BELL v. DAVIDSON

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Equivalent Citations

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Docket Number

No. 50155.

Attorney(S)

William R. Laney, Laney, Dougherty Hessin, Oklahoma City, for appellee. Cox Ramsey, Oklahoma City, for appellants.

Judges

DOOLIN, Justice:

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Smart Summary

Factual and Procedural Background

In February 1973, Joseph N. Bell, owner of the Oklahoma-registered trademark BLACKGOLD, opened BLACK GOLD ANTIQUES in Oklahoma City. About a year later, the defendants began operating BLACK GOLD GIFTS, INC.; both businesses used a symbol depicting a gushing oil well and derrick. [1]

Bell sued for trademark infringement and deceptive trade practices, seeking to enjoin the defendants’ use of BLACK GOLD and the well-and-derrick design. The trial court granted a permanent injunction and awarded $8,100 in costs and attorney’s fees under the Oklahoma Deceptive Trade Practices Act. [2]

The defendants appealed the injunction and fee award. The Supreme Court of Oklahoma affirmed. [3][4][5][6]

Legal Issues Presented

Whether the defendants’ use of BLACK GOLD and the gushing-well-and-derrick design created a likelihood of confusion warranting injunctive relief, despite the defendants’ contention that BLACK GOLD could not be exclusively appropriated. [7][8][9]
Whether the trial court properly awarded attorney’s fees under the Oklahoma Deceptive Trade Practices Act. [10][11][12]

Arguments of the Parties

Defendants’ Arguments

BLACK GOLD was owned by the public at large and could not be exclusively appropriated. [7]
The businesses and names were not sufficiently similar to deceive the public. [7]
The trial court erred in awarding attorney’s fees. [10]

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
F.T.C. v. Colgate-Palmolive Co., 380 U.S. 374, 85 S.Ct. 1035, 13 L.Ed.2d 904 (1965)	Misappropriation of another’s trade name constitutes a deceptive trade practice.	The court cited the case in stating the governing principle. [13][14]
Educational Development Corporation v. Economy Company, 562 F.2d 26 (10th Cir. 1977)	Generic or descriptive terms receive protection upon acquiring secondary meaning through long and exclusive use.	The principle supported the court’s distinction between distinctive, descriptive, and weak marks. [13][15]
Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627 (7th Cir. 1968)	A weak mark receives narrow protection, and infringement depends on likelihood of confusion.	The court used the case as an example of denying protection where unrelated products were unlikely to be confused. [16][17]
Coalgate Abstract Co. v. Coal County Abstract Co., 180 Okla. 8, 67 P.2d 37 (1937)	Ordinary words may be enjoined when used to pass off one party’s goods as another’s; likelihood of confusion is determined by whether an ordinary prudent buyer would be deceived.	The court relied on the case to identify the applicable confusion standard and to uphold the injunction. [18][9][19]
Prudential Insurance Company of America v. Prudential Life and Casualty Insurance Company, 377 P.2d 556 (Okla. 1963)	The opinion distinguished likelihood of confusion, relevant to injunctive relief, from actual confusion, relevant when damages are sought.	The court applied the likelihood-of-confusion standard because the requested relief was an injunction. [8][20]
Dawn Donut Company v. Day, 450 F.2d 332 (10th Cir. 1971)	Likelihood of confusion is evaluated under the ordinary-prudent-buyer standard.	The case was cited with Coalgate Abstract in stating the factual test for confusion. [9][19]
Indian Territory Oil Gas Co. v. Indian Territory Illuminating Oil Co., 95 F.2d 711 (10th Cir. 1938)	A trademark owner may restrain exploitation of its mark even when the parties do not sell identical products.	The principle supported considering the overlap between antiques, gifts, and reproductions. [21][22]
Jewel Companies, Inc. v. Weshall Co., 413 F. Supp. 994 (N.D.Ohio 1976)	Customer confusion may be shown by customers entering another store under the mistaken belief that it is operated by the trademark owner.	The court cited the case in evaluating evidence that prospective customers visited the defendants’ store believing it was Bell’s business. [21][23]
Paddington Corporation v. Major Brands, Inc., 359 F. Supp. 1244, 1251 (W.D.Okla. 1973)	Attorney’s fees may be awarded under the statute’s discretionary provision.	The court relied on the principle in finding no abuse of discretion in the fee award. [12][24]

Court's Reasoning and Analysis

The court explained that distinctive or arbitrary marks receive the strongest protection, while generic or descriptive terms generally do not receive exclusive protection unless they acquire secondary meaning through long and exclusive use. Weak marks receive narrower protection, with infringement turning on the likelihood of confusion. [13][16]

