{ "id": 2850674, "name": "Edgewater Beach Apartments Corporation, Plaintiff-Appellee, v. Edgewater Beach Management Co., Inc., et al., Defendants-Appellants", "name_abbreviation": "Edgewater Beach Apartments Corp. v. Edgewater Beach Management Co.", "decision_date": "1973-06-22", "docket_number": "Nos. 58261-58375", "first_page": "526", "last_page": "534", "citations": [ { "type": "official", "cite": "12 Ill. App. 3d 526" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "160 U.S.P.Q. 346", "category": "reporters:specialty", "reporter": "U.S.P.Q. (BNA)", "year": 1968, "pin_cites": [ { "page": "349" } ], "opinion_index": 0 }, { "cite": "179 U.S. 665", "category": "reporters:federal", "reporter": "U.S.", "case_ids": [ 5708841 ], "year": 1968, "pin_cites": [ { "page": "673-674" } ], "opinion_index": 0, "case_paths": [ "/us/179/0665-01" ] }, { "cite": "44 Cal. L. Rev. 439", "category": "journals:journal", "reporter": "Cal. L. Rev.", "year": 1956, "pin_cites": [ { "page": "448-463" } ], "opinion_index": 0 }, { "cite": "150 U.S.P.Q. 357", "category": "reporters:specialty", "reporter": "U.S.P.Q. (BNA)", "year": 1966, "pin_cites": [ { "page": "360-361" } ], "opinion_index": 0 }, { "cite": "319 F.2d 830", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 157949 ], "year": 1963, "opinion_index": 0, "case_paths": [ "/f2d/319/0830-01" ] }, { "cite": "254 N.Y.S.2d 473", "category": "reporters:state", "reporter": "N.Y.S.2d", "opinion_index": 0 }, { "cite": "22 A.D. 186", "category": "reporters:state", "reporter": "A.D.", "case_ids": [ 2312319 ], "opinion_index": 0, "case_paths": [ "/ad/22/0186-01" ] }, { "cite": "26 F.2d 972", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1723103 ], "year": 1928, "pin_cites": [ { "page": "973" } ], "opinion_index": 0, "case_paths": [ "/f2d/26/0972-01" ] }, { "cite": "416 F.2d 285", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 2172980 ], "pin_cites": [ { "page": "288" } ], "opinion_index": 0, "case_paths": [ "/f2d/416/0285-01" ] }, { "cite": "350 F.2d 609", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 466862 ], "year": 1965, "pin_cites": [ { "page": "611" } ], "opinion_index": 0, "case_paths": [ "/f2d/350/0609-01" ] }, { "cite": "40 N.E. 616", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "155 Ill. 127", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 839782 ], "opinion_index": 0, "case_paths": [ "/ill/155/0127-01" ] }, { "cite": "228 N.E.2d 146", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "84 Ill.App.2d 109", "category": "reporters:state", "reporter": "Ill. App. 2d", "case_ids": [ 2554334 ], "opinion_index": 0, "case_paths": [ "/ill-app-2d/84/0109-01" ] } ], "analysis": { "cardinality": 855, "char_count": 18598, "ocr_confidence": 0.76, "pagerank": { "raw": 1.741820359074681e-07, "percentile": 0.7071441230743568 }, "sha256": "cfa4098c058a0e8039c877d8cba6616550864dfdfb1dcfa82dbf50f2a3cbd546", "simhash": "1:a6e3f9aa37329dc4", "word_count": 2945 }, "last_updated": "2023-07-14T15:56:16.526311+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "Edgewater Beach Apartments Corporation, Plaintiff-Appellee, v. Edgewater Beach Management Co., Inc., et al., Defendants-Appellants." ], "opinions": [ { "text": "Mr. PRESIDING JUSTICE DRUCKER\ndelivered the opinion of the court:\nDefendants bring this interlocutory appeal from an order granting plaintiff a preliminary injunction prohibiting defendants from using the word \u201cBeach\u201d in close connection with the word \u201cEdgewater\u201d in conjunction with the sale, rental or advertisement of apartments.\nOn appeal defendants contend that plaintiff was not entitled to preliminary relief (as was granted) under either the Uniform Deceptive Trade Practices Act (Ill. Rev. Stat. 1971, ch. 121%, par. 313) or the Illinois Trademark Act (Ill. Rev. Stat. 1971, ch. 140, par. 22) the latter of which has been referred to as the \u201cAnti-Dilution Statute.\u201d\nAn evidentiary hearing was held prior to the issuance of the preliminary injunction wherein the following facts were elicited: Plaintiff is an Illinois corporation which has operated a cooperative apartment building called \u201cEdgewater Beach Apartments\u201d since 1949. The building is located at 5555 North Sheridan Road in Chicago. Defendants are developers of an apartment complex on property once occupied by the Edgewater Beach Hotel. The complex is located to the immediate south of plaintiffs building.