Buscemi's Inc v. Anthony Buscemi Delicatessen and Party Store, Inc , 96 Mich. App. 714 ( 1980 )

96 Mich. App. 714 (1980) 294 N.W.2d 218

BUSCEMI'S INC.
v.
ANTHONY BUSCEMI DELICATESSEN AND PARTY STORE, INC.

Docket No. 78-3679.

Michigan Court of Appeals.

Decided April 21, 1980.

Joseph E. Mihelich, for plaintiff.

Bruce A. Karash, for defendant.

Before: BASHARA, P.J., and T.M. BURNS and D.F. WALSH, JJ.

D.F. WALSH, J.

On March 7, 1977, the Macomb County Circuit Court issued a written finding that the name "Buscemi", as used by plaintiff, Buscemi's Inc., for over 20 years, had acquired a secondary meaning when used in connection with "a business commonly referred to as a delicatessen, selling pizza, submarine sandwiches, torpedo sandwiches and other food products for consumption off the premises including but not limited to beer, wine and liquor". The court also found that the public was confused when defendant Anthony Buscemi Delicatessen and Party Store, Inc., was opened in Clinton Township, Macomb County, in September, 1975, creating the mistaken belief that defendant's business was actually operated by plaintiff. Notwithstanding the fact that the Buscemi surname was shared by Paul Buscemi, owner of plaintiff, and Anthony Buscemi, owner of defendant, the court ruled that plaintiff had acquired the exclusive right to use the name in connection with the delicatessen business. Defendant was "enjoined in the area which [would be] subsequently defined by [the] Court from using the words Buscemi or Buscemi's either alone or in any form or combination with other words which would likely create a connection and association in the mind of the public between Buscemi and Buscemi's and the products sold by [p]laintiff".

On August 15, 1978, an amended order for permanent injunction was filed in which the court set forth the territorial extent of the injunctive relief granted to plaintiff: the counties of Macomb, Oakland and Wayne. It is from the circuit court's refusal to include the counties of St. Clair, Washtenaw, Lapeer and Monroe within the protected territory that plaintiff appeals. We affirm.

Generally speaking, one has the right to use his own name honestly in his own business even though he may thereby incidentally interfere with and injure the business of another having the same name Young & Chaffee Furniture Co v Chaffee Brothers Furniture Co, 204 Mich. 293, 298; 170 N.W. 48 (1918).

For this reason a surname is not normally the subject matter of a trademark.^[1] The doctrine of secondary meaning, however, has been universally recognized as an exception to that rule. With particular reference to the application of the secondary meaning doctrine to surnames, Hopkins on Trademarks, Tradenames and Unfair Competition (4th ed), § 73, p 169, cites Chickering v Chickering & Sons, 215 F 490, 494-495 (CA 7, 1914):

"A surname is not the subject-matter of a technical trademark. This is due to the fact that it can not be a clearly distinguishing mark on goods, inasmuch as any one bearing the name has a right to use it in connection with property of his manufacture. It may, however, by appropriation and actual exclusive use, in course of time come to denote in the minds of the public, the product of some particular person or factory or business, and thus acquire a secondary signification. Such a secondary signification, when established, is the subject-matter of exclusive right."

In this case the trial court properly ruled that plaintiff's surname had acquired a secondary meaning in Macomb, Oakland and Wayne counties. There was ample evidence that "defendant's use of the word" Buscemi in its business "leads to confusion and deception of the public and constitutes unfair business competition". Montgomery Ward & Co, Inc v Ward Furniture & Appliance Co, 327 Mich. 582, 585; 42 NW2d 747 (1950). We find that plaintiff's objection to the geographical extent of the injunctive relief, however, is without merit.

