Hugo Stein Cloak Co. v. S.B. Stein & Son

• Citation: 58 Ohio App. 377,16 N.E.2d 609
• Court: United States Court of Appeals (Ohio)
• Decision Date: 27 December 1937
• Parties: HUGO STEIN CLOAK CO v. S. B. STEIN & SON, Inc.

16 N.E.2d 609

58 Ohio App. 377

HUGO STEIN CLOAK CO v. S. B. STEIN & SON, Inc.

Court of Appeals of Ohio, Sixth District, Lucas.

December 27, 1937

Syllabus by the Court.

Where plaintiff and defendant are corporations operating noncompeting stores on the same street in close proximity, and the owners of each corporation bear the same family name of Stein, the plaintiff, which has used the name 'Stein's' as a trade name for a period of thirty years, has spent large sums of money in making that name known to the public, and has had the name registered as a trade mark, may enjoin the defendant, which has never used such trade name in its business until shortly before suit, from using such name in connection with its business.

Marshall Melhorn, Davies, Wall & Bloch and W. A. Belt, all of Toledo, for appellant.

Levison & Levison, of Toledo, and Joseph B. Beckenstein, of Detroit, Mich., for appellee.

OVERMYER Judge.

The appellant, The Hugo Stein Cloak Company, a domestic corporation having its place of business in a five-story building at 602 Adams street, at the corner of Adams and Huron streets, fronting on Adams street, in the city of Toledo, Ohio, and engaged in the retail sale of clothing for women and misses, seeks to restrain by this suit The S. B Stein & Son, Inc., also a domestic corporation, having its place of business at 612 Adams street in that city, in a 20-foot front, two-story building, four doors west of appellant's main entrance, and engaged in the retail sale of diamonds and jewelry, from 'using the term 'Stein's' in the city of Toledo and vicinity insofar as it uses the same in advertising, in marking its products and in other uses made of said trade name in its business * * * and from in any way or manner, directly or indirectly, making use of the term 'Stein's,' and for an accounting of profits that defendant may have made by reason of unfair competition in trade * * *.'

It appears from the pleadings and the record that the operative facts are practically undisputed, and these will be somewhat fully set forth herein. Cases of this character especially are to be determined from the particular facts the law being quite clearly defined in the hundreds of reported cases on the subject of trade marks, trade names, and unfair competition in trade, both in our state reports and in federal reports, as well as in several authoritative text books on the subject.

Both parties hereto began business in Toledo, Ohio, about 1906, the appellant under its present corporate name; the appellee under the name of 'S. B. Stein' and later 'S. B. Stein & Son' and 'S. B. Stein & Son, Jewelers.' The appellant was in business on another street, Summit street, a number of blocks from its present location, until May, 1931, when it erected a building and moved to its present location. The appellee has been in business at its present location since 1906, but as above stated, under various names, its present name of The S. B. Stein & Sons, Inc., being taken in December, 1931, when the corporation was formed, five months after appellant moved to its present location nearby. Prior to incorporation, appellee conducted the business as a partnership with his son, and prior to that as an individual under the name S. B. Stein or S. B. Stein, Jeweler. The appellee's family name was Beckenstein, but was changed by him to Stein at the time of his naturalization about 1906.

The appellant during its business career has handled costume jewelry, but discontinued this line before moving to its present location. It is conceded that the lines of business of the parties are not competing lines.

Shortly after appellant began business it began to use the word 'Stein's' as a trade mark and trade name, and has ever since so used it, by means of signs, labels, posters, shopping bags, parcel wrappers, newspaper advertising, etc., in all of its solicitations and dealings with local customers and trade, and appellant has spent more than a million dollars in advertising that name in a particular form, viz., the word 'Stein's,' in the area from which it draws its retail trade. In 1936 appellant had the word 'Stein's' registered as a trade mark in Ohio.

The appellee never used the single word 'Stein's' as a trade mark or trade name in any signs, labels, posters or newspaper advertising, without other distinguishing and explanatory matter, until the fall of 1936, when it remodeled its store front and it then erected two neon electric signs bearing the single word 'Stein's,' one large sign bearing that word only across the front of its store, and another smaller neon sign bearing that word on top of a large clock on a post near the edge of the sidewalk in front of its store. On the face of the clock in smaller, black-painted letters, appeared the word 'Jewelers.' The name used on the signs referred to, in the style of letters used and general appearance, bears a striking resemblance to the style of letters used and general appearance of appellant's signs, except that they are neon electric signs while the signs on appellant's store front are of metal letters, not illuminated, which spell the word 'Stein's,' and that word is also painted on the awnings and appears on metal plates in appellant's show windows. In newspaper advertising and otherwise, where appellant uses its trade name, the words 'Adams at Huron' are added.

Prior to the fall of 1936, the appellee's newspaper display advertising was printed with the name 'S. B. Stein, Jeweler' or 'S. B. Stein & Son,' or 'S. B. Stein & Son, Jewelers' prominently displayed therein. Beginning in the fall of 1936 their advertising carried the single word 'Stein's' prominently displayed at the top of the advertisement in large letters, and the words 'S. B. Stein & Son, Jewelers, 612 Adams street, between Erie & Huron' or 'S. B. Stein & Son, 612 Adams street between Erie & Huron' in small letters at the bottom of the advertisement, accompanied by cuts of the father and son.

There is evidence that a number of persons have come into appellant's store, beginning in the fall of 1936, and inquired for jewelry, whereupon they were directed to appellee's store. Four of appellant's employees testified to a number of instances of confusion in this respect, but whether the persons came there as a result of confusion of names or because they thought appellant had taken over appellee's store or had a jewelry department in its store, does not clearly appear, although some of the instances clearly indicate that the parties had seen appellee's advertising in the newspapers with the word 'Stein's' appearing prominently at the top.

The foregoing are the salient facts, admitted or proven on the record. On these facts the appellant asks for the equitable relief set forth at the outset herein. It alleges that the trade name 'Stein's' has been exclusively used by it for thirty years in this locality in its advertisements and business relations with customers and the trade and the public; that its business and merchandise is known throughout this territory by the name of 'Stein's'; that the entire business reputation, identity and good will of its store has been merged into that distinctive word rather than its corporate name or the personnel of the company; and that the word 'Stein's' has acquired, in addition to its ordinary meaning, a secondary meaning and significance in this territory. It is charged that, by reason of appellee's adoption of the distinctive word 'Stein's,' to the exclusion of other descriptive matter on its signs referred to, and use of that distinctive word prominently in its advertising as above described, together with the proximity of appellant's store, the public are led to believe that there is some connection between the two stores, that the public has been and will continue to be confused and misled, and that appellee is making unwarranted profit by using appellant's trade name, all to appellant's damage for which he has not, and will not have an adequate remedy at law.

The appellee contends that the word 'Stein's,' as here used, is but an abbreviation of the...