Skil Corp. v. Barnet

Citations: 150 N.E.2d 551; 337 Mass. 485; 117 U.S.P.Q. (BNA) 461; 1958 Mass. LEXIS 691

Court: Massachusetts Supreme Judicial Court; May 7, 1958; Massachusetts; State Supreme Court

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In Skil Corporation v. James R. Barnet, the Supreme Judicial Court of Massachusetts addressed a dispute involving the use of the trademark "Skill Built" and the name "Skill Built Tool Company" by the defendant. The plaintiff, Skil Corporation, has been in operation since 1924, selling various electric tools under the "Skil" trademark, which is registered. The defendant began using the "Skill Built" mark for unrelated products, including a thermometer and a grill, after registering his business name in 1953. The trial court found that the plaintiff and defendant were not competitors, that the products were distinct, and that any secondary meaning associated with "Skil" pertained solely to the plaintiff's power tools. The court determined there was insufficient evidence of business injury or trademark dilution, and confusion was minimal, with only a few instances reported post-filing. The judge's findings, filed in November 1956, were deemed critical to the case outcome, but the plaintiff argued that a subsequent resignation of the judge deprived them of a formal report of findings. The appellate court decided the case on the merits, considering both the judge's findings and the evidence presented, concluding that the plaintiff did not demonstrate a likelihood of public confusion or deception by the defendant's use of "Skill Built."

In First National Stores Inc. v. First National Liquor Co., Mendelsohn v. Leather Manuf. Corp., and Mellon National Bank v. Commissioner of Corporations, Taxation, the courts indicated that the plaintiff was not prejudiced by findings that were not formally a report under G.L.c. 110, § 23. The absence of direct competition over similar products may have limited the plaintiff’s entitlement to injunctive relief prior to the enactment of St. 1947, c. 307, which introduced § 7A. This section allows for injunctive relief in cases of trademark infringement or unfair competition based on the likelihood of injury to business reputation or dilution of a trade name, regardless of competition or confusion between the parties. The legislative intent of § 7A remains unclear, and Massachusetts courts have had limited opportunities to interpret it. However, federal courts have analyzed § 7A more extensively, establishing that it provides new grounds for injunctions and rights, aligning Massachusetts law with federal unfair competition standards. Notably, the statute permits protection against the misuse of a trade name even in the absence of direct competition, as demonstrated in Food Fair Stores, Inc. v. Food Fair, Inc. and other cases, which affirmed the right to protect trade names that have acquired distinct secondary meaning.

The judge refused to issue an injunction under 7A against the defendant's use of "Esquire" in its corporate name, based on the defendant's promise to stop using the name on merchandise. The Court of Appeals vacated this decision, ordering an injunction against the defendant's use of "Esquire" on products, citing a violation of assurances. It interpreted 7A as allowing, but not mandating, injunctions related to dilution, emphasizing the flexible nature of equitable relief. For injunctive relief under 7A, the plaintiff must demonstrate (a) that "Skil" has acquired secondary meaning in Massachusetts relating to its products, despite not being a unique trade name, and (b) a reasonable probability that the defendant’s use could harm the plaintiff's reputation. The term "Skil," while a misspelling of a common word, has potential as a valid trademark if it has gained secondary meaning, as it is more than merely descriptive. The judge had not fully addressed the issue of secondary meaning, prompting the need for additional facts. The plaintiff has produced a wide range of tools for over fourteen years, and each tool features a metal nameplate with "Skil" and the company’s name, along with "Skilsaw" on portable saws. The products are categorized into builder’s tools and industrial tools, distributed through wholesalers and industrial supply houses.

From 1946 to 1956, the plaintiff invested approximately $5,515,000 in advertising, which included various media such as magazines, catalogs, and displays. In 1956, twenty-one Massachusetts dealers sought advertising mats for promoting Skil products, indicating the brand's value in retail sales. The plaintiff operated a branch office in Massachusetts and had a network of distributors and wholesalers, achieving gross sales of about $17,000,000 in 1955, with $250,000 from Massachusetts alone. Competitors recognize the plaintiff as a leading tool manufacturer, associating its name with high-quality products in the hardware sector.

The plaintiff has successfully protected its trademarks against misuse, although the evidence of consumer perception could be stronger. The court concluded that "Skil" has acquired secondary meaning relating to power tools, aligning with the trial judge's findings and the defendant's acknowledgment of limited secondary meaning for the plaintiff's marks. The defendant, active in the hardware market since 1952, marketed various products under the "Skill Built" name, spending over $36,000 on radio advertisements in early 1956. Instances of customer confusion and inquiries about the defendant's advertising were noted.

Given the established secondary meaning of the plaintiff's marks in the tools sector, the court is inclined to provide limited relief to prevent dilution of the plaintiff's trademarks. Factors such as potential confusion due to similar distribution channels and advertising practices, despite minimal actual confusion so far, support the decision for protective measures.

The plaintiff registered its trademarks prior to the defendant's use of "Skill Built" in 1953. While the mark "Skil" is less distinctive and harder to protect, it possesses a secondary meaning that can be safeguarded to a limited degree. The potential for damage to the plaintiff's marks does not necessitate the defendant's abandonment of the name "Skill Built Tool Company." Instead, the defendant is required to use an additional distinctive prefix—such as their own name or business location—when marketing products under "Skill Built." This remedy does not impose an unreasonable burden on the defendant, who has unintentionally benefitted from the plaintiff's reputation, risking damage to the plaintiff's brand. The case does not warrant damages or an accounting of profits. The previous decree is reversed, and a new decree will be enacted accordingly, with neither party bearing the costs of this appeal.