BLACK GOLD was neither uniquely distinctive and entitled to strict protection nor merely descriptive of the products sold and therefore entitled to no protection. The defendants therefore could be enjoined if they competed with Bell and their use created a likelihood of confusion. [8]

Likelihood of confusion is a factual question determined by whether the marks are sufficiently similar to deceive an ordinary prudent buyer; the trial court’s finding must be upheld unless it is against the clear weight of the evidence. [9]

The court found competition because the businesses sold similar merchandise, including reproductions by the defendants. Although the parties did not sell identical products, customers could enter the defendants’ store believing it was operated by Bell. Testimony from potential customers and business representatives, together with a random survey, showed actual instances and evidence of confusion. [21]

The combination of the BLACK GOLD name with the gushing-oil-well-and-derrick design used by both businesses could confuse the public. The injunction therefore was not against the clear weight of the evidence. [10]

Regarding attorney’s fees, the statute authorized discretionary fees to the prevailing party and required them when the defendant willfully engaged in a deceptive trade practice. The award was based on the trial court’s finding of willful conduct; independently, the court held that the discretionary authority supported the award and that there was no abuse of discretion. [11][25][12]

Holding and Implications

AFFIRMED. The Supreme Court of Oklahoma upheld the permanent injunction prohibiting the defendants from using BLACK GOLD, alone or with other words, and from using the gushing-well-and-derrick representation in Oklahoma. [2][6]

The $8,100 attorney’s-fee award was also upheld because the statutory discretion supported it and the trial court did not abuse its discretion. [12]

The decision’s direct effect was to maintain the injunction and fee award against the defendants; the opinion identifies no broader implication beyond applying the stated trademark-confusion and fee principles to these parties. [10][12][6]

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JOSEPH N. BELL, A SOLE PROPRIETOR, D/B/A BLACK GOLD ANTIQUES, APPELLEE, v. ROBERT DAVIDSON, A SOLE PROPRIETOR, D/B/A BLACK GOLD GIFTS, INC. AND, BONNIE DAVIDSON, A SOLE PROPRIETOR, D/B/A BLACK GIFTS, INC. AND, BONNIE DAVIDSON AND ROBERT DAVIDSON D/B/A BLACK GOLD GIFTS, INC. AND BLACK GOLD GIFTS, INC., AN OKLAHOMA CORPORATION, APPELLANTS.

DOOLIN, Justice:

In February of 1973, plaintiff, owner of Oklahoma registered trademark BLACKGOLD, opened a business in Oklahoma City under the name BLACK GOLD ANTIQUES. About a year later defendants commenced doing business in Oklahoma City under the name BLACK GOLD GIFTS, INC. Both businesses display a symbol of a gushing oil well and derrick.

At one time plaintiff reserved the name Black Gold Gifts and Antiques but reservation lapsed as plaintiff failed to incorporate. Later defendants incorporated under Black Gold Gifts, Inc.

Thereafter plaintiff filed the present action alleging violation of its trademark and deceptive trade practices. He asked for an injunction to prohibit the use of BLACK GOLD and the gushing well by defendants. After hearing, the trial court permanently enjoined defendants from using, as a business name trademark or service mark, BLACK GOLD, either standing alone or in combination with any other word or words, and from using the representation of a gushing well and derrick, in the State of Oklahoma. It further awarded plaintiff costs and attorneys' fees in the amount of $8,100.00 pursuant to § 54(b) of the Oklahoma Deceptive Trade Practices Act, 78 O.S. 1971 § 51[ 78-51], et seq.

Defendants appeal both the injunction and the award of attorneys' fees. They submit the words, BLACK GOLD, are owned by the public at large and cannot be exclusively appropriated. They argue trial court further erred in finding the names and businesses were so similar that the public would be deceived.

It is a deceptive trade practice to misappropriate the trade name of another. However both at common law and by statute some words may not be exclusively appropriated. Only the unique is always protected, where it is fanciful or arbitrary. A generic name or one descriptive of the goods or business may not be protected by trademark except where it has acquired a secondary meaning through long and exclusive usage by one business with reference to its goods. Then to the purchasing public the word has come to mean the article is his product. This protects the good will of a trade built up through owner's efforts.

F.T.C. v. Colgate-Palmolive Co., 380 U.S. 374, 85 S.Ct. 1035, 13 L.Ed.2d 904 (1965).

Educational Development Corporation v. Economy Company, 562 F.2d 26 (10th Cir. 1977).

