Rosso & Mastracco, Inc. v. Giant Food Shopping Center of Va., Inc.

• Decision Date: 10 September 1958
• Docket Number: No. 4820,4820
• Citation: 200 Va. 159,104 S.E.2d 776
• Court: Virginia Supreme Court
• Parties: , 118 U.S.P.Q. 566 ROSSO AND MASTRACCO, INCORPORATED, TRADING AS GIANT OPEN AIR MARKET v. GIANT FOOD SHOPPING CENTER OF VIRGINIA, INCORPORATED, GIANT FOOD SHOPPING CENTER, INCORPORATED, A DELAWARE CORPORATION, AND LEBRAD, INCORPORATED, ETC. Record

Page 776

104 S.E.2d 776

200 Va. 159, 118 U.S.P.Q. 566

ROSSO AND MASTRACCO, INCORPORATED, TRADING AS GIANT OPEN AIR MARKET v. GIANT FOOD SHOPPING CENTER OF VIRGINIA, INCORPORATED, GIANT FOOD SHOPPING CENTER, INCORPORATED, A DELAWARE CORPORATION, AND LEBRAD, INCORPORATED, ETC.

Record No. 4820.

Supreme Court of Appeals of Virginia

September 10, 1958.

Joseph E. Baker and M. R. Broudy (Richard F. Broudy; Broudy & Broudy, on brief), for the appellant.

Thomas H. Willcox (William P. Dickson, Jr.; Raymond R. Dickey; Bernard Gordon; Robert F. Rolnick; Willcox, Cooke, Savage & Lawrence; Danzansky & Dickey, on brief), for the appellees.

JUDGE: SPRATLEY

SPRATLEY, J., delivered the opinion of the court.

Rosso and Mastracco, Incorporated, a Virginia corporation, trading as Giant Open Air Market, instituted this proceeding to enjoin the defendant, Giant Food Shopping Center of Virginia, Incorporated, from using the word 'Giant,' or any similar name or designation, in the conduct of the business of the latter, then or thereafter to be conducted in the City of Norfolk, Virginia, and the surrounding area. The plaintiff alleged in its bill that its trade name, 'Giant Open Air Market', had acquired a secondary meaning, that is, a peculiar significance that associated it with plaintiff's store, in the mind of the public it served; and that the word 'Giant' in the trade name of the defendant was likely to cause, and had caused, confusion among the consuming public in the area served by the plaintiff, to the damage of the plaintiff.

Giant Food Shopping Center, Incorporated, a Delaware corporation, the sole owner of Giant Food Shopping Center of Virginia, Incorporated, was, on its motion, admitted as a defendant. Likewise, Lebrad, Incorporated, a Delaware corporation, the proposed operator of the store of the Virginia corporation, was, on motion of the plaintiff, made a party defendant.

Giant Food Shopping Center of Virginia, Incorporated, hereinafter referred to as the defendant, answered, denying all of the material allegations in plaintiff's bill, and filed a cross-bill seeking to restrain plaintiff from using the word 'Giant' in its trade name. In its answer it alleged that the names 'Giant Food' and 'Giant Food Shopping Center' had been used by it and the other defendants, in Virginia, since 1941, and in the Washington, D.C. metropolitan area since 1935; that the defendant operated a total of seventeen stores, three of which were in Virginia; and that their yearly rate of sales was in a large amount. The intervening defendant and the added defendant adopted the answer and cross-bill of the original single defendant.

The case was heard ore tenus. Plaintiff presented its evidence and announced that it rested its case. Thereupon defendant moved to strike the evidence on the ground 'that there had been no showing as to confusion' between the trade names of the respective parties. The court, in a verbal opinion, stated that while the actual trade name, 'Giant Open Air Market,' had been shown to have a secondary meaning identifying it with plaintiff's business, there was no evidence to show that the single word 'Giant' had acquired such a meaning, by use, registration, printing, or advertisement. The court then added that it was further of opinion that the trade names of the respective parties were 'not so similar as to deceive the ordinary buyer,' or create confusion. The motion to strike was then sustained and the bill of the plaintiff was ordered to be dismissed. Upon motion of defendants, the cross-bill was dismissed without prejudice.

Plaintiff contends that the evidence viewed in the light most favorable to it shows that its trade name had acquired a secondary meaning, and that the defendant had unfairly used a simulation of it. In addition, it assigns error to the refusal of the court to admit certain testimony.

