Groceteria Stores Co. v. Tibbett, 94 Wash. 99, 162 Pac. 54


(1916).

      [No. 13564. Department Two. December 29, 1916.]
GROCETERIA STORES COMPANY, Appellant, v. M. C. TIBBETT,
                          Respondent. 1

TRADE-MARKS

AND TRADE-NAMES - PERSONS ENTITLED - VENDORS.
Under Rem. Code, SS 9492, making it unlawful to counterfeit,
imitate, or use any "label, trade-mark, . . . . or form of
advertisement" adopted and filed for registration as required
by the act, for the purpose of designating any goods, "as
having been made, manufactured, produced, packed, or put on
sale" by another, a person not originating or manufacturing
goods is entitled to trade-mark a name for goods packed and
"put on sale" by him.

SAME - NAMES SUBJECT - "GROCETERIA." The term "Groceteria,"
applied to grocery stores operated without the use of clerks or
deliveries, in which the purchaser makes his own selections, may
be trade-marked under Rem. Code, SS 9492, where it is admitted
that the person claiming the right to the same was the first
to use the word.

SAME - INFRINGEMENT. The use of the words "Pacific Groceteria"
is an infringement of a trade-mark of "Groceteria No. 1"; since it
is sufficiently similar to deceive persons of ordinary caution.

SAME - EXTENT OF PROPERTY - PLACE OF BUSINESS. A concern
located at Seattle claiming a trade-mark of the name "Groceteria"
registered under Rem. Code, SS 9492, may maintain an action to
enjoin the use of the name by another at Tacoma, where it is
alleged in the complaint and admitted that plaintiff was doing
business from its Seattle office with people in the city of Tacoma.

Appeal from a judgment of the superior court for Pierce
county, Clifford, J., entered May 13, 1916, upon sustaining
a demurrer to the complaint, dismissing an action for an
injunction. Reversed.


1 Reported in 162 Pac. 54.

 100    GROCETERIA STORES CO. v. TIBBETT.
                Opinion Per HOLCOMB, J.           94 Wash.

Edward Judd and H. R. Harriman, for appellant.

E. D. Hodge, for respondent.

HOLCOMB

HOLCOMB, J. - This action was brought by appellant, a
corporation, for the purpose of restraining respondent
from in any manner using the trade-mark or trade-name
"Groceteria." The complaint alleges, that appellant has
opened up several grocery stores in the city of Seattle which
are designated as "Groceteria No. 1," "Groceteria No. 2,"
and "Groceteria No. 3"; that it has been selecting and
procuring leasehold interests in the city of Tacoma
preparatory to going into business in that city, and that it has
been doing business from its Seattle office with people in the city
of Tacoma; that appellant's stores are operated in such a
manner that no deliveries are made to purchasers and no
clerks employed, each purchaser making his selection and
paying for the same on his exit, thus greatly reducing the
operating expenses of the store and allowing appellant to sell
groceries at a greatly reduced price, and that the trade-mark
of appellant is marked upon the container in which the goods
are sold; that appellant is the first person in the state of
Washington to use the method of operating a grocery store
as described above, and has used large sums of money to
advertise the same; that it is the first person in the state of
Washington to use the word "groceteria" as a trade-mark
or trade-name, and that, on November 10, 1915, the secretary
of state granted a certificate of registration of such
trademark to appellant; that respondent, M. C. Tibbett, is
engaged in conducting a grocery business in the city of
Tacoma, and has placed on the windows of this store large signs
containing the words "Pacific Groceteria," giving particular
prominence to the word "groceteria"; that respondent is
using the trade-mark and trade-name of appellant in order
to convey to the public the idea that he is merchandising and
trading in the goods of the plaintiff, and is attaching the

           GROCETERIA STORES CO. v. TIBBETT.           101
 Dec. 1916          Opinion Per HOLCOMB, J.

name and word "groceteria" to the goods sold in respondent's
store. A demurrer to this complaint was sustained. As
appellant elected to stand upon the complaint, a judgment
of dismissal was entered, from which this appeal is taken.

In an attempt to justify the ruling of the trial court and
also to distinguish the instant case from Martell v. St.
Francis Hotel Co.,
51 Wash. 875, 98 Pac. 1116, respondent
first claims that appellant had nothing to trade-mark. This
claim is advanced by respondent on the theory that the word
"trade-mark" is so restricted in its meaning that its only
office is to point out distinctively the origin and ownership of
a certain product or products to which it is affixed; in other
words, to give notice who the producer was; and that, under
this definition, no trade-mark could be acquired by a person
who did not produce or manufacture the goods, but only
displayed and sold the same, which is all, it is argued,
appellant did in this case. Granting, for the sake of argument,
that appellant would not be entitled at common law to
trademark this word, it would nevertheless be entitled, under the
facts here pleaded, to some relief; for even when, for any
reason, a word is not capable of being trade-marked, still
when, by reason of its original and long usage by the person
attempting to acquire it for a trade-mark or a trade-name,
it has acquired a secondary signification in reference to this
use as a trade-name by such person, its use in this connection
will be protected by restraining any use of the word or any
infringement which would tend to deceive the public or those
to whom the use of the word in its special meaning has
become attached. Elgin National Watch Co. v. Illinois Watch
Case Co., 179 U. S. 665; Lawrence Mfg. Co. v. Tennessee
Mfg. Co., 138 U. S. 537.