\nThe Edgewater Beach Hotel was built in 1916. At the time it was 20 feet from Lake Michigan and had a private beach. Ownership of the hotel was transferred in 1950 and again in the 1960s when it was sold to the H. R. Weissberg Corporation (Weissberg). Weissberg operated the hotel until 1967 when it underwent reorganization in proceedings in the Federal District Court. The defendants purchased all the real estate owned by Weissberg prior to and during the reorganization proceedings. In addition they purchased from the. trustee of Weissberg the following:\n\u201c* * # all the rights, title and interest # * * [held by the Trustee] in and to the good will relating to the operation of the Edgewater Beach Hotel including but not limited thereto, the use of the name \u201cEdgewater Beach Hotel\u201d and any and all trade names, * * *, either registered or unregistered, which have related to the operation of said Edgewater Beach Hotel.\u201d\nWhile the Edgewater Beach Hotel was operating it was referred to as \u201cThe Edgewater Beach.\u201d It had both transient and permanent guests both of whom were entitled to use the hotel swimming pool,. tennis courts and other related activities.\nIn 1928 the original owners of the hotel built a luxury type apartment building which is now owned by plaintiff. It was called \u201cThe Edgewater Beach Apartments.\u201d Occupancy was on a rental basis. Plaintiff corporation was formed in 1949 and has operated the \u201cEdgewater Beach Apartments\u201d since that time. The building contains 309 apartments. In. order for one to lease an apartment he must be a shareholder in the cooperative which runs the building. Plaintiff advertises under the name \u201cEdge-water Beach Apartments\u201d in newspapers and printed brochures. There are commercial tenants who are not members of the cooperative who occupy stores on the ground floor. They use the name \u201cEdgewater Beach Apartments\u201d in designating their trade or business. There is a staff of about 80 persons to maintain and operate the building. A prospective tenant (and thus a prospective shareholder in the cooperative) must fill out an application and credit information sheet and these are turned over to a screening committee for approval. If the prospective seller and buyer agree on a price and the committee approves the application, the old shares are transferred by the seller to the cooperative and new shares are issued to the buyer.\nGeorge Kemp, president of the realty firm which operates plaintiff\u2019s building, testified that the general public forms a \u201cnomenclat\u00fare\u201d with respect to Chicago buildings; that plaintiff\u2019s building, like other prestigious buildings in the area, has come to be known by its name rather than its address; that the name \"Edgewater Beach Apartments\u201d has acquired distinctiveness in the real estate community of Chicago and nationally as well.\nIn 1971, after reorganization of Weissberg, defendants began the construction of an apartment complex immediately to the south of plaintiff (on the site of the old hotel). The first apartment building constructed was named \u201cEdgewater Plaza.\u201d The second building was named \u201cEdge-water Beach\u201d or \u201c5445 Edgewater Beach.\u201d The local media has referred to the complex as the \u201cEdgewater Beach Apartments.\u201d All prospective tenants must fill out application forms and undergo a credit check in some instances before a lease is issued. Defendants plan the construction of more apartment buildings and commercial space. A hotel will not be constructed. The complex is bounded in part by a private street called \u201cNorth Edgewater Beach Drive\u201d which was constructed by defendants after the reorganization proceedings.