Bernstein v. Friedman, 2317

• Decision Date: 26 June 1945
• Docket Number: 2317
• Citation: 62 Wyo. 16,160 P.2d 227
• Parties: SOL BERNSTEIN, Doing Business as "WESTERN RANCHMAN OUTFITTERS", Plaintiff and Respondent, v. SAM FRIEDMAN, Defendant and Appellant
• Court: Wyoming Supreme Court

160 P.2d 227

62 Wyo. 16

SOL BERNSTEIN, Doing Business as "WESTERN RANCHMAN OUTFITTERS", Plaintiff and Respondent, v. SAM FRIEDMAN, Defendant and Appellant

No. 2317

Supreme Court of Wyoming

June 26, 1945

APPEAL from District Court, Laramie County; V. J. TIDBALL, Judge.

Action by Sol Bernstein, doing business as Western Ranchman Outfitters, against Sam Friedman, to compel defendant to remove from his store a certain sign and to enjoin defendant from using certain words in connection with advertising displays, signs, or sign. Judgment for plaintiff, and defendant appeals.

Affirmed.

Affirmed.

For the Plaintiff and Respondent the cause was submitted upon the brief and oral argument of Harry B. Henderson, Jr., Esq., of Cheyenne, Wyoming.

POINTS OF COUNSEL FOR APPELLANT

As a general proposition of law, the words, "Western Ranchman Outfitters" cannot be the subject of a valid trade-name or be exclusively appropriated by Plaintiff or by any other person.

Fidelity Appraisal Co. v. Federal Appraisal Co. (Cal.) 18 P 2d. 950; American Auto. Association v. American Auto Owner's Assn., (Cal.) 13 P. 2d. 707; Brennan v Emery-Bird-Thayer D. G. Co., 108 F. 624; Iowa Auto Market v. Iowa Auto Market & Exchange, (Ia.) 197 N.W. 321; Diamond Drill Constructing Co. v. International D. D. Contracting Co. (Wash.) 179 P. 120; Warner & Co. v. Lilly & Co., (U. S.) 68 L.Ed. 1161; Stover v. Peacock, (Ind.) 141 N.E. 889; Koehler v. Sanders, (N. Y.) 25 N.E. 235; Choynoski v. Cohen, 39 Cal. 501; Driverless Car Co. v. Glessner-Thornberry Driverless Car Co. (Colo.) 264 P. 653.

Geographical terms and words in common use to designate a locality, a country, or a section of a country, cannot be monopolized as trade-marks. 63 C.J. 356.

It is a fundamental rule that a term or mark merely descriptive of the subject to which it is applied cannot be a technical trade-mark or tradename. Thus no word or combination of words can be exclusively appropriated if it is merely descriptive of the particular business, or of the quality, style, character, grade or class of the goods, or if it merely indicates the composition of the product or the ingredients therein. 63 C. J. 346.

It is generally agreed that a word or term designating or describing a trade or occupation, indicating that a particular class of goods is dealt in, or a particular business carried on, cannot be exclusively appropriated by one as a trade-mark or a trade-name. 52 A. J. 545.

It was incumbent for the plaintiff to allege and prove on the trial of this action that the words "Western Ranchman Outfitters" had acquired a secondary meaning as distinguished from their primary meaning.

Nims on Unfair Competition and Trademarks, 581; 63 C. J. 393; Crescent Tool Co. v. Kilborn & B. Co., 247 F. 299; Skinner Mfg. Co. v. Gen. Food Sales Co. 52 F.Supp. 432; 150 A. L. R. 1067; McGraw-Hill Pub. Co. v. Am. Aviation Assn., 117 F. 2d. 293; Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 55 L.Ed. 536.

To constitute unfair competition in respect to a trade-name, two elements must be present. The name must have acquired a secondary meaning or significance that identifies the plaintiff, and the defendant must have unfairly used the name or a simulation of it, to the prejudice of the plaintiff's interests. 150 A. L. R. 1076.

The plaintiff by adopting a trade-name which is descriptive of the goods he carries for sale may not prevent the defendant from advertising that he has similar goods for sale.

Deceptive names and signs on a place of business will be enjoined or a deceptive dress of a store. But the use of signs of the ordinary and common size, shape and color, such as are customarily used by tradesmen cannot be enjoined though used by a competitor. 63 C. J. 393.

A court of equity will not interfere when ordinary attention by the purchaser of an article would at once enable him to discriminate the one from the other. Nims on Trade-marks and Unfair Competition, Page 585.

The test whether the use of an emblem by one person infringes the right of a previous user of a similar emblem is whether a person exercising that care, caution and power of perception which the public may be expected to exercise in the matter which it has in mind, would mistake the one for the other. American Automobile Association v. American Automobile Owners' Association, (Cal.) 13 P. 2d. 707, 83 A. L. R. 699.

