Wine v. Theodoratus

• Decision Date: 10 April 1978
• Docket Number: No. 5449-I,5449-I
• Parties: , 205 U.S.P.Q. 286 Ray WINE and Beulah Wine, husband and wife, Appellants, v. George THEODORATUS and Jane Doe Theodoratus, husband and wife, Ray Drake, Jr. and Jane Doe Drake, husband and wife, Valleys West, the Wilderness Village, and all John Does d/b/a the same, Respondents.
• Court: Washington Court of Appeals

Page 700

19 Wn.App. 700

577 P.2d 612, 205 U.S.P.Q. 286

Ray WINE and Beulah Wine, husband and wife, Appellants, v. George THEODORATUS and Jane Doe Theodoratus, husband and wife, Ray Drake, Jr. and Jane Doe Drake, husband and wife, Valleys West, the Wilderness

Village, and all John Does

d/b/a the same, Respondents.

No. 5449-I.

Court of Appeals of Washington, Division 1.

April 10, 1978.

Luvera & Mullen, Paul N. Luvera, Jr., Mount Vernon, for appellants.

Bannister, Bruhn & Cuningham, John R. Cuningham, Mount Vernon, for respondents.

THE FACTS

DORE, Judge.

The plaintiffs Ray and Beulah Wine own 80 to 90 acres of land in beautiful Skagit County nestled between 100-foot trees and rolling hills along river frontage. They developed approximately five acres of this land for business purposes on which are located three buildings wherein they conduct a business operation consisting of a laundromat, beauty shop and gift shop. They also have approximately 40 installations for camping and trailers which they rent on a daily basis.

Plaintiffs began their business in the early 1970's and conducted business under the name "Wilderness Village." On March 15, 1973 plaintiffs filed a certificate of assumed name with the Skagit County Auditor, pursuant to RCW 19.80, indicating that they were doing business under that name. A sign with the trade name "Wilderness Village" was erected on the property in 1971 and the name has been continuously used as a business trade name from that time to the present. In addition to the sign plaintiffs advertised under "Wilderness Village" in a national trailer and travel club publication. They also advertised in "Sunset Western Campsites," a national camping publication, as well as a yearly tourist newspaper magazine known as the "Cascadian."

In 1972 the defendants purchased approximately 220 acres of land located approximately 16 miles from plaintiffs' property, also with river frontage along the Skagit River. The property was intended as a recreational real estate Defendants' property had a sign advertising "Wilderness Village Recreation Lots" located so that travelers on the highway proceeding in the direction of the plaintiffs' property could see the sign. By driving across a bridge they would arrive at the defendants' property which was marked with a sign that said "Wilderness Village." The only recorded use of the trade name by defendants took place in 1973 when a corporation was formed called "Wilderness Village Community Association."

development. The purchasers of defendants' platted lots would begin by using the property for camping until permanent homes were constructed. Defendants' advertising emphasized camping and recreational use of the property. However, 100 acres were set aside and designed for future development of campsites according to the testimony of one of the defendant partners.

When the plaintiffs discovered that the defendants were using their business name "Wilderness Village" as a trade name, they had their attorney direct a letter to defendants alleging that they had the prior use and appropriation of the name and requested that they cease from using the same. The parties could not resolve their differences as to who was entitled to use the name. Nevertheless the defendants continued to utilize heavy and expensive advertising. Advertisements were placed by the defendants in the Concrete Herald Travel Guide in 1973, the Seattle P.I., the Seattle Times, 5-Center Want Ads, the Concrete Herald, the Skagit Valley Herald, Pacific Press Limited, the Stanwood News, the Omak-Okanogan Chronicle, Okanogan Independent, Whidbey Press, Puget Sound Mail, and the Bellingham Herald, and in addition, advertisements were given over the radio and at public gatherings, all of which used the name "Wilderness Village." From 1973 through 1976 defendants spent approximately $5,000 in printed advertising, all using the name "Wilderness Village."

The defendants also printed 35,000 copies of an advertising publication entitled "The Wilderness Villager" in which the business name "Wilderness Village" was used repeatedly. The advertising done by defendants in connection with this advertisement used the words "camping", "river frontage" and talked about the same type of activities the plaintiffs were offering to the public in connection with their business. This brochure was circulated throughout the State of Washington as well as in Canada.

