Hoyt, Brooks P.

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University of Florida Levin College of Law

Florida Law Review Volume 6 Issue 2 Article 10 June 1953 Trade Names: Protection Accorded Under Secondary Meaning Doctrine Brooks P. Hoyt Follow this and additional works at: https://scholarship.law.ufl.edu/flr  Part of the Law Commons Recommended Citation Brooks P. Hoyt, Trade Names: Protection Accorded Under Secondary Meaning Doctrine, 6 Fla. L. Rev. 256 (1953). Available at: https://scholarship.law.ufl.edu/flr/vol6/iss2/10 This Article is brought to you for free and open access by UF Law Scholarship Repository. It has been accepted for inclusion in Florida Law Review by an authorized editor of UF Law Scholarship Repository. For more information, please contact kaleita@law.ufl.edu. DATE DOWNLOADED: Thu Sep  8 12:07:12 2022SOURCE: Content Downloaded from HeinOnlineCitations:Bluebook 21st ed.			                                                                Brooks P. Hoyt, Trade Names: Protection Accorded under Secondary Meaning Doctrine, 6U. FLA. L. REV. 256 (1953).                                                          ALWD 7th ed.                                                                         Brooks P. Hoyt, Trade Names: Protection Accorded under Secondary Meaning Doctrine, 6U. Fla. L. Rev. 256 (1953).                                                          APA 7th ed.                                                                          Hoyt, B. P. (1953). Trade names: protection accorded under secondary meaningdoctrine. University of Florida Law Review, 6(2), 256-258.                           Chicago 17th ed.                                                                     Brooks P. Hoyt, "Trade Names: Protection Accorded under Secondary Meaning Doctrine,"University of Florida Law Review 6, no. 2 (Summer 1953): 256-258                     McGill Guide 9th ed.                                                                 Brooks P. Hoyt, "Trade Names: Protection Accorded under Secondary Meaning Doctrine"(1953) 6:2 U Fla L Rev 256.                                                          AGLC 4th ed.                                                                         Brooks P. Hoyt, 'Trade Names: Protection Accorded under Secondary Meaning Doctrine'(1953) 6(2) University of Florida Law Review 256                                     MLA 9th ed.                                                                          Hoyt, Brooks P. "Trade Names: Protection Accorded under Secondary Meaning Doctrine."University of Florida Law Review, vol. 6, no. 2, Summer 1953, pp. 256-258.HeinOnline.                                                                          OSCOLA 4th ed.                                                                       Brooks P. Hoyt, 'Trade Names: Protection Accorded under Secondary Meaning Doctrine'(1953) 6 U Fla L Rev 256Provided by: University of Florida / Lawton Chiles Legal Information Center-- Your use of this HeinOnline PDF indicates your acceptance of HeinOnline's Terms and    Conditions of the license agreement available at https://heinonline.org/HOL/License-- The search text of this PDF is generated from  uncorrected OCR text.-- To obtain permission to use this article beyond the scope of your  license, please use:Copyright Information1Hoyt: Trade Names: Protection Accorded Under Secondary Meaning DoctrinePublished by UF Law Scholarship Repository, 1953UNIVERSITY OF FLORIDA LAW REVIEWmilitary law has since been revised and now provides for continuingjurisdiction over the more serious crimes when the accused cannotbe tried in the courts of the United States or of any state, territory,or the District of Columbia. 