Crown Central Petroleum Corp. v. Standard Oil Co., C-367

• Decision Date: 21 November 1961
• Docket Number: No. C-367,C-367
• Citation: 135 So.2d 26
• Parties: CROWN CENTRAL PETROLEUM CORPORATION, a corporation, Appellant, v. STANDARD OIL COMPANY, a corporation, and R. A. Gray, as Secretary of State of the State of Florida, Appellees.
• Court: Florida District Court of Appeals

Page 26

135 So.2d 26

CROWN CENTRAL PETROLEUM CORPORATION, a corporation, Appellant, v. STANDARD OIL COMPANY, a corporation, and R. A. Gray, as Secretary of State of the State of Florida, Appellees.

No. C-367.

District Court of Appeal of Florida, First District.

Nov. 21, 1961.

Rehearing Denied Dec. 14, 1961.

Ausley, Ausley, McMullen, O'Bryan, Michaels & McGehee, Tallahassee, for appellant.

Botts, Mahoney, Whitehead, Ramsaur & Hadlow, Jacksonville, Richard W. Ervin, Atty. Gen. and Wilson W. Wright, Asst. Atty. Gen., for appellees.

RAWLS, Judge.

This appeal involves a trademark case wherein the rights of the parties to the use of the word 'Crown' in the State of Florida are in issue. The Chancellor outlined the rights of each party in the summary final decree from which appellant has appealed. Defendant appellant will be referred to as Crown Central and plaintiff appellee will be referred to as Standard Oil. The basic facts are not in dispute.

Prior to the year 1919, and continuously to the present time, Standard Oil has sold large quantities of gasoline and lubricating oil and other petroleum products in the State of Florida. The gasoline has predominantly been sold under a label or tradename of 'Crown', sometimes alone, or sometimes in connection with other words such as 'Crown Extra.' Other petroleum products, including lubricating oils, sold by Standard Oil have not been labeled 'Crown'. During this period of time, Standard Oil has conducted extensive advertising efforts by publishing maps, signs at its retail service stations, and newspaper advertising in promoting the sale of its petroleum products, including the emphasizing of its 'Crown' brand of gasoline. As early as 1921, newspaper advertising has been exhibited featuring the word 'Crown.' Standard Oil made no effort to register its trademark 'Crown' with the Secretary of State until 1957, at which time it discovered that Crown Central had registered its trademark of 'Crown,' and derivatives thereof, with the Secretary of State in 1947, and had tendered to the Secretary of State in September 1958, its applications to renew each registration. Shortly thereafter Standard brought complaint in the instant cause.

Crown Central registered the word 'Crown' as a trademark in the United States Patent Office on May 9, 1903, and again in accordance with the Lanham Act on July 5, 1946, and it now contends that it was the first user of said word and the derivatives therefrom, including 'Crown Oil*Gas,' 'Crownzol,' 'Crown Winged Power,' and 'Crown Oil Burner.' Crown Central takes the position that it is the exclusive owner of these trademarks, and that it is entitled to renew is registrations of same and to use the same in the State of Florida.

Crown Central has from time to time, made wholesale sales of lubricating oil in the State of Florida in bulk containers such as drums, barges, and by pipe line to various independent distributors or jobbers, who thereafter did not use the mark 'Crown,' or any related mark when selling the product in Florida. In 1947, an isolated wholesale sale in Florida of lubricating oil in containers bearing the trademark 'Crown' was shown by Crown Central. Save for this isolated sale, the record does not reflect competent evidence of any other sales by Crown Central of petroleum products, to the general public in Florida utilizing the trade name 'Crown' or derivatives therefrom. Crown Central has never maintained any bulk terminals, offices, service stations, or other place of business in Florida, nor has it ever conducted any method of advertising directed toward the general public in the State of Florida concerning its petroleum products. Its business in Florida is in the words of the Chairman of the Board of Crown Central: 'Whatever business we do in Florida is handled as a part of the wholesale operation which is headquartered in Atlanta.'

In substance, the facts show that Standard Oil has developed and marketed its retail gasoline sales in the State of Florida for more than forty years primarily under the trademark of 'Crown' and that such marketing has been of an intensive nature in every county of the state. During this same period of time, Crown Central, save for an isolated sale, marketed in bulk in Florida its petroleum products at wholesale including lubricating oil and gasoline in such a manner that same had no identity to the general public of Florida as a 'Crown' product.

Standard Oil takes the position that its long usage of the word 'Crown' in the sale and distribution in Florida of gasoline at retail prohibits Crown Central from moving into the Florida market and utilizing any of its 'Crown' trademarks in the sale of gasoline or lubricating oil at retail.

