Perini Corp. v. Perini Const., Inc.

• Decision Date: 26 June 1989
• Docket Number: Civ. A. No. HAR 85-1821.
• Citation: 715 F. Supp. 719
• Parties: PERINI CORPORATION, Plaintiff, v. PERINI CONSTRUCTION, INC., Defendant.
• Court: U.S. District Court — District of Maryland

715 F. Supp. 719

PERINI CORPORATION, Plaintiff, v. PERINI CONSTRUCTION, INC., Defendant.

Civ. A. No. HAR 85-1821.

United States District Court, D. Maryland.

June 26, 1989.

Maureen Ward, Steptoe & Johnson, Washington, D.C. and William A. McDaniel, Jr., Murphy & McDaniel, Baltimore, Md., for plaintiff.

Charles R. Moran, Semmes, Bowen & Semmes, Baltimore, Md., for defendant.

MEMORANDUM OPINION

HARGROVE, District Judge.

Currently pending before this Court is plaintiff's motion for partial summary judgment on the issues of trademark and tradename infringement and unfair competition and motions by both parties for summary judgment on the issues of laches and abandonment. All issues have been fully briefed. Oral arguments were heard on March 8, 1989.

BACKGROUND

Bonfiglio Perini began his construction company sometime between 1895 and 1900 in the state of Massachusetts. In 1918, the sole proprietorship was incorporated as B. Perini and Sons, Inc. The company provided heavy construction services (railroad, highway, culvert and bridge work) primarily in New England. In 1957, B. Perini and Sons, Inc. changed its name to the Perini Corporation ("Perini Corp."). Perini Corp. went public in 1960 and its stock has been traded on the American Stock Exchange since 1970. Currently, Perini Corp. is a full-service construction and construction management firm. Examples of plaintiff's projects include the Sir Adam Beck Tunnels under Niagara Falls; portions of the San Francisco, Boston, Miami, New York City and Washington D.C. rapid transit systems; the Bloomington Dam in West Virginia; sections of the Trans Alaska and Trans Canada pipelines; major hotels and casinos in Atlantic City and Las Vegas; the Prudential Tower in Boston; an airbase in Ovda, Israel; and the mixed use urban redevelopment project at Golden Gateway in San Francisco.

Defendant Perini Construction, Inc. ("Perini Construction") was incorporated under the laws of the State of Maryland on April 23, 1970, and has at all times been headquartered in Hagerstown, Maryland. The founder, president and chief executive officer of Perini Construction is Dominick J. Perini ("Dominick"). Examples of Perini Construction's projects include the Church of God in Maryland in 1970; the MCI and MCTC prison facilities in 1982; Winchester Mall in Virginia in 1979; Lewis Market in Maryland in 1971; Hagerstown Junior College in Maryland in 1974; Avalon Manor in Maryland in 1972 and 1973; Martinsburg City Hospital in West Virginia in 1979; Columbia Gas of Maryland office building in Maryland in 1975; E.I. duPont de Nemours main office in West Virginia in 1980; Review and Herald office building in Maryland in 1982; Nibble with Gibble's buildings in Pennsylvania in 1971, 1972, 1975, 1976 and 1978; Ryder Truck buildings in Maryland in 1972, 1974, 1980 and 1983; and many other buildings including libraries, gymnasiums, public housing, and a performing arts center. More recently, Perini Construction built inter alia a physical education complex for Sheperd College in West Virginia in 1987; and a public school in Maryland in 1987.

DISCUSSION

Plaintiff has moved for summary judgment on the issues of trademark and trade name infringement and unfair competition. Summary judgment must be granted when "the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue of material fact and that the moving party is entitled to a judgment." Fed.R.Civ.P. 56(c). In the case at bar, there is no genuine issue of material fact.

Plaintiff's claims lie under the Lanham Act, 15 U.S.C. § 1125(a), common law service mark and trade name infringement and common law unfair competition. The relevant state law is principally that of Maryland. The standards of Virginia, West Virginia, and Pennsylvania ("Maryland area") regarding trademark and trade name protection are also relevant, because defendant has done business in each of these states. Each of these jurisdictions, however, incorporates standards equivalent to those enunciated by the Maryland courts, see Rosso & Mastracco, Inc. v. Giant Food Shopping Center, 200 Va. 159, 104 S.E.2d 776 (1958); A.W. Cox Department Store v. Cox's, Inc., 159 W.Va. 306, 221 S.E.2d 539 (1976); Zimmerman v. Holiday Inns of America, Inc., 438 Pa. 528, 266 A.2d 87 (1970), cert. denied, 400 U.S. 992, 91 S.Ct. 456, 27 L.Ed.2d 440 (1971).