It is not necessary that two dealers, whose goods and places of business are likely to be confused with each other should state in their advertising and signs the proprietorship of each store. It is enough if they so designate their own as to show to the public that it is a different place from that of the rival. Nims, supra, 851.

Mandatory injunctions will never be granted unless extreme or very serious damage at least will ensue from withholding the relief. Such injunctions will never be issued in doubtful cases. 32 C. J. 23; Healy v. Smith, 14 Wyo. 263, 83 P. 583.

For the Defendant and Appellant the cause was submitted upon the brief and oral argument of M. A. Kline, Esq., of Cheyenne, Wyoming.

POINTS OF COUNSEL FOR RESPONDENT

A study of the statute, 117-101, W. R. S. 1931, would seem to dispose of any question before the court. This question is one of fact on which it is contended the appellate court will not re-try the issue or substitute its judgment for that of the trial court. (Cleo Syrup Corporation vs. Coca Cola Co., 150 A. L. R. 1056). There is abundant precedent in this state for the holding of the federal court that questions of fact will not be disturbed on appeal as that has been the policy of this court for many years. (Bayles vs. VandenBoom, 40 Wyo. 411, Farmers Lumber Co. v. Lukart, 36 Wyo. 413.)

Whether the make-up of the trade-name renders that trade-name so similar to the trade-mark of another, that the former deceives, or will probably deceive purchasers is a question of fact. This court, upon review, will not retry issues of fact. Storley v. Armour & Co., 8 Cir. 107 F.2d 499, 513; Gasifier Mfg. Co. v. General Motors Corporation, 8 Cir. 138 Fed. (2) 197, 199; Travelers Mut. Casualty Co. v. Rector, 8 Cir. 138 F.2d 396, 398.

The Wyoming statute indicates that use of a trademark or name in identical form 'or in any such near resemblance thereto as may be calculated to deceive" is the true test (Section 117-101 W. R. S. 1931).

Imitation is defined as a resemblance creating a similarity, U. S. v. Morrison, 45 L.Ed. 276.

To justify restraining use of a trade-name allegedly conflicting with trade-name used by complainant, the circumstances must be such that it appear that the business of complainant will suffer from a deceptive use of its name or that by reason of such deceptive use of complainant's name the public will be imposed on. Starr v. Hotelling, 122 P. (2nd) 432.

The owner of a trade-mark or trade-name which has acquired a secondary meaning in addition to its descriptive character is entitled to protection, at common law, apart from any trademark act, against the unfair use of the mark or name by a competitor. 83 L.Ed. 196.

Words which are not capable of exclusive appropriation as a trade-mark have a primary meaning in which they are publici juris, but a plaintiff proving that a word has a secondary meaning indicating his business alone is entitled, as protecting a property right, to injunction restraining misleading use of the word as unfair competition. Town Taxi Service Corporation v. Green Cab & Brokerage Co., 38 N.Y.S. 2d. 529.

The burden is on one complaining of trade-mark infringement to show by fair preponderance of evidence that the ordinary run of purchasers giving that attention which such persons usually give to buying of articles of character involved would likely be deceived. Gridlebaugh v. Rudolph, 131 F. 2d. 795.

The person may not use the name of another already in the same line of business, so that confusion or injury will result therefrom; but the protection a party is entitled to in his trade-name is only coextensive with his market, for there can be no unfair trade competition, unless there is competition. Eastern Outfitting Co. v. Hanheim, 110 P. 23.

BLUME, Chief Justice. RINER, J., and KIMBALL, J., concur.

OPINION

BLUME, Chief Justice.

The plaintiff in this case, doing business under the name of Western Ranchman Outfitters, sued the defendant to compel him to remove from his store a sign reading, "Western Outfitters", with a picture of a man wearing the regalia of a Western ranchman or cowboy placed between the two words. After the trial of the case the court found that the sign of the defendant would be likely to mislead the public into thinking that the defendant's store is the plaintiff's store; that plaintiff has used the name of Western Ranchman Outfitters for many years, and that the name has become known to the public as connected with the plaintiff's store; that, accordingly, the defendant should be enjoined from using the words, "Western Outfitters", with or without symbols in connection with advertising, displays, sign or signs, or in any other form, and that the sign now used by the plaintiff should be removed within thirty days. From the judgment so entered the defendant has appealed to this court.

The plaintiff adopted the name of Western Ranchman Outfitters to designate him as the party carrying on his business under that name. The words of that name are descriptive "Western" designating the region in which the business is carried on, or in connection with "Ranchman" denoting the probable buyers of plaintiff's goods. The term "Outfitters", too, is a common word, designating the business in which the plaintiff is engaged. The terms adopted constitute a trade name, not a trade-mark, as technically known. The...