Rosenburg v. Fremont Undertaking Co., 63 Wash. 52, 114 Pac. 886 (1911).


          [No. 9246. Department One. April 10, 1911.]
      F.E. ROSENBURG et al., Appellants, v. FREMONT
           UNDERTAKING COMPANY, Respondent. 1

TRADE-MARKS

AND TRADE-NAMES - INFRINGEMENT. The prior use of
the trade-name "Fremont Undertaker," at Fremont, precludes the
adoption by another firm at the same place of the name
"Fremont Undertaking Company," where confusion results
therefrom.

SAME - RIGHTS OF ASSIGNEE - CHANGE OF NAME. Successors in
interest acquire the right to change the trade-name "Fremont
Undertaker" to "Fremont Undertaking Company," as against
parties adopting a similar name.

SAME - ABANDONMENT. The right to the use of a trade-name
employed by a firm is abandoned and lost, where, upon
dissolution of the copartnership, the member succeeding to the
business agreed to, and for a time did, discontinue its use.

Appeal from a judgment of the superior court for King
county, Frater, J., entered June 29, 1910, upon findings in
favor of the defendant, after a trial on the merits before the
court without a jury, in an action to enjoin the use of a
trade-name. Reversed.

Carkeek & McDonald, for appellants.

Morris, Southard & Shipley, for respondent.

FULLERTON

FULLERTON, J. - This action was brought by the
appellants against the respondent to enjoin the use of a
tradename. From the record it appears that in 1905 one M.O.
Carton opened an undertaking establishment in the northern


1 Reported in 114 Pac. 886.

           ROSENBURG v. FREMONT UNDERTAKING CO.           53
 Apr. 1911          Opinion Per FULLERTON, J.

part of the city of Seattle known as Fremont. In
advertising his business he early began to use the words
"Fremont Undertaker" sometimes placing the words immediately
following his name, as "M.O. Carton, Fremont Undertaker,"
and sometimes using them as his business name, as "Fremont
Undertaker; M.O. Carton, proprietor"; the latter form
being the one principally adopted during the later years he
continued in business. During this time, also, patrons would
address mail matter pertaining to his business to him under
the name of "Fremont Undertaking Company," and "Fremont
Undertaking Co."

In 1905, some two years after Carton had established his
business, one J.J. Bleitz opened an undertaking establishment
in the northern part of Seattle, locating at Green Lake.
In January, 1906, he formed a partnership with one Butterworth
and removed the establishment to Fremont, a few blocks
distant from Carton's business house, where they did business
for some eight months under some three different names;
namely, "Bleitz & Butterworth," "Fremont Undertaking
Company," and "Fremont Undertaking Company; Bleitz &
Butterworth," using the latter form more frequently,
perhaps, than either of the others. After the opening of the
second establishment, the parties immediately became
business rivals, and owing to the similarity of the names used
by them, much confusion resulted. Mail intended for the one
would be delivered to the other, and sometimes persons
desiring the services of the one concern would by mistake call
on the other. Carton, during this time, remonstrated orally
with Bleitz & Butterworth against the use of the name
"Fremont Undertaking Company" in any form, and in the late
summer of 1906, wrote them a letter threatening them with an
action if they did not cease to use it.

On September 14, 1906, Bleitz & Butterworth dissolved
their partnership, Butterworth selling his interests to
Bleitz. In the articles of dissolution it was provided that
"Bleitz agrees to discontinue the name of 'Fremont Undertaking

 54    ROSENBURG v. FREMONT UNDERTAKING CO.
                Opinion Per FULLERTON, J.           63 Wash.

Company; Bleitz & Butterworth,' heretofore used by said
partnership, and to remove same from all signs, stationery and
advertising as soon as possible." Bleitz, in compliance with
this part of the agreement, commenced doing business under
the name of "Bleitz Undertaking Company," changing all his
signs and advertising matter to read in that way. Matters
ran on in this way until August, 1908, Carton in the
meantime continuing to use the name "Fremont Undertaker." On
August 26, 1908, Carton sold his business to the plaintiffs
in this action, appellants in this court. They immediately
adopted the name of "The Fremont Undertaking Co.," and
filed with the county clerk of King county a certificate
setting forth such name as the firm name under which they
proposed to conduct their business, as required by the statute
of 1908, and from thence on used the name as their trade-name,
and extensively advertised their business thereunder. On
November 10, 1908, Bleitz, with certain associates, formed a
corporation under the name "The Fremont Undertaking Company,
Inc.," and the corporation thereafter took over the business
theretofore conducted by Bleitz, and began doing business
under the corporate name. Thereupon the appellants notified
the corporation to discontinue using the name "The Fremont
Undertaking Company, Inc.," or any similar name, and on
its refusal so to do, began the present action to enjoin its
use. The respondent, in its answer, claimed the better right
to the use of the name, and on the trial the court held with
it, enjoining the appellants from further using the name
"Fremont Undertaking Company," or any similar name, in the
conduct of their business. This appeal followed.