Even though plaintiff asserts both state and federal claims, there is no conflict of law issue because "federal and state precedent almost always leads to the same result in most cases of common law trademark infringement and unfair competition." 2 J. McCarthy, 32:13 at 700. All three causes of action, although legally distinct, are based on the same legal theory and therefore rely on the same proof: that the use of the Perini name by both companies results in a likelihood of confusion. See Quality Inns International, Inc. v. McDonald's Corp., 695 F.Supp. 198, 209 (D.Md.1988); 1 J. McCarthy, Trademarks and Unfair Competition, 9:1 at 300-02 (2d Ed.1984). Consequently, the same legal standard applies to all of the plaintiff's claims. See N. Hess & Sons, Inc. v. Hess Apparel, Inc., 216 U.S.P.Q. 721, 733 (D.Md. 1982), aff'd., 738 F.2d 1412 (4th Cir.1984).

A trademark is "any word, name, symbol, or device or combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others." 15 U.S.C. § 1127; see Schering Corp. v. Schering Aktiengesellschaft, 667 F.Supp. 175, 185-6 (D.N.J.1987). A tradename "identifies the business of the producer of goods while a trademark identifies the goods themselves." Schering Corp., 667 F.Supp. at 186, citing, Vera Perfumeria v. Cosmetica, S.A. v. Vera Licensing, Inc., 214 U.S.P.Q. 495, 496 (S.D. N.Y.1980).

It is axiomatic that a trademark is acquired through appropriation of use. Cotton Ginny, Ltd. v. Cotton Gin, Inc., 691 F.Supp. 1347, 1352 (S.D.Fla.1988) (citations omitted). The trademark does not need to be registered under the Lanham Act to be protected; the appropriation and use of the trademark will establish the exclusive right to the mark. Id. The "rights to a trademark ... accrue from prior use to the one who first uses the mark in connection with a particular line of business." Id., quoting, Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 819 (1st Cir.1987) (citations omitted).

SECONDARY MEANING

There is an initial element of proof required where, as here, the mark to be protected is a personal name. Perini is the surname of the founders of both Perini Corp. and Perini Construction. Because Perini is a surname, plaintiff must prove that the name Perini has secondary meaning; that, to the minds of the relevant public, the name Perini is associated with Perini Corp.

Secondary meaning contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark.

Baltimore Bedding Corp. v. Moses, 182 Md. 229, 34 A.2d 338, 343 (1943); see also Food Fair Stores, Inc. v. Lakeland Grocery Corp., 301 F.2d 156, 161 (4th Cir.), cert. denied, 371 U.S. 817, 83 S.Ct. 31, 9 L.Ed.2d 58 (1962); Chayt v. Darling Retail Shops Corp., 175 F.Supp. 462, 468 (D.Md. 1959). National Shoe Stores Co. v. National Shoes of New York, Inc., 213 Md. 328, 131 A.2d 909, 913 (1957); To determine secondary meaning, the courts in this jurisdiction and others have examined:

1. length of time in business;

2. the senior or first user's advertising expenditures;

3. consumer studies linking the name to the source;

4. sales success;

5. unsolicited media coverage of the product;

6. attempts to plagarize the mark; and

7. length and exclusivity of the mark's use.

See 815 Tonawanda Street Corp. v. Fay's Drug Co., Inc., 842 F.2d 643, 648 (2d Cir. 1988), citing, Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208, 217 (2d Cir. 1985) (collecting cases); Yarmuth-Dion, Inc. v. D'ion Furs, Inc., 835 F.2d 990, 993 (2d Cir.1987) (citation omitted); Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1528-9 n. 3 (4th Cir.1984); Kyhos v. Perpetual Savings & Loan Assoc., 480 F.2d 204, 205-9 (4th Cir.1973); Communications Satellite Corp. v. Comcet, Inc., 429 F.2d 1245, 1248 (4th Cir.) cert. denied, 400 U.S. 942, 91 S.Ct. 240, 27 L.Ed.2d 245 (1970); Little Tavern Shops, Inc. v. Davis, 116 F.2d 903, 906 (4th Cir.1941); Chayt, 175 F.Supp. at 469; Fox Fur Co. v. Fox Fur Co., 59 F.Supp. 12, 14 (D.Md.1944); Baltimore Bedding Corp., 34 A.2d at 342; N. Hess & Sons, Inc., 216 U.S.P.Q. at 733.

Applying these principles to the case at bar, there can be little doubt that Perini Corp. has established secondary meaning in the name Perini. Perini Corp. has used the name Perini in its corporate name since 1918 and it has been known as Perini Corp. since 1957. Perini Corp. has been doing business nationally and internationally since the 1950s. The Massachusetts company entered the Maryland area at least by World War II when it constructed significant projects in Maryland and Pennsylvania for the U.S. Army Corps of Engineers.

Perini Corp. has continued to maintain a presence in Maryland. It has consistently bid for work in the Maryland area. It has spent over $12.8 million on advertising and corporate relations throughout the United States, including the Maryland area, since 1960. Perini Corp. has received unsolicited media coverage by virtue of its being a public company since 1961, and traded on the American Stock Exchange since 1970. The company has also received unsolicited...