Thompson v. Thompson Air Conditioning and Heating, Inc.

• Decision Date: 19 September 1994
• Docket Number: No. 06-94-00063-CV,06-94-00063-CV
• Citation: 884 S.W.2d 555
• Parties: Richard L. THOMPSON, Individually and d/b/a Richard L. Thompson Electric and Air Conditioning, Appellant, v. THOMPSON AIR CONDITIONING AND HEATING, INC., d/b/a Thompson Air Conditioning and Heating and d/b/a Thompson Air Conditioning, Appellee.
• Court: Texas Court of Appeals

Page 555

884 S.W.2d 555

Richard L. THOMPSON, Individually and d/b/a Richard L Thompson Electric and Air Conditioning, Appellant, v. THOMPSON AIR CONDITIONING AND HEATING, INC., d/b/a Thompson Air Conditioning and Heating and d/b/a Thompson Air Conditioning, Appellee.

No. 06-94-00063-CV.

Court of Appeals of Texas,

Texarkana.

Argued Sept. 13, 1994.

Decided Sept. 19, 1994.

Anthony G. Parham, Irving, TX.

James L. Clark, Naples, TX.

Before CORNELIUS, C.J., and BLEIL and GRANT, JJ.

OPINION

BLEIL, Justice.

In this trade name infringement action, tried without a jury, the trial court granted a permanent injunction against Richard Thompson. Richard Thompson contends on appeal that the injunction is vague or too broad; the trial court erred in concluding that the name "Thompson Air Conditioning and Heating" was entitled to protection; there is no evidence to support the trial court's findings of a likelihood of confusion between the name "Thompson Air Conditioning and Heating" and Richard Thompson's business, and of irreparable harm absent a permanent injunction; and the suit was barred by the statute of limitations or precluded by the doctrine of laches. We find no error and affirm.

Steve Thompson purchased the Thompson Air Conditioning business from his brother, Richard Thompson, in April 1987. Under the contract for sale of the business, Steve Thompson obtained the exclusive right to use the name "Thompson Air Conditioning and Heating," but Richard Thompson retained the right to engage in the air conditioning and electrical trade so long as he did not hire any assistants for a period of three years following the sale.

Richard Thompson continued to work in the air conditioning and electrical business and filed an assumed name affidavit in 1992 asserting the use of the name "Richard Thompson Heating and Air Conditioning." This act, in combination with confusion in the businesses' listings in the phone book and some advertisements in the local newspaper, prompted legal action. Thompson Air Conditioning filed suit on February 10, 1993, and sought to enjoin Richard Thompson from using the name Thompson in conjunction with the term "air conditioning."

The court, finding in favor of Thompson Air Conditioning, entered a permanent injunction prohibiting Richard Thompson from

[u]sing the words THOMPSON and AIR CONDITIONING directly or indirectly in connection with the sales and servicing of heating and air conditioning units and equipment, or related products, the trade style "THOMPSON HEATING AND AIR CONDITIONING" or any similar name using THOMPSON AIR CONDITIONING, or any other combination of words combining THOMPSON with AIR CONDITIONING, in the Mt. Pleasant, Titus, Camp, Morris, and Franklin County, Texas area.

A trade name is a designation that is adopted and used by a person to designate a good he markets, a service he renders, or a business he conducts. Jud Plumbing Shop on Wheels, Inc. v. Jud Plumbing and Heating Co., 695 S.W.2d 75, 78 (Tex.App.--San Antonio 1985, no writ). A trade name is property and represents the goodwill that has been built up by the energy, time, and money of the user of the mark. Hanover Mfg. Co. v. Ed Hanover Trailers, Inc., 434 S.W.2d 109, 111 (Tex.1968); Jud Plumbing, 695 S.W.2d at 78. To prevail in its common-law action for trade name infringement, Thompson Air Conditioning had the burden to establish the following elements: that the name it seeks to protect is eligible for protection, that it is a senior user of the name, and that there is a likelihood of confusion between its name and that of the other user. Zapata Corp. v. Zapata Trading Int'l, Inc., 841 S.W.2d 45, 47 (Tex.App.--Houston [14th Dist.] 1992, no writ) (citing Union Nat'l Bank v. Union Nat'l Bank, 909 F.2d 839 (5th Cir.1990)). Because Thompson Air Conditioning sought a permanent injunction, it also had to show that the likelihood of confusion would cause irreparable injury for which no adequate remedy at law exists. Id.

Richard Thompson complains that the injunction, if appropriate at all, is vague and broader than necessary to prevent confusion. The order prohibits Richard Thompson from using his surname and the words "air conditioning" directly or indirectly with the sale or servicing of air conditioning and heating units and equipment. Richard Thompson contends that the order is vague for failing to define what constitutes indirect use of these names.

