(— Md. —, 130 Atl. 57.)

Trademarks, etc., § 40 right to use

of corporate name.

2. The right of a corporation to the exclusive use of its own name exists at common law, and includes the right to prohibit another from using a name so similar to the corporate name as to be calculated to deceive the public. [See 26 R. C. L. 861.]

common phrase has acquired a sec-
ondary meaning, so as to give the user
a monopoly of it, is one of fact.

Trademarks, etc., § 30 when sec-
ondary meaning of words acquired.
6. The use for eighteen months in a
city of 800,000 population of the
phrase "drive it yourself," in connec-
tion with an automobile livery busi-
ness, resulting in a clientele of less
than six thousand persons, and an
equipment of only forty-five cars, does
not give the phrase a secondary mean-
ing entitling the user to a monopoly,
although the business was widely ad-
vertised under that name.

[See 26 R. C. L. 886; 4 R. C. L.
Supp. 1685. See also annotation in 40
A.L.R. 433.]

APPEAL by complainant from a decree of the Circuit Court of Baltimore City (Solter, J.) dismissing a bill filed to enjoin defendants from using or imitating the phrase "drive it yourself" in connection with the business of letting automobiles. Affirmed.

The facts are stated in the opinion of the court.
Messrs. Harry O. Levin and Ogle
Marbury, for appellant:

The general rule is that a corporation has a right to its name, and another will be restrained from its use.

7 R. C. L. p. 134, ¶ 104; 14 C. J. pp. 310, 326, $$ 374, 396; Thomp. Corp. $$ 284-296; American Order, S. C. v. Merrill, 151 Mass. 558, 8 L.R.A. 320, 24 N. E. 918.

In order to invoke this rule it is not necessary to show that there is fraud or even a deliberate intention to get business away from the plaintiff; it is sufficient if the public is likely to be deceived and business thereby diverted.

14 C. J. 328, 397; 26 R. C. L. pp. 883-885, 59, 60; Plant Seed Co. v. Michel Plant & Seed Co. 37 Mo. App. 313; Bagby & R. Co. v. Rivers, 87 Md. 423 (see note on page 759) 40 L.R.A. 632, 67 Am. St. Rep. 357, 40 Atl. 171; Afro-American, O. O. v. Talbot, 123 Md. 472, 91 Atl. 570.

The corporate name is a trademark

from the necessity of the thing, and
upon every consideration of private
justice and public policy deserves the
same consideration and protection in
a court of equity, because the corpo-
rate name is a necessary element of
the corporation's existence, and with-
out it the corporation cannot exist.

Newby v. Oregon C. R. Co. Deady,
609, Fed. Cas. No. 10,144; Investor
Pub. Co. v. Dobinson (C. C.) 72 Fed.
603; Koehler v. Sanders, 122 N. Y. 65,
9 L.R.A. 576, 25 N. E. 235; Merchants'
Detective Asso. v. Detective Mercan-
tile Agency, 25 Ill. App. 250.

If the defendants were wrongfully
using the tradename of plaintiffs, they
should be enjoined in its use in toto,
and not only partially.

Saunders System Atlanta Co. v.
Drive It Yourself Co. 158 Ga. 1, 123 S.
E. 132.

Messrs. Sauerwein, Lindsay, & Don-
oho, George W. Lindsay, and Everett
C. Wilson, for appellees:

Phrases or tradenames descriptive

of the business carried on are not and never have been capable of exclusive appropriation.

Colonial Life Assur. Co. v. Home & Colonial Assur. Co. 33 Beav. 548, 55 Eng. Reprint, 482; Employers' Liability Assur Corp. v. Employers Liability Ins. Co. 61 Hun, 552, 16 N. Y. Supp. 397; Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. Ct. Rep. 166; Computing Scale Co. v. Standard Computing Scale Co. 55 C. C. A. 459, 118 Fed. 965; Cellular Clothing Co. v. Maxton [1899]. A. C. 326-H. L.; Brown Chemical Co. v. Meyer, 139 U.

S. 540, 35 L. ed. 247, 11 Sup. Ct. Rep.

625.

The courts have uniformly refused to restrict the use of ordinary words in their usual and ordinary meaning, on the theory that they are public property and everyone has the right to use them in carrying on trade and industry.

Brennan v. Emery-Bird-Thayer Dry

Goods Co. 47 C. C. A. 532, 108 Fed. 624.

