Clare D. Stout, George M. Ross & Roscoe W. Allen, Copartners, Doing Bus. Under the Firm Name & Style of Honolulu Roofing Co. v. Merritt T. Laws, Noburo Kageura & Paul Kubota, Copartners, Doing Bus. Under the Firm Name & Style of Laws Roofing Co.

• Citation: 37 Haw. 382
• Decision Date: 12 August 1946
• Docket Number: No. 2625.,2625.
• Parties: CLARE D. STOUT, GEORGE M. ROSS AND ROSCOE W. ALLEN, COPARTNERS, DOING BUSINESS UNDER THE FIRM NAME AND STYLE OF HONOLULU ROOFING COMPANY, v. MERRITT T. LAWS, NOBURO KAGEURA AND PAUL KUBOTA, COPARTNERS, DOING BUSINESS UNDER THE FIRM NAME AND STYLE OF LAWS ROOFING COMPANY.
• Court: Supreme Court of Hawai'i

37 Haw. 382

CLARE D. STOUT, GEORGE M. ROSS AND ROSCOE W. ALLEN, COPARTNERS, DOING BUSINESS UNDER THE FIRM NAME AND STYLE OF HONOLULU ROOFING COMPANY,

v.MERRITT T. LAWS, NOBURO KAGEURA AND PAUL KUBOTA, COPARTNERS, DOING BUSINESS UNDER THE FIRM NAME AND STYLE OF LAWS ROOFING COMPANY.

No. 2625.

Supreme Court of the Territory of Hawai‘i.

Argued July 19, 1946.

Decided August 12, 1946.

ERROR TO CIRCUIT COURT FIRST CIRCUIT, HON. C. H. BUCK, JUDGE.

Syllabus by the Court

Plurality of trade names does not deprive their prior appropriator from acquiring a common–law right to their exclusive use.

The trade name applied to a business rendering services of a standard, kind and quality is assignable.

No monopoly can be created in the use of a family name. Every person bearing a similar name is entitled to its use in his business as long as he uses it fairly and honestly.

Where the trade name of a roofing business includes the surname of its proprietor and such surname has become so completely identified with the particular business conducted by him as to become synonymous with it and the value, if any, of the trade name is due to its association with the business to which the surname is applied, the use of the same trade name by another person bearing the same surname in connection with the roofing business of the latter in the same city is unfair and dishonest and constitutes unfair competition.

Where, in the unfair and dishonest use of a trade name the users cause it to be registered according to law as the name of a partnership of which the users are composed, jurisdiction in equity is sufficiently complete and comprehensive to admit of the cancellation of such registration.

J. G. Anthony (Robertson, Castle & Anthony on the brief) for plaintiffs, plaintiffs in error.

A. K. Trask (also on the brief) for defendants, respondents in error.

KEMP, C. J., PETERS AND LE BARON, JJ.

OPINION OF THE COURT BY PETERS, J.

This is a petition for a declaratory judgment.

From the allegations of the complaint it appears that on April 2, 1945, the plaintiffs jointly purchased as a going concern the assets and good will of the roofing business then owned and operated by Howard W. Laws on the corner of Ala Moana and Cooke St. in Honolulu, including the right to do business under the style of “Laws Roofing Company”; that they thereupon organized as a copartnership under the firm name and style of “Laws Roofing Company” but registration of the partnership in the office of the treasurer of the Territory was refused due to the similarity of its name with the name of a copartnership previously registered, to wit, the “Laws Roofing Company,” a partnership composed of the respondent, Merritt T. Laws, and the other two respondents, registration of which had been effected by them on March 29 previously; that since April 2, 1945, the business formerly owned and operated by Howard W. Laws has been continued at the same place by the plaintiffs and, in the meantime, respondents have established themselves in the roofing business in another part of town under the name of “Laws Roofing Company,” resulting in confusion as to which of the two firms is the successor of the business formerly conducted by Howard W. Laws.

The plaintiffs seek to adjudicate (1) that they are entitled to the use of the trade name “Laws Roofing Company” in connection with the roofing business conducted by them in Honolulu; (2) that they are entitled to have their copartnership registered as the “Laws Roofing Company” and the name “Laws Roofing Company” registered as a trade name in the office of the treasurer of the Territory and (3) that the registration of the name “Laws Roofing Company” by the respondents in the office of the treasurer of the Territory was in fraud of the rights of the plaintiffs to said name. They also seek, by way of consequential relief, the cancellation of the registration by respondents in the office of the treasurer of the Territory of the partnership name “Laws Roofing Company” and an injunction permanently restraining respondents from using the name “Laws Roofing Company” and from advertising or holding out that they are the successors to the business formerly conducted by Howard W. Laws.

