The design was developed in 1922, and later became a historical neon sign, aptly described by the Texas Court of Civil Appeals as "a picture of a pig in a natural walking position, head down, with the words `Pig Sandwich' extending from shoulder to hind leg, midway of the body of the hog." Dixiepig Corp. v. Pig Stand Co., 31 S.W.2d 325 (Tex.Civ.App. 1930). This design is also cryptically referred to as "The Sign of the Pig."
In the late 1920s, Pig Stands brought suit against Dixiepig Corporation to enjoin them from using the "pig sandwich," "Dixiepig Sandwich," or similar terms because Pig Stands argued that the use infringed on their trademark. Id. (citing Dixiepig Corp. v. Pig Stand Co., 31 S.W.2d 325 (Tex.Civ.App. 1930)). The state court in Dixiepig held that Pig Stands could not appropriate the words "pig sandwich" because Pig Stands had failed to present evidence that showed "pig sandwich" had acquired a secondary meaning.
Alff v. Radam, 77 Tex. 530, 14 S.W. 164, 164 (1890) ("[A] generic name, or a name descriptive of an article of trade, of its qualities, ingredients, or its characteristics, [cannot] be employed as a trade-mark and the exclusive use of it be entitled to legal protection."). See also Dixiepig Corp. v. Pig Stand Co., 31 S.W.2d 325, 327 (Tex.Civ.App.-Dallas 1930), cert. denied, 283 U.S. 831, 51 S.Ct. 364, 75 L.Ed. 1443 (1931). Accordingly, consistent with the Court's earlier conclusion that "king size" as applied to men's wearing apparel describes a characteristic of the wearing apparel, that is, the size of the clothing, the Court orders that King-Size's Texas trademark registration be cancelled as "the registered mark has become incapable of serving as a mark."
Ed 73 (1938); Norwich Pharmacal Company v. Sterling Drug, Inc., 271 F.2d 569, 572-573 (2nd Cir 1959); Checker Food Products Co. v. Ralston Purina Co., 232 F.2d 477, 480-481 (8th Cir 1956); Keller Products v. Rubber Linings Corp., 213 F.2d 382, 386 (7th Cir 1954); Hiram Walker Sons v. Penn-Maryland Corporation, 79 F.2d 836, 838-839 (2nd Cir 1935); Kellogg Toasted Corn Flake Co. v. Quaker Oats Co., 235 Fed 657, 664 (6th Cir 1916); Riverbank Laboratories v. Hardwood Products Corp., 165 F. Supp. 747, 757 (D.C.N.D. Ill 1958); Food Fair Stores v. Square Deal Market Co., 109 F. Supp. 637, 638 (D.C. Dist. Col. 1952); Hospital Liquids, Inc. v. G.H. Sherman, M.D., Inc., 38 F. Supp. 828 (D.C.E.D. Mich 1941); De Long Hook Eye Co. v. Hump Hairpin Mfg. Co., 297 Ill. 359, 130 N.E. 765, 769 (1921); Silbert v. Kerstein, 318 Mass. 476, 479, 62 N.E.2d 109 (1945); Renofab Process Corp. v. Renotex Corporation, 158 NYS2d 70, 76-78 (Misc 1956); Harrelson v. Wright, 339 S.W.2d 712, 714 (Tex Civ App 1960); Dixiepig Corporation v. Pig Stand Co., 31 S.W.2d 325, 326-327 (Tex Civ App 1930); Zimmerman v. B. C. Motel Corporation, 401 Pa. 278, 163 A.2d 884, 886 (1960); 2 Nims, Unfair Competition and Trade-Marks (4th ed 1947), § 336. The right of an entrepreneur to designate his business by the use of descriptive words already employed by another person as a business name has been recognized in our own cases.
We find that the evidence does support the trial court's findings that plaintiffs' extensive and long-time use of the trade name "Shoe Box" has acquired a secondary meaning in the Conroe area, and that, as a result of such confusion in the names, plaintiffs would suffer irreparable harm. See Dixiepig Corp. v. Pig Stand Co., 31 S.W.2d 325 (Tex.Civ.App.-Dallas 1930), cert denied, 283 U.S. 831, 51 S.Ct. 364, 75 L.Ed. 1443 (1931), for a discussion and definition of "secondary meaning". In our record we have copies of several displays and advertisements of defendant.