16 Discharge or separation from the serviceno longer serves to bar to the prosecution of major criminal acts com-mitted overseas in time of war.ORVILLE M. WESTON, JR.TRADE NAMES: PROTECTION ACCORDED UNDERSECONDARY MEANING DOCTRINEQuality Courts United, Inc. v. Jones59 So.2d 20 (Fla. 1952)In a suit by Quality Courts United, Inc., to enjoin defendants fromusing the word "Quality" in advertising their motor courts, a finaldecree was entered enjoining defendants from using the word "Qual-ity" in any manner reasonably calculated to indicate their member-ship in, or endorsement by, Quality Courts United, Inc. An ordersupplemental to the final decree interpreted the word "Quality" asused therein to provide that defendants might use the phrase "ACourt with Quality" if in such manner that the word "Quality" wasnot emphasized in any way. On appeal, HELD, the word "Quality,"as employed by complainant in relation to its business, has acquireda secondary meaning to the public which complainant may protectfrom infringement. Decree affirmed, and interpretative decree re-versed on ground that it vitiated the benefits conferred by the finaldecree.Words of a purely descriptive,' generic,2 or geographical3 nature are1664 STAT. 109 (1950), 50 U.S.C. §553 (Supp. 1952).'William R. Warner & Co. v. Eli Lilly & Co., 265 U.S. 526 (1924); StandardPaint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446 (1911).2Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938); Dwight Lydell Chapterv. Loeks, 329 Mich. 342, 45 N.W.2d 311 (1951).SElgin National Watch Co. v. Illinois Watch Case Co., 179 U.S. 665 (1901);California Apparel Creators v. Wieder of California, Inc., 162 F.2d 893 (2d Cir.1947); Surf Club v. Tatem Surf Club, Inc., 151 Fla. 406, 10 So.2d 554 (1942).2Florida Law Review, Vol. 6, Iss. 2 [1953], Art. 10https://scholarship.law.ufl.edu/flr/vol6/iss2/10CASE COMMENTSnot subject to exclusive appropriation as trademarks. 4 The probabilitythat this rule, if literally applied, would result in commercial fraudled to its early modification through the secondary meaning doctrine.5This doctrine, springing from several celebrated English cases," hasbecome an integral part of the modem American law of unfair com-petition.7 It is grounded in the concept that a word may through con-stant usage in a particular manner acquire an additional meaningdistinct from that which ordinarily attaches to it. Secondary meaningmay be defined as association, nothing more., The doctrine contem-plates that words through exclusive and extended use on the market bya producer with reference to his goods or business may acquire asecondary signification denoting the goods or business of that particularentrepreneur.9 While a public consciousness of the personal identityof the producer is not necessary, it must be shown that whateveris asserted to carry the secondary meaning has come to signify originfrom a single source.10 Such words are commonly known as tradenames, and their use by others in their secondary, as distinguishedfrom their primary, sense will be enjoined.:"The question of whether such a secondary meaning has been ac-quired is one of fact, 2 the critical questions at the outset always beingwhether the public is moved in any degree to purchase the productbecause of its source and how it distinguishes that source.' 3 If thebuyer associates with the name merely the kind of product sold ratherthan a singleness of source of such product, the use of the name byothers will not be restrained. 