Common law rights in trademarks are now and have always been recognized in Florida. Section 495.02(6), Florida Statutes 1959, F.S.A., ¹ specifically provides that a trademark shall not be registered which so resembles a trademark used in this state by another and not abandoned, as to be likely when applied to the goods of the applicant, to cause confusion or mistake or to deceive. Standard's common law ownership of the word 'Crown' as to gasoline sales at retail in the State of Florida is undisputed. Standard has not used the word 'Crown' as it relates to sale of lubricating oil at either wholesale or retail. Therefore, the main issue before the Chancellor was whether the use of its trademarks in the sale of lubricating oil at retail in the State of Florida, when applied to the goods sold by Standard, would likely cause confusion. Crown Central urges that since Standard has not used and has displayed no intention to use the word 'Crown' in the sale of lubricating oils at retail in Florida, that Section 495.01 ² precludes Standard from claiming any right to same as it relates to lubricating oils since lubricating oils are separate 'goods.' The Chancellor found that Standard has acquired and now owns the title to the word 'Crown' as a slogan or tradename for the sale of gasoline in the State of Florida, and that the sale of lubricating oils at retail is so closely associated with the sale of gasoline that the use of the word 'Crown' by a competitor selling both gasoline and lubricating oil would necessarily cause confusion and likely lead to mistake by the public in the purchase of these products; that the registration or use by Crown Central in the State of Florida of the words 'Crown Oil and Gas,' 'Crownzol,' of 'Crown Winged Power' in the merchandising of gasoline or lubricating oil except bulk sales at wholesale, would be in violation of Standard's rights. Included in the Chancellor's decree was a finding that Crown Central owned the trademark 'Crown Oil Burner' and that Standard had no right to same. The record reflects ample evidence to sustain the Chancellor's findings.

'Crown Winged Power' has been promoted by Crown Central in adjoining areas as a trademark for gasoline. The wording of the trademark 'Crown Oil*Gas' within itself ties the two petroleum products together as single 'goods.' Crown Central in its answer, affirmatively alleged that it uses the word 'Crown' and derivatives thereof to identify all types of petroleum products manufactured and marketed by it, including gasoline and lubricating oils, and that it also used the word 'Crown' to identify its service stations at which gasoline manufactured by it and various other petroleum products are sold. The Chancellor was confronted with Standard, retailer of gasoline, that had over a period of forty years, extensively advertised and promoted the word 'Crown' in its sale of gasoline at retail throughout Florida; and Crown Central, which insofar as Florida was concerned had never exploited the general retail market, however, displaying an intention to so do some time in the future, with petroleum products labeled 'Crown' and derivatives thereof, intertwined with service stations, gasoline, and lubricating oils.

The law controlling trademark cases in Florida was clearly enunciated in the El Modelo Cigar Mfg. Co. v. Gato, 25 Fla. 886, 7 So. 23, 6 L.R.A. 823, when the Court stated in its syllabus on page 24:

'Every manufacturer has the unquestionable right to distinguish the goods that he manufactures and sells by a peculiar label, symbol, or trademark, and no other person has a right to adopt his label or trademark, or one so like his as to lead the public to suppose the article to which it is affixed is the manufacturer's.'

In Quality Courts United v. Jones (Fla.1952), 59 So.2d 20, 23, Mr. Justice Terrell again enunciated the rule of Florida when he stated:

'In this holding we do not mean to infer the plaintiff has acquired a copyright on the word 'quality' vesting it with the exclusive use of that term. What we hold is that appellant has employed the word 'quality' in relation to his business so as to give its tourist accommodations a distinct and popular favor with the public which it has a right to preserve. When one has employed an emblem or a legend so as to make it a symbol for a public desire and by acts of courtesy fortifies it with good will, it becomes an elemental part of his business that the law will protect. Many of the great businesses of the country have been built on slogans and symbols that point to superior goods or to superior performance. The volume of good will accumulated with such businesses is one of their most valuable assets. The word 'quality' as applied to appellant's courts was such an asset.'

A situation similar to this one is Food Fair Stores, Inc. v. Square Deal Market Co., 206 F.2d 482 (D.C.Cir., 1953). In that case, Food Fair Stores opened its first 'Food Fair' supermarket in Baltimore in 1935, and subsequently enlarged the chain to 151 stores, almost all of which bore the name 'Food Fair.' Square Deal Market Co. had a small chain of stores opening its first store named 'Food Fair' in the District of Columbia in 1936, subsequently enlarging its chain...