The plaintiffs commenced this action in February of 1976 seeking a permanent and absolute injunction prohibiting the defendants from utilizing the trade name "Wilderness Village." Plaintiffs also sought reasonable attorneys' fees under the Washington Consumer Protection Act.

The trial court found that plaintiffs were entitled to a limited injunction in connection with defendants' use of the name "Wilderness Village." However, the judgment and decree of injunction provided that both parties were entitled to use the trade name "Wilderness Village" in connection with their respective businesses. Such decree further provided for a limited injunction directing that if the defendants advertised by signs on the state highway for a distance of 10 miles either east or west from the city limits of Concrete, then ". . . it must be clearly designated by defendants that their properties are being offered for sale only and not for transient or overnight camping purposes." The court further provided that if defendants advertised overnight camping facilities they must also advertise plaintiffs' business as well. The court awarded an attorneys' fee of $750 to plaintiffs' counsel under the Consumer Protection Act.

The plaintiffs appeal the trial court's judgment and decree of injunction contending that they are entitled to an absolute injunction prohibiting defendants from using the name "Wilderness Village" in its entirety.

ISSUE

Whether the trial court's limited injunction against the defendants should be affirmed or whether plaintiffs are entitled to an absolute injunction prohibiting the defendants from use of the name "Wilderness Village?"

DECISION

Guidelines for the use of trade names have been previously set forth by our Supreme Court. These guidelines were stated in Holmes v. Border Brokerage Company, Inc., 51 Wash.2d 746, 321 P.2d 898 (1958):

In the case of Seattle, etc., Ass'n v. Amalgamated Ass'n, etc., 3 Wash.2d 520, 101 P.2d 338 (1940), we reviewed extensively our previous decisions involving the right to use a trade name and adopted therein eight rules of law for guidance in trade name cases. These rules were later cited in Foss v. Culbertson, 17 Wash.2d 610, 136 P.2d 711 (1943). We deem it advisable for the purpose of this appeal to again state these rules, which are as follows:

"First : The right to use a particular name as a trade-name belongs to the one who first appropriates and uses it in connection with a particular business."

"Second : A person, whether individual or corporate, may not use any name, not even his or its own, which is the distinctive feature of a trade-name already in use by another, if such use by the one person tends to confuse, in the public mind, the business of such person with that of the other."

"Third : The prior user may be entitled to relief regardless of actual fraud or intent to deceive on the part of a subsequent appropriator."

"Fourth : To acquire the right to use a particular name, it is not necessary that the name be used for any considerable length of time. It is enough to show that one was in the actual use of it before it was begun to be used by another."

"Fifth : A trade-name may be abandoned or given up by the original appropriator, and, when it is so abandoned or given up, any other person has the right to seize upon it immediately, and make use of it, and thus acquire a right to it superior not only to the right of the original user, but of all the world."

"Sixth : A trade-name, in order to be an infringement upon another, need not be exactly like it in form and sound. It is enough if the one so resembles another as to deceive or mislead persons of ordinary caution into the belief that they are dealing with the one concern when in fact they are dealing with the other."

"Seventh : The rule is no different when the name, or some part thereof, is a geographical name, or contains descriptive words which have acquired a secondary meaning."

"Eighth : Prior right to the use of a name will be protected by injunction against others using it unfairly."

(Emphasis added).

In the Holmes case both parties were using the trade name "Border Brokerage Company." The court there granted the plaintiff injunctive relief prohibiting the defendant corporation from using the same name the other company had used previously and before defendant had used it. The plaintiffs had commenced their injunctive action because of the confusion that had arisen and which would increase if the defendant corporation carried out its primary business as a custom house broker in the same customs district.

Tradewell Stores v. T. B. & M., Inc., 7 Wash.App. 424, 500 P.2d 1290, 1292 (1972), was an action for trade name infringement and unfair competition brought in Kitsap County Superior Court by plaintiff Tradewell Stores, Inc. against defendant T. B. & M., Inc.

The trial court's unchallenged finding was that plaintiff had...