Thomas Patrick, Inc. v. KWK Inv. Co.

• Decision Date: 08 December 1947
• Docket Number: 40329
• Citation: 206 S.W.2d 359,357 Mo. 100,76 U.S.P.Q. 77
• Parties: Thomas Patrick, Inc., a Corporation, Appellant, v. KWK Investment Company, a Corporation, Carl Weber, Edward Kranzberg and Julius Krachmainick
• Court: Missouri Supreme Court

206 S.W.2d 359

357 Mo. 100, 76 U.S.P.Q. 77

Thomas Patrick, Inc., a Corporation, Appellant, v. KWK Investment Company, a Corporation, Carl Weber, Edward Kranzberg and Julius Krachmainick

No. 40329

Supreme Court of Missouri

December 8, 1947

Appeal from Circuit Court of City of St. Louis; Hon. Robert J Kirkwood, Judge.

Reversed and remanded.

Paul D. Clerk and Richard A. Austin for appellant.

(1) Protection, by way of injunctive relief, has been granted a corporation operating a radio broadcasting station under certain designated call letters, against the use of such letters by another as a trade-name in connection with his business. Bamberger Broadcasting Service, Inc., v Orloff, 44 F.Supp. 904, (2) The fact that respondent KWK Investment Company, a corporation, has used the surname initials of its incorporators (respondents -- Kranzberg Weber and Krachmainick) does not preclude appellant from obtaining injunctive relief against the use of appellant's call letters "KWK". Great Atlantic & Pacific Tea Co. v. A. & P. Radio Stores, Inc., 20 F.Supp. 703. (3) Actual use by respondents in their business of the name "KWK Investment Company" or any similar name containing the letters "KWK" need not be shown as a condition precedent to the injunctive relief sought by the appellant. The power of a court of equity to interfere and prevent injury by injunction is well settled law. Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 56 F.2d 973; Standard Oil Co. of New York v. Standard Oil Co. of Maine, Inc., 38 F.2d 677; Standard Oil Co. of Maine, Inc., v. Standard Oil Co. of New York, 45 F.2d 309; Nims on Unfair Competition & Trade Marks (3rd Ed.), pp. 920-923; 2 Callmann, Unfair Competition & Trade Marks, pp. 1469-1371. (4) Injunctive relief should have been granted to appellant, although the record does not show that appellant has, as yet, sustained any damage by reason of the particular conduct of the respondents complained of in the petition. The object of injunctive relief is to prevent injury, threatened and probable to result, unless interrupted. Columbia Grammar School v. Clawson, 200 N.Y.S. 768; Trimble v. Woodstock Mfg. Co., 297 F. 524; Bank of Arizona v. Arizona Central Bank, 40 Ariz. 320, 11 P.2d 953; Hall v. Holstrom, 106 Cal.App. 563, 289 P. 668; 2 Callman, Unfair Competition & Trade Marks, p. 1471. (5) It was not necessary for appellant to show as a condition precedent to the injunctive relief sought that there was any actual fraudulent intent or bad faith on the part of the respondents or that any one had been actually deceived by reason of the act or acts complained of. Fraudulent intent or bad faith, if necessary, will be inferred where the record shows that junior appropriator has knowledge of the complaining party's trade name and nevertheless copies or imitates such name. Liggett & Myers Tobacco v. Sam Reid Tobacco, 104 Mo. 53, 15 S.W. 843; 52 Am. Jur., p. 581; Aunt Jemima Mills Co. v. Rigney & Co., 247 F. 407; Nims on Unfair Competition and Trade Marks (3rd Ed.), pp. 920-923; 38 Harvard Law Review, pp. 370-374; 4 L.R.A. (N.S.), p. 962. (6) Relief by way of injunction is not precluded by the fact, if true, that the goods, services or business of the litigants are not in actual competition but extends to all cases in which the use by a junior appropriator of a trade name leads to a confusion of source, that is, where the impression is likely to be created that the complaining party (appellant here) has sponsored or approved or is in any way connected with the activities of the junior appropriator (respondents here). Yale Electric Corp. v. Robertson, 26 F.2d 972; Peninsular Chemical Co. v. Levinson, 247 F. 658; Vogue Co. v. Thompson Hat Co., 6 F.2d 875; Standard Oil Co. of New Mexico v. Standard Oil Co. of Cal., 56 F.2d 973; Lady Esther v. Lady Esther Corset Shoppe, 317 Ill.App. 451, 46 N.E.2d 165; Mary Muffet, Inc., v. Smelansky, 158 S.W.2d 168; Tecla v. Salon Tecla, 249 N.Y. 157, 163 N.E. 134; Lincoln Motor Co. v. Lincoln Automobile Co., 44 F.2d 812; L.E. Waterman Co. v. Benjamin Gordo, 8 F.Supp. 351; Long's Hat Stores Corp. v. Long's Clothiers, Inc., 231 N.Y. 107, 224 A.D. 497; R. H. Macy & Co., Inc., v. Mays, Inc., 39 F.2d 186; Churchill Downs Distilling Co. v. Churchill Downs, 262 Ky. 567, 90 S.W.2d 1041; Tiffany Co. v. Tiffany Productions, Inc., 147 Misc. 679, 264 N.Y.S. 459; Great Atlantic & Pacific Tea Co. v. A. & P. Radio Stores, Inc., 20 F.Supp. 703; Philadelphia Storage Battery Co. v. Mindlin, 296 N.Y.S. 176, 163 Misc. 52 (7) The likelihood that the adoption of appellant's trade name by respondents will cause the public to believe that appellant and respondent corporation are in some way associated or connected, or that appellant sponsors respondents' business is sufficient to entitle appellant to injunctive relief. Actual confusion need not be shown. Whether or not there is the likelihood of confusion is for the Court to determine by a process of mental analysis. 2 Callman Unfair Competition & Trade Marks, pp. 1123, 1124, 1127, 1133; Time, Inc., v. Viobin, 40 F.Supp. 249; Affiliated Enterprises v. Rock-Ola Mfg. Corp., 23 F.Supp. 3; Esquire, Inc., v. Esquire Bar, 37 F.Supp. 875; Vogue Co. v. Thompson-Hudson, 300 F. 509; Colorado Natl. Co. v. Colorado Natl. Bank of Denver, 95 Colo. 306, 36 P.2d 454; Lady Esther v. Lady Esther Corset Shoppe, 317 Ill.App. 451, 46 N.E.2d 165. (8) The existence of a fraudulent intent on the part of respondents establishes the likelihood of confusion as a matter of law. The mere adoption by respondents of appellant's established trade name, proves their intent to deceive the public and gain for themselves the benefit of appellant's good will. 2 Callman Unfair Competition & Trade Marks, p. 1241, sec. 82.2 (b) (1), p. 1245; 148 A.L.R., p. 44 (Annotation); American Law Institute Restatement of Torts, secs. 729 (h), 730; Paris Medicine Co. v. W. H. Hill, 102 F. 148; Lawyers Title Ins. Co. v. Lawyers Title Ins. Corp., 109 F.2d 35; My-T-Time Corp. v. Samuels, 69 F.2d 76; Akron Overland Tire Co. v. Willys Overland Co., 273 F. 674; Socony v. Rosen, 108 F.2d 632; Lever Bros. Co. v. Sitraux Co., 109 F.2d 445; Esso, Inc., v. Standard Oil Co., 98 F.2d 1; Matzger v. Vinikour, 17 F.2d 581; Bayer Co. v. Summer Printing Co., 7 F.Supp. 740. (9) The letters "KWK" constitute an arbitrary, coined, fanciful tradename, and are, therefore, entitled to special protection by the courts as a strong tradename. Anheuser-Busch, Inc., v. Budweiser Malt Products Corp., 295 F. 306; Anheuser-Busch, Inc., v. Cohen, 37 F.2d 393; 148 A.L.R., pp. 26-31 (Annotation); 2 Callman, Unfair Competition & Trade Marks, pp. 1226-1229. (10) Appellant was entitled to injunctive relief on the further ground, that is, "dilution." 40 Harvard Law Review 813 (The Rational Basis for Trade-Mark Protection); 37 Columbia Law Review 582 (Non-Competing Goods in Trade-Mark Law), pp. 600-606; 2 Callman, Uniform Competition & Trade Marks, p. 1338; Yale Electric Corp. v. Robertson, 26 F.2d 972; Tiffany & Co. v. Tiffany Productions, 147 Misc. 679, 264 N.Y.S. 459; Rainbow Shops, Inc., v. Rainbow Specialty Shops, Inc., 176 Misc. 339, 27 N.Y.S. (2d) 390; Lady Esther, Ltd., v. Lady Esther Corset Shoppe, Inc., 317 Ill.App. 451, 46 N.E.2d 165.