\nLittle confusion existed between plaintiff\u2019s apartment building and defendants\u2019 complex until defendants\u2019 second apartment building called \u201cEdgewater Beach\u201d or \u201c5445 Edgewater Beach\u201d was built: Since that time plaintiff\u2019s witnesses stated that its building has been \u201cflooded\u201d with telephone calls and complaints properly directed to defendants\u2019 building. Prospective tenants of defendants are calling plaintiff\u2019s switchboard to rent apartments. Furniture movers have been confused as to the proper building to make deliveries. Newspaper articles relating to defendants\u2019 complex have referred to it as \u201cThe Edgewater Beach Apartments.\u201d No vacancies in plaintiff\u2019s building have occurred since the partial construction of defendants\u2019 complex, and over the years the share value of stock held by members of the cooperative has risen.\nThere was evidence submitted as to whether the nahie \u201cEdgewater Beach\u201d was descriptive of a geographical location. Defendant introduced into evidence two Rand-McNally maps (dated 1938 and 1947) both of which had the words \u201cEdgewater Beach\u201d printed at the relevant location. A Chicago Transit Authority \u201cL\u201d stop was called \u201cBerwyn-Edgewater Beach\u201d until 1971 when the words \u201cEdgewater Beach\u201d were deleted therefrom. Two witnesses for plaintiff, both in the real estate business, testified that the community wherein the buildings involved are situated is called \u201cUptown,\u201d and the sub-community is called \u201cEdgewater.\u201d There is no sub-community called \u201cEdgewater Beach.\u201d There are only two beaches in the area, Foster Avenue Beach and Hollywood Beach. Between them (wherein the buildings lie) there is only \u201crock-piling.\u201d Based on the foregoing facts the court made the following findings in granting preliminary relief to plaintiff:\n\u201c2. That Plaintiff\u2019s use of the words \u2018Edgewater Beach\u2019 in conjunction with the ownership and operation of cooperative apartments occupied by its shareholders under proprietary leases is prior in time to the use by Defendants of the words \u2018Edgewater Beach\u2019 in conjunction with the sale, rental, or advertisement for sale or rental of apartments located in buildings owned, operated or managed by them; 6 *\n3. That the use of the word \u2018Beach\u2019 by the Defendants in connection with its apartment development has created actual confusion as well as a likelihood of confusion between the buildings of Defendants and the building of Plaintiff and the corporate name of Plaintiff, and that there exists a likelihood of dilution of the distinctive quality of Plaintiff\u2019s name and that Plaintiff\u2019s name is distinctive and signifies the Plaintiff and its building.\n4. That the words \u2018Edgewater Beach\u2019 are not geographically descriptive but rather that the properties of the Plaintiff and the Defendants are located in a community known as the Community of Uptown and within a Subcommunity of the Community of Uptown known as Edgewater and that such Community and Subcommunity have been so known for many years.\n5. That unless Defendants are enjoined from using the word \u2018Beach\u2019 in close conjunction with or immediately following the word \u2018Edgewater\u2019 in the sale or rental of their apartments, Plaintiff will suffer irreparable harm.\n6. That Plaintiff has established a fair probability that it will prevail at a trial on the merits, and that the status quo should be preserved until a final hearing on the merits.\n7. That Defendants\u2019 use of the words \u2018Edgewater Beach\u2019 is with full knowledge of Plaintiff\u2019s prior use of these same words.\u201d\nOpinion\nPlaintiff seeks relief under both section 2 of the Uniform Deceptive Trade Practices Act (Ill. Rev. Stat. 1971, ch. 121V2, pars. 312, 313) and section 15 of the Trademark Act (Ill. Rev. Stat. 1971, ch. 140, par. 22). The court below granted preliminary relief based on both statutes, and our task as a reviewing court is to determine whether it abused its discretion in doing so. People ex rel. Bolton v. Progressive General Insurance Co., 84 Ill.App.2d 109, 228 N.E.2d 146.