Appeal from decree of Court of Common Pleas, Civil Division, of Allegheny County, July T., 1972, No. 1840, in case of Miscellaneous, Inc. v. Klein's Fashions, Inc. and A. Klein, a/k/a Al Klein.
B. Mark Chernoff, for appellants.
Robert E. Sigal, with him Sidney L. Krawitz, and Krawitz, Sigal & Ridley, for appellee.
Jones, C. J., Eagen, O'Brien, Roberts, Pomeroy, Nix and Manderino, JJ. Opinion by Mr. Justice O'Brien. Mr. Chief Justice Jones and Mr. Justice Eagen dissent.
Plaintiff-appellee, Miscellaneous, Inc., an Ohio corporation, registered to do business as a foreign corporation in Pennsylvania. On November 18, 1969, plaintiff received a certificate from the Common Pleas Court of Philadelphia permitting it to carry on business under the fictitious name "Misc., Inc." or "Miscellaneous, Inc". On November 26, 1969, plaintiff received another similar certificate from the office of the Secretary of the Commonwealth. Plaintiff operates a total of nine gift stores, only one being located in Pennsylvania, at the Monroeville Mall, Allegheny County. The Pennsylvania store, in operation since October, 1970, offers for sale certain women's accessories and other notions.
Appellant, Klein's Fashions, Inc. (Klein's), is a Pennsylvania corporation engaged in selling women's apparel. In June of 1969, approximately five months prior to the time plaintiff had received its certificates, Klein's was authorized to conduct business under the fictitious name "Misc." Klein's has several stores throughout Western Pennsylvania. In March of 1972, plaintiff learned that Klein's was planning to open a new store in Monroeville Mall, some sixty feet from plaintiff's establishment. Before Klein's had begun its Monroeville operation, plaintiff had by letter requested Klein's to refrain from using the designation "Misc." This request was denied and Klein's opened its women's apparel store under the designation "Misc." on May 12, 1972. Plaintiff filed a complaint in equity seeking to enjoin Klein's from using the name. A hearing was held on the complaint and the chancellor issued a decree nisi, enjoining Klein's from using the name "Misc." or any similar name, within the Borough of Monroeville. Exceptions were taken, argued and denied, and a final decree was entered. This appeal followed.
The sole issue presented in this case is whether plaintiff has met its burden of proving that its trade name had acquired a secondary meaning as defined by our decision in Zimmerman v. Holiday Inns of Amer. Inc., 438 Pa. 528, 535, 266 A.2d 87 (1970), where we explained: "The term 'secondary meaning' encompasses the situation where people in the trade or purchasing public come to think of a word or name as standing for the business of a particular owner. . . ."
In order to meet its burden of proving that the name "Misc." had come to have a secondary meaning, as standing for its business, plaintiff offered the following evidence:
(1) Testimony by its employees that the two names were so confusing that customers frequently came into its store seeking articles that were sold by Klein's.
(2) Testimony by its employees that mail and packages addressed to one party were frequently misdelivered to the other.
(3) Testimony by its employees that plaintiff had extensively advertised its store under the name "Miscellaneous" in Monroeville during the twenty ...