Sam Weber for respondents.

Barrett, C. Westhues and Bohling, CC., concur.

OPINION

BARRETT

Since 1927 the plaintiff and its predecessor have operated a radio broadcasting station from the Chase Hotel in St. Louis under the call letters KWK and the station has become known as "Radio Station KWK." In January 1946 the "KWK Investment Company" was incorporated under the laws of Missouri. The purpose of the corporation as expressed in its charter, is to engage in the general real estate business and to operate hotel and apartment properties. The corporation now owns and operates the "Timberly Hotel" in St. Louis. In this action the plaintiff sought, unsuccessfully, to enjoin the defendant corporation and its three incorporators from using the letters "KWK" in its corporate name and business.

Upon this appeal the defendants, who prevailed in the trial court, have failed to file a brief or make an appearance. In consequence we have no way of knowing what the defendants' theory is. The petition consists of twenty-one numbered paragraphs and the answer admits, by their numbers, the allegations of certain of the paragraphs and generally denies the allegations of other numbered paragraphs. The case was submitted to the trial court upon a "Stipulation of Facts" consisting of twenty-two numbered paragraphs. The result is that the issues in this case were not clearly and precisely formulated or developed. Annotation 148 A.L.R., l.c. 35.

The trial court was of the view that the good will of the plaintiff had not been impaired or damaged, and would not in the future suffer injury, by reason of the defendants' use of the name "KWK Investment Company." The court was of the view that the defendants' use of the letters KWK in its corporate name was not confusing to the public and did not mislead or tend to mislead the public into believing that the plaintiff was the source of, the sponsor of or in any way associated with or connected with the business of the defendants and therefore denied injunctive relief.

As a preliminary it should be noted that it is not a necessary prerequisite to relief in cases of this nature that someone in point of fact, has been deceived (Liggett & Myers Tobacco Co. v. Sam Reid Tobacco Co., 104 Mo. 53, 60, 15 S.W. 843, 844) or that the plaintiff, in point of fact, has sustained an actual loss of business, injury to good will or damages. Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 56 F.2d 973. It is no longer necessary that the parties be engaged in competitive...