A trademark is considered strong if it is conspicuously distinctive. If not distinctive, but rather a common word or words, it is a weak trademark and its protection is narrower. Because such a mark is not exclusively protected, the test of its infringement is whether a likelihood of confusion exists between the protected mark and its copy. An example is found in the federal decision of Westward Coach Manufacturing Co. v. Ford Motor Co., 388 F.2d 627 (7th Cir. 1968). In that case the plaintiff filed a trademark infringement action against Ford Motor Company's use of the word MUSTANG on a new automobile. Plaintiff was the owner and user of a registered trademark MUSTANG along with representation of a charging horse on its campers and trailers.

The federal court said, because the name was not coined by plaintiff, and was not unique or novel but rather a common noun, it was a weak trademark. Therefore it was not extended protection beyond the narrow limits of its secondary meaning in the trailer industry. It held where campers and trailers were not in competition with automobiles, there was no likelihood of confusion created. Trademark infringement was merely an aspect of unfair competition. Accordingly because there was no likelihood the two products would be confused, no unfair competition existed. Based on lack of any deceptive trade practice it denied the injunction.

Courts must be careful to protect legitimate rights of the original user and at the same time give freedom to a secondary user. But if ordinary words are used to palm off goods of one manufacturer, dealer or vendor as those of another, and to carry on unfair competition, their use may be enjoined by a court of equity to the same extent as a fully protected distinctive term or symbol. See Coalgate Abstract Co. v. Coal County Abstract Co., 180 Okla. 8, 67 P.2d 37 (1937).

BLACK GOLD is neither unique and distinctive thus entitled to strict protection, nor merely descriptive of the product sold and thus entitled to none. Defendants must be in competition with plaintiff; then if a likelihood of confusion is shown to exist, the use of plaintiff's trademark may be enjoined.

Of course if damages are sought, actual confusion rather than likelihood of confusion is the test. See Prudential Insurance Company of America v. Prudential Life and Casualty Insurance Company, 377 P.2d 556 (Okla. 1963).

The test in determining whether there is likelihood of confusion between two opposing marks is whether they are sufficiently similar to deceive an ordinary prudent buyer. This is a question of fact and trial court's finding must be upheld unless against clear weight of evidence.

Coalgate Abstract Co. v. Coal County Abstract Co., 180 Okla. 8, 67 P.2d 37 (1937). Dawn Donut Company v. Day, 450 F.2d 332 (10th Cir. 1971).

A businessman has sufficient interest in its trademark to restrain another from exploiting it in the sale of his products although the two may not be engaged in selling identical products. Although plaintiff owns an antique store and defendant sells gifts, there are a multitude of goods that meet both descriptions. Defendants, while not actually selling antiques, do sell reproductions. Confusion may be shown by customers going into defendants' store to make a purchase because they thought store was operated by plaintiff. Plaintiff offered testimony of several potential customers who had been misled into visiting defendants' store on the erroneous assumption it was BLACK GOLD ANTIQUES. Representatives of business firms testified as to confusion between the two stores. Results of a random survey indicated confusion.

Prudential Insurance Company of America v. Prudential Life and Casualty Insurance Company, supra, n. 3 citing Indian Territory Oil Gas Co. v. Indian Territory Illuminating Oil Co., 95 F.2d 711 (10th Cir. 1938).

Jewel Companies, Inc. v. Weshall Co., 413 F. Supp. 994 (N.D.Ohio 1976).

The name BLACK GOLD coupled with the derrick and gushing oil well on both defendants' and plaintiff's merchandise and storefront could be confusing. Competition exists between the two businesses as the merchandise is similar. Trial court's judgment enjoining defendants' use of the name and trademark is not against clear weight of evidence.

Defendants also argue trial court was incorrect in awarding attorneys' fees to plaintiff. Under § 54(b) of the Oklahoma Deceptive Trade Practices Act:

". . . the court may, in its discretion, award reasonable attorneys' fees to the prevailing party. If in any such action the court finds either (1) that the defendant has willfully engaged in a deceptive trade practice or (2) that the plaintiff has acted in bad faith in instituting the action, the court shall award reasonable attorneys' fees to the prevailing party."

Pursuant to these provisions, plaintiff was awarded attorneys' fees in amount of $8,100.00. Such award was based upon court's finding and conclusion that defendant had willfully engaged in deceptive trade practices. Even if defendant did not "willfully" engage in deceptive trade practices the court in its discretion is authorized by the statute to award attorney fees to prevailing party. We find no abuse of discretion.

Paddington Corporation v. Major Brands, Inc., 359 F. Supp. 1244, 1251 (W.D.Okla. 1973).

AFFIRMED.

All the Justices concur.