A. W. Cox Dept. Store Co. v. Cox's Inc.

• Decision Date: 13 January 1976
• Docket Number: No. 13459,13459
• Citation: 159 W.Va. 306,221 S.E.2d 539
• Court: West Virginia Supreme Court
• Parties: , 191 U.S.P.Q. 220 A. W. COX DEPARTMENT STORE CO. v. COX'S INCORPORATED, a corporation, and Par-Progress, Inc., a corporation.

Page 539

221 S.E.2d 539

159 W.Va. 306, 191 U.S.P.Q. 220

A. W. COX DEPARTMENT STORE CO. v. COX'S INCORPORATED, a corporation, and Par-Progress, Inc., a corporation.

No. 13459.

Supreme Court of Appeals of West Virginia.

Jan. 13, 1976.

Syllabus by the Court

1. Every person has the right to use his own name in business so long as his name is used truthfully and in good faith, unless that name has previously acquired a secondary or new primary meaning in the market area.

2. A court may enjoin the use of a trade name which is also a family name, in the absence of any showing of artifice, fraud or deceit, where the name has acquired a secondary or new primary meaning and where confusion of the public will result.

3. A name acquires a secondary or new primary meaning when, through use of that name in a particular kind of business in a particular area, it has come to be identified or associated by the public with a particular owner's business.

4. The acquisition of a secondary or new primary meaning for a name just be proved by a preponderance of the evidence indicating that the second use will result in confusion.

5. In determining whether confusion is likely to result from the coexistence of two businesses operating under the same name, a court may consider the type of business, the degree of competition, the similarity of products, the former affiliation of the parties, the timeliness of the action, and the geographic scope of the operation.

6. 'The finding of a trial court upon the facts submitted to it in lieu of a jury will be given the same weight as the verdict of a jury and will not be disturbed by an appellate court unless the evidence plainly and decidedly preponderates against such finding.' Point 7, Syllabus, Bluefield Supply Company v. Frankel's Appliances, Inc., 149 W.Va. 622, 142 S.E.2d 898 (1965).

Earley, Bailey & Pfalzgraf, John S. Bailey, Jr., Parkersburg, for appellants.

Spilman, Thomas, Battle & Klostermeyer, R. Page Henley, Jr., Charleston, McDougle, Davis, Handlan & Davis, Fred L. Davis, Jr., Parkersburg, for appellee.

FLOWERS, Justice:

This is a dispute between two retail businesses over the right to use the trade name 'Cox's' in the same market area. A. W. Cox Department Store Co., which operates a retail store in downtown Parkersburg, instituted a civil action against Cox's Incorporated which was opening a store in the new shopping mall at Vienna, also in Wood County. The litigation is based upon the allegedly unlawful infringement by the defendant upon the plaintiff's trade name. The plaintiff and defendant are engaged in the retail sale of soft goods to the general public. Both corporations are family-owned businesses begun by persons named 'Cox'.

The trial court, sitting in lieu of a jury, enjoined the defendant from using the word 'Cox', 'Cox's', or any name which includes the same, in the operation of its business in Wood County. It is from this judgment that the defendant was granted an appeal. The principal question to be determined is whether, in the absence of fraudulent intent, the use of a confusingly similar trade name may be enjoined when that trade name is the surname of its user.

The plaintiff corporation was chartered in 1914 by A. W. Cox. Its principal corporate officers are his descendants. The plaintiff corporation operates nineteen retail department stores in West Virginia, Ohio and Kentucky. Its largest store is located in Parkersburg, Wood County, West Virginia. That store has been in operation since 1928 and presently grosses over one million dollars in business each year. The plaintiff advertises its Parkersburg store as 'A. W. Cox Department Store' and as 'Cox's'.

The defendant corporation, Cox's Incorporated, was founded by Mary Jane Cox in McKeesport, Pennsylvania, in 1872. In 1909, the business was incorporated by her son, Will J. Cox, under the name of 'Will J. Cox Company'. The business functioned under that name until 1934 when it was changed to 'Cox's Incorporated'. Cox's Incorporated operates seven retail clothing stores in western Pennsylvania. The present officers and stockholders of Cox's Incorporated are the descendants of Will J. Cox and Mary Jane Cox.

The dispute precipitating this litigation arose in 1972 when Cox's Incorporated decided to open a store in a shopping mall in Vienna, a few miles from the A. W. Cox store in Parkersburg, Wood County, West Virginia. The defendant leased space from the owners of the mall and commenced construction of its only retail store outside the State of Pennsylvania. During the construction of the store, the name 'Cox's of Pittsburgh' was painted on plywood covering the window of the store. Robert M. Cox, Jr., an officer of Cox's Incorporated, testified that the phrase 'of Pittsburgh' was used in an effort to distinguish the store from the Parkersburg store of A. W. Cox.

