
    Martin M. Feerer, Inc., v. Klivans, et al., d. b. a. Kay Clothing Co.
    
      Unfair competition — Clothing and jewelry stores with same trade name — Addition of jewelry department by clothier not enjoined.
    
    Where one person is conducting a clothing business under a trade name, and near thereto, in the same city, another person is conducting a jewelry business under the same trade name, and the circumstances are such that neither of them have a prior or exclusive right to the use of such trade name, the former is not guilty of unfair competition by merely adding a department of jewelry to his clothing business and continuing to conduct his business at the same place and under the same trade name, there being no showing that said clothing merchant by his advertisements or business practices intentionally or unnecessarily interferes with the business of said jewelry merchant. The loss, if any, resulting to the jewelry merchant from confusion of the purchasing public by the continued and honest use of such trade name by the clothing merchant is damnum absque injuria.
    
    Trade-marks, Trade-names and Unfair Competition, 38 Cyc. p. 796.
    (Decided November 6, 1925.)
    Appeal : Court' of Appeal for Summit county.
    
      Messrs. Slabaugh, Young, Seiberling, Huber & Guinther, and Mr. H. B. Harris, for plaintiff.
    
      Messrs. Rocktvell & Grant and Mr. Ben W. Holub, for defendants.
   "Washburn, J.

This case comes into this court on appeal. For the sake of convenience, the plaintiff and defendants will he referred to as if suit was brought by one individual against another individual.

There is practically no dispute as to the facts; the matter in issue is- as to the interpretation to be drawn from the facts and the law applicable thereto.

Some years before 1921 certain persons who had adopted the word “KAY” as a name under which to transact business established two stores in the city of Akron — one on the east side and one on the west side of South Main street, practically opposite each other, in the busiest block in the city. The store on the east side was used for the retail selling of clothing on a credit basis, and in advertisement and sign was known as “The Kay Clothing Co.” The store on the west side was used for the retail selling of jewelry on a credit basis, and by advertisement and sign was known as “The Kay Jewelry Co.” The word “KAY” had no relation to the names of any of the parties, or to the business conducted, but was merely a trade name adopted by the owners of the two stores, which, as has been said, were owned by the same parties.

These stores were conducted by corporations organized by said parties, and in the fall of 1921 both companies became financially embarrassed and both filed petitions in bankruptcy, and in December, 1921, the trustee in bankruptcy sold to plaintiff, or to his predecessor in title, the bankrupt jewelry company’s stock and the léase of¿ the storeroom then occupied by the jewelry company and now occupied by plaintiff. A few days later the trustee in bankruptcy sold to the defendant, or his predecessor in title, the stock of clothing and women’s wear of the bankrupt Kay Clothing Company, together with the lease of the premises then occupied by that company and now occupied by the defendant. In neither of such sales did the trustee in bankruptcy undertake to sell the name or good will of the bankrupt.

In January, 1922, the purchasers of the stores went into possession of the same, and in each store there was conducted the same business as before such sale. As has been said, we will refer to above purchasers as the plaintiff and defendant in this action.

Plaintiff permitted to remain in front of his storeroom the same electric sign which formerly advertised the business conducted therein, and defendant permitted to remain in front of his storeroom the same electric sign which formerly advertised the business conducted therein. In both of said signs the word “KAY” was prominent, and, ever since, the signs have remained the same. Plaintiff expended for newspaper advertising of his business a large sum of money, and defendant likewise expended for the advertising of his business a large sum of money, and each conducted his respective business separately and independently of the other, but each of them made prominent in the transaction of his business, and the advertisement thereof, the word “KAY.”

Shortly before the beginning of this action, defendant concluded to install in his' clothing store a jewelry department, acquired additional floor space for that purpose, and commenced making arrangements to install fixtures and a stock of goods. Plaintiff, learning of that fact, protested, and before the defendant began the sale of jewelry this action was began in the Conrt of Common Pleas. After the decision of the case in the Court of Common Pleas, defendant proceeded to sell jewelry in his jewelry department. He continued to advertise his business under the name of The Kay Clothing Company, and in his advertisements and announcements he stated that he was in no way connected with any other company having a similar name, and upon the stand he testified that he proposed to continue to distinguish his business from that of plaintiff as much as possible, and disclaimed any intention to use the word-“jewelry” in his trade name.

Counsel for plaintiff do not claim that the defendant cannot engage in the sale of any article other than clothing under the name “KAY,” or that the defendant cannot be permitted to engage in the sale of jewelry, but do claim that the defendant cannot legally apply the name “KAY” to articles of jewelry to be sold by him, counsel saying that “they may apply the name ‘KAY’ to washing machines, to hardware, to sporting goods, to musieal instruments, to any other line or class of goods which they may choose to sell. They may sell jewelry, but may not sell it as ‘KAY’ jewelry, and must adopt some name relative to their jewelry which will entirely distinguish their jewelry from ‘KAY’ jewelry.” It is asserted that so far as the territory in which the parties sell is concerned, the plaintiff has acquired a property right in the trade name “KAY” as applied to jewelry, and that this property right belongs exclusively to him.