The two elements which must be established in order to sustain such a cause of action are: 1) plaintiff's use of its trade name has acquired a secondary meaning; and 2) the similarity of the name used by the defendant's place of business would be likely to confuse the public. Harrelson v. Wright, 339 S.W.2d 712, 714 (Tex.Civ.App. — Eastland 1960, writ ref'd); Plaza Co. v. White, 160 S.W.2d 312, 313-14 (Tex.Civ.App. — San Antonio 1942, writ ref'd); and Dixiepig Corporation v. Pig Stand Co., 31 S.W.2d 325, 326-27 (Tex.Civ.App. — Dallas 1930) cert. denied 283 U.S. 831, 51 S.Ct. 364, 75 L.Ed. 1443 (1931). See Foam Rubber Products, Inc. v. Jimenez, 457 S.W.2d 276 (Tex. 1970) (wherein the Supreme Court of Texas cites with approval to the holding in Harrelson).
As a general rule, one suing to restrain another's use of a trademark has the burden of establishing his right to exclusive use of the trademark. ABC Stores, Inc. v. T. S. Richey Co., 280 S.W. 177 (Tex.Com.App. 1926, jdg. adopted); Dixiepig Corporation v. Pig Stand Co., 31 S.W.2d 325 (Tex.Civ.App.-Dallas 1930, no writ). He must show either that he has the right to appropriate the mark as a trademark at common law or that it was registered. 55 Tex. Jur.2d Trademarks, § 28, pp. 663-64 (1964).
(2) That the similarity of the name of Defendants' place of business by Defendants' use of the name "Lone Star" as part of the name of such business would be likely to confuse the public; and (3) That as a result of such confusion, Plaintiff would suffer irreparable harm. Dixiepig Corp. v. Pig Stand Co. (Tex.Civ.App.Dallas 1930) 31 S.W.2d 325, cert. denied, 283 U.S. 831, 51 S.Ct. 364, 75 L.Ed. 1443; Harrelson v. Wright (Tex.Civ.App.Eastland 1960) 339 S.W.2d 712, writ refused; KIKK, Inc. v. Montgomery County Broadcasting, Inc. (Tex.Civ.App.Beaumont 1974) 516 S.W.2d 494, no writ; 55 Tex.Jur.2d, "Trademarks, Trade Names, Etc.," par. 52, p. 687. It is well-settled that each of the above three elements ordinarily present questions of fact. Plaza Co. v. White (Tex.Civ.App.San Antonio 1942) 160 S.W.2d 312, writ refused; Suniland Furniture Co. v. Sunnyland Wholesale Furniture Co. (Tex.Civ.App.Dallas 1950) 235 S.W.2d 674, writ refused; Dilworth v. Hake (Tex.Civ.App.Waco 1933) 64 S.W.2d 829, writ dismissed; Rogers v. Broughton (Tex.Civ.App.Austin 1952) 250 S.W.2d 606, NRE; Bull and Bear Club, Inc. v. San Antonio Bull and Bear Club (Tex.Civ.App.San Antonio 1968) 424 S.W.2d 489, no writ. Also see J. C. Penney Co. v. Walker (Tex.Civ.App.Waco 1965) 395 S.W.2d 76, NRE.
That as a result of such confusion the plaintiff would suffer irreparable harm. See Dixiepig Corporation v. Pig Stand Co., 31 S.W .2d 325 (Tex.Civ.App.--Dallas 1930 (cert. denied, 283 U.S. 831, 51 S.Ct. 364, 75 L.Ed. 1443 (1931))); Harrelson v. Wright, 339 S.W.2d 712 (Tex.Civ.App.--Eastland 1960, writ ref'd); 55 Tex.Jur.2d Trademarks, Trade Names, etc. § 52 (1964). We have carefully reviewed the record, and we find that appellant has failed to establish any of these elements as a matter of law.
The court held: 'In the absence of fraud, a name merely descriptive of the business carried on cannot be exclusively appropriated as against others who can and do use the name with equal truth, even if the words have acquired a secondary meaning.' See Goidl v. Advance Neckwear Co., 132 Tex. 308, 123 S.W.2d 865; Winter Garden District v. Winter Garden Fair, Tex.Civ.App., 299 S.W. 512, 514, writ dism.; Burge v. Dallas Retail Merchants Association, Tex.Civ.App., 257 S.W.2d 733; Duke v. Cleaver, 19 Tex. Civ. App. 218 [ 19 Tex. Civ. App. 218], 46 S.W. 1128, writ dism.; Dixiepig Corporation v. Pig Stand Co., Tex.Civ.App., 31 S.W.2d 325. The evidence is undisputed in this case that appellant wants its customers to know they are trading with J. C. Penney Company.