Plains Tire and Battery Co. v. Plains A to Z Tire Co., Inc.

• Decision Date: 19 January 1981
• Docket Number: No. 5321,5321
• Citation: 622 P.2d 917
• Parties: PLAINS TIRE AND BATTERY COMPANY, a Wyoming Corporation, Appellant (Plaintiff), v. PLAINS A TO Z TIRE CO., INC., a Wyoming Corporation, Appellee (Defendant).
• Court: Wyoming Supreme Court

Page 917

622 P.2d 917

213 U.S.P.Q. 601

PLAINS TIRE AND BATTERY COMPANY, a Wyoming Corporation, Appellant (Plaintiff), v.PLAINS A TO Z TIRE CO., INC., a Wyoming Corporation, Appellee (Defendant).

No. 5321.

Supreme Court of Wyoming.

Jan. 19, 1981.

Kathleen H. Fedore, Smith, Stanfield & Scott, Laramie, for appellant.

John D. Erdmann, Guy, Williams, White & Argeris, Cheyenne, for appellee.

Before ROSE, C. J. ^*, McCLINTOCK, RAPER^**, THOMAS and ROONEY, JJ.

McCLINTOCK, Justice.

Two companies, both of which are in the business of selling tires and automotive accessories and services in Laramie, Wyoming, and both of which use the terms "Plains,""Tire" and "Company" in their names, are parties to the present litigation.Plains Tire and Battery Company, Inc., filed a complaint against Plains A to Z Tire Company, Inc., seeking to enjoin defendant from using the name Plains A to Z Tire Company, Inc., and also to recover damages for the alleged trade-name infringement.After trial to the district court, the trial judge found generally for defendant and against plaintiff.We reverse the judgment and remand with directions.

On appeal, appellantPlains Tire and Battery Company raises three issues:

1.The trial judge erred in failing to find that the terms "Plains" and "Tire" acquired a secondary meaning in the Laramie, Wyoming area.

2.The trial judge's decision was inconsistent with the "substantial and uncontradicted evidence presented" at trial.

3.The trial judge erred in failing to award damages.

Both companies have a common origin.Beginning in 1945, four men, A. T. Gibbs, Charles L. Peters, W. E. Lawson and Ivan T. Spratt, who had all previously worked for Gates Rubber Company in Denver, Colorado, established various tire and automotive equipment businesses in Cheyenne and Laramie, Wyoming.

Appellee's predecessor in interest, Plains Motors, Inc., was located in Cheyenne and incorporated in the State of Wyoming in 1950.In 1952 Plains Motors was consolidated with another preexisting business, A to Z Tire Company, which was also located in Cheyenne, Wyoming.After the consolidation, the corporate name was changed to Plains A to Z Tire Company, Inc.In 1966Melvin E. Lenhardt, who is presently president and principal stockholder of the business, purchased Plains A to Z Tire Company, Inc.

Until 1971 Plains A to Z Tire Company's trading area consisted solely of Cheyenne, Wyoming.Since that time, appellee has expanded its trading area with branch stores in Wheatland and Laramie, Wyoming.Appellee also opened a branch store in Scottsbluff, Nebraska that was no longer in operation at the time of trial.Before Plains A to Z Tire Company opened its branch store in Laramie in January of 1978, it began sending a salesman to Laramie in September of 1971.The salesman primarily solicited commercial accounts.During this time appellee also ran an advertisement in the yellow pages of the Laramie phone book listing its Cheyenne address and phone number.During this period, Lenhardt indicated that he began looking for a building to house a branch store in Laramie.Lenhardt indicated that

"... we noticed the market potential (in Laramie) was much greater after Mr. Stratch came to work for me back in '74 or '75, I'm not sure of the year, and due to the fact that Mr. Stratch knew all of these accounts over here.''

Before Stratch began working for Lenhardt, he was part owner of Wytox Service Center, located in Laramie.Wytox Service Center engages in essentially the same enterprise as the parties to this appeal.Stratch sold his interest in Wytox Service Center before he came to work for Lenhardt.The sales contract included a covenant preventing Stratch from competing with a Mr. McKinney, the purchaser of Wytox.The right to enforce the covenant was litigated and the trial court held in favor of Mr. McKinney.However, as Lenhardt testified,

"... shortly after the decision was handed down, Mr. McKinney then sold Wytox Service Center and upon Mr. McKinney's selling Wytox Service Center he then got a hold (sic) of Mr. Neil Stratch and asked him if he would be willing to pay a sum of money to declare that contract void and Mr. Stratch and Mr. McKinney worked out some type of arrangement as far as a cash settlement."