\nFirst we address the issues raised under the Uniform Deceptive Trade Practices Act. Section 2 thereof provides in relevant part:\n\u201cA person engages in a deceptive trade practice when, in the course of his business, vocation or occupation, he: * * *\n(2) causes likelihood of confusion or of misunderstanding as to the source, sponsorship, approval or certification of goods or services;\n(3) causes likelihood of confusion or of misunderstanding as to affiliation, connection or association with or certification by another;\n# # #\n(12) engages in any other conduct which similarly creates a likelihood of confusion or of misunderstanding.\nIn order to prevail in an action under this Act, a complainant need not prove competition between the parties of actual confusion or misunderstanding.\u201d\nProof of monetary damage to plaintiff is unnecessary as is proof that defendant had the intent to deceive. Ill. Rev. Stat. 1971, ch. 121V2, par. 313.\nDefendants raised two defenses to plaintiffs claim under the above statute in addition to contesting the issue that \u201clikelihood of confusion or misunderstanding\u201d is caused by its use of the name \u201cEdgewater Beach\u201d in connection with the rental of apartments. First, it contended that the term \u201cEdgewater Beach\u201d merely describes a geographic location and therefore is not entitled to trade name protection. The general rule as noted by defendant is that geographic names which designate a particular area or locality are regarded as common property and may not be exclusively appropriated as a trade name. (Elgin Butter Co. v. Creamery Co., 155 Ill. 127, 40 N.E. 616; C.J.S. Trademarks, \u00a7 43, p. 274.) In the instant case there was conflicting evidence as to whether the term \u201cEdgewater Beach\u201d was descriptive of the locale surrounding the subject apartment buildings. It is unnecessary to repeat the testimony which was set forth earlier. Resolution of the issue was a matter of considering conflicting evidence and therefore one best determined by the trier of fact. Its decision was not against the manifest weight of the evidence. We think it relevant to note that the beach once near defendants\u2019 property has not been in existence for a lengthy period of time and that the Edgewater Beach Hotel has now been defunct for about six years. The passage of time, may cause a name which was once geographically descriptive to no longer be so. (See Callman, Unfair Competition, \u00a7 72, p. 198 (3d ed.).) Having affirmed the trial court\u2019s conclusion that \u201cEdgewater Beach\u201d is not geographically descriptive, it is evident that plaintiff\u2019s trade name is an \u201carbitrary\u201d one and deserving of protection. See Tisch Hotels, Inc. v. Americana Inn, Inc., 350 F.2d 609, 611 (7th Cir. 1965).\nIn view of the position taken above it is unnecessary to discuss the propriety of the court\u2019s finding (number three) that the name \u201cEdge-water Beach\u201d has acquired distinction and has come to signify plaintiff\u2019s building, i.e., that it has secondary meaning.\nThe second defense interposed by defendants is that they acquired the right to use the name \u201cEdgewater Beach\u201d in connection with the rental of apartments through the purchase of such alleged right from the trustee appointed during the reorganization of the H. R. Weissberg Corporation (defendants\u2019 predecessor in title to the subject property).\nThe bill of sale from the trustee provides that the purchaser was to receive in relevant part:\n* * all of the rights, title and interest of the party of the first part, as Trustee, in and to the good will relating to the operation of the Edgewater Beach Hotel including, but not limited thereto, the use of the name Edgewater Beach Hotel\u2019 and any and all trade names, trade styles, either registered or unregistered, which have related to the operation of said Edgewater Beach Hotel.\u201d\nOn its face, the above document gives the defendants only the right to use the name \u201cEdgewater Beach\u201d in connection with any hotel or hotel related activities, which they do not claim to be doing, and not in .connection with the operation of an apartment building. Moreover, the legality of the use of the trade name \u201cEdgewater Beach\u201d by defendants in connection with an apartment building seems questionable in light of the general rule that \u201cany assignment of a trademark and its goodwill (with or without tangibles or intangibles assigned) requires the mark itself be used by the assignee on a product having substantially the same characteristics.