Furniture Hospital v. Dorfman

• Decision Date: 04 May 1914
• Docket Number: No. 11,207.,11,207.
• Citation: 166 S.W. 861,179 Mo. App. 302
• Parties: FURNITURE HOSPITAL v. DORFMAN.
• Court: Missouri Court of Appeals

166 S.W. 861

179 Mo. App. 302

FURNITURE HOSPITAL v. DORFMAN.

No. 11,207.

Kansas City Court of Appeals. Missouri.

May 4, 1914.

1. TRADE-MARKS AND TRADE-NAMES (§ 88) —UNFAIR COMPETITION—NATURE OF UNFAIR COMPETITION.

No exclusive proprietary interest in a trade-name is necessary to relief on the ground of unfair competition, while in trade-mark cases an exclusive right is necessary.

2. TRADE-MARKS AND TRADE-NAMES (§ 3) —INFRINGEMENT AND UNFAIR COMPETITION —TRADE-NAMES.

Nonexclusive trade-names or names which are publici juris, or open to use by all the world, because descriptive of the goods, name of the maker, etc., may nevertheless, by long-continued use in connection with the goods, business, etc., of a particular trader, come to have a secondary meaning as designating the goods of that particular trader; and, though the primary meaning of the word is publici juris, its secondary meaning is not, since its use in its secondary meaning would constitute unfair competition as passing off the goods of one for those of another.

3. TRADE-MARKS AND TRADE-NAMES (§ 99) — UNFAIR COMPETITION—QUESTION FOR JURY.

Whether such a name has come to have a secondary meaning as designating the goods of a particular trader depends upon the proof, and is always a question of fact.

4. TRADE-MARKS AND TRADE-NAMES (§ 3) — UNFAIR COMPETITION — DESCRIPTIVE NAMES.

Names which are mere descriptive terms of the business and generic in their nature, and which may be used by every one in an honest and nondescriptive manner, are not capable of being appropriated, and there can be no unfair competition in the use of such names.

5. TRADE-MARKS AND TRADE-NAMES (§ 71) — UNFAIR COMPETITION—TRADE-NAMES.

Names which are mere descriptive terms, if they be odd, unusual, fanciful, or striking, may by long use become identified in the minds of the public with the business of a particular trader, and in such case it is unfair competition for a subsequent trader to use them in such manner as to pass off his business for that of the other.

6. TRADE-MARKS AND TRADE-NAMES (§§ 3, 99)—UNFAIR COMPETITION—TRADE-NAMES.

The name "Furniture Hospital," though descriptive of a business, was yet so odd, unusual, and so likely to catch the public fancy and be retained in the memory, as to be capable of being appropriated as a nonexclusive trade-name with a secondary meaning, and it could not be said, as a matter of law, that the addition of the words "New York" thereto so distinguished it as to remove danger of deception.

Appeal from Circuit Court, Jackson County; Wm. O. Thomas, Judge.

Action by the Furniture Hospital against Samuel Dorfman. From a judgment on demurrer for defendant, plaintiff appeals. Reversed and remanded.

T. A. Frank Jones, of Kansas City, for appellant. Block & Block, of Kansas City, for respondent.

TRIMBLE, J.

This is a suit by the Furniture Hospital, a corporation, to enjoin defendant from the use of the name "New York Furniture Hospital" in connection with his business of furniture repairing at No. 1704 Troost avenue, Kansas City, Mo., on the ground that the name "New York Furniture Hospital" by the respondent was an unlawful use of plaintiff's trade-name the "Furniture Hospital," and constituted unfair competition as against the appellant herein. The circuit court sustained a demurrer to the petition, on the ground that it did not state facts sufficient to constitute a cause of action, and, on plaintiff's refusing to plead further, rendered judgment in favor of the defendant, and plaintiff thereupon appealed.

The petition alleged that it was a corporation, and since 1904 it had been conducting at 1301 East Twelfth street, Kansas City, Mo., the business of furniture repairing under the name of the "Furniture Hospital," and that about March, 1913, defendant began a similar business about a quarter of a mile distant from plaintiff's shop which he carried on under the name of the "New York Furniture Hospital"; that, by reason of plaintiff's long use of the name "Furniture Hospital," and its advertisement thereof, and the consequent identification of plaintiff's business with that name in the mind of the trading public of Kansas City, plaintiff is entitled to the exclusive use of the name "Furniture Hospital" in Kansas City for the business of repairing furniture; "that the use of the name `Furniture Hospital' was intended by defendant, and apart from his intention was likely to and did confuse and mislead the trading public and attract plaintiff's customers to defendant's shop; and that it constituted unfair competition, and is contrary to equity and good conscience." The petition further stated that by such unfair competition, and by the wrongful assumption and use of plaintiff's trade-name, defendant is diverting to his shop many of plaintiff's customers deceived by his use of the name, and has obtained business which would have come to plaintiff amounting to $1,000.

There is no claim on the part of plaintiff that there has been a violation of a technical trade-mark, but that under the circumstances plaintiff has a right to designate his business by the name "Furniture Hospital," and that defendant has no right to give his business such a similar designation as will enable him to deceive and mislead the public into thinking they are dealing with plaintiff. In other words, plaintiff claims that defendant is violating the rule against unfair competition which consists in passing off, or attempting to pass off, the goods or business of one person as and for the goods or business of another. In such case no exclusive proprietary interest in the trade-name is necessary to relief, while in trademark cases an exclusive right is necessary, and this seems to be the principal distinction between the two. 38 Cyc. 763.

Trade-names are divided into exclusive and nonexclusive trade-names. The former are protected upon the same principles that trade-marks are. Nonexclusive trade-names are such names as are publici juris; that is, open to or exercisable by all persons in their primary sense, but which in a secondary sense have come to indicate the business of a particular trader. 38 Cyc. 765. The name which plaintiff in this case seeks to protect is that of a nonexclusive trade-name in its secondary meaning. In 38 Cyc. 769, it is said: "Words or names which have a primary meaning of their own, such as words descriptive of the goods, or the place where they are made, or the name of the maker, and which are not capable of exclusive appropriation as a trade-mark, may nevertheless, by long use in connection with the goods or business of a particular...