The injection of ordinary words into a corporate name cannot give the corporation any greater right to the exclusive use of the words than an individual could acquire.

Car Adv. Co. v. New York City Car Adv. Co. 57 Misc. 105, 107 N. Y. Supp. 547; Industrial Mut. Deposit Co. v. Central Mut. Deposit Co. 112 Ky. 937, 66 S. W. 1032; Cellular Clothing Co. v. Maxton [1899] A. C. 326-H. L.; Hopkins, Trade Marks, p. 188; Jordan Sulphur Springs & Mud Bath Sanitarium Co. v. Mudbaden Sulphur Springs Co. 135 Minn. 123, 160 N. W. 252; 7 R. C. L. § 103, p. 133; Machen, Corp. § 451; 14 C. J. p. 329.

Ordinary words by continual association with one particular business may lose their primary meaning and acquire a secondary meaning as applied to that particular line of business. Under such circumstances a second user of these words cannot be prevented from using them, but must do so with some qualifying words to prevent confusion.

Kellogg Toasted Corn Flake Co. v. Quaker Oats Co. 149 C. C. A. 77, 235 Fed. 657; Cellular Clothing Co. V. Maxton [1899] A. C. 326-H. L.

There were no facts in the instant case which justified a finding that the phrase "drive it yourself" had quired a secondary meaning.

ас

Saunders System Atlanta Co. v. Drive It Yourself Co. 158 Ga. 1, 123 S. E. 132.

Walsh, J., delivered the opinion of the court:

According to the agreed statement of facts in this case, one Philip Milstone in January, 1923, began the business of hiring automobiles in the city of Baltimore to people who wished to drive the automobiles themselves. In August 1923, Mr. Milstone, who was the pioneer in this field in Maryland, formed a corporation known as the "Drive It Yourself Company," which corporation continued the same business, with Mr. Milstone as president of the company. From the inception of the business the phrase "drive it yourself" was used to describe and designate it, and advertising it. large sums of money were spent in advertising it. The business has been continuously carried on at No. 1725 North Charles street, and has proved successful, forty-five automobiles being now used by the company, and the number of its customers being more than five thousand.

In 1916, one Warwick Saunders originated in Omaha, Nebraska, the business of letting automobiles without drivers to people who desired to do their own driving, and used the slogan "drive it yourself" to designate and advertise the business. From this small local beginning Saunders and his associates have gradually developed and expanded the business until it is now in operation in 45 cities in the United States. In the course of this expansion, a simple, efficient, and practical plan of conducting the business, including a system of bookkeeping, method of handling the cars, and form of advertising, was developed, and the whole plan was finally called the "Saunders Drive It Yourself System." This system is owned by the "Saunders Drive It Yourself Company," but the "drive it yourself" business in various cities is managed by local corporations or representatives to

(— Md. —, 130 Atl. 57.)

whom the system is supplied by the original company. It is also stated that a red and green label containing the words "Saunders Drive It Yourself System" was copyrighted by the original company, and appears on practically all advertising matter used by members of the system throughout the country, including their envelopes, letterheads, contract forms, operating blanks, newspaper notices, etc. Shortly before August 20, 1924, the appellees, who were the defendants below, opened up, as copartners, a business known as the "Saunders Drive It Yourself System" at No. 8 East North avenue in Baltimore city, just a few blocks from the place of business of the appellant, and on the date just mentioned the appellant filed its bill of complaint against the appellees, asking that they "be permanently enjoined and restrained from using or imitating the phrase or slogan 'drive it yourself,' either separately or in the window design at present employed by them on or about their place of business, or elsewhere, either on signs or by any device, or on their letterheads, billheads, advertisement stationery, either in full or as part of its name."

The bill of complaint pointed out the use of the phrase "drive it yourself" as part of the complainant's corporate name, set out the establishment by the complainant of this sort of business in Baltimore, and alleged that the use of the phrase by the defendants confused the customers of the complainant, and caused many of them to think that the place of business of the defendants was a part or branch of the complainant's business, but it did not allege any fraud or active deception by the defendants, other than the deception which the complainant alleged arose from the use of the phrase in question, and the proximity of the appellees' place of business to the place of business of the appellant. The defendants' answer denied that their use of this 43 A.L.R.-14.

phrase was confusing to the custom-
ers of the complainant, and alleged
that they had done nothing to deceive
those customers, or to cause them
to think that there was any con-
nection whatever between the com-
plainant's business and that of the
defendants, and the answer then
alleged that the business they were
starting was simply a further ex-
tension of the business established
many years before by Warwick
Saunders; that they were the Mary-
land representatives of the Saun-
ders System, and were using the
label, advertising matter and other
features of that system. A large
mass of exhibits showing the label
and advertising matter used by
the Saunders System in other
states was filed in the case, and
from these it appeared that the
phrase "drive it yourself" has been
constantly used by the Saunders
System all over the United States,
and the agreed statement of facts
also shows that the phrase is used
by many others engaged in the
same business outside of Maryland,
and that similar expressions, such
as "U drive it," have also been used.

