Opinion
03-28-1907
O'GRADY v. MCDONALD.
Thompson & Cole, for complainant. Bourgeois & Sooy, for defendant.
Suit by Michael O'Grady against Clara McDonald. Heard at the return of an order to show cause for a preliminary injunction on bill, answer, and affidavits. Preliminary injunction issued.
Complainant is the owner of a hotel on Arkansas avenue, in Atlantic City, known as "The Hotel Dominion," and seeks to restrain defendant from using the name "The New Dominion" for a hotel which defendant has recently erected on that avenue within a few hundred feet from the hotel owned by complainant. The theory of the bill is that defendantis violating rights which complainant has acquired by prior appropriation of the trade-name stated.
Heard, at the return of an order to show cause for a preliminary injunction, on bill and affidavits, and answer and affidavits.
Thompson & Cole, for complainant. Bourgeois & Sooy, for defendant.
LEAMING, V. C. (after stating the facts). There can be no doubt of the power of a court of equity to restrain the improper use of a trade-name. The principles involved are in many respects analogous to those arising in the protection of trade-marks. Busch v. Gross (N. J. Ch.) 64 Atl. 754; International Silver Co. v. Wm. H. Rogers Corporation, 67 N. J. Eq. 646, 60 Atl. 187, 110 Am. St. Rep. 506; Eureka Fire Hose Co. v. Eureka Mfg. Co., 69 N. J. Eq. 159, 60 Atl. 561. Complainant's hotel has been conducted under the name "The Hotel Dominion" for upwards of 12 years. That name has necessarily become so associated with the hotel that complainant is clearly entitled to protection against the use of the same or a similar name in such manner as to be likely to deceive or mislead the public. Defendant claims, however, that she was a tenant of complainant's hotel from March 1, 1896, to March 1, 1897, and during that time gave the hotel of complainant a high standing under its old name, which name, she claims, was of little value prior to that time. I think this fact wholly immaterial. Defendant leased the hotel for one year furnished and ready for occupancy. Her lease described the property as "The Hotel Dominion." If during the year of her tenancy the reputation of the hotel was improved by reason of her labors, that fact cannot properly be held to entitle her to the use of the name for an opposition hotel at the end of her term. Had the name been one of her own adoption, as in Wilcoxen v. McCray, 38 N. J. Eq. 466, and not one which she only became entitled to use because she was a tenant of the property of complainant, an altogether different condition might exist.
The more difficult question is whether the name "The New Dominion," as used by defendant, is likely to operate to deceive or mislead the public. A question of this nature necessarily depends largely upon the special circumstances of the individual case. In Weinstock, Lubin & Co. v. Marks, 109 Cal. 529, 42 Pac. 142, 30 L. R. A. 182, 50 Am. St. Rep. 57, the proprietors of a store known as "Mechanics' Store" were awarded an injunction against the use, by an opposition concern, of the name "Mechanical Store." 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. calculated to deceive or mislead? In the present case no reason is suggested by defendant for her desire to use the name "Dominion" in her new enterprise; but the inference is present that she finds in the name adopted some aid to the procurement of guests who have heretofore patronized the old hotel. I am unable to believe that this will not be the effect of the use of the name if that use is permitted.
I will advise that a preliminary injunction issue pursuant to the prayer of the bill.