The cause was mistakenly treated similarly as an action at law. The answer is one of general denial and the judgment contains no adjudications, it being merely in favor of respondents and against the plaintiffs. The presiding judge, however, filed a written decision and the findings of fact contained therein are sufficient to permit a consideration of the errors assigned.

The first question which arises under the issues of law involved is what, if anything, in respect to the use of the trade name “Laws Roofing Company” plaintiffs acquired by the assignment to them of April 2, 1945, and this depends upon (1) whether their vendor, Howard W. Laws, had acquired an exclusive right to the use of the trade name “Laws Roofing Company” by appropriation and use and (2) whether that right was assignable. It does not appear that either of the parties has registered the trade name “Laws Roofing Company” under any act of the Congress of the United States or under the laws of Hawaii except, as heretofore stated, as the name of the partnership composed of the respondents pursuant to Revised Laws of Hawaii 1935, section 8601. Hence their respective rights to the use of that name “must be decided according to common–law principles of general application.”¹

The right to adopt and use a trade name to distinguish the business or place of business to which the name is applied from other businesses or places of business similarly engaged and to the use of such name to the exclusion of such others has been recognized by the common law and protected both at law and in equity.² Differently from trademarks, trade names are usually applicable to a business and its good will.³ Although strictly speaking a trade name is not a property right, its exclusive use by the first appropriator will be protected.⁴

Trade names may be established without registration under the Acts of Congress relating to trademarks or copyrights and without registration under the local law pertaining to trademarks and trade names. (R. L. H. 1945, c. 179.) They are acquired by adoption and user for a period of time sufficiently long for the public to associate the name with the business to which it is applied. They belong to the one who first uses them and gives them value. ⁵ If Howard W. Laws was the first to adopt the name “Laws Roofing Company” as a name of his roofing business in Honolulu, and he used the same exclusively of all others engaged in the same business for a period of time sufficiently long for the public to associate in its mind the name “Laws Roofing Company” with the roofing business conducted by him, then it may be said that Howard W. Laws had acquired a common–law right to the exclusive use of that name in connection with his roofing business according to common–law principles of general application.

The court found that Howard W. Laws had, for many years prior to his sale to the plaintiffs, been engaged in the roofing business in Honolulu; that his business was a sole enterprise conducted only by himself and that he had used several variations of his name as a designation of his business; that for the years 1938, 1942, 1944 and 1945 he took out the gross income license for his business as “Howard W. Laws doing business as Laws Roofing Supplies” although he filed gross income tax returns in the year 1938 as “Laws Roofing Company”; that he used letterheads bearing the name “Howard W. Laws––Roofing and Building Specialties” and billheads with the heading “Laws Roofing Supplies”; that during the course of his business career he also used letterheads with the heading “Howard W. Laws” and such letterheads appeared to have been those most consistently used by him; that his trucks bore the sign and designation of “Howard W. Laws” and that the general designation of his business and the name by which it was most generally and widely known was “Howard W. Laws” or “Howard Laws” Roofing Company.

These facts in our opinion are sufficient to sustain the conclusion that Howard W. Laws had acquired a common–law right to the exclusive use of the name “Laws Roofing Company” in connection with his roofing business in Honolulu unless plurality of names deprived him of the exclusive use of any. The trial court held: “The evidence herein fails to establish that the said Howard W. Laws had so exclusively used the name ‘Laws Roofing Company’ as to establish any exclusive right thereto as a trade name. It is true that upon occasions he used said name, and for brevity's sake his business was often referred to as ‘Laws Roofing Company,’ but the almost consistent designation of his business by him was that of ‘Howard W. Laws, Roofing Supplies.’ ” We construe the word “exclusively” as employed by the presiding judge in her decision in respect to the use made by Howard W. Laws of the name “Laws Roofing Company” as having reference to his use of other names in addition to the name “Laws Roofing Company” and not to its use by others. The evidence is undisputed that Howard W. Laws was the only one who used the trade name “Laws Roofing Company” and that no one else ever used that name until it was adopted by respondents as the name and style of their copartnership on March 29, 1945.

Plurality of trade names, however, does not deprive their prior appropriator from acquiring a common–law right to their exclusive use. All the names enumerated by the trial court as used by Howard W . Laws in connection with his business contain either his full name or the name “Laws.” The words “Roofing Supplies,” “Roofing and Building Specialties” and the word “Roofing” are merely descriptive of the business conducted by the person identified as “Howard W. Laws,” “Howard Laws” or “Laws.” It is true that the word “Company” implies association...