Stagg Shop of Miami, Inc. v. Moss

• Decision Date: 29 April 1960
• Docket Number: No. 1574,1574
• Citation: 120 So.2d 39
• Parties: STAGG SHOP OF MIAMI, INC., a Florida corporation, and Stagg Shop of Coral Gables, Inc., a Florida corporation, Appellants, v. Albert MOSS and Maurice Moss, a co-partnership d/b/a Stagg, Ltd., Appellees.
• Court: Florida District Court of Appeals

Page 39

120 So.2d 39

STAGG SHOP OF MIAMI, INC., a Florida corporation, and Stagg Shop of Coral Gables, Inc., a Florida corporation, Appellants, v. Albert MOSS and Maurice Moss, a co-partnership d/b/a Stagg, Ltd., Appellees.

No. 1574.

District Court of Appeal of Florida, Second District.

April 29, 1960.

Rehearing Denied May 13, 1960.

Sidney M. Dubbin, West Palm Beach, and Katzentine & Heckerling, Miami, for appellants.

Jack Ackerman, West Palm Beach, for appellees.

ALLEN, Chief Judge.

The appellant, as plaintiff in the lower court, brought an action for a temporary injunction, an accounting of profits and a permanent injunction against the appellee-defendants to enjoin them from using the name 'Stagg' in defendant's business. The temporary injunction was denied and, after a final hearing, plaintiff's complaint was dismissed with costs taxed against it. After plaintiff's petition for rehearing was denied, this appeal was filed.

William and Martha Cohen opened a men's clothing business in Coral Gables in February, 1949, under the name of 'Stagg Shop.' After the business prospered they incorporated their business on December 3, 1956, as 'Stagg Shop of Miami, Inc.,' a Florida corporation. The name of this corporation was subsequently changed to 'Stagg Shop of Miami Beach, Inc.,' with William Cohen as its president and Martha Cohen as its secretary.

On April 2, 1957, the Cohens formed another corporation under the name of 'Stagg Shop of Coral Gables, Inc.,' with William Cohen as president and Martha Cohen as secretary.

On December 31, 1958, Albert Moss registered the name 'Stagg Ltd.' with the Secretary of State as a trade-mark. 'Stagg Ltd.' is also a men's clothing store but is located in West Palm Beach. The Cohens demanded that the defendants discontinue the use of the name 'Stagg,' but after defendants refused this request, plaintiffs filed the instant suit.

The plaintiffs contend that they are not required to show any actual instances of direct competition or customer confusion in order to establish a right to injunctive relief; but that they need only show a possibility of close competition in the future to entitle them to the requested relief. Such contentions are untenable under the applicable principles of law of this State.

Under Florida law, as under the common law of most states, customer confusion is the gist of the actionable wrong. The rule of the early common law was to the effect that there must be shown actual or direct competition between the litigants as an essential prerequisite to relief in an action for infringement of a trade-mark or trade name. It has been held in several cases that there cannot be unfair competition unless there be, in fact, competition; that generically the term 'unfair competition' presupposes a real competition, present or prospective, of some kind; and that to invoke euqitable relief the plaintiff must show that there is a competition. Annotation 148 A.L.R. 12, 19. The Florida Supreme Court, in Sun Coast, Inc. v. Shupe, Fla.1951, 52 So.2d 805, held that to justify enjoining the use of a trade name, circumstances must be such that it appears that the business of the first user will suffer from deceptive use, or that by reason of unfair competition there will be an imposition on the public.

The common law does not give anyone the exclusive use of a trade name, even where that name is distinctively associated by the public with his product. Webb's City, Inc. v. Bell Bakeries, 5 Cir., 1955, 226 F.2d 700. Irrespective of this principle, rival manufacturers or tradesmen have no right, however, to beguile prospective purchasers into buying their wares under the impression they are buying those of their rivals by the use of imitative devices or other unfair means. It is the injury to a competitor caused by such deceptive and fraudulent conduct that is the ground upon which courts of equity act in granting relief. Therefore, if one businessman resorts to the use of any artifice or contrivance for the purpose of representing his goods or his business as the goods or business of a rival tradesman, thereby deceiving the public by causing them to trade with him when they intended to trade, and would have otherwise traded, with his rival, he may be restrained by injunction from pursuing such a course of conduct; such relief being afforded on the ground that an action at law for damages is not a sufficiently satisfactory remedy. Webb's City, Inc. v. Bell Bakeries, supra.

The appellants contend that notwithstanding their argument that customer confusion is not a prerequisite to the right to relief, the testimony adduced in the lower court amply supports that customer confusion has, in fact, resulted from the defendants' acts and, in support of this contention, the testimony of Judith Elaine Callahan is cited by the appellants. Miss Callahan stated on deposition that she is a student at the University of Miami; that she and another student purchased merchandise at plaintiff's shops in Miami;...