Schwartz v. Slenderella Systems of California

• Decision Date: 27 August 1953
• Citation: 260 P.2d 256
• Court: California Court of Appeals Court of Appeals
• Parties: SCHWARTZ v. SLENDERELLA SYSTEMS OF CALIFORNIA, Inc. * Civ. 19671.

Page 256

260 P.2d 256

SCHWARTZ v. SLENDERELLA SYSTEMS OF CALIFORNIA, Inc. ^*

Civ. 19671.

District Court of Appeal, Second District, Division 1, California.

Aug. 27, 1953.

Rehearing Granted Oct. 22, 1953.

Samuel Maidman, Los Angeles, for appellant.

Newlin, Holley, Tackabury & Johnson, and Hudson B. Cox, Los Angeles, for respondent.

ROBERT H. SCOTT, Justice pro tem.

Plaintiff appeals from an adverse judgment in an action in which he sought an injunction to restrain defendant corporation from using the name 'Slenderella'. The facts are not in dispute and both parties state that they are as follows:

Ever since July 13, 1939, appellant has been engaged in the business of selling women's apparel at retail at two locations in the City of Los Angeles, County of Los Angeles, State of California, operating under the tradenames 'Slenderella' and 'Slenderella of Hollywood'. Appellant specializes in and sells large and half-size women's apparel and accessories. Large-size garments are specially designed for the woman of more than average or standard proportions, and half-size are specially designed for the short, heavy-set woman.

On July 14, 1939, appellant filed a certificate in the office of the County Clerk of the County of Los Angeles, State of California, of doing business under said fictitious firm names pursuant to Sections 2466 and 2468 of the Civil Code of the State of California, and on August 2, 1944, and August 8, 1944, the Secretary of State of the State of California issued to appellant certificates of registration covering tradenames 'Slenderella' and 'Slenderella of Hollywood.'

Since 1939, appellant has consistently identified the goods sold by him by the use of said tradenames in local newspaper advertising, direct mail advertising to a list of approximately 17,500 customers, and by affixing labels to approximately fifty to sixty per cent of all his merchandise. By reason of appellant's experience and the great care exercised by him in his business and the high standards set by him under the said tradenames, he has established a good reputation, and his goods, wares and merchandise have become known to the users and prospective users thereof by the names 'Slenderella' and 'Slenderella of Hollywood'.

Respondent is a California corporation incorporated in the State of California on June 8, 1951, under the name 'Silooette Systems of California, Inc.' which name was changed to 'Slenderella Systems of California, Inc.' on or about January 14, 1952. Respondent is engaged in the business of operating slenderizing and weight reducing salons specializing in weight reduction, diet control and posture correction for women, with two branches in the City of Los Angeles, one in the City of Pasadena and one in the City of Beverly Hills, all within the County of Los Angeles, State of California.

Respondent is one of a number of affiliated companies operating in various parts of the United States under the tradename 'Slenderella Systems', and the earliest use of the tradename 'Slenderella' by any of the affiliated companies was after December 1, 1951. One of the affiliated companies, Slenderella Systems, Inc., a Delaware corporation, acquired by assignment a United States patent trademark 'Slenderella' previously registered by one Erika Schneider under Registration No. 386,714, dated April 22, 1941. This trademark registration was adopted and used for sugarless foods for health purposes, specifically, candies.

Respondent has used the tradename 'Slenderella' by permission of its affiliated company, Slenderella Systems, Inc., a Delaware corporation, since January 2, 1952, which is approximately two and one-half months prior to the filing of the complaint herein.

Prior to appellant's use of the tradename 'Slenderella', it had been used and abandoned by one Henry Semaria in connection with certain retail stores located in Sacramento and San Francisco, California. There was also one other prior use of the tradename 'Slenderella' by one J. P. Schwarze, of Los Angeles, California, who, in the year 1933, was engaged in the manufacture of wheat flour. There is no showing that the tradename 'Slenderella' was used after that time except by the appellant, and at the time of the trial only appellant and respondent were using said tradename in California. Since respondent commenced the use of the tradename 'Slenderella', said tradename has been advertised by it in the metropolitan newspapers of Los Angeles, and up to May 31, 1952, respondent had spent a sum in excess of $15,000 for such advertising. Respondent's affiliated companies or corporations maintain uniformity in their general advertising throughout the various states in which they operate.

Respondent's business consists of a slenderizing course for women, and it sells no women's apparel or clothing accessories, nor does it manufacture any thereof, or own or operate any dress shops or women's apparel shops.

Appellant is not engaged in the business of weight reduction, diet control or posture correction.

Since the inception of respondent's business in California under the tradename 'Slenderella', the following incidents have occurred:

1. Employees in appellant's establishment have received numerous telephone calls intended for the respondent.

2. That the said misdirected telephone calls have continued since the listing of respondent's name in the Central Telephone Directory of Los Angeles.

3. That many of the appellant's customers and prospective customers have inquired as to appellant's ownership or connection with respondent's establishments, which requires the taking of time in the explanation by appellant and his employees to these inquiries.

4. That certain of appellant's customers and prospective customers have gone to the respondent's locations in Hollywood and Beverly Hills believing that appellant had opened women's clothing shops at the said locations.

5. That customers and prospective customers have stated to appellant and his employees that since appellant is in the weight-reducing business, they would rather first reduce their weight before purchasing large or half-size apparel from the appellant.

6. That the appellant and his employees have been asked on recurring occasions to quote prices for reducing treatments, necessitating the taking of time to make explanations.

7. That the appellant is considering opening a branch store in Beverly Hills upon the termination of his lease of the Hollywood store.

8. That some mail, not including numbered street addresses, intended for the respondent's establishments, have been received by appellant.

The trial court made findings consistent with the facts above stated and found in addition thereto that confusion arising from similarity of names resulted principally from inattention and carelessness on the part of persons so confused. It further found:

'9. The respective businesses operated by plaintiff and defendant respectively are non-competitive and are in unrelated fields and the use by defendant of the trade name 'Slenderella' in the metropolitan area of Los Angeles and elsewhere has not occasioned damage or injury to the plaintiff and has not resulted in the deception or misleading of the public.

'10. Notwithstanding that at the time of the adoption and use of said name in California by defendant it was advised and knew of plaintiff's use of said name in connection with his business, defendant's adoption and use of the trade name 'Slenderella' was in good faith and without design or intent to capitalize upon plaintiff's prior use of said name in his non-competitive and unrelated business.'

It then concluded:

'2. That the use by defendant of the trade name 'Slenderella' does not infringe upon plaintiff's use of said name in his non-competing and unrelated business and does not constitute an unfair or improper use of said name.

'3. That plaintiff's use of the name 'Slenderella' has not resulted in its acquiring any secondary meaning in the mind of the public.

'4. That plaintiff is not entitled to protection against the use of the trade name 'Slenderella' by defendant in connection with its slenderizing and reducing treatment business, including the sale and distribution to its patrons of mints and bulking compounds under said trade name', and rendered judgment accordingly.

In urging a reversal of the trial court's decision in the instant case, plaintiff declares: '* * * it must be borne in mind that even though the goods and services of the appellant and respondent are dissmilar, nevertheless each of the parties caters to the same class of the public, namely, women who do not enjoy the benefits of a standard figure and who must either wear large or half-size apparel or take reducing courses with the hope of acquiring a standard size figure. Notwithstanding the fact that competition need not be proved, it is not difficult to perceive that both appellant and respondent are competing for the same purchasing dollar.'

The foregoing must be considered, however, in the light of the allegation in plaintiff's complaint: '* * * that plaintiff and his business have been the subject of ridicule...