Where reliance must be placed on the doctrine of secondary meaning, because a mark is otherwise nondistinctive, rights in the mark extend only so far as it is shown that the secondary meaning exists.^[2]

Plaintiff presented no evidence that the name Buscemi had acquired a secondary meaning in the counties of St. Clair, Washtenaw, Lapeer and Monroe. There was no evidence that, in the minds of persons living in those counties, the name had come to be identified with the products of plaintiff.^[3]

Moreover, we reject plaintiff's contention that the injunctive relief should extend to its "natural field of legitimate trade expansion".^[4] In beef & brew, inc v BEEF & BREW, INC, 389 F Supp 179, 185-186 (D Ore, 1974), the court examined the leading cases which had discussed the zone of expansion theory and found that in each there had been a showing either of secondary meaning in the zone or of bad faith on the part of the defendant. The court observed that "application of the [zone of expansion] doctrine must * * * be sensitively founded in the particular facts and circumstances of the case". Id., 185.^[5] The Michigan Supreme Court has been reluctant to extend injunctive relief to a party's field of potential expansion or in response to a plaintiff's contention that the defendant's business might be operated in the future in such a manner as to deceive the public. Good Housekeeping Shop v Smitter, 254 Mich. 592, 597-598; 236 N.W. 872 (1931), Burns v Schotz, 343 Mich. 153, 158; 72 NW2d 149 (1955), The Fair — South Flint Plaza, Inc v Shoppers Fair of Flint, Inc, 358 Mich. 640, 645; 101 NW2d 342 (1960).

We follow the lead of the beef & brew, inc case and find that the zone of expansion doctrine does not aid plaintiff under the facts of this case. There has been no proof of a secondary meaning in the four excluded counties or of bad faith on the part of defendant. We are not persuaded that any equitable rights of plaintiff will be violated by virtue of the territorial extent of the injunction.^[6] We are not convinced that we would have reached a different conclusion than that of the circuit court and we, therefore, decline to disturb the circuit court's order. Edelman Realty Co v Edelman, 344 Mich. 646, 656; 75 NW2d 29 (1956).

Affirmed. Costs to appellee.

NOTES

[1] See MCL 429.32(d); MSA 18.638(22)(d).

[2] Vandenburgh, Trademark Law and Procedure (2d ed), §§ 2.41, 4.72, pp 68, 134; Zimmerman v Holiday Inns of America, 438 Pa 528, 538; 266 A2d 87 (1970), cert den 400 U.S. 992; 91 S. Ct. 456; 27 L. Ed. 2d 440 (1971), Drug Fair-Community Drug Co, Inc v Drug Fair, Inc, 453 Pa 454, 458-459; 309 A2d 363 (1973), Flavor Corp of America v Kemin Industries, Inc, 358 F Supp 1114, 1125 (SD Iowa, 1973), aff'd 493 F2d 275 (CA 8, 1974); Anno: Unfair competition: geographical extent of protection of word or symbol under doctrine of secondary meaning, 41 ALR3d 434, 442, § 4; 3 Callman, Unfair Competition, Trademarks & Monopolies (3d ed), § 77.4(a), pp 363-364 ("In any event, the exclusive right created by such secondary meaning cannot extend beyond the area of its popularity.")

[3] There was evidence that plaintiff had bought 16 minutes of television advertising in March 1978 and that radio advertising was to begin in June 1978, the week of the hearing on the geographical scope of the injunctive relief. These light, sporadic and very recent advertising efforts were not sufficient to indicate establishment of a secondary meaning.

[4] There was evidence of plaintiff's indefinite plans for expansion beyond the three counties (Macomb, Oakland and Wayne) where it presently has stores.

[5] The zone of expansion doctrine was criticized in Katz Drug Co v Katz, 89 F Supp 528, 535 (ED Mo, 1950), aff'd 188 F2d 696 (CA 8, 1951):

"Such a doctrine would impose a burden on the innocent junior appropriator. In adopting a trade name or trade-mark, how far must the adopter look to see if a similar mark is in use? If a similar mark is in use, and it is wholly unknown in the area in which the so-called adopter wishes to use it, there is nothing to put him on notice. If the adopter in such a case wishes to open a retail drugstore in St. Louis, must he search Kansas City? Chicago? Des Moines? Denver? It seems unnecessary."

[6] Our review is limited to the ruling made by the circuit court as of the date of the court's order and should not be construed as a determination that Buscemi's Incorporated has not as of some later date acquired a secondary meaning in an area more expansive than that determined by the trial court.