Aetna Casualty & Surety Co. v. Aetna Auto Finance
| Decision Date | 16 December 1941 |
| Docket Number | No. 9776.,9776. |
| Citation | 123 F.2d 582 |
| Parties | ÆTNA CASUALTY & SURETY CO. v. ÆTNA AUTO FINANCE, Inc. |
| Court | U.S. Court of Appeals — Fifth Circuit |
Frank E. Spain and H. H. Grooms, both of Birmingham, Ala., for appellant.
Harvey Deramus, of Birmingham, Ala., and Butler Disman, of Kansas City, Mo., for appellee.
Before HUTCHESON and McCORD, Circuit Judges, and MIZE, District Judge.
The suit was brought by appellant to enjoin appellee form using as its corporate name "Aetna Auto Finance, Inc." The gist of the complaint as appellant's brief states it, was that defendant, a newly formed company, loaning money to automobile owners, and furnishing insurance on their cars, in connection with the loans, has chosen the name by which plaintiff has, for a long time been known, and has imitated its advertising, and is thereby leading these owners to think they are dealing with plaintiff, in violation of the principle that a name and reputation, like a face, is the symbol of its possessor and creator and another can use it only as a mask. The defense in general was that the name Aetna has not been and cannot be exclusively appropriated by plaintiff, that it has had wide and general use and is not at all peculiarly identified with so as to necessarily suggest plaintiff. It was further contended that, no case of unfair competition was or could be made out, indeed no case of competition of any kind, nor was there any showing that the name was chosen with unlawful design or has been or will be unfairly or fraudulently used, or that its choice or use of the name has injured or threatens injury to plaintiff.
Plaintiff is and has been for over thirty years, one of several affiliated companies of Hartford, Connecticut, integrated through stock ownership and management into one nation-wide insurance organization and equipped to insure all or any of the insurable hazards of the country.
Automobile risks of all sorts are the concern of and are insured in plaintiff and its affiliated companies. At an annual cost of many hundred thousands of dollars, plaintiff has built around the slogan "Aetna-Ize" and other similar slogans, including "Aetna Service Spans the Continent", "It Will Pay You to be an Aetna-Izer", and "The Aetna Auto Plan." Plaintiff has repeatedly employed the terms, "Aetna Auto Combination Insurance", "Aetna-Auto Liability Insurance", and "Aetna-Auto Property Damage Insurance", "Aetna Auto Collision Insurance", "Aetna-Auto Fire & Theft Insurance", "Aetna Auto Fire Policy", "Aetna-Auto Fire Premium" and "Aetna Auto Companies."
Exhibits in evidence reveal the use of many advertising media no less than 24, where the words "Aetna" and "Auto" are conjoined. Plaintiff, thus, is not to be confused with the other aggregation of insurance companies known as the "Aetna Fire Group", with which plaintiff and its associates were once affiliated but of which they are now competitors. From 1924 to 1935, plaintiff and its affiliated companies, spent more than $2,000,000 in advertising and obtaining good will and of this nearly 1/3 was devoted to the production of automobile business. The good will accruing to plaintiff and its affiliated companies by this advertising is literally immeasurable because in addition to spending money to advertise their business, they, through their 10,000 local agents, have carried on a nation-wide safe driving test service. Plaintiff's volume of business in Alabama in 1938 was $224,595.86, and there was testimony that "a company like that of defendant, whose name would tie up closely, might lead the public to believe they were in some way affiliated with us and we are necessarily affected by any unfavorable publicity the other concern got." There was also some testimony of actual confusion of defendant with plaintiff.
Defendant is an automobile finance company loaning money on automobiles and arranging for the sale of insurance thereon, in connection with such cars, incorporated in Jefferson County, Alabama, in 1937 with $2,000 authorized capital. It is a subsidiary of Lewis Investment Company of Missouri, whose other subsidiaries are "Aetna Auto" Finance Company of Kansas, "Aetna Auto" Finance of Georgia and Phoenix Finance Corporation of Arkansas. Defendant does employ the name Aetna, prominently displayed, and it is employing a circular device of approximately the same size and appearance as that employed by complainant upon which is imposed among other things, two automobiles and over which is written in the same general type as that employed by complainant, the word "Aetna". In its advertising it states that it is a "National Institution", refers to its "National program" and states that it has "A New Plan for Auto Loans." It states that it has "A Complete Auto Loan Service." It asks its customers to "deal with a reputable company with a national reputation." It states that "Aetna Brings to Birmingham a new plan for Automobile Loans." It employs the slogan "The Aetna Way." But it denies that the disk is similar to plaintiffs' and it claims to have, since the controversy with Aetna arose, discontinued some of its advertising, particularly the statement that it is a "national institution." It insists that it has not invaded and does not intend to invade the casualty insurance business but intends to confine its operations to automobile financing. In support of its contention that plaintiff's use of the name Aetna is not and cannot be exclusive, it offered: large numbers of trade mark registrations, identifying articles, some used by and some not used by plaintiff; numerous corporate charters in various states of numerous corporations not identified with plaintiff; and telephone directories of various cities containing the name "Aetna", as a part of the title, of various enterprises and businesses.
On full evidence the cause was submitted to a special master who found that, though defendant had in the beginning used advertising that it ought not to have used, it had desisted, and that its conciliatory attitude since had deprived that fact of importance in the case. He found too, that the evidence...
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