The case was submitted to the
court below on the bill of complaint,
answer, agreed statement of facts,
and exhibits, and that court having
declined to grant the relief asked,
and having dismissed the bill of
complaint, the
the complainant ap-
pealed. The appellant contends that
it is entitled to an injunction for
two reasons: First, to protect its
corporate name; and second, on the
ground that even if the phrase.
"drive it yourself" is held to be
descriptive, and hence not subject.
to exclusive appropriation as part
of a corporate name, it has never-
theless acquired a secondary mean-
ing in Maryland which refers en-
tirely to the appellant's business,
and hence its use by the appellees
constitutes unfair competition.

There is no statute in Maryland
governing the right of a corpora-
tion to the exclusive use of its own

name, but such right exists at com

Trademarks, etc.-right to use of corporate name.

mon law, and it includes the further right to prohibit another from using a name so similar to the corporate name as to be calculated to deceive the public. Afro-American, O. O. v. Talbot, 123 Md. 465, 91 Atl. 570.

In the case just cited this court held that an organization known as the "Order of Owls" could not, in the absence of any proof of injury, restrain another corporation from using the name "Afro-American Order of Owls," and it was further held that the rule for determining whether or not the right to the exclusive use of a name had been infringed was "that where, in the opinion of the court, the similarity of names was such as was shown to have deceived the public, or to be liable to deceive the public, the injunction has been granted, and, where this was not the case, the injunction asked has uniformly been refused."

See also Creswill v. Grand Lodge, K. P. 225 U. S. 246, 56 L. ed. 1074, 32 Sup. Ct. Rep. 822; American Clay Mfg. Co. v. American Clay Mfg. Co. 198 Pa. 189, 47 Atl. 936; Plant Seed Co. v. Michel Plant & Seed Co. 37 Mo. App. 313; 14 C. J. 310, 326.

This general right of a corporation is, however, subject to certain qualifications and exceptions, one of which is that "unless the words have acquired in the mind of the public a secondary meaning as denoting the goods or business of a particular company, a corporation cannot acquire the right to the exclusive use of . . . words merely generic or descriptive of a particular business, class of goods, process, sect, etc., which any one may lawfully use so as to be entitled to enjoin their use by another corporation or association in its name, in the absence of actual fraud or intent to deceive." 14 C. J. 329, 330.

See also Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co. 128 U. S. 598, 32 L. ed. 535, 9 Sup. Ct. Rep. 166; Koebel v. Chicago

Landlords' Protective Bureau, 210 Ill. 176, 102 Am. St. Rep. 154, 71 N. E. 362; Edison v. Mills-Edisonia, 74 N. J. Eq. 521, 70 Atl. 191; Michigan Sav. Bank v. Dime Sav. Bank, 162 Mich. 297, 139 Am. St. Rep. 558, 127 N. W. 364; and a number of cases collected in the note in L.R.A. 1917C, 958.

In view of the rule just quoted, we find it unnecessary to decide whether or not the similarity between the names "Drive It Yourself Company" and "Saunders Drive It Yourself System" is sufficient to justify the court in enjoining the use of the latter as being a deceptive infringement of the former, because in our opinion the phrase "drive it yourself" "drive yourself." is descriptive of the

it

business in which the parties to this suit are engaged, and hence, under the authorities heretofore cited, it is not the subject of exclusive appropriation. There are innumerable cases in which the courts have been called upon to decide whether or not certain names were descriptive of the business being conducted under them, but, as the decisions in these cases depend upon the particular name and business involved, they furnish at best only a general guide by which future cases can be determined. However, it may prove helpful, and it is certainly of interest, to consider some of these decisions. It is to be noted that the rule prohibiting the exclusive appropriation of descriptive words as part of a corporate name is similar to the rule prohibiting the exclusive use of such words as trade-marks or tradenames, and, as both rules are based on the same principles, we have cited cases indiscriminately from each class. In Motor Accessories Mfg. Co. v. Marshalltown Motor Material Mfg. Co. 167 Iowa, 202, 149 N. W. 184, the first named company was held to have no right to restrain the second from using the name "Marshalltown Motor Material Manufacturing Company," though both were engaged in the sole business of manufacturing spark plugs. In Travel

