Peter Pan Restaurants v. Peter Pan Diner

• Decision Date: 05 April 1957
• Docket Number: Civ. A. No. 1860.
• Citation: 150 F. Supp. 534
• Parties: PETER PAN RESTAURANTS, Inc., v. PETER PAN DINER, Inc.
• Court: U.S. District Court — District of Rhode Island

150 F. Supp. 534

PETER PAN RESTAURANTS, Inc., v. PETER PAN DINER, Inc.

Civ. A. No. 1860.

United States District Court D. Rhode Island.

April 5, 1957.

Daniel Jacobs, Levy, Carroll & Jacobs, Providence, R. I., for plaintiff.

Elliot A. Salter, Providence, R. I., for defendant.

DAY, District Judge.

The plaintiff seeks relief against the defendant's alleged infringement of the plaintiff's federally registered service mark "Peter Pan" for a restaurant service and against its alleged unfair competition. The jurisdiction of this Court is invoked under the provisions of Title 28 U.S.C.A. §§ 1332(a) and 1338(a) and (b).

The parties have stipulated as to certain facts and the plaintiff presented the testimony of one of its officers in support of the allegations of its complaint. No evidence was presented by the defendant.

Plaintiff is a Delaware corporation having its principal office in Wilmington in that State. It is engaged in the business of operating a chain of restaurants and of rendering certain services to restaurants, such services comprising the designing of and giving advice concerning the construction and equipment of restaurants and their general management. Plaintiff operates its own restaurants under the name of "Peter Pan" restaurants. It opened the first of these restaurants in 1948 in Chicago, Illinois. Until 1954 all of its restaurants were located in that city.

As an incident to its advisory or management services, it licenses those who engage its services to use the name "Peter Pan" on their places of business, menus, napkins, etc. The first restaurant operating under this arrangement appears to have been opened in Detroit, Michigan, in 1953.

The defendant is a Rhode Island corporation, having been incorporated under the laws of that State on December 23, 1953, under the name of "Peter Pan Diner, Inc.", for the purpose of engaging in the business of operating a diner and restaurant. Its restaurant was opened for business in Providence, Rhode Island, in June 1954.

Although the restaurants owned by the plaintiff and its licensees were all located in Illinois and Michigan at the time defendant was incorporated and began to do business, it appears that subsequent to June 1954 the plaintiff or its licensees began to operate additional restaurants in Boston, Massachusetts, Cleveland, Ohio, and Washington, D. C. There was also testimony by its officer that the plaintiff has plans for expansion into other territories. This witness also testified as to the volume of its sales and those of its licensees and as to the amount of money that had been expended for advertising in the cities and states where their restaurants were located.

Plaintiff's service mark for a restaurant service consisting of the words "Peter Pan" in combination with an attractive design was registered in the United States Patent Office on August 11, 1953.

The present action was commenced on May 25, 1955. No evidence was produced to show that the defendant or anyone connected with it prior to its adoption of the name "Peter Pan Diner, Inc.", or the commencement of its business, had ever heard that the service mark "Peter Pan" was being used by the plaintiff in connection with its business and plaintiff makes no claim that the defendant had such knowledge. Similarly, no evidence was presented by the plaintiff to show the character of the defendant's business—whether it caters to and serves local residents or customers from other states. Insofar as the record discloses, it is purely a local establishment catering to residents of Providence and vicinity.

The first issue to be determined is whether the plaintiff has established its right to relief under the provisions of the Lanham Act, 15 U.S.C.A. § 1051 et seq. Title 15 U.S.C.A. § 1114 provides in part:

"Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services; * * * shall be liable to a civil action by the registrant for any or all of the remedies hereinafter provided * * *."

Title 15 U.S.C.A. § 1127 provides in part:

"In the construction of this chapter, unless the contrary is plainly apparent from the context * * *

The word `commerce' means all commerce which may lawfully be regulated by Congress."

While it is true that the scope of Congressional control of commerce is broad it is not without limit. The limits of its control are well stated in Fairway Foods, Inc., v. Fairway Markets, Inc., 9 Cir., 227 F.2d 193, at page 197:

"* * * The scope of Congressional control of commerce is undoubtedly broad, extending as it does, not only to transactions which can be deemed to be essential parts of a flow of interstate commerce but also to activities intrastate in character which are possessed of a close and substantial relation to interstate commerce. However, it was well said in N.L.R.B. v. Jones & Laughlin Steel Corp., 1937, 301 U. S. 1, 37, 57 S.Ct. 615, 624, 81 L.Ed. 893:

"`* * * the scope of this power must be considered in the light of our dual system of government and may not be extended so as to embrace effects upon interstate commerce so indirect and remote that to embrace them, in view of our complex society,

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