Bagby v. Blackwell, 20964.

• Decision Date: 05 April 1948
• Docket Number: No. 20964.,20964.
• Parties: WILLIAM HUGH BAGBY, ET AL., APPELLANTS, v. HOMER L. BLACKWELL, ETC., RESPONDENT.
• Court: Missouri Court of Appeals

211 S.W.2d 69

WILLIAM HUGH BAGBY, ET AL., APPELLANTS, v. HOMER L. BLACKWELL, ETC., RESPONDENT.

No. 20964.

Kansas City Court of Appeals. Missouri.

Opinion delivered April 5, 1948.

Appeal from Circuit Court of Jackson County. — Hon. James W. Broaddus, Judge.

REVERSED WITH INSTRUCTIONS.

Butler Disman and Herbert Jacob for appellants.

(1) An unincorporated association is entitled to the same protection in the use of its name as an individual, partnership, or corporation. State ex rel. Great American Home Savings Institution v. Lee, 288 Mo. 679, 233 S.W. 20; Supreme Lodge of the World, Loyal Order of Moose et al., v. Paramount Progressive Order of Moose et al., 224 Mo. App. 276, 26 S.W. 2d 826, 828; 7 C.J.S. 37; 5 C.J. 1343; The Restatement of the Law of Torts, p. 716. (2) An established name is a right of value that will be protected against appropriation and use by another. State ex rel. Hutchinson v. McGrath, 92 Mo. 355, 5 S.W. 29; Mary Muffet, Inc., v. Smelansky, 158 S.W. 2d 168, 170; American Steel Foundries v. Robertson, 269 U.S. 372, 70 L. Ed. 317; Standard Oil Company of New Mexico v. Standard Oil Company of California, 56 F. 2d 973; Newby v. Oregon C.R. Company, 1 Deady U.S. 609, 18 F. Cases No. 10144; Filley v. Fassett, 44 Mo. 168, 100 Am. Dec. 275. (3) An established name is entitled to protection against subsequent appropriation regardless of dissimilarity of services or products. Standard Oil Company of New Mexico v. Standard Oil Company of California, 56 F. 2d 973; Del Monte Special Food Co. v. California Packing Corporation, 34 F. 2d 774; Yale Electric Corporation v. Robertson, 26 F. 2d 972, 973; Duro Co. v. Duro Co., 27 F. 2d 339; Western Auto Supply Co. v. Western Auto Supply Co., 13 F. Supp. 525; Wall v. Rolls-Royce of America, Inc., 4 F. 2d 33; The Great Alantic & Pacific Tea Company v. A. & P. Cleaners and Dyers, Inc., 10 F. Supp. 450; Tiffany & Co. v. Tiffany Productions, Inc., 264 N.Y.S. 459, 188 N.E. 30; Horlick's Malted Milk Corp. v. Horluck's, Inc., 59 F. 2d 13; Coca-Cola Company v. Brown & Allen, 274 F. 481; British-American Cigar Stores, 211 F. 933, Ann. Cas. 1915B, 363; Potter v. Ward Baking Company, 288 F. 597 (Aff'd 298 F. 398); Alfred Dunhill of London v. Dunhill Shirt Shop, 3 F. Supp. 487; The Great Atlantic & Pacific Tea Company v. A. & P. Radio Stores, Inc., 20 F. Supp. 703; Falmer Graftex Corp. v. Graphic Photo Service, 35 F. Supp. 963; Long's Hat Stores Corp. v. Long's Clothes, Incorporated, (N.Y.) 224 App. Div. 497; Riggs Optical Company v. Riggs, 132 Nebr. 26, 270 N.W. 667; Soft-Lite Lens Co. v. Ritholz, 301 Ill. App. 100, 21 N.E. 2d 835; Eastman Photo Materials Company v. Griffiths Cycle Corp., 15 Robb. Pat Case No. 105 (Eng.). (4) Although fraudulent intent is not a necessary element to relief