But by the terms of Rem. Code, SS 9492, not only in a case
of this character is appellant protected in the use of the word
attempted to be trade-marked, by the restraint of others
from using the word in a manner which tends to deceive the

 102    GROCETERIA STORES CO. v. TIBBETT.
                Opinion Per HOLCOMB, J.           94 Wash.

public, but also it is the proper subject of a trade-mark.
This statute reads as follows:

"Whenever any person, or any association or union of
workingmen has heretofore adopted or used, or shall hereafter
adopt or use, and has filed as hereinafter provided any
label, trademark, term, design, device or form of
advertisement for the purpose of designating, making known, or
distinguishing any goods, wares, merchandise or other product
of labor, as having been made, manufactured, produced,
prepared, packed or put on sale by such person or association
or union of workingmen or by a member or members of such
association or union, it shall be unlawful to counterfeit or
imitate such label, trademark, term, design, device or form
of advertisement, or to use, sell, offer for sale, or in any way
utter or circulate any counterfeit or imitation of any such
label, trademark, term, design, device or form of
advertise

There can be no doubt that, by the express terms of the
statute, a person is entitled to a trade-mark and the
protection afforded thereby, not only when he is the originator and
manufacturer of the goods bearing the trade-mark, but also
as a label when the goods are only packed and "put on sale"
by such person, which was exactly what was done by
appellant in this case, as all the goods sold by appellant were put
in wrappers marked with the label "Groceteria" to
distinguish the goods so sold by appellant.

Respondent's second assertion is based on the ground that
the word "groceteria" is descriptive of the grocery business,
and therefore is not such a word as could become the subject
of a trade-mark. It would seem that the statute above quoted
would be controlling here and answer this argument contrary
to respondent's contention; but in any event, we think this
argument without merit, since neither the word "groceteria,"
nor any syllable, nor any successive syllables thereof,
constitutes any word in the English language, and it is admitted
that appellant was the first to use this word. It is, therefore,
a fictitious or fanciful and original name and appropriate for
a trade-mark label, so far as this contention is concerned, and

           GROCETERIA STORES CO. v. TIBBETT.           103
 Dec. 1916          Opinion Per HOLCOMB, J.

respondent has pirated that word. Paul, Trade-Marks, SS 49;
Sebastian, Trade Marks, pp. 55-64.

Respondent's argument that "Pacific Groceteria" is not an
infringement of appellant's alleged trade-mark "Groceteria.
No. 1," etc., because these terms are not identical, is
completely answered in Rosenburg v. Fremont Undertaking Co.,
63 Wash. 52, 114 Pac. 886, wherein this court said:

"Nor need one trade-name, in order to be an infringement
upon another, he exactly like it in forth 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."

Relying on the rule announced in Eastern Outfitting Co.
v. Manheim, 59 Wash. 428, 110 Pac. 23, 35 L. R. A. (N. S.)
251, respondent asserts that, as appellant has established no
place of business in the city of Tacoma and has done no
business there, it is not entitled to the exclusive use of the word
"groceteria" in that community. It is true in Eastern
Outfitting Co. v. Manheim we held that the fact to be ascertained
was, What is the market of the complaining party? and his
protection in the use of his trade-name is coextensive with his
market. The court then found that the plaintiff's place of
business was in Seattle, and it was doing no business
whatever in Spokane, and was therefore not entitled to the use of
the trade-name in Spokane as against defendant who had,
at a large expense, established a business in Spokane. The
rule as laid down in the Eastern Outfitting Co. case, supra,
in any event, is not applicable here, as it is alleged in the
complaint and admitted by the demurrer that appellant is
doing business with the people of Tacoma, which makes
Tacoma a part of its market.

It is not here intended to enjoin and prohibit the method
of doing business pursued by respondent, but only the
piratical use of the trade-name or trade-mark and label
"groceteria" within the state.

 104    BIEL v. TOLSMA.
                Opinion Per HOLCOMB, J.           94 Wash.

The judgment is reversed, and the cause remanded for
further proceedings not inconsistent herewith.

MORRIS, C.J., MOUNT, PARKER, and FULLERTON, JJ.,
concur.