At a Motion Term of the Supreme Court of the
State of New York held in and for the Sixth
Judicial District at the State Office Building
in the City of Binghamton, New York on the 9th
day of August, 1996.
PRESENT: HON. PATRICK D. MONSERRATE,
Justice Presiding.
NICHOLAS G. SERAFINI, JR. and SERAFINI
TRANSPORTATION CORP.,
Plaintiffs,
vs . D E C I S I O N AND O R D E R
-BINGHAMTON DISPATCH COMPANY, INC., Index No. 96-1260
KC TRANSPORT, INC., KENNETH H. COHN RJI No. 96-1015-M
and SHARON COHN,
Defendants.
APPEARANCES: H
I
"
, HOWARD & KATTELL
By: ROBERT H. WEDLAKE, ESQ., OF COUNSEL
Attorneys for Plaintiffs
80 Exchange Street
Binghamton, New York 13902
LEWIS & SHAPIRO
By: KEITH A . O'HARA, ESQ., OF COUNSEL
Attorneys for Defendants
141 Washington Street
Endicott, New York 13760
PATRICK D. MONSERRATE, JSC
- By order to show caused dated July 12, 1996 plaintiffs Nicholas G.
Serafini, Jr. and Serafini Transportation Corp. have moved for partial
summary judgment on their complaint which seeks a permanent injunction
prohibiting the defendants from using the 1tSerafini18
trade-name [CPLR 32121 .
Background
On February 2 8 , 1995 plaintiff Serafini Transportation Corporation
conveyed to defendants the assets and good will of its limousine and bus
business, which it had operated for approximately 20 years under the name of
"Executive Limousine Servicetfand had advertised under the name of 11 Serafini
Executive Limousine Servicet1.
The purchase and sale agreement provided for the sale of all the
vehicles used in pla,ntiffsI airport transportation service, and that
1
Nicholas Serafini would provide consulting services for the defendants.
Plaintiffs now assert, without a serious dispute, that the defendants
have operated their business under the name "Serafini Executive Limousine
Servicettin such a manner that it has negatively impacted on the ttSerafinilt
trade-name (the name sold to the defendants was that of ttExecutive
Limousine
Servicet1).while they did acquiesce when the defendants initially continued
A companion modification agreement - - contingent upon the
approval of Jeffrey Feinberg and Carol Drazen (an event which did
not occur) - - was signed on the same date. Had it become
operative, the modification would have provided for the sale of the
limousine business including the name, phone number, good will, and
all other assets relative thereto. It also would have eliminated
the provision requiring Nicholas Serafini to provide consulting
services.
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they did not agree to
to use the name "Serafini Executive Limousine Serviceff,
allow the defendants to use the name ffSerafiniff
indefinitely.
Mr. Serafini states that he has received many complaints from flExecutive
Limousineffcustomers who still associate the limousine operation with him
because of the defendants' use of the IfSerafinif1
name. Mr. Serafini has
forwarded these complaints to the defendant and requested that they "clean up
their actf1or cease using his name. Unfortunately, the complaints continue
to be received and Mr. Serafini demanded that the defendants cease using the
flSerafiniff
name. The plaintiffs aver that the defendants have failed to
comply with Mr. Serafini's request.
Plaintiffs now seek partial summary judgment against the defendants
enjoining them from using the ffSerafiniff
name in connection with their
business.
Discussion
General Business Law §368-d states that fflikelihoodof injury to
business reputation or of dilution of the distinctive quality of a mark or
trade name shall be ground for injunctive relief in cases of infringement of
a mark registered or not registered or in cases of unfair competition,
notwithstanding the absence of competition between the parties or the absence
of confusion as to the source of goods or servicesff. Although the statute
does not require a showing of confusion or competition to obtain an
injunction, it does require a fflikelihoodof injury to business reputation or
of dilution of the distinctive quality of a mark or trade name".
In order to state a cause of action f o r trade name infringement, the
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plaintiff must show that the public is likely to confuse the defendant's name
with that of the plaintiff [ A d i r o n d a c k A p p l i a n c e R e p a i r , Inc. v. A d i r o n d a c k
Z p p l i a n c e P a r t s , Inc., 148 AD2d 796 (Third Dept., 1989)l. To qualify for
-
protection, the plaintiffs must possess a strong name which has a distinctive
quality or has acquired a secondary meaning within a community which is
subject to dissolution [ A l l i e d M a i n t e n a n c e Corporation v. A l l i e d M e d i c a l
T r a d e s , Inc., 42 NY2d 538 (197711. A secondary meaning is established when
a trade name has become so associated in the consumers' mind with the
plaintiff that it identifies goods sold by the plaintiff versus goods sold by
others [ A d i r o n d a c k A p p l i a n c e R e p a i r , Inc. v. A d i r o n d a c k A p p l i a n c e P a r t s ,
Inc., s u p r a ] . Under common law, a person has an absolute right to use his
own name as a trademark as against another person having a different name
[ s e e , F o r d Motor Company v. C . N. Cady Company, I n c . , 124 Misc 678 (Sup. Ct.
Onondaga Co. 1925) mod on other g r o u n d s 216 AD 786 (Fourth Dept., 1926); 104
NY Jur 2d, Trade Regulation, S1541.
In the case at bar plaintiff Serafini has shown that over the past 25
years his family name has developed a secondary meaning and is associated
with goods sold and services offered by his businesses (car rentals and
livery transportation). Furthermore, he has shown that the defendants'
continued use of his family name is having a negative impact on any goodwill
his name has engendered over the past 25 years.
In opposition, the defendants concede that they did not purchase any
right to use the "Serafini" name, and in fact, they assert that they are
making a valid effort to disassociate the l1Serafini1'
name from their business
operation.
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While their efforts to cease using the llSerafinill
trade-name raises
questions concerning the issue of damages, it does not raise a triable issue
-f fact or law to prevent the Court from granting the plaintiffs' claim for
a permanent injunction. Therefore, the Court will prohibit the defendants
from using the "Serafini" name in connection with their businesses.
C O N C L U S I O N
By reason of the foregoing, the plaintiffs' motion for partial summary
judgment is granted and the defendants are permanently enjoined from using
the "Serafinit'name in connection with their businesses. When discovery has
been completed and the parties are ready for trial on the issue of
plaintiffs' damages, either may file a Trial Note of Issue and Certificate of
Readiness. The matter will thereafter be scheduled for trial.
It is so ordered.
z ? !3
Supreme Cou
Dated: August 20, 1996
Binghamton, New York
The following are on file with the Broome County Clerk:
1) Plaintiffs' Motion Papers with Exhibits and Affidavits
2) Defendants' Responding Papers with Exhibits and'Affidavits
3) Original Decision and Order
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