The plaintiff presented the testimony of several employees at its Parkersburg store to prove that confusion resulted from the simultaneous operation of two separate businesses within close proximity under the same name. These witnesses testified that a number of customers had inquired whether the plaintiff was constructing the store in the mall; whether plaintiff's charge cards would be accepted at that store; or whether the defendant's credit cards could be used at the plaintiff's store. According to the record, at least a dozen individuals submitted to the plaintiff applications for employment at the defendant's store. The plaintiff's store offered a wide range of merchandise, including men's and children's clothing as well as appliances. The plaintiff's evidence reflected that in some instances the line of women's merchandise sold by the defendant was identical or at least very similar to the merchandise sold by the plaintiff.

The defendant's evidence, consisting of the testimony of three Cox family members who hold positions with the corporation, indicated that Cox's Incorporated marketed mostly women's clothing, jewelry and other accessories. These witnesses distinguished the business operation of the two stores on the basis that a higher quality and more limited merchandise was offered by Cox's Incorporated.

Following the issuance of a preliminary injunction, the defendant changed the name of its store from 'Cox's' to 'Corner on the Market'. The defendant continued, however, to use stickers, bearing the name 'Cox's', in conjunction with the 'tagging' of at least 50 percent of its merchandise. The manager of the 'Corner of the Market' admitted that one out of ten people would look at the ticket and inquire whether there was any association with the A. W. Cox store.

In determining the relative rights of business competitors to use their family names to the detriment of each other, courts have seemed disposed to begin reverently with the proposition that 'every person has the right to use his own name.' Pike jocularly traces this right to the law of England, citing Burgess v. Burgess ¹ wherein:

'* * * the plaintiff and his father had sold Burgess's Essence of Anchovies 1880. The son, with striking lack of originality, called his competing product Burgess's Essence of Anchovies.' ²

In denying an injunction Lord Justice Bruce said:

'All the Queen's subjects have a right, if they will, to manufacture and sell pickles and sauces, and not the less that their fathers have done so before them. All the Queen's subjects have a right to sell these articles in their own names, and not the less so that they bear the same name as their fathers * * *.' ³

In this country the right has been described as 'natural and inalienable * * * guaranteed by the very first clause of our Constitution, without which the right to acquire, possess, and protect property would be of little worth.' ⁴ In early cases the courts adhered strictly to the theory of free competition. 41 Tul.L.Rev. 952, 954 (1967). A New York court recoiled at the thought of a person having a monopoly in the use of his own name which would 'debar all other persons of the same name from using their own names in their own business.' ⁵ The incidental damages which were incurred as a result of such unfettered competition were considered 'damnum absque injuria'. ⁶

A clear exception to the rule, however, was carved out by the courts to thwart those who would poach on the good name of another. The court in Garrett v. T. H. Garrett & Co., 78 F. 472, 478 (6th Cir. 1896), set the tone in stating:

'* * * While it is true that every man has a right to use his own name in his own business, it is also true that he has no right to use it for the purpose of stealing the good will of his neighbor's business, nor to commit a fraud upon his neighbor, nor a trespass upon his neighbor's rights or property; and, while it is true that every man has a right to use white paper, it is also true that he has no right to use it for making counterfeit money, nor to commit a forgery. It might as well be set up, in defense of a highwayman, that, because the constitution secures to every man the right to bear arms, he had a constitutional right to rob his victim at the muzzle of a rifle or revolver.'

Within this context this Court decided Gluck v. Kaufman, 117 W.Va. 685, 186 S.E. 615 (1936) and Foglesong v. Foglesong Funeral Home, Inc., 149 W.Va. 454, 141 S.E.2d 390 (1965). In Gluck, the plaintiff sought to enjoin the defendant's use of 'The Darling Shop' as a trade name in Wheeling, alleging that Wheeling customers would confuse the defendant's store with plaintiff's 'Darling Shop' in Youngstown (Ohio), Parkersburg, Clarksburg and Charleston. The Court held the plaintiff had sufficiently stated a cause of action by 'seeking to enjoin an unfair trade practice under the common-law rule.'

Similarly in the Foglesong case, the Court adhered to the principle that every person had the right to use his own name in his own business so long as his name was used truthfully and in good faith. Since there was...