One of the principal distinctions is that a valid trade name sometimes consists of words which when applied to the merchandise itself are generic or descriptive and hence not susceptible to appropriation as a technical trade mark. It has been held by good authority that a trade mark usually relates principally to the identity of the commodity offered for sale, while, in addition to this, a trade name designates or indicates the source of manufacture or sale of the article or the individuality or identity of its maker or seller, and further, that the law of trade marks is designed principally for the protection of the public from imposition while the law with respect to trade names is for the protection of the party entitled to use the name, as well as for public protection. Armington v. Palmer, 21 R. A. 109; 42 A. 308; 79 Am. St. Rep. 786; 46 L.R.A. 95; Cady v. Schultz, 19 R.I. 193; 32 A. 915; 61 Am. St. Rep. 763; 29 L.R.A. 524; Eastern Outfitting Co. v. Manheim, 59 Wn. 428; 110 Pac. Rep. 23; N. K. Fairbanks Co. v. Lukel (C.C.A.) 102 Fed. 327; 38 Cyc. 764. While this may be true in many cases, instances abound in which a trade mark concerns the individuality or identity of the manufacturer or dealer quite as much as a trade name (See Kidd v. Johnson, 100 U.S. 617; 25 L.Ed. 769), while on the other hand, trade names frequently relate to the identity of the commodity. Hopkins on Trade Marks (4th Ed.) 13. Although trade marks and trade names each possess differing characteristics which distinguish them, one from the other, (See American Steel Foundries v. Thomas E. Roberts, Commissioner, decided by the United States Supreme Court at the October Term, 1925; opinion filed January 4, 1926) they are nevertheless sufficiently similar in their general nature as well as in their acquisition, function and use to be regarded as the same species or kind of property within th
Compare William R. Warner Co. v. Eli Lilly Co., 1924, 265 U.S. 526, 44 S.Ct. 615, 68 L.Ed. 1161; Standard Paint Co. v. Trinidad Asphalt Manufacturing Co., 1911, 220 U.S. 446, 31 S.Ct. 456, 55 L.Ed. 536; Elgin National Watch Co. v. Illinois Watch Case Co., 1901, 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; Canal Co. v. Clark, 1871, 13 Wall. 311, 20 L.Ed. 581. My finding in this regard, however, is not determinative of the plaintiff's right to relief in this action, for it is well settled that even a descriptive phrase is entitled to the protection of the law if the prior appropriator thereof can show that a secondary meaning has attached to such descriptive phrase and that the activities of a later appropriator of said descriptive phrase have created a likelihood of confusion. Armstrong Paint Varnish Works v. Nu-Enamel Corp., supra; Navy Club v. All-Navy Club, supra; Cady v. Schultz, 1895, 19 R.I. 193, 32 A. 915, 29 L.R.A. 524. The plaintiff must establish the existence of these conditions by a fair preponderance of the credible evidence.
It is clear that the first user of such a name will be protected against a second user if the name has acquired a "secondary meaning", that is, if the name has come to be identified in the mind of the public with the products or services sold by the first user, then a second user will be enjoined from an unfair use of the same or a confusingly similar name. Armstrong Paint Varnish Works v. Nu-Enamel Corp., supra; General Finance Loan Co. v. General Loan Co., 8 Cir., 163 F.2d 709, certiorari denied 332 U.S. 851, 68 S.Ct. 356, 92 L.Ed. 421; Little Tavern Shops v. Davis, 4 Cir., 116 F.2d 903; Cady v. Schultz, 19 R.I. 193, 32 A. 915, 29 L.R.A. 524, 61 Am.St. Rep. 763; Elgin Nat. Watch Co. v. Illinois Watch Case Co., 179 U.S. 665, 21 S.Ct. 270, 45 L.Ed. 365; and Merlino v. Schmetz, 66 R.I. 425, 20 A.2d 266. The plaintiff does not challenge the defendant's use of the term "Navy Club" as an element in its name.
The complainant Charles takes no issue with this so far as it goes but, he argues, the authority upon which respondent relies also holds, by implication, that if it can be shown that independent of the name the signs, labels and advertising of respondent are such as to deceive the public into believing that they are dealing with complainant, the rule is otherwise. In this regard complainant refers our attention to Cady v. Schultz, 19 R.I. 193, and to cases from other jurisdictions. This court in Cady observed at page 195: "Two persons may bear the same name and each may use it in his business, but not so as to deceive the public and induce customers to mistake one for the other.