the facts in this case have very definite and suspicious implications. Mary Muffet, Inc., v. Smelansky, (Mo. App.) 158 S.W. 2d 168; Queen Manufacturing Co. v. Isaac Ginsberg & Bros., Inc., 25 F. 2d 284; Feit v. American Serum Company, 16 F. 2d 88, 90; Wolf Bros. & Co. v. Hamilton-Brown Shoe Co., 206 F. 611; Standard Oil Company v. Michie, 34 F. 2d 802; Filley v. Fassett, 44 Mo. 168, 100 Am. Dec. 275. (5) Non-profit organizations and associations are entitled to the protection of their established names. Purcell v. Summers, 145 F. 2d 979; State ex rel. Great American Home Savings Institution v. Lee, 288 Mo. 679, 233 S.W. 20; Supreme Lodge of the World, Loyal Order of Moose et al., v. Paramount Progressive Order of Moose et al., 224 Mo. App. 276, 26 S.W. 2d 826; Cape May Yacht Club v. Cape May Yacht & Country Club, 81 N.J. Eq. 343, 86 Atl. 972; Kline v. Knights of the Golden Eagle, 113 N.J. Eq. 513; Trustees of Columbia University v. Axenfield, 241 N.Y.S. 4; Columbia Grammar School v. Clawson, 200 N.Y.S. 768; Polish National Catholic Church of Holy Mother v. Diocese of Buffalo, 171 N.Y.S. 401; Salvation Army in U.S. v. American Salvation Army, 120 N.Y.S. 471. (6) Although confusion need not be shown actual confusion in fact has been admitted by respondent. Mary Muffet, Inc., v. Smelansky, 158 S.W. 2d 168; Supreme Lodge of the World, Loyal Order of Moose et al., v. Paramount Progressive Order of Moose et al., 224 Mo. App. 276, 26 S.W. 2d 826; Lo Buono v. V. Viviano & Bros. Macaroni Mfg. Co., 197 Mo. App. 618, 198 S.W. 501; M.M. Newcomber Co. v. Newcome's New Store, 142 Tenn. 108, 217 S.W. 822; Purcell v. Summers, 145 F. 2d 979; Rice & Hutchins, Inc., v. Vera Shoe Co., Inc., 290 F. 124, 126; Bissell Chilled Plow Works v. T.M. Bissell Plow Co., 121 F. 357; H.D. Lee Mercantile Co. v. J.C. Penney Co., 30 F. Supp. 179, 182; G.B. McVay & Sons Feed Co. v. McVay Seed & Floral Co., 201 Ala. 644, 79 So. 116; Iowa Auto Market v. Auto Market and Exchange, 197 Ia. 420, 197 N.W. 321; Buick Motor Co. v. Buick Used Car Exchange, 132 Misc. 158, 229 N.Y. Supp. 219; Umpqua Broccoli Exchange v. Um-Qua Valley Broccoli Growers, 117 Ore. 678, 245 Pac. 324. (7) Registration of trade name by an imitator does not enlarge his claim thereto or detract from the right of the first user. Filley v. Fassett, 44 Mo. 168, 100 Am. Dec. 275; Ansehl v. Williams, 267 F. 9; Sec. 14570, Mo. R. Stat. '39; Walgreen Drug Stores v. Obear-Nester Glass Co., 113 F. 2d 956; Indian Territory Oil & Gas Co. v. Indian Territory Illuminating Oil Company, 95 F. 2d 711; Harvey v. American Coal Company, 50 F. 2d 832; The Great Atlantic and Pacific Tea Company v. A. & P. Radio Stores, 20 F. Supp. 703. (8) There has been no laches in the enforcement of appellants' rights. Standard Oil Company v. Michie, 34 F.F. 2d 802; San Francisco for the Blind v. Industrial Aid, 153 F. 2d 532; Mendeney v. Holt, 128 U.S. 514, 9 S. Ct. 143, 32 L. Ed. 526; Layton Pure Food Co. v. Church & Dwight Co., 182 F 35, 32 L.R.A. (N.S.) 274.