(— Md. —, 130 Atl. 57.)

ers Ins. Mach. Co. v. Travelers Ins. Co. 143 Ky. 216, 136 S. W. 154, the term "travelers' insurance" was held to be descriptive. In Basket Stores v. Allen, 99 Neb. 217, 155 N. W. 893, the phrase "Basket Store" was held to be descriptive. In Choynski v. Cohen, 39 Cal. 501, 2 Am. Rep. 476, the name "Antiquarian Bookstore" was held to be descriptive. In Ball v. Broadway Bazaar, 194 N. Y. 429, 87 N. E. 674, the combination of the words "Lilliputian Bazaar" was held to be descriptive. In Farmers' Loan & T. Co. v. Farmers' Loan & T. Co. (Sup.) 1 N. Y. Supp. 44, the phrase "Loan & Trust Company" was held to be descriptive. In Car Adv. Co. v. New York City Car Adv. Co. 123 App. Div. 926, 108 N. Y. Supp. 1126, the term "car advertising" was held to be descriptive. And in Bolander v. Peterson, 136 Ill. 215, 11 L.R.A. 350, 26 N. E. 603, the term "Svenska Sunsmagasiat," which is Swedish for "Swedish Snuff Shop," was held to be descriptive. In Winchester Repeating Arms Co. v. Peters Cartridge Co. 30 App. D. C. 505, the term "self-loading" was held to be descriptive as applied to cartridges, and hence invalid as a technical trademark, and the same was held of the phrase "what is it?" in Oakes v. St. Louis Candy Co. 146 Mo. 391, 48 S. W. 467; of "roachsault" as applied to an insecticide in Barrett Chemical Co. v. Stern, 176 N. Y. 27, 68 N. E. 65; of "keepclean" as applied to toothbrushes in Florence Mfg. Co. v. Dowd, 101 C. C. A. 565, 178 Fed. 73; of "toothache gum" in Delvin v. Peek (C. C.) 135 Fed. 167, affirmed in 73 C. C. A. 619, 144 Fed. 1021; of "International Banking Company" in Koehler v. Sanders, 122 N. Y. 65, 9 L.R.A. 576, 25 N. E. 235; of "Aerators" in Aerators v. Tollit, 86 L. T. N. S. 651. And see generally the cases collected in the notes in 38 Cyc. 711, 712; 14 C. J. 313-329, 330; L.R.A.1917C, 958; and L.R.A.1918A, 975.

The best statement we have found of any general rule by which it can be determined whether or not a par

ticular name or phrase is descriptive
is that announced by Judge Morris
in the case of Rumford Chemical
Works v. Muth (C. C.) 1 L.R.A. 44,
35 Fed. 524, in which he said: "The
true test, it appears to me, must be,
not whether the words are exhaust-
ively descriptive of the article desig-
nated, but whether in themselves,
and as they are commonly used by
those who understand their mean-
ing, they are reasonably indicative
and descriptive of the thing in-
tended."

Measured by this rule, we have
no hesitancy in holding that the
phrase "drive it yourself" is descrip-
tive of the business in which the ap-
pellant is engaged. The words are
ordinary English words in everyday
use. The combination in which they
are used, when applied to the hiring
of automobiles, accurately desig-
nates and describes the character
and nature of the business to which
they refer, and the exhibits filed in
the case show that the phrase is
used and understood throughout the
country as indicating that particu-
lar business.

The growth of the automobile industry in this country has, during recent years, been enormous, and, with the steadily increasing use of cars and the corresponding increase in the number of persons who can drive them, it is not at all improbable that there will be in the immediate future a very large and constantly growing demand for automobiles hired on the "drive it yourself" plan. Twenty-five years ago. the words "taxicab" and "garage," and the terms "oil station," "gas station," and filling station" were not in more common use than the phrase "drive it yourself" appears to be now, and it would certainly have led to very regrettable results had the courts of a quarter of a century ago held that the words and terms above mentioned were not descriptive, and could be exclusively appropriated by the person, or organization first using them. Nor do