Rothman v. Greyhound Corporation

• Decision Date: 21 July 1949
• Docket Number: No. 5838.,5838.
• Citation: 175 F.2d 893
• Parties: ROTHMAN et al. v. GREYHOUND CORPORATION et al.
• Court: U.S. Court of Appeals — Fourth Circuit

175 F.2d 893 (1949)

ROTHMAN et al. v. GREYHOUND CORPORATION et al.

No. 5838.

United States Court of Appeals Fourth Circuit.

Argued June 16, 1949.

Decided July 21, 1949.

Nathan Hamburger and Hilary W. Gans, Baltimore, Md., for appellants.

Joseph R. Byrnes, Baltimore, Md. (David P. Gordon and Levy, Byrnes & Gordon Baltimore, Md. on brief), for appellees.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

Greyhound Cab Company, a co-partnership which operates a large fleet of taxicabs in Baltimore, appeals from a judgment of the District Court enjoining it from using the name "Greyhound" and the picture of a running greyhound dog, the trade name and symbol used by the Greyhound Corporation and Pennsylvania Greyhound Lines, Inc., upon the motor buses which they operate on a national scale. It is conceded that the name and symbol constitute a valid trade mark originated and owned by the Bus Company, and misappropriated by the Cab Company, and the only question for decision is whether the former has lost the right to injunctive relief in consequence of the latter's wrongful conduct.

The Greyhound Corporation, together with twenty-three subsidiaries and affiliates, operates a nation wide motor bus service and has served the Baltimore area since 1928. Shortly after its formation in 1926, it painted its buses blue and white and displayed the name "Greyhound" and the dog symbol on all its buses, terminals, lunchrooms, uniforms, stationery and advertisements. By 1936 the business had become a unified transportation system, covering virtually the entire United States, and today the buses are known under their familiar name and appearance throughout the nation.

The Greyhound name and symbol first appeared on taxicabs in Baltimore in 1932 when one Ralph Adelman saw them on a Greyhound bus and appropriated them without authority for use on four taxicabs which he operated in the city. He sold his cabs and went out of business on December 31, 1933, and on January 14, 1934, presumed to give to the defendant co-partners the right to use the name in the corporate title of the Greyhound Cab Company, Inc., which they were then organizing. When Adelman first appropriated the trade mark, the Bus Company was using seventy-four buses to service the Baltimore area, and in 1934 it was maintaining forty-six regular schedules a day to and from the city.

The Bus Company made no protest about the defendants' use of the Greyhound name and symbol until 1940. It then requested them to desist and when they failed to comply, filed suit in the court below in February, 1941. While this suit was pending, the Cab Company was dissolved and its assets were transferred to the defendants trading as a partnership under the name of Greyhound Cab Company. The Greyhound cabs were thereupon brought into the Diamond Cab system, a federation of independent owners organized in the interest of economy of operation and effectiveness of advertising. There were then seventy-four Greyhound cabs operating in Baltimore which constituted about 25 per cent. of the total number of cabs in the Diamond federation. They were repainted in accordance with the Diamond system of decoration. The running dog symbol was eliminated and a conspicuous red diamond with the words "Diamond Cab" was painted on the rear doors. The only indicia of Greyhound ownership were the words "Greyhound Cab" which were painted in smaller black lettering on the front doors in order to comply with the requirement of the Maryland Public Service Commission that a cab owner's name be inscribed on the vehicle.

As the result of this change, the Bus Company on January 29, 1942, entered a voluntary dismissal without prejudice of its suit in the District Court. It was not thought that the inconspicuous use of the word "Greyhound" on cabs identified in the public mind as Diamond would lead to confusion. In the fall of 1943, however, the Greyhound cabs were withdrawn from the Diamond system and the cabs were repainted and the Greyhound name and symbol were displayed as before, except that the name "Greyhound" appeared on the sides of the cabs in larger letters than had been previously used. No protest was made about this renewed display of plaintiffs' name and symbol until the summer of 1947, the delay, according to the plaintiffs, being due to the fact that the change was not called to the attention of top officials until that time, presumably because of the pressure of the war emergency. The present suit was brought on July 20, 1948.

The defendants do not contest the conclusion of the District Judge that the Greyhound's name and symbol are distinctive, and should be given a wide range of protection. See Greyhound Corporation v. Goberna, 5 Cir., 128 F.2d 806. Nor do they seriously question his conclusion that they are guilty of infringement and that when they "began using the name `Greyhound" and the running dog symbol, they were fully aware of the fact that the plaintiffs had been using them for a number of years." The defendants' sole contention is that the plaintiff has been guilty of such acquiescence and laches as to be estopped from seeking injunctive relief.

It is clear that the plaintiffs' dismissal of the 1941 suit, without exacting a formal agreement from the Cab Company not to return to its previous use of the trade mark, did not constitute acquiescence by the plaintiff in defendants' subsequent infringement. The suit was dismissed after the use of the Greyhound symbol on the cabs had been abandoned and the inconspicuous use of the name was not deemed sufficiently prejudicial to warrant further court action. The fact that the dismissal was taken without prejudice indicates that the plaintiff did not acquiesce in a return to the original decoration of the cabs but reserved the...