4 In determining the question, factors4Canal Co. v. Clark, 13 Wall. 311 (U.S. 1871).5G. & C. Merriam Co. v. Saalfield, 198 Fed. 369 (6th Cir. 1912).6Reddaway v. Banham, A.C. 199 (1896); Montgomery v. Thompson, A.C. 217(1891); Wotherspoon v. Currie, L.R. 5 H.L. 508 (1872).7Skinner Mfg. Co. v. General Foods Sales Co., 52 F. Supp. 432 (D. Neb. 1943).88 Nims, UNFAIR COMPETITION AND TRADEMARKS 037 (4th ed. 1947).0G. & C. Merriam Co. v. Saalfield, 198 Fed. 369 (6th Cir. 1912); Baltimore BeddingCorp. v. Moses, 182 Md. 229, 34 A.2d 338 (1943).'oCoca-Cola Co. v. Koke Co. of America, 254 U.S. 143 (1920); National NuGrape Co. v. Guest, 164 F.2d 874 (10th Cir. 1947)."Draper v. Skerrett, 116 Fed. 206 (C.C.E.D.Pa. 1902); Hartzler v. Goshen ChurnLadder Co., 55 Ind. App. 455, 104 N.E. 34 (1914)."2Little Tavern Shops, Inc. v. Davis, 116 F.2d 903 (4th Cir. 1941); Drive ItYourself Co. v. North, 148 Md. 609, 130 At. 57 (1925)."3Crescent Tool Co. v. Kilborn 8 Bishop Co., 247 Fed. 299 (2d Cir. 1917).14 Bayer Co. v. United Drug Co., 272 Fed. 505 (S.D.N.Y. 1921); Weeks v. VarietyNut & Date Co., 103 F. Supp. 528 (E.D. Mich. 1952).3Hoyt: Trade Names: Protection Accorded Under Secondary Meaning DoctrinePublished by UF Law Scholarship Repository, 1953UNIVERSITY OF FLORIDA LAW REVIEWsuch as sales volume,15 priority of use,16 distance 7 and advertising 8may be considered. But each case depends absolutely upon its owncircumstances, and a controlling precedent is not to be expected.' 9When secondary meaning is relied upon, protection is more limitedthan in the case of a valid trademark.20 The word or words soughtto be protected are considered to be, in their primary sense, publicajuris, the property of all.21 The injunctive relief accorded will hencebe so limited in scope as to restrain the use by another of a term inits secondary, or acquired, sense only.22 The line of demarcation be-tween the two types of uses is difficult to ascertain. The injunctionwill normally require the second user to accompany his use of thewords with such indications as will unmistakably distinguish hisproduct from that of the original manufacturer or vendor.23 Tojustify relief it is necessary to show probability of confusion.24 Merepossibility of public deception will not suffice.25 Under the particularcircumstances of a given case, however, an injunction which is, ineffect, absolute in scope may issue if such is the only way to preventconfusion and probable deception of the public.2By its holding in the instant case, particularly with regard to theinterpretative decree, the Florida Court has demonstrated a more com-plete recognition of the secondary meaning doctrine and the rights15Shaler Co. v. Rite-Way Products, Inc., 107 F.2d 82 (6th Cir. 1939).'GUpjohn Co. v. Merrell Chemical Co., 269 Fed. 209 (6th Cir. 1920).17McKay v. Legler, 86 So.2d 793 (Miss. 1948).IsLe Blume Import Co. v. Coty, 293 Fed. 344 (2d Cir. 1923).19Wisconsin Electric Co. v. Dumore Co., 35 F.2d 555 (6th Cir. 1929).2oDixi-Cola Laboratories, Inc. v. Coca Cola Co., 117 F.2d 352 (4th Cir. 1941);U-Drive-It Co. v. Wright & Taylor, 270 Ky. 610, 110 S.W.2d 449 (1937). Contra:Hygeia Distilled Water Co. v. Hygeia Ice Co., 72 Conn. 646, 45 Ad. 957 (1900).2iGeneral Industries Co. v. 20 Wacker Drive Bldg. Corp., 156 F.2d 474 (7thCir. 1946); Addison v. Hooks, 91 Fla. 337, 107 So. 623 (1926).22Armstrong Paint & Varnish Works v. Nu-Enamel Corp., 305 U.S. 315 (1938);Quaker State Oil Refining Co. v. Steinberg, 325 Pa. 273, 189 At. 473 (1937); Kool-vent Metal Awning Corp. v. Price, 368 Pa. 528, 84 A.2d 296 (1951).23G. & C. Merriam Co. v. Saalfield, 198 Fed. 369 (6th Cir. 1912); Rubber & Cellu-loid Harness Trimming Co. v. Devoe & Reynolds Co., 233 Fed. 150 (D. N.J. 1916); cf.McGhan v. McGhan, 115 Fla. 414, 155 So. 633 (1934); Gottdiener v. Joe's Restau-rant, Inc., 111 Fla. 741, 149 So. 646 (1933).24Esso, Inc. v. Standard Oil Co., 98 F.2d 1 (8th Cir. 1938).25Federal Securities Co. v. Federal Securities Corp., 129 Ore. 375, 276 Pac. 1100(1929).26Barton v. Rex-Oil Co., 29 F.2d 474 (3d Cir. 1928); Bernstein v. Friedman, 62Wyo. 16, 160 P.2d 227 (1945).4Florida Law Review, Vol. 6, Iss. 2 [1953], Art. 10https://scholarship.law.ufl.edu/flr/vol6/iss2/10

Trade Names: Protection Accorded Under Secondary Meaning Doctrine

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Trade Names: Protection Accorded Under Secondary Meaning Doctrine

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