The right to use a particular name as a trade-name belongs
to the one who is first to appropriate it and use it in
connection with a particular business. To acquire the right to
use a particular name it is not necessary that the name be
used for any considerable length of time. In a contest between
two individuals over such right, therefore, it is enough to
show that the one was in the actual use of it, before it was
begun

           ROSENBURG v. FREMONT UNDERTAKING CO.           55
 Apr. 1911          Opinion Per FULLERTON, J.

to be used by the other. 28 Am. & Eng. Ency. Law (2d ed.),
895. It is a recognized principle, also, that a trade-name can
be abandoned or given up by the original appropriator, and
that when it is so abandoned or given up, any other person
has the right to immediately seize upon it and make use of it,
and thus acquire a right to it superior, not only to the right
of the original user, but to all the world. Gaines & Co. v.
Whyte Grocery Fruit & Wine Co., 107 Mo. App. 507, 81
S.W. 648. Nor need one trade-name, in order to be an
infringement upon another, be exactly like it in form and
sound. It is enough if the one so far resembles the other as
to deceive persons of ordinary caution into the belief that
they are dealing with the one concern when they use the name
of the other. For example, it was held in Proctor & Gamble Co.
v. Globe Refining Co., 92 Fed. 857, that it was an
infringement upon the trade-mark "Every Day Soap" to use as a
trade-mark "Everybody's Soap"; in International Society v.
International Society, 59 N.Y. Supp. 785, it was held an
infringement on the name "International Society" to use the
name "International Society of Literature and Bookbinders'
League"; in Mossler v. Jacobs, 66 Ill. App. 571, it was held
an infringement upon the name "Six Little Tailors" to use
the name "Six Big Tailors"; and in Myers v. Kalamazoo
Buggy Co., 54 Mich. 215, 19 N.W. 961, 20 N.W. 545, 52
Am. Rep. 811, it was held an infringement upon the
tradename "Kalamazoo Wagon Company" to use the name
"Kalamazoo Buggy Company." To the same effect are the
following cases: Fuller v. Huff, 104 Fed. 141; Hansen v.
Siegel-Cooper Co., 106 Fed. 691; Nokes v. Mueller, 72 Ill.
App. 451; Volger v. Force, 63 App. Div. 122, 71 N.Y. Supp.
209; Morgan Envelope Co. v. Walton, 82 Fed. 469.

Nor is the rule different because the name or some part of
it may be a geographical name. The rule is not rested on the
principle that the user has a property in a name, but on the
principle that it is a fraud on both the person who has
established a trade which he carries on under a given name,

 56    ROSENBURG v. FREMONT UNDERTAKING CO.
                Opinion Per FULLERTON, J.           63 Wash.

and the public who trade with the person on the faith of the
name, to allow another to assume the same or a similar name
for the purpose of selling his own goods or inducing people
to trade with him under the belief that they are purchasing
the goods of, or trading with, the person who established the
name. Eastern Outfitting Co. v. Manheim,
59 Wash. 428,
110 Pac. 23.

"A corporation may be enjoined from using a name or
conducting a business under a name so similar to the name of a
previously established corporation, association, partnership,
or individual, engaged in the same line of business, that
confusion or injury results therefrom." Martell v. St. Francis
Hotel Co., 51 Wash. 375, 98 Pac. 1116.

Applying these principles to the case in hand, it would seem
that the judgment of the trial court was erroneous. In the
first place we think there was an infringement upon the
tradename "Fremont Undertaker," adopted by Carton, by the
use of the name "Fremont Undertaking Company," adopted
by Bleitz & Butterworth. There can be no question that
Carton was the first to use the name "Fremont Undertaker,"
and that be was using it at the time Bleitz & Butterworth
commenced business as partners. It would seem to be free from
question also that the name adopted by the latter was
sufficiently identical with the name adopted by Carton as to
mislead persons of ordinary caution. And that persons were
actually misled by the similarity of the names into trading
with Bleitz & Butterworth when in fact they intended to trade
with Carton, the record abundantly shows. It being, therefore,
unfair competition for the firm of Bleitz & Butterworth
to adopt the name of "Fremont Undertaking Company," they
acquired no right therein by its adoption, and the successors
in interest of Carton were free to change the form of the
name adopted by Carton to that form when they succeeded to
Carton's interests.

In the second place, the right to use the name of Fremont
Undertaking Company by Bleitz & Butterworth, even

               WILLIAMS v. NORTHERN PAC. R. CO.           57
 Apr. 1911                    Syllabus.

conceding that they acquired the right, was abandoned by
Bleitz after he succeeded to the interests of Bleitz &
Butterworth, and taken up by the appellant before the
respondent sought to resume its use. It is true that Bleitz
testified there was no intention on his part to abandon the
use of the name entirely, but we think the fact can be better
ascertained by his acts at the time than by his present
statements. He agreed in writing with his former partner to
abandon its use, and did in fact quit its use until after it
was taken up by the appellants. While we think a secret intent
on his park to again resume the name would not be sufficient
against one who actually took up its use, there is here
evidence of intent to abandon, as well as actual abandonment.

The judgment appealed from is reversed, and the cause
remanded with instructions to enter a decree in favor of the
appellants enjoining the respondent from further using in
connection with its business the name "Fremont Undertaking
Company, Inc." or any similar name.

DUNBAR, C.J., GOSE, MOUNT, and PARKER, JJ., concur.