Every order granting an injunction must describe in reasonable detail the acts sought to be restrained. See TEX.R.CIV.P. 683; Grayson County Officials v. Dennard, 574 S.W.2d 179, 185 (Tex.Civ.App.--Eastland 1978, writ ref'd n.r.e.). The injunction should be capable of reasonable construction and good faith obedience. Clear Lake City Water Auth. v. Winograd, 695 S.W.2d 632, 643 (Tex.App.--Houston [1st Dist.] 1985, writ ref'd n.r.e.); see also Ex parte Blasingame, 748 S.W.2d 444, 446 (Tex.1988) (injunctive order must be clear, specific, and unambiguous before person can be held in contempt for disobeying the order).

A permanent injunction should not be more comprehensive or restrictive than justified by the pleadings, evidence, and usages of equity. Turner v. State, 850 S.W.2d 210, 213 (Tex.App.--Texarkana 1993, no writ). Nonetheless, it must be broad enough to prevent a repetition of the evil sought to be corrected. Hitt v. Mabry, 687 S.W.2d 791, 795 (Tex.App.--San Antonio 1985, no writ). The injunction requires Richard Thompson to avoid using his surname and the descriptive term "air conditioning" directly or indirectly in connection with the business of selling or servicing air conditioning and heating equipment in the specified geographic area. Cf. Breithaupt v. Navarro County, 675 S.W.2d 335, 340 (Tex.App.--Waco 1984, writ ref'd n.r.e.) (upholding injunction commanding the Breithaupts to stop "directly or indirectly interfering with the use of [a public] road"). The injunction is not impermissibly vague. Given a reasonable construction, the injunction informs Richard Thompson that any act on his part that infringes on the trade name of Thompson Air Conditioning and Heating is prohibited.

Richard Thompson further contends that the trial court erred in holding that the name "Thompson Air Conditioning and Heating" was entitled to protection. As a general rule, there can be no exclusive appropriation of a family surname to the exclusion of those who possess the same surname. Goidl v. Advance Neckwear Co., 132 Tex. 308, 123 S.W.2d 865, 867 (1939). A person has the right to use his own name in his own business, absent fraud or an intentional and voluntary relinquishment of that right by contract or estoppel, even though such use may be detrimental to another person who was using the same name prior in time. Hanover Mfg. Co., 434 S.W.2d at 112; Goidl, 123 S.W.2d at 866; see also Haltom v. Haltom's Jewelers, Inc., 691 S.W.2d 823, 825-26 (Tex.App.--Fort Worth 1985, writ ref'd n.r.e.). Moreover, in the absence of fraud, a name merely descriptive of the business carried on cannot be exclusively appropriated as against others who can and do use the name with equal truth, even if the words have acquired a secondary meaning. Pipe Linings, Inc. v. Inplace Linings, Inc., 349 S.W.2d 279, 280 (Tex.Civ.App.--Fort Worth 1961, writ ref'd n.r.e.).

However, the general rule does not apply when one contracts away rights to the use of a name. See, e.g., Hanover Mfg. Co., 434 S.W.2d at 112. In Hanover, Ed Hanover had formed Hanover Manufacturing Company and then subsequently sold the business. Ed Hanover then set up a competing business, namely Ed Hanover Trailers, across the road from his old company. The supreme court found that Ed Hanover was attempting to mislead the public and appropriate the benefit of the goodwill of the established business, Ed Hanover Manufacturing, and that he was estopped from using his name because he had sold the name and the goodwill associated with it. Id. at 112.

Thompson Air Conditioning and Heating has been in business since 1973. In the contract for sale of his business, Richard Thompson sold the exclusive right to use the name "Thompson Air Conditioning and Heating"--a name that he concedes had some value to it at the time he sold his business. After the sale of the business, Richard Thompson retained the accounts receivable, but forwarded his customer records to his brother. Despite conveying the right to use the name "Thompson Air Conditioning and Heating," Richard Thompson now asserts his right to use his surname in combination with terms descriptive of his business.

Richard Thompson is not prohibited from using his surname under any circumstances, but from using it in conjunction with the descriptive term "air conditioning." Similarly, Richard Thompson may use the descriptive term "air conditioning" so long as he does not use it in connection with his surname. The trial court did not err in determining that "Thompson Air Conditioning and Heating," a name exclusively owned by Steve Thompson as provided for under the 1987 contract for sale of the business, was a protectable trade name under the facts of this case.

Richard Thompson also maintains that there is no evidence to support the trial court's finding that a likelihood of confusion of the two businesses exists and that this likelihood of confusion will result in irreparable injury unless the trial court issues an injunction. Findings of fact in a case tried to the court have the same force and dignity as a jury's verdict, and the court's findings of fact are reviewable for sufficiency of the evidence by the same standards that are applied in reviewing the evidence supporting a jury's answers. Anderson v. City of Seven Points, 806 S.W.2d 791, 794 (Tex.1991). In reviewing no evidence points, we consider only the evidence and inferences that tend to support the finding and disregard all evidence and inferences to the contrary. Havner v. E-Z Mart Stores, Inc., 825 S.W.2d 456, 458 (...