Appeal from the Order of the Court of Common Pleas, Allegheny County, Civil Division, at No. GD79-16627.
Lynn J. Alstadt, Pittsburgh, for appellant.
James R. Fitzgerald, Pittsburgh, for appellees.
Brosky, McEwen and Beck, JJ.
[ 350 Pa. Super. Page 609]
This appeal is from an order in equity denying appellant's petition to protect as a trademark the name of his business. Appellant contends that the Chancellor erred in requiring secondary meaning as a prerequisite to protection under the relevant state and federal trademark statutes. In the alternative, he argues that the findings of fact establish such secondary meaning. We agree with the latter argument and, accordingly, reverse in part and affirm in part.*fn1
The relevant facts, in chronological order, are as follows.*fn2 In March of 1978 appellant first advertised and then opened a hair styling salon called "Shear Perfection." Nearly a year later, in February of 1979, appellee opened a similar establishment just over 11 miles away by road called "Anthony's Shear Perfection." The following October appellee registered that name under the Trademark Statute. Almost five months later appellant registered also.
Thus, appellant was the first user but the second registrant; and appellant's first use occurred well before appellee's first registration.
Appellant brought an action in equity, seeking to have appellee enjoined from identifying his salon with the words "Shear Perfection" and for an accounting. The Chancellor held that since appellant had not established a secondary
[ 350 Pa. Super. Page 610]
meaning -- a public identification of those words with his place of business -- he could not prevail. An appeal was timely taken to this Court.
The first determination to be made is whether appellee has, by virtue of his first registration, acquired a superior right to the combination of words "Shear Perfection." (Only if that question is answered in the negative would it be useful to consider appellant's rights to the trademark.) For two independent reasons we conclude as a matter of law that appellee's prior registration ...