During the time that appellee's predecessors in interest were being established in Cheyenne, appellant's predecessor in interest was being established in Laramie.Appellant's predecessor in interest, Plains Tire and Battery CompanyNo. 2, Inc., was established in December of 1945 and was incorporated the next year.In 1947, the original owners of this business sold it to Vernon Wilkinson and Sy Gerstner.A certificate of dissolution was filed in 1951 and, thereafter, the business continued to operate as a partnership under the name Plains Tire and Battery Company, until the death of Mr. Wilkinson in 1976.After his partner's death, Gerstner operated the business until 1977 when he sold Plains Tire and Battery Company to Larry C. Nicholls, Vickie Nicholls and Carl E. Malouf.The business was once again incorporated in 1977.

The trading area has basically remained the same from the time Wilkinson and Gerstner purchased the business until the present.The trading area includes all of Albany County, Hanna, Arlington, Medicine Bow and Rock River, Wyoming, and Walden, Colorado.The new owners of Plains Tire and Battery Company have also opened a branch store in Rock Springs, Wyoming.

The testimony indicates that at one point in 1977 Lenhardt looked into the possibility of purchasing Plains Tire and Battery Company.He did not do so because the location was not suitable for the type of commercial business in which appellee engages.¹

After learning that Lenhardt intended to open a branch store in Laramie, Nicholls had his attorney write to Lenhardt requesting that Lenhardt refrain from using the word "Plains" in the business name.The letter provides in part:

"As you are probably aware, my client's business name has been used in Laramie in excess of 30 years and it has established considerable business recognition employing that name.My client wishes to have your assurance that you did not plan to use the word 'Plains' with respect to conducting tire or automotive accessories sales in Laramie."

Lenhardt made no formal response to this request but did use the word "Plains" in his trade-name when he opened a branch store in Laramie.

I. TRADE-NAME INFRINGEMENT

Plains Tire and Battery Company contends that the trial judge's decision is clearly erroneous because it is not supported by the evidence.The question of trade-name infringement is largely one of fact, Wyoming National Bank of Casper v. Security Bank & Trust Co., Wyo., 572 P.2d 1120, 1125(1977), and as we have often reiterated, questions of fact are to be determined by the trier of fact.We will not substitute our view of the facts for that of the trier of fact, and findings will only be set aside upon appeal if they are "clearly erroneous or contrary to the great weight of evidence."Kvenild v. Taylor, Wyo., 594 P.2d 972, 976(1979).Even if there are no specific findings of fact, a judgment carries with it every finding of fact supporting the successful party that "can be reasonably and fairly drawn from the evidence."Kvenild, supra, 594 P.2d at 976.

In Safeway Stores v. Rudner, 9 Cir., 246 F.2d 826(1957), the Ninth Circuit Court of Appeals reversed the district court's decision denying plaintiff's request for an injunction enjoining defendant from using the trade-name Safeway.The appellate court found:

"The evidence showed that, when the action was brought and at all times thereafter, there was a likelihood a probability, if not a certainty that, unless enjoined, appellee's use of the trade name 'Safeway' would greatly and irreparably damage appellant.That showing was sufficient to entitle appellant to injunctive relief."Safeway Stores, supra, 246 F.2d at 830.

While we are always reluctant to set aside a trial court's judgment where the question presented requires a factual determination, this reluctance does not prevent such action if we find little or no evidence to support the judgment.Kvenild, supra, 594 P.2d at 976.We agree with appellant.There is no evidence in the record to support the trial court's judgment.

Trade names and trademarks used in connection with a service or product over time create a commercial magnetism, and the law protects this psychological effect."The controlling principle is that a person may not pass off his goods or his business as the goods or business of another."Standard Oil Company v. Standard Oil Company, 10 Cir., 252 F.2d 65, 72(1958).

In order to take advantage of this legal protection the party seeking relief must prove that there has been a trade-name infringement.To do so, the moving party must prove: First, that the trade name used by the offending party is deceptive or confusing, in that the words or symbols are whimsical and not descriptive of the goods or services, or that the trade name has acquired a secondary meaning; second, that the public is or will be confused and deceived by the use of a similar trade name.First National Bank of Lander v. First Wyoming Savings and Loan Association, Wyo., 592 P.2d 697, 703; and Annot., 150 A.L.R. 1067, 1069.

Words that are whimsical or not descriptive of the goods or services have been held to be exclusive.However, words that are descriptive or geographical have been held to be nonexclusive because of public policy.Bernstein v. Friedman, 62 Wyo. 16, 160 P.2d 227, 229(1945);andAmerican Plan Corp. v. State Loan & Finance Corp., 3 Cir., 365 F.2d 635, 638(1966).

The trade names Plains Tire and Battery Company, Inc., and Plains A to Z Tire Company, Inc., do not appear to be deceptive or confusing on their face and the words common to both are generic and geographical.Therefore, it must be determined whether there was substantial evidence...