Younker v. Nationwide Mut. Ins. Co.
| Decision Date | 05 June 1963 |
| Docket Number | No. 37522,37522 |
| Parties | , 137 U.S.P.Q. 901, 23 O.O.2d 285 YOUNKER et al., Appellees and Cross-Appellants, v. NATIONWIDE MUTUAL INS. CO. et al., Appellants and Cross-Appellees. |
| Court | Ohio Supreme Court |
Syllabus by the Court
1. The prior user of a trade name, trademark or service mark in connection with his business may have a legally protected interest against a subsequent user of such trade name, trademark or service mark, without regard to the duration of such use and whether the name or mark has been registered with the Secretary of State under Chapter 1329, Revised Code.
2. One's interest in a trademark, service mark or trade name is entitled to protection he uses such trademark, service mark or he receives custom in the business in which he use such tradmark, service mark or trade name but also throughout the state where, in the probable expansion of his business, he may reasonably expect to receive custom.
3. A trademark or service mark may be found distinctive and hence registerable under the provisions of Chapter 1329, Revised Code, though it has not been used for a period of five years before application for its registration is filed.
Plaintiffs, Lyle P. Younker, Heber L. Howard and Securance Service, Inc., hereinafter referred to as plaintiff, instituted an action in the Common Pleas Court of Sandusky County against Nationwide Mutual Insurance Company and associated companies, hereinafter referred to as defendant, for an injunction enjoining defendant's use of the word, 'Securance,' in connection with the sale of insurance services, for damages and for an accounting. Defendant filed an answer, in the nature of a general denial, and a cross-petition praying that plaintiff's registration of the service mark, 'Securance,' with the Secretary of State be declared invalid, that the Secretary of State be ordered to cancel such registration, and for damages.
From the record, as to plaintiff, it appears that for a number of years prior to August 1956 Younker and Howard had been insurance agents in Sandusky County, representing many nationally known insurance companies in the sale of most all kinds of insurance in that county.
In 1955, Younker first employed the word, 'Securance,' as an identifying service mark in the operation of his insurance business, which word, according to his testimony, he 'made up' by contraction of the words, 'security' and 'insurance,' and, as used in the insurance business, "Securance' signifies one-stop service offering all lines of insurance to our customers.'
In 1956, Younker and Howard, deciding to incorporate their insurance business, attempted, first, to acquire the corporate name, 'Securance,' but that name was disapproved by the Department of Insurance. That department did approve the name, 'Securance Service, Inc.,' and on August 10, 1956, articles of incorporation were filed with the Secretary of State under the corporate name, 'Securance Service, Inc.' From the date of incorporation, Securance Service, Inc., has continously employed the word, 'Securance,' in its insurance business--orally, on its stationery and in its advertising by billboards, newspapers and on such giveaway items as calendars and pencils.
After plaintiff learned of defendant's use of the word, 'Securance,' in its advertising, plaintiff, on March 10, 1960, registered the trade name, 'Securance,' with the Secretary of State, as provided for by Section 1329.01 et seq., Revised Code; on April 4, 1960, sent defendant a letter informing it of plaintiff's existence and claiming the exclusive right to the word, 'Securance'; on May 3, 1960, filed an application in the United States Patent Office for registration of the word, 'Securance,' as a service mark (which application, opposed by defendant, is still pending); and, on May 13, 1960, filed an application with the Secretary of State of Ohio to register the word, 'Securance,' as a service mark. Both applications filed in the office of the Secretary of State were approved.
The word, 'Securance,' has become familiar to plaintiff's customers and potential customers as describing plaintiff's unique one-stop insurance service; use of that word is invaluable to plaintiff because of the public acceptance thereof; plaintiff and defendant are engaged in competitive businesses; and defendant's use of the word, 'Securance,' in its advertising in competition with plaintiff is deceiving and confusing to the public and to plaintiff's customers and potential customers.
From the record, as to the defendant, it appears that on February 18, 1960, defendant filed an application in the United States Patent Office to register the word, 'Securance,' as a service mark. The application was opposed by plaintiff, and, as with plaintiff's application to register the same word as a service mark, that application is still pending.
