306 Mass. 423 | Mass. | 1940
This controversy concerns the right to use in Massachusetts the word Calvert as a trade mark or trade name for whiskey. For the meaning of those expressions, see George G. Fox Co. v. Glynn, 191 Mass. 344, 352; American Steel Foundries v. Robertson, 269 U. S. 372, 380; Neva-Wet Corp. of America, Inc. v. Never Wet Processing Corp. 277 N. Y. 163, 169; Nims, Law of Unfair Competition & Trade-Marks (3d ed. 1929) §§ 198, 199; Chafee, 53 Harv. L. Rev. 1289, 1297, 1298; Handler & Pickett, 30 Columbia L. Rev. 168, 759.
The plaintiff sought to restrain the use of that word by the defendant Calvert-Distillers Corporation of Massachusetts. His bill was dismissed. The interveners Maryland Distillery, Inc., and The Calvert Distilling Company on their counterclaims under Rule 32 of the Superior Court (1932) obtained a final decree, establishing their right to the use of the word Calvert as a trade mark for whiskey, and restraining any use of it by the plaintiff. The plaintiff appealed. The case comes here upon findings and rulings that appear to be neither complete nor made under the statute (G. L. [Ter. Ed.] c. 214, § 23; Birnbaum v. Pamoukis, 301 Mass. 559), and upon a report of all the evidence. G. L. (Ter. Ed.) c. 214, § 24. Rule 76 of the Superior Court (1932).
The word Calvert is primarily a family name. To give the right to use it in a particular business and to exclude another from a similar competing use, the word must have acquired such a secondary meaning indicative of the business or its product that the use of the word by another
The plaintiff concedes that for many years and up to the advent of national prohibition in 1919 (Act of November 21, 1918, c. 212, 40 U. S. Sts. at Large, 1045; Amendment 18 to the Constitution of the United States; Hamilton v. Kentucky Distilleries & Warehouse Co. 251 U. S. 146) the word Calvert was a trade mark for whiskey of Maryland Distilling Company, was registered as such by that company under Federal law, was used by that company as such in interstate commerce, and had acquired a secondary meaning indicative of whiskey produced by that company.
In 1921 that company was liquidated and dissolved. But its trade marks remained as undistributed assets in the hands of its surviving directors who under Maryland law were trustees for the stockholders. The use of the trade mark in question was suspended during national prohibition, by force of law, but without any intent to abandon the trade mark. We need not consider whether Maryland Distilling Company, had it remained in existence, could have revived it.
A trade mark or trade name, indicating that goods are manufactured or sold by a certain business organization (Nelson v. J. H. Winchell & Co. 203 Mass. 75, 82) can have no existence in gross, unconnected with some business in which it is used. Chadwick v. Covell, 151 Mass. 190. Weener v. Brayton, 152 Mass. 101, 102, 103. Covell v. Chadwick, 153 Mass. 263. Jenney Manuf. Co. v. Leader Filling Stations Corp. 291 Mass. 394, 398. United Drug Co. v. Theodore Rectanus Co. 248 U. S. 90, 97. American Steel Foundries v. Robertson, 269 U. S. 372, 380. Fairness to the consuming public requires the rule that a trade mark or trade name cannot be assigned to one who has no connection with that business as successor or otherwise. A. Bourjois & Co. Inc. v. Katzel, 260 U. S. 689, 692. Ph. Schneider Brewing Co. v. Century Distilling Co. 107 Fed. (2d) 699, 703. The business of the defendants, in our opinion, has too tenuous a connection with the preprohibition business of Maryland Distilling Company to constitute the defendants the successors of that company or its business. See La Fayette Brewery, Inc. v. Rock Island Brewing Co. 87 Fed. (2d) 489. Kelly Liquor Co. v. National Brokerage Co. Inc. 102 Fed. (2d) 857. The defendants have a right to the word Calvert as against anyone not having a better right, but their right dates only from August, 1934.
The right claimed by the plaintiff arises out of his registration under Massachusetts law in November, 1933, in the name of a corporation controlled by him, of the word
The final decree contains express adjudications of right (Olsen v. Olsen, 294 Mass. 507, 508; Gulesian v. Newton Trust Co. 302 Mass. 369) which are inconsistent with this opinion. That decree must therefore be reversed. But a final decree is to be entered dismissing the bill and giving the defendants relief on their counterclaims, with costs to them.
Ordered accordingly.
Burt v. Tucker, 178 Mass. 493. Cohen v. Nagle, 190 Mass. 4, 11. Hannis Distilling Co. v. George W. Torrey Co. 32 App. D. C. 530. Universal Candy Co. v. A. G. Morse Co. 298 Fed. 847. Gold Seal Associates, Inc. v. Gold Seal Associates, Inc. 56 Fed. (2d) 452. Christy v. Murphy, 12 How. Pr. (N. Y.) 77. Rockowitz C. & B. Corp. v. Madame X Co. Inc. 248 N. Y. 272. Neva-Wet Corp. of America, Inc. v. Never Wet Processing Corp. 277 N. Y. 163. BeechNut Packing Co. v. P. Lorillard Co. 273 U. S. 629. Corkran, Hill & Co. Inc. v. A. H. Kuhlemann Co. 136 Md. 525.