shall assume in favor of the finding that the defendant was an honest witness, as he had every appearance of being, so far as the printed answers go. It was admitted in the argument before us that the defendant was the first to use the word. It would have to be admitted also that when he resumed the use he did so in ignorance of what the plaintiffs had done in the meantime, so that in its dramatic aspect the case for the defendant is pretty strong. The plaintiffs, however, deny that the defendant ever did more than to use the word as an advertising device, and insist that if he did get a trade-mark it was abandoned as matter of fact and of law, and further that the defendant now is making *500a use of the word not within the scope of any right which he may have acquired.

We assume in favor of the plaintiffs that they might be entitled to prevail notwithstanding the fact that the defendant first used the word in its present connection, and that the right to a trade-mark does not depend upon originality, even as against the originator of the characteristic use. Menendez v. Holt, 128 U. S. 514, 521. Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376. We therefore assume that the points toward which the plaintiffs have directed their argument are the points necessary to be considered, and that what we have called the dramatic aspect of the facts is not conclusive of the equities upon which the decision of the case must turn.

In the first place then it is to be considered whether the defendant ever had a trade-mark. Upon this question the finding of the Superior Court seems to us fully warranted by the evidence. From 1894 to 1896 the defendant used the mark, very largely, as he says, in the jobbing trade in New York and in the general retail trade, especially through the middle states and the west. He used it not to designate a particular style of shoe, but to cover a wide range of shoes which he manufactured and sold. It is true that he also used other names, but most of them were used for the special goods of particular houses only, and one which was started for general use, “ Excelsior,” became appropriated to a single firm. Without intimating that a man could not have more than one trade-mark for his boots and shoes, we are of opinion that the judge was warranted in finding that by the course of the defendant’s business “ Knickerbocker ” became his general mark for his goods, or for a large variety of them.

There is more difficulty on the question of abandonment, but in view of the testimony of the defendant we are not prepared to say that the finding of the Superior Court- was wrong. If we should adopt the plaintiffs’ contention that the defendant’s intent is immaterial, then the question would be whether, from lapse of time, or the public abandonment of his business, or from other causes, the good will associated with the name had melted away, either gradually or at once. In July, 1896, the defendant’s factory in Massachusetts was burned and he went out of busi*501ness. From that time until July or August, 1900, he worked for others as a salesman in other States. During those four years of course he made no use of his trade-mark. Then he began business again on his own account in Philadelphia, selling goods ■ of a New Jersey company as a jobber, and then he resumed the use of the name on his packages, adopting it as a title for his concern, “ Knickerbocker Shoe Company.” Certainly it is hard to believe that a name which had not been more or longer associated with the defendant’s goods than this had been still should have value from any good will once attached to it. But the defendant testified, at least by implication, that it did, and the extent to which his testimony should carry credence is a matter on which we cannot undertake to revise the opinion of the judge who saw him. Royal Baking Powder Co. v. Raymond, 70 Fed. Rep. 376, 380. Mouson v. Boehm, 26 Ch. D. 398. Julian v. Hoosier Drill Co. 78 Ind. 408,412. Browne, Trade-marks, § 680. It may be argued that there is another aspect of the facts just stated, also irrespective of intent. It may be contended that discontinuing the use of the trade-mark, at least when coupled with abandonment of the business, amounts to a notification of the public that any one is free to use the mark, and that the defendant cannot go behind the import of his acts after the plaintiffs have taken up the use, although the old good will still attaches to the name, whatever the private intent of the defendant may have been. But it is plain that there is no such meaning°absolutely attached to a discontinuance of use, and it seems to us that even when the business also is discontinued, it is not a necessary con- . elusion that the use of the mark at once is free to all. Or, at least, to put it more cautiously, whatever rights may have been gained by the plaintiffs if they used the mark in good faith in the interval of discontinuance, the defendant still may be entitled as against them to resume his use. Mouson v. Boehm, 26 Ch. D. 398, 407, 408. Levy v. Waitt, 61 Fed. Rep. 1008. Julian v. Hoosier Drill Co. 78 Ind. 408, 412.

In the cases and text-books intent is assumed to be important. Browne, Trade-marks, § 681. Perhaps it might be so as giving a character to the ambiguous fact of discontinuing the use of the mark. Perhaps if the use were given up with the intent never to resume it, that would amount to an offer of it to the public *502which any one might accept at once, although giving up the use with intent to resume would not have that effect. If this should be so, and if a trade-mark may be lost under such circumstances before the vanishing of the good will associated with it, here again it is something of a stretch to believe that the defendant, during the four years that he was a salesman, continuously intended to resume business on his own account and again to use the name. But it is perfectly possible, he says that he did, and the Superior Court has found accordingly, and in this matter also we have no sufficient ground for going behind its view of the facts.

Finally, the plaintiffs argue that the defendant is attempting to make his old trade-mark cover a new meaning, as well as to change its form. It was used on shoes manufactured by him in Massachusetts, and seems in fact to have been confined mainly to shoes for young people, in connection with the word “ School ” (“ Knickerbocker School Shoes It now is used upon shoes made by another firm in New Jersey and sold by him in Philadelphia. It is pointed out also that he has taken his word into his business and dropped “ School ” altogether. Again we have to fall back on the findings. We cannot say that the judge was not warranted in finding that the word originally indicated the source from which the shoe was recommended, rather than that of its manufacture, — a judgment of excellence which more <?r less commends itself to buyers. If so, it might be found that the present case is like the former in its characteristic features, and if that were found and it were established that the defendant could use the trade-mark on the shoes which he intended -to sell, we see no ground on which the plaintiffs could prevent his incorporating the same word into his business name.

It will be seen that we nowhere undertake to say what our decision would have been on the printed evidence had it come before us in the first instance. We confine ourselves according to the settled practice to considering whether we can say that the judge who saw the witnesses necessarily was wrong upon matters which depended very largely on the degree to which they were believed.

Bill dismissed.