Certainly the word “KAY” is not descriptive of a business or profession, nor is it descriptive of articles sold, and it does not identify the article sold as that of a particular manufacture; it is simply and solely a trade name under which the parties to this suit conduct their respective businesses; one has as good right to use the trade name as the other, and as against each other neither has any property right in the same.

In this respect the parties are in much the same position as they would be if each of them was named Kay and had the right accorded him under the law to use his own name in connection with his own business. The law accords to a person the right to honestly use his own name in connection with his business, even though such use results in competition with another who has personalized such name in his business. Of course, such use must be honestly made, without purpose of deceiving, and not made in such a way as to unnecessarily deceive the purchasing public and gain business which but for such unfair practice would go to another. Howe Scale Co. v. Wychoff, Seamans & Benedict, 198 U. S., 118; Brown Chemical Co. v. Meyer, 139 U. S., 540; Singer Mfg. Co. v. June Mfg. Co., 163 U. S., 169, and E. A. Pflueger Co. v. The Enterprise Mfg. Co., 85 Ohio St., 450.

There is no claim that a trade-mark is involved in this case, for the word “KAY” or the words “KAY jewelry” do not indicate either by their own meaning or by association the origin or ownership of any article of trade.

Plaintiff can complain, if at all, only on the theory that the defendant by adding a line of jewelry to his business is guilty of unfair competition: “Relief in equity to restrain unfair trade is granted only where the defendant, by his marks, signs, labels, or in other ways, represents to the public that the goods sold by him are those manufactured or produced by the plaintiff, thus palming off his goods for those of a different manufacture, to the injury of the plaintiff.” Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S., 598.

The use by the defendant of the trade name “KAY” and the sale of “jewelry” in a business conducted under that name, when there is no jewelry manufactured or produced by “KAY” and the jewelry sold is that of various manufacturers common to the trade, do not establish that the name “KAY” has any significance or meaning as to the origin of the jewelry sold by plaintiff, so as to distinguish that jewelry from any other jewelry; hence the public cannot be deceived as to the character, kind or quality of the jewelry, the only possible confusion being as to the person with whom the public is dealing, and the plaintiff having chosen to dear with the public not under his own name, but under a fictitious name under which defendant also has a right to deal with the public, cannot compel the defendant to forego his right to transact his business under the trade name “KAY,” although some purchasers of jewelry may be somewhat confused as to whether they are dealing with the plaintiff or the defendant due to their use in common of the name “KAY.”

If the rule laid down in Goodyear’s India Rubber Glove Co. v. Goodyear Rubber Co., supra, has been broadened by later decisions to such an extent that, independent of a property right in a name, it may now be conceded that where one has established a trade and carried it on under a given name and has by usage caused such trade name to be applied to a definite class of articles he is entitled to the aid of the court to prevent another from assuming the same name, or the same name with a slight variation, and engaging in the same kind of a business under such name and in such way as to induce persons to deal with him in the belief that they are dealing with the person who has given reputation to such name, still the plaintiff is not entitled to relief in this action.

Here the defendant has not assumed such name; he has as much right to use the trade name “KAY” as has the plaintiff, he having used the same as long as plaintiff has and having contributed as much or more in the way of advertising and dealing to make the same valuable. He has as much right as the plaintiff to sell jewelry; neither of them is selling jewelry which is in any way described by the term “KAY.” That term has not acquired a secondary significance, denoting the product of a particular person. Although plaintiff is doing business and selling jewelry under the name “KAY,” there is no such thing as “KAY” jewelry; all that there is is jewelry common in the trade sold by “KAY.”

Anyone else who has the right to use the trade name of KAY has the right to sell jewelry, provided he does nothing to deceive the public, and induce persons dealing with him to believe that they are dealing with plaintiff, except use the trade name “KAY.”

The defendant has an established clothing business Avhich he has been conducting for many years under the trade name of “KAY;” the mere fact that he has added to his business a jewelry department, without changing the place in which, or name under which, he conducts his business, will not necessarily confuse the public, and if it does, and the business of plaintiff is thereby interfered with and injured, the defendant’s absolute right to use the name honestly in his own business renders such inconvenience or loss damnum absque injuria. Howe Scale Co. v. Wyckoff, Seamans & Benedict, 198 U. S., 118.

We do not find that the defendant has been guilty of any intentional deception, or that by his advertisements or otherwise he has adopted business practices which are likely to deceive the public, or which unduly deprive plaintiff of his legitimate business. We think that so long as the defendant conducts his business in accordance with his declared intention, as shown by the record, he will be doing that which he has a right to do, and that the rights of the plaintiff will not be violated thereby.

Finding nothing in the conduct of defendant calling for the imposition of restrictions to prevent actionable injury which it is feared may result, a decree may be drawn dismissing plaintiff’s petition.

Petition dismissed.

Pardee, P. J., and. Funk, J., concur.  