Westminister Laundry Co. v. Hesse Envelope Co.

• Decision Date: 06 May 1913
• Citation: 174 Mo. App. 238,156 S.W. 767
• Parties: WESTMINISTER LAUNDRY CO. v. HESSE ENVELOPE CO.
• Court: Missouri Court of Appeals

156 S.W. 767

174 Mo. App. 238

WESTMINISTER LAUNDRY CO. v. HESSE ENVELOPE CO.

St. Louis Court of Appeals. Missouri.

May 6, 1913.

1. TRADE-MARKS AND TRADE-NAMES (§ 53) — "INFRINGEMENT."

The infringement of a trade-mark consists of the unauthorized use or colorable imitation of it upon substituted goods of the same class as those for which the mark has been appropriated.

2. TRADE-MARKS AND TRADE-NAMES (§ 28) — INFRINGEMENT — "TRADE-MARK."

To constitute a trade-mark susceptible of infringement, there must be actual use as a means of identifying the ownership, origin, or manufacture of the goods of a proprietor, and the trade-mark must be annexed to and accompany the goods into the market so as to identify them.

3. TRADE-MARKS AND TRADE-NAMES (§ 68) — "UNFAIR COMPETITION."

Unfair competition consists in attempting to pass upon the public the goods or business of one person as that of another.

4. TRADE-MARKS AND TRADE-NAMES (§ 71) — "UNFAIR COMPETITION."

To constitute unfair competition by the use of words or a phrase, the word or phrase must have been long employed in connection with a business or certain goods, so as to be understood by the public as designating the particular goods or business.

5. TRADE-MARKS AND TRADE-NAMES (§ 67) — UNFAIR COMPETITION.

There can be no unfair competition by the use of a phrase or words which have not been used as a means of identifying goods as the product of a producer a sufficient time to establish a reputation therefor in the market as being his goods, and where an advertising agency had contracted with plaintiff laundry company to run a blind advertisement for it by first printing the word "stopurkicken" without plaintiff's name until the public's curiosity was aroused, when plaintiff's name was to follow in connection therewith, defendant envelope company's use of the word before plaintiff's name had been printed in connection therewith was not unfair competition by defendant.

Appeal from St. Louis Circuit Court; Daniel D. Fisher, Judge.

Action by the Westminister Laundry Company against the Hesse Envelope Company. From a judgment for plaintiff, defendant appeals. Reversed.

Morton Jourdan and Geo. T. Priest, both of St. Louis, for appellant. Percy Werner, Hugh K. Wagner, and Edward D'Arcy, all of St. Louis, for respondent.

NORTONI, J.

This is a suit for damages in which plaintiff recovered a verdict for $1. On this verdict judgment was given, and defendant prosecutes an appeal therefrom.

All of the relevant facts appear from the face of the petition, and the question of liability is to be determined thereon. It appears that the plaintiff, the defendant, and the D'Arcy Advertising Company are each corporations engaged in their respective callings in the city of St. Louis. Plaintiff owns and is engaged in the business of operating a steam laundry. Defendant is engaged in the business of manufacturing envelopes. The D'Arcy Advertising Company is engaged in the advertising business; that is to say, it places advertisements in St. Louis for those who choose to patronize it. The plaintiff laundry company engaged the D'Arcy Advertising Company to do certain advertising for it by running what is known as a "blind" advertisement. Such "blind" advertisement is described in the petition as follows: "The fundamental idea of same (the `blind' advertisement) being the use of some striking device well adapted to attract public attention, but unaccompanied, upon its first appearance, by the name of the advertiser using it, other matter being added later and the name of the advertiser, also, being given when the curiosity of the public has been sufficiently piqued and the attention of the public has been excited by the `blind' nature of the advertisement." The striking device referred to in the quotation from the petition and that contemplated in the instant case is the word "stopurkicken." The petition avers that plaintiff entered into a contract with the D'Arcy Advertising Company, whereby it was to have the exclusive use of the word "stopurkicken"; that the D'Arcy Advertising Company, in pursuance of plaintiff's plan, had the word "stopurkicken" published upon signboards and by way of printed cards. After the word "stopurkicken" had been so used, and before plaintiff had time to determine upon a proper supplement to such advertisement to disclose its own name and identity, the defendant Hesse Envelope Company, well knowing the word "stopurkicken" was being used in the manner mentioned, and desiring to take advantage of the word "stopurkicken," as above described, printed and distributed throughout the city of St. Louis a large number of cards bearing the word "stopurkicken," and followed by the name of the Hesse Envelope Company. Because of this use of the word by defendant, Hesse Envelope Company, plaintiff avers it is damaged, and prays a recovery therefor.

It is said the word "stopurkicken" is an attractive misspelling and contraction of the phrase "stop your kicking," designed to excite public curiosity. It is obvious the petition states no cause of action against defendant, unless the word "stopurkicken" is either a trade-mark in which plaintiff enjoys a proprietary right or is possessed of a secondary meaning which by user has become a part of the good will of plaintiff's business; otherwise the word is publici juris, and available to every person desiring to employ it identically as is the original phrase of which it is a contraction. From the affirmative averments of the petition it is entirely clear plaintiff enjoyed no trade-mark in the word under consideration. Indeed, the cause does not proceed upon that theory. Plaintiff is engaged in the laundry business, which, of course, is that of washing and ironing for others....