The defendant having moved to strike the evidence of the plaintiff, the effect was to submit the case for the decision of the chancellor, viewing the evidence in the light most favorable to plaintiff. The chancellor having sustained the motion, the question before us is whether the evidence, viewed as above stated, shows that the defendant was guilty of unfair competition. Kiss v. Gale, 187 Va. 667, 674, 675, 47 S.E.2d 353. * In order to sustain its action for an injunction, the burden was on the plaintiff to show facts which clearly and satisfactorily entitled it to such relief. Stoneman v. Wilson, 169 Va. 239, 248, 192 S.E. 816. It must also be remembered that when a matter is submitted to the sound discretion of a chancellor, the determination will not be set aside unless it is shown to be clearly erroneous. 1 M.J., Appeal and Error, §§ 277 and 278.

The evidence, so far as pertinent, may be summarized as follows:

In 1939, W. P. Rosso began trading as the 'Open Air Market' at the present place of business of the plaintiff: 339 Campostella Road, in the City of Norfolk, Virginia. In 1944-45, he entered into a partnership with his brother, L. H. Rosso, and Vincent J. Mastracco, and they continued the business as 'Open Air Market,' under the firm name of Rosso and Mastracco. In 1948, the partnership altered its trade name by prefixing the word 'Giant' to the words 'Open Air Market,' and continued thereafter as 'Giant Open Air Market.' Subsequently, the plaintiff's business was incorporated as Rosso and Mastracco, Incorporated.

The plaintiff corporation has advertised extensively by means of newspapers, radio, television and billboards throughout the City of Norfolk and the surrounding territory, Tidewater, Virginia, and Eastern North Carolina. Every one of its newspaper and billboard advertisements shows its trade name as 'Giant Open Air Market.' The newspaper advertisements described it as 'Virginia's Most Unusual Store, Giant Open Air Market, Open Twenty-four Hours a Day, Campostella Road, at Campostella Bridge.' However, on several occasions in its radio and television advertisements, it referred to itself as 'Giant.' Through honest advertising, reasonable or cheaper prices, and friendly treatment of customers, it has built up a very large business. Various kinds of merchandise have been included in addition to food and groceries, and a bakery shop opened.

In 1952 or 1953, some of plaintiff's officers and its general manager visited certain stores of the defendants in Washington, D.C., Alexandria and Richmond, and observed the character of the business conducted in their stores, the facilities offered, and the physical set-ups.

In June, 1956, officers of plaintiff saw a newspaper article announcing that the Giant Food Shopping Center of Virginia, Incorporated, had entered itno a contract for the construction of a store to be opened by it under the name of 'Giant Food' or 'Giant Food Shopping Center.' In November of that year, plaintiff repainted the sign above its store, which bore its trade name, and in the repainting increased the size of the word 'Giant' substantially, and reduced the size of the words 'Open Air Market.' It then began to place more and more emphasis on the word 'Giant' in its advertising. It also announced its intention to build a new store for its own use on the east side of Campostella Road, near its present location.

The June, 1956, advertisement of the defendants showed that they were planning the construction and operation of a store in the Southern Shopping Center in Norfolk, at Tidewater Drive and Little Creek Road, six or seven miles distant from the location of plaintiff's store. It contained a picture of the architects' conception of the proposed building, which showed a sign at the top of the structure, consisting of the words 'Giant Food.' Below the picture there appeared the name 'Giant Food Shopping Center of Virginia, Incorporated.'

In March, 1957, defendant caused to be published in a Norfolk, Virginia, newspaper the following advertisement:

'Since 1947 Giant Food Stores have quadrupled in number with ten of America's most beautiful food stores now serving the Old Dominion state.'

The first 'Open Air Market' was what its name implies, that is, a market in the open; but as its business increased the major portion of its operations was conducted in a large one-story room. The exhibits show that the store buildings of the respective parties differ greatly in architecture, color, and equipment. The store of the plaintiff is somewhat outmoded in structure and in equipment, while defendant's store is modern in structure and in such particulars as lighting, color, space, and departmental service. The respective trade names as used are wholly different, except as to the word 'Giant.'

Plaintiff advertises as an unusual store; while defendant advertises not as one store but as a large chain of modern stores. The full names of each of the parties appearing on their stationery, on their signs, and on their advertisements are clearly different. The manner in which the respective names are used and displayed, the character and appearance of the two stores show a substantial variance and distinction.

In 1955, plaintiff, for the first time, filed a certificate under Virginia Code, § 59-169, the so called 'Trader's Act,' setting forth that it traded under the name of 'Giant Open Air Market.' At the same time, it also got its first business license under that trade name.

A majority of plaintiff's witnesses had...