Defendant first employed the word, 'Securance,' in the operation of its business in an advertisement which appeared in the March 1, 1960, issue of Look magazine. That advertisement described 'Securance' as a method of providing, through one representative, 'all (or part) of one's insurance--life, health, home, car, and property,' and additionally stated that 'You'll like the convenience of having one agent take care of all or any of your needs.' Since then, defendant has made extensive use of the word, 'Securance,' as its own service mark in all forms of advertising, including newspapers, national magazines, television and radio, and it appears that defendant is now using the words, 'Securance Service,' in advertisements in the Saturday Evening Post and Esquire magazines.
Defendant contends that it had no knowledge of plaintiff's prior use of the word, 'Securance.' Defendant does not seem to remember just how it came upon this name, but claims that in August 1959, during a meeting in New York between defendant's advertising executives and members of its New York advertising agency, 'somebody' suggested the word, 'Securance,' as an advertising slogan, and it was decided to include it in defendant's 1960 advertisements in order to identify defendant's one-stop insurance service.
The Common Pleas Court heard the cause on the merits, reserving all issues of profit and damages. The court, finding for defendant on plaintiff's petition, dismissed the petition and, finding for defendant on the cross-petition, ordered the Secretary of State of Ohio to cancel plaintiff's service mark registration.
On an appeal on questions of law and fact, the Court of Appeals, hearing the cause de novo, made extensive findings of fact and conclusions of law. Among the facts found were that plaintiff was the first to employ the word, 'Securance,' as an identifying service mark in the operation of its insurance business; that the word, 'Securance,' had been continuously employed in the operation of plaintiff's business since 1956; that plaintiff had advertised the word, 'Securance,' extensively; and that on or about March 1, 1960, defendant wrongfully appropriated plaintiff's service name, 'Securance,' and since then has employed and extensively used the word, 'Securance,' in the operation of defendant's business, 'in unfair competition with plaintiff's business in Sandusky County, Ohio.'
The Court of Appeals rendered judgment for plaintiff on its petition, enjoining defendant from using the word, 'Securance,' in the operation of defendant's insurance business in Sandusky County, Ohio; rendered judgment in favor of plaintiff on defendant's cross-petition, ordering the Common Pleas Court to set aside its purported order to the Secretary of State to cancel plaintiff's registration of the service mark, 'Securance'; and remanded the cause to the Common Pleas Court for further proceedings.
Defendant filed a notice of appeal from the judgment of the Court of Appeals; plaintiff filed a notice of cross-appeal; and the cause is in this court pursuant to the allowance of motions to certify the record by both appellant and cross-appellant.
Mahoney, Miller & Rambo, J. Roth Crabbe, Columbus, and Thomas B. Stahl, Fremont, for appellants and cross-appellees.
Leo W. Kenny, Fremont, Vorys, Sater, Seymour & Pease and Schmieding & Fultz, Columbus, for appellees and cross-appellants.
This case involves a consideration of the law relating to trade names, trademarks and service marks.
A trade name, the broadest of these terms, is descriptive of the identity of the owner of the business. It identifies the source of the product or services, the business itself and need not be affixed to the product, although it may serve to identify not only the business but also the product. Katz Drug Co. v. Katz, 240 Mo.App. 739, 217 S.W.2d 286; Gordy v. Dunwody, 209 Ga. 627, 74 S.E.2d 886; and Mary Muffet, Inc. v. Smelansky, Mo.App., 158 S.W.2d 168.
A trademark is a sign, word or device affixed to a product which identifies the goods of a particular seller or manufacturer and distinguishes them from the goods sold or produced by another. Application of McIlhenny Co., Cust. & Pat.App., 278 F.2d 953.
A service mark, which is comparatively new in the law, is in effect a trademark which relates to a service rather than a product. It is a mark used in the advertising and sale of services of one person or firm to distinguish them from the services of another. Toulman, Trade Mark Handbook, 302. Such service marks may include titles, designations, slogans and character names. 4 Callman, Unfair Competition and Trade-Marks (2 Ed.), 2129; and Section 1329.54, Revised Code.
Although trade names, trademarks and service marks are used differently, they all serve the same basic purposes, viz., to identify a business and its products or services, to create a consumer demand therefor, and to protect any goodwill which one may create as to his goods or services.
The fundamental purpose of the laws protecting interests in a trade name, trademark and...
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