Spencer, Britt & Benson, Byron Spencer, James T. Britt and Gerald M. Lively for respondent.

(1) The defendant is entitled to appropriate the name "Associated Furniture Distributors" free of restraint from plaintiffs because plaintiffs, as an association, are not competitive with defendant and plaintiffs' association is free from possible danger to its reputation and credit which might result from the public's confusion of the identity of the associations. 63 Corpus Juris 389, Trade-marks, Trade-names, and Unfair Competition, Sec. 100. (2) Plaintiff association is admittedly not a corporation, and if entitled to protection of its name that protection is limited to the cases of unincorporated associations. Section 8, The General and Business Corporation Act of Missouri, 1943; State ex rel. Great American Home Savings Institution et al. v. Lee, 288 Mo. 679, 233 S.W. 20; Supreme Lodge of the World, Loyal Order of Moose et al. v. Paramount Progressive Order of Moose et al., 224 Mo. App. 276, 26 S.W. 2d 826. (3) If the members of an unincorporated association are to be given protection of the name of that association, the name must be established by prior appropriation and use thereof. Failing in this, first public user, and not mere adoption, establishes a property right. Standard Oil Company of New Mexico v. Standard Oil Company of California, 56 F. 2d 973; Esso, Inc., v. Standard Oil Co., 98 F. 2d 1; Westminister Laundry Co. v. Hesse Envelope Co., 174 Mo. App. 238, 156 S.W. 767; 63 Corpus Juris 342, Trade-marks, Trade-names, and Unfair Competition, Sec. 40. (4) The name "Associated Furniture Distributors" is a non-exclusive trade name and is publici juris, unless and until that name has acquired a secondary meaning, and defendant having established that meaning is entitled to protection of the name to his exclusive use. Silver Laundry & Towel Co. v. Silver, 195 S.W. 529; Furniture Hospital v. Dorfman, 179 Mo. App. 302, 166 S.W. 861. (5) Plaintiff association is guilty of a misdemeanor in failing to register under the Fictitious Names Statute of Missouri (Art. 3, Ch. 140, Mo. R.S.A.), and thus falls squarely within the equitable rule requiring a complainant to have "clean hands," and for this reason plaintiffs should be denied injunctive relief. Article 3, Chapter 140, Mo. R.S.A.; 43 Corpus Juris Secundum 457, Injunctions, Sec. 26. (6) Plaintiff association is guilty of laches in failing to notify defendant to discontinue the use of the name "Associated Furniture Distributors," and in failing to do so has waived any right to injunctive relief. Spiller et al. v. St. Louis & S.F.R. Co. et al., 14 F. 2d 284; Ruckels et al. v. Pryor et al., 351 Mo. 819, 174 S.W. 2d 185. (7) There is no fraudulent intent on the part of defendant in appropriating or continuing to use the name "Associated Furniture Distributors."

DEW, J.

Appellants, as plaintiffs below, brought suit against respondent, defendant below, to enjoin defendant from using, and carrying on his furniture business under the name previously adopted and in use by plaintiffs, "Associated Furniture Distributors", or any name similar to or in imitation thereof, and defendant filed answer, claiming superior and exclusive right to the use of such firm name, and a cross-petition to enjoin the plaintiffs from the use of same, or similar name in imitation thereof. Upon trial, the court dismissed both the plaintiffs' petition and defendant's cross-petition. The plaintiffs have appealed.

The appellants, hereinafter referred to as the plaintiffs, are some 19 in number, consisting of some partnership firms and some corporations, doing business as a voluntary association under the name of Associated Furniture Distributors. The substance of all of plaintiffs' points of error is that the decree dismissing plaintiffs' petition was against the evidence and the law, and against the weight of the evidence.

Plaintiffs' evidence tended to prove that Myron A. Loewen is and has from its inception, been secretary and treasurer of plaintiffs' association, known as Associated Furniture Distributors, organized in January, 1927. He is also president of a local furniture establishment in Kansas City,...