A competitor was enjoined from using the word "American" in a trade name on the facts in Shaver v. Heller Merz Co. [8th C.C.A.], 108 Fed. 821; and from using the term "United States" or the letters "U.S." in a name to engage in the practice of dentistry on the facts in Cady v. Schultz, 19 R.I. 193, 32 A. 915. In the instant case the chiefly significant word in each of the trade names is "American."
" The Supreme Court of Rhode Island, in distinguishing between infringement of trademarks and unfair use of trade-names, in the case of Cady v. Schultz, 19 R.I. 193, 32 A. 915, 29 L. R. A. 524, said: A trade-name is of a different character. It is descriptive of the manufacturer or dealer himself as much as his own name is, and frequently, like the names of business corporations, includes the name of the place where the business is located. If attached to goods, it is designed to say plainly what a trademark only indicates by association and use. The employment of such a name is subject to the same rules which apply to the use of one's own name of birth or baptism. Two persons may bear the same name, and each may use it in his business, but not so as to deceive the public and induce customers to mistake one for the other.
" "Secondary meaning is association, nothing more. It exists only in the minds of those of the public who have seen or known or have heard of a brand of goods by some name or sign and have associated the two in their minds": Nims, supra, p. 105, "When the word is incapable of becoming a valid trade-mark, because descriptive or geographical, yet has by use come to stand for a particular maker or vendor, its use by another in this secondary sense will be restrained as unfair and fraudulent competition, and its use in its primary or common sense confined in such a way as will prevent a probable deceit by enabling one maker or vendor to sell his article as the product of another": Computing Scale Co. v. Standard Computing Scale Co., 118 Fed. 965, 967. See also American Waltham Watch Co. v. United States Watch Co., 173 Mass. 85, 53 N.E. 141; American Brewing Co. v. St. Louis Brewing Co., 47 Mo. App. 14; Cady v. Schultz, 19 R.I. 193, 32 A. 915; Newman v. Alvord, 49 Barb. 588; Finchley, Inc. v. Finchly Co., 40 F. (2) 736; Bayuk Cigars, Inc. v. Schwartz, 1 F. Supp. 283; Delaware, L. W. R. Co. v. Lackawanna Motor Freight Lines, Inc., 117 N.J. Eq. 385, 175 A. 905; Elgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665; Derenberg, supra, p. 338; Hopkins on Trade-Marks, secs. 65, 66, 67. The evidence produced by plaintiff as to the words "Quaker State" acquiring a secondary meaning, relates to the years following 1919, when the defendant started in business.
ance between the names under which the respective parties do business is not such as to make it certain without evidence that the public is misled in regard to the identity of either of the parties, it is such that the facts averred seem not improbable. The term "Outlet Company," which is the same in each, is one that would be likely to fix attention, while the word "Manufacturers" which appears in one name and the word "Taunton" which appears in the other is general, and is applicable as well to one as to another of many different parties. It seems probable that the only distinctive word which is not common to both names would fail to impress itself upon the attention of many persons who are about to buy such goods as the parties sell. If the plaintiffs prove the facts alleged, there is nothing in the character of their business name which will deprive them of their rights to the benefits that are connected with it. American Waltham Watch Co. v. United States Watch Co. 173 Mass. 85. Cady v. Schultz, 19 R.I. 193. Gillott v. Esterbrook, 48 N.Y. 374. Sanders v. Jacob, 20 Mo. App. 96. Rubel v. Allegretti Chocolate Cream Co. 76 Ill. App. 581. Lever Bros. v. Pasfield, 88 Fed. Rep. 484. Colgate v. Adams, 88 Fed. Rep. 899. National Biscuit Co. v. Baker, 95 Fed. Rep. 135.
In Gamble v. Stephenson, 10 Mo. App. 581, the proprietor of "What Cheer" restaurant was awarded relief against the name "New and Original What Cheer Restaurant" In Colton v. Thomas, 2 Brewst. (Pa.) 308, the name "Colton Dental Association" was protected against the use of the name "Colton Dental Rooms." In Cady v. Schultz, 19 R. I. 193, 32 Atl. 915, 29 L. R. A. 524, 61 Am. St. Rep. 763, the name "United States Dental Association" was protected against the use of the name "U. S. Dental Association." In each of these cases various circumstances existed of more or less force to control the decisions rendered; but the essential inquiry in all cases is: Is the new name, as used.