Geographic Limitations on Protection
The Sample, Inc. v. Porrath,
41 A.D.2d 118, 341 N.Y.S.2d 683 (1973)
In the final order, The Sample, Inc. was required to include a term ("of Buffalo") in its name (i.e., "The Sample of Buffalo, Inc.") in the Town of Wheatfield which would differentiate it from The Sample Shop of Niagara Falls.
Monetary damages are potentially available in cases involving a user with previously established rights and its possible "zone of expansion", but they are rarely
- The defendant, The Sample Shop of Niagara Falls was established in 1934; it had two stores in 1971.
- The Sample, Inc., the plaintiff, was established in 1929. It first expanded in 1946; it had nine locations in 1971.
- The plaintiff brought the action to seek a declaratory order allowing it to use the name "Sample"
in a geographic area where both parties operated businesses, namely the Town of Wheatfield, New York.
- In reversing the trial court the appeals court relied heavily on a market survey which showed that The Sample, Inc. had a higher
degree of name recognition in both the contested and surrounding areas.
- The Sample Shop was seen by the appeals tribunal as not suffering any commercial unfairness from the use of the word "Sample" by the plaintiff in geographic markets outside Wheatfield.
- The court also felt that use of the word "Sample" in the context of textiles was not particularly original.
- The above findings resulted from a reversal of the trial court's ruling that "The Sample Shop" had acquired secondary meaning.
- Absent the attainment of secondary meaning, there could be no misappropriation of goodwill, dilution, or intention to deceive by the plaintiff.
- The focal issue then became the commercial fairness or unfairness of the use requested to be approved by the plaintiff in the original proceeding.
- Some strong indication of fraud
or bad faith will usually be found to exist where there is such an award.
David B. Findlay, Inc. v. Findlay,
18 N.Y.2d 12, 218 N.E.2d 531 (1966)
- In this case one brother
opened an art gallery near the other brother's already established and
successful art gallery.
- Actual confusion between the galleries was shown by the plaintiff, David Findlay.
- The court issued an injunction
prohibiting the defendant, W. Findlay, from using his own last name
in close proximity to his brother's gallery.
- If the defendant were to have
moved to another part of the city, the use of his own name would then have become permissible.
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