hears or sees the full corporate name used seldom in comparison to the number of times the nickname is used."
It follows that the plaintiff has not overstepped its legal rights in using the letters "A & P" as a nickname in its business. It is equally clear that its use of these letters as a trade-mark is also lawful.
The defendant argues, however, that the plaintiff by its registration of the trade-mark "A & P" in the United States Patent Office secured no legal right to the use of these letters as a trade-mark or name. This it says is because the plaintiff is not engaged in interstate commerce and consequently secured no rights under the act of Congress (15 U.S.C.A. § 81) which authorizes the registration of those marks only which have been used in interstate or foreign commerce. It is a sufficient answer to this contention to point out that since this court has jurisdiction because of diversity of citizenship, it is immaterial whether plaintiff's trade-mark was used in interstate commerce or was registered under the act of Congress. The title to a trade-mark is independent of its registration. United States Ozone Co. v. United States Ozone Co. (C.C.A.) 62 F.2d 881. The real question is whether the mark was actually adopted and used by the plaintiff and as to that there can be no doubt in this case.
Defendant next urges that it has merely used an abbreviation of the surnames of its incorporators and sole stockholders, and that this it is entitled to do regardless of the plaintiff's rights. It will be observed, however, that the defendant did not use the names "Aronberg and Podolsky." It is obvious that the purpose of defendant's incorporators was not to acquaint the public with the fact that these men were interested in its business. If this had been their purpose their surnames would have been used. I am satisfied that, on the contrary, their intention was to appropriate whatever value they could of the plaintiff's tradename "A & P" and to excuse this action on the ground that these initials represented their own surnames. This, however, is not a sufficient excuse under the circumstances. Great Atlantic & Pacific Tea Co. v. A. & P. Meat Market, 138 Misc. 224, 244 N.Y.S. 535.
In this connection it should be noted that there is a distinction between the right of an individual to use his name in his personal business and the right to use an individual name or initial in a corporate name. In the case of a corporation there is no right to use a corporate name containing the individual name of an incorporator if such use will infringe upon a prior right or a well known corporate name. Nims on Unfair Competition and Trade-Marks (3d Ed.) p. 248; R.W. Rogers Co. v. Wm. Rogers Mfg. Co. (C.C.A.) 70 F. 1017; Clark Thread Co. v. Armitage (C.C.A.) 74 F. 936. In other words, while an honest use of a family name in a personal business will not be enjoined, honest motives and absence of fraudulent intent are no defenses where the licensing of a name to a corporation is involved. This is for the reason that a corporation may select any name not already appropriated, whereas there is a natural inclination on the part of an individual to trade under his own name.
In the present case, as we have seen, the defendant's incorporators did not use their own names but merely their initials, and these were used with the intention of misleading the public. It follows that they have stepped beyond the bounds of the law in thus adopting for their own purposes the trade-name of the plaintiff. Their action in so doing amounts to unfair competition with the plaintiff.
I am not impressed with the defendant's argument that the letters "A & P" are used by many other concerns throughout the country.The evidence was that out of 2,244,175 company and firm names listed in Dun & Bradstreet's Credit Rating Book, there were twelve which used the letters "A & P" in their names. Only one of these concerns was known to the plaintiff and that one appears to have been the defendant in a suit in the Western District of Pennsylvania. Great Atlantic & Pacific Tea Co. v. A. & P. Cleaners & Dyers, Inc. [D.C.] 10 F.Supp. 450. There is no evidence as to how long any of the twelve concerns have been in business or as to the extent of their infringement upon the plaintiff's trade-name. But regardless of this it is obviously no excuse for the defendant's conduct to say that others have been guilty of the same wrong. Nor is the question here whether the plaintiff has an exclusive right, but rather whether to the public "A & P" means the plaintiff.
Nor can I follow the defendant's final argument that it secured a right to the use of its corporate name from the Commonwealth of Pennsylvania and that plaintiff was guilty of laches in failing to protest in response to the advertisements of its intention to secure a certificate of incorporation inserted in the newspapers as directed by the Pennsylvania Business Corporation Law (15 P.S.Pa. § 21). The issuance of its charter did not confer on the defendant any right wrongfully to use a name already used by another, nor was it an adjudication by the state of the legality of the name chosen. That is a matter for this court to determine. Hudson Tire Co. Inc. v. Hudson Tire & Rubber Corporation (D.C.) 276 F. 59.
Conclusions of Law
Plaintiff is the owner of the trade-name or nickname and trade-mark "A & P."
Defendant's use of the letters "A & P" in its corporate name and otherwise in connection with its business constitutes unfair competition with the plaintiff in violation of the law.
Plaintiff is entitled to an injunction against defendant, its agents, servants, attorneys, and employees, restraining them from using the letters "A & P" in its corporate name and otherwise in connection with its business.
A decree may be entered accordingly.
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