Food Fair Stores v. Square Deal Market Co., Civ. A. 1090-48.

• Decision Date: 25 June 1952
• Docket Number: Civ. A. 1090-48.
• Citation: 109 F. Supp. 637
• Parties: FOOD FAIR STORES, Inc. v. SQUARE DEAL MARKET CO., Inc.
• Court: U.S. District Court — District of Columbia

109 F. Supp. 637

FOOD FAIR STORES, Inc. v. SQUARE DEAL MARKET CO., Inc.

Civ. A. 1090-48.

United States District Court District of Columbia.

June 25, 1952.

Max O'Rell Truitt, Edward H. Miller and Cary McN. Euwer, Washington, D. C., for plaintiff.

Buckley & Danzansky and Bernard Margolius, Washington, D. C., for defendant.

McGUIRE, District Judge.

The plaintiff is a Pennsylvania corporation which operates a large chain of supermarkets which sell at retail, groceries, provisions, etc. — products usually sold in food stores. It was originally incorporated in 1933 under the name of "Union Premium Food Store". In August 1935 it organized a subsidiary "Food Fair Stores of Maryland" for the purpose of operating supermarkets in that state, and on October 31, 1935 opened such a market in Baltimore under the name "Food Fair". It continued to open other stores so named until today it operates approximately 151 such markets throughout certain of the eastern states (Pennsylvania, New Jersey, Maryland, Delaware and New York).

The defendant is a Delaware corporation which operates a smaller chain in the District of Columbia, including one store each in Montgomery and Prince George's Counties. Presently the chain consists of twelve stores. Previous to 1936 it had opened a small number of retail food stores in the District under different names.

Indeed there is evidence that both the plaintiff and the defendant, while operating their stores under the name "Food Fair" in the early days of their expansion, operated other stores under other names at least until 1942. It was during the period 1940 until the present that both chains began their rather significant growth.

On March 19, 1936 the defendant opened its first store called "Food Fair" at 1420-1422 7th Street N.W. and advertised this fact in the papers.

This litigation has arisen out of the use by the defendant of the name, which the plaintiff claims operates to the disadvantage of its business activities, in that it is an intentional usurpation and causes confusion among patrons, the public and suppliers, particularly where such usurpation by the defendant is in an area contiguous to its Baltimore market.

First of all with reference to the name itself, neither the plaintiff nor defendant could have registered it under the trademark statute. Any proprietary right in the same would have of necessity to be predicated upon its acquiring a secondary meaning peculiarly concerned and connected with its use by either of the parties, distinguishing their operations from all others of a similar character.

The burden of proof is therefore upon the plaintiff to establish by the preponderance of the evidence that it has met this basic requirement necessary to establish this right.

I conclude upon all the evidence that while undoubtedly such a right in the use of the name was acquired by the plaintiff in the area in which it operates, yet nevertheless no such right pertains to it in the District of Columbia nor in its immediate vicinity, and that there was not any usurpation intentional or otherwise of the name by the defendant in the District of Columbia.

Defendant was using the name, certainly at the very beginning of 1936 when the premises located at 1420-22 7th Street N.W. were leased and renovated. The lease for these premises was negotiated December 23, 1935 to be effective January 1, 1936.

On April 17, 1936 plaintiff wrote a letter (plaintiff's Exhibit "28") to the defendant which purported to put the defendant on notice with reference to the use of the name by the defendant and threatening suit. Further, there is testimony to the effect that this letter, addressed as it was exclusively to the defendant in relation to the defendant's use of the name in the Washington area, was of like tenor with others which the plaintiff had sent out to the other alleged users of the name generally. The defendant immediately replied through counsel (plaintiff's Exhibit "28") denying and challenging plaintiff's asserted right (id), and from that date until the filing of this suit on March 17, 1948 the plaintiff did nothing whatever regarding enforcement of its alleged right. By so doing they manifested a lack of interest certainly in its use by the defendant if that use was wrongful and usurpative. Indeed they not only did so, but apparently assumed that the defendant's position was tenable by not only purporting or electing to do nothing about it but to do business in the District of Columbia trading area by opening up two stores, one in Virginia and the other in Maryland, contiguous to the Washington area, under an entirely different name, to-wit: "Food Lane". Certainly it cannot be argued with any degree of cogency that there can be any proprietary interest in the word "Food".

Although, the witness testified (T. 142) they were looking for outlets in Washington as far back as 1936, they elected to do nothing about defendant's use of the name until March 1948 when suit was filed. And further (T. 142) from 1936 to date "* * we have constantly searched for locations within the confines of our policy limitations on acquisitions of that kind", in 1940 making an effort to buy out the Giant combine — the deal for some unknown reason falling through (id).

Evidence was also introduced on behalf of the plaintiff consisting of the deposition of one Charles Pisner, at one time an officer and indeed the chief stockholder of the defendant, to the effect that he, Pisner, had appropriated the name "Food Fair" as a consequence of a visit to Baltimore to view the plaintiff's operations there. I am not impressed by this testimony. Pisner apparently is a disgruntled and embittered man — and hostile to the present officers of defendant. (Deposition of Pisner, p. 55.)

It would seem to be a fair inference, and I so conclude, that as a matter of fact both the plaintiff and the defendant had hit upon the use of the name "Food Fair" at approximately the same time but there was not immediately any concentrated exploitation of it, both parties...