Dunkin' Donuts of America, Inc. v. Dunkin Donuts, Inc.

• Decision Date: 17 June 1959
• Citation: 8 A.D.2d 228,188 N.Y.S.2d 132
• Parties: , 122 U.S.P.Q. 220 DUNKIN' DONUTS OF AMERICA, INC., Petitioner-Respondent v. DUNKIN DONUTS, INC., Stanley M. Uzdavinis, Jack J. Kessler, and Samuel D. Cooper, Respondents-Appellants.
• Court: New York Supreme Court — Appellate Division

Page 132

188 N.Y.S.2d 132

8 A.D.2d 228, 122 U.S.P.Q. 220

DUNKIN' DONUTS OF AMERICA, INC., Petitioner-Respondent v. DUNKIN DONUTS, INC., Stanley M. Uzdavinis, Jack J. Kessler and Samuel D. Cooper, Respondents-Appellants.

Supreme Court, Appellate Division, Third Department.

June 17, 1959.

Ungerman & Greenberg, Albany, for respondent-appellant Jack J. kessler.

Samuel D. Cooper, Albany, for respondents-appellants Dunkin Donuts, Inc., Stanley M. Uzdavinis, and Samuel D. Cooper.

Murphy, Aldrich, Guy, Broderick & Simon, Troy (Morris Simon and Bernard Simon, Troy, of counsel), for petitioner-respondent. Before FOSTER, P. J., and BERGAN, COON, HERLIHY and REYNOLDS, JJ.

HERLIHY, Justice.

The salient facts contained in the petition demonstrate that the petitioner was incorporated under the name 'Dunkin' Donuts of America, Inc.' in the State of Massachusetts and that it filed its trade mark therein and thereafter in the States of Connecticut, Rhode Island, New Jersey and in New York State on November 21, 1957, in compliance with Article 24 of the General Business Law of the State of New York, receiving from the Secretary of State a certificate which is known as Exhibit 'C' in the record. The name signifies the purpose of the corporation and the trade name was primarily for the sale of doughnuts. Petitioner developed a box and paper bag of unusual design for the sale of its product, containing such descriptions as '52 Delicious Varieties' and 'The Donut With A Handle On It'. It is further shown that the petitioner had stores in the States designated above and the filing of the trade mark in New York State in 1957 was in anticipation of a sales campaign to start business in this State. This is further demonstrated by an advertisement in the Albany 'Times-Union' on December 12, 1957, offering franchises to people interested in investing in the business.

The appellants incorporated under corporate appellant's name in New York State on April 17, 1958--four months following the 'Times-Union' advertisement for franchises--and in the answering affidavits of the appellants the only explanation for the similarity of names is offered by one Stanley Uzdavinis, the president of the corporation, formerly from Lynn, Massachusetts, admittedly familiar with the name and business of the petitioner. In a conference with his partner prior to incorporation he suggested the name 'Donut Time' which name was not satisfactory to his partner who suggested the name 'Dunkin Donuts'. The affidavit further states that although the signer thereof had knowledge of the use of the name in the State of Massachusetts--he did not like its product--he had an attorney, one of the incorporators, make a search of the Secretary of State's Office, Corporate Division, and upon its approval thereafter incorporated. He made the further statement: 'We have never in any way intended or tried to palm ourselves off as being connected or affiliated with the petitioner's organization. As I said before, our intention was actually just the opposite; I felt our doughnuts were better than petitioner's doughnuts and that we would suffer if the public thought our doughnuts were the same as theirs.' If there is any logic to this statement, the conclusion must be 'Then why use the name?' Early in 1958 petitioner notified appellants to cease using its name. No plausible explanation was offered in the answering or reply affidavits as to the reason for the use of 'The Donut With A Handle On It' or 'With 52 Varieties of Hand Cut' [donuts] which appear in the window of a store in the City of Troy, New York, as shown by Exhibit 'h'.

To invoke the summary judgment, without trial, under Section 964 of the Penal Law, the evidence of the petitioner must be clear and convincing and not substantially controverted by way of answer or reply. It is similar to the requirements of Rule 113 of the Rules of Civil Practice entitled 'Summary Judgment'.

The statute provides in part 'No * * * corporation shall, with intent to deceive or mislead the public, assume, adopt or use as * * * a corporate, assumed or trade name, for advertising purposes, or for the purposes of trade, or for any other purpose, any name * * * or any symbol or simulation * * * or a part of any name * * * which may deceive or mislead the public as to the identity of such * * * corporation or as to the connection of * * * corporation * * * with any other person, firm or corporation.'

We are not concerned with the criminal aspect of the statute.

While it would appear that the intent of the statute is for the protection of the public, the Court of Appeals has indicated it may be used as a summary remedy for unfair competition and for trade-mark infringements for the protection of a private property interest as well as the public generally. In Playland Holding Corporation v. Playland Center, Inc., 1 N.Y.2d 300 at page 303, 152 N.Y.S.2d 462, at page 464; where there was a similarity of names and identical...