\u201d Pepsico, Inc. v. Grapette Co., 416 F.2d 285, 288 (8th Cir. .1969) \u2014 assignee of trademark \u201cpeppy\u201d for a cola drink barred from using the mark on a \u201cpepper\u201d flavored soft drink. Therefore defendants\u2019 contention is without merit.\nWe now turn to the issue of whether there is sufficient evidence in the record to support the court\u2019s finding that there is a likelihood of confusion between plaintiff\u2019s and defendants\u2019 apartment buildings due to the use of the name \u201cEdgewater Beach\u201d by defendants. The likelihood of confusion could be either as to the source or sponsorship of the apartment buildings (Ill. Rev. Stat. 1971, ch. 121V2, par. 312(2)) or as to affiliation, connection or association. Applied to the facts of this case the-former suggests a likelihood of confusion in that a prospective \u201ccustomer\u201d of plaintiff\u2019s building will mistakenly be led to rent apartment space in defendants\u2019 building. The latter suggests a likelihood of confusion in that it will appear that the two buildings are affiliated or connected in some way and that plaintiff\u2019s reputation will thus no longer be in its own hands. See Tisch Hotels, Inc., at 612, citing Yale Electric Corp. v. Robertson, 26 F.2d 972, 973 (2d Cir. 1928).\nDefendants argue that likehood of confusion as to source or sponsorship is highly unlikely where as here prospective purchasers of the \u201cproduct\u201d offered by each party will be highly discriminative (see Restatement of Torts, \u00a7 729(d); Charles F. Ryan & Son, Inc. v. Lancaster Homes, Inc., 22 A.D. 186, 254 N.Y.S.2d 473), and plaintiff\u2019s building is operated as a cooperative whereas defendants\u2019 is run under the conventional rental method. Accepting this as true, it still does not answer the problem that plaintiff faces as to the likelihood of confusion from the public believing that the two buildings are in some way affiliated or connected. This is especially true here in that the trade names used are substantially the same, i.e., plaintiff uses the name \u201cEdge-water Beach Apartments\u201d and defendant the name \u201cEdgewater Beach\u201d or \u201c5445 Edgewater Beach\u201d (although the building\u2019s actual address is 5445 North Sheridan Road), the parties in substance deal in the same commodity (apartments) despite their difference in financial structures, and the buildings are on contiguous pieces of land. The actual confusion that has occurred in misguided telephone calls and deliveries, prospective tenants of defendants\u2019 building calling on plaintiff, and among defendants\u2019 own tenants, corroborates the likelihood of confusion among the general public. We thus feel that there was sufficient evidence presented to justify the issuance of a preliminary injunction.\nSince further proceedings appear likely in this matter, we deem it appropriate to briefly comment upon plaintiffs claim to relief under the Anti-Dilution Statute. (Ill. Rev. Stat. 1971, ch. 140, par. 22.) The court found that \u201cthere is likelihood of dilution of the distinctive quality of plaintiffs name.\u201d This language is taken directly from the statute.\nThe Anti-Dilution Statute provides protection for a strong trade name or trademark from deleterious effects of the use of a similar name or mark by another person when said person is not in competition with the holder and no likelihood of confusion will result from its usage. (See Polaroid Corp. v. Polaroid, Inc., 319 F.2d 830 (7th Cir. 1963).) Where traditional remedies under theories of unfair competition are available, relief under the statute should not be granted. (See Capitol Tie Rak, Inc. v. Tie Rack Stores of Illinois, 150 U.S.P.Q. 357, 360-361 (N.D. Ill. 1966); Derenberg, The Problem of Trademark Dilution and the Anti-Dilution Statutes, 44 Cal. L. Rev. 439, 448-463 (1956); Callman, Unfair Competition, \u00a7 84.2, pp. 953-958 (3d ed.).) In the instant case not only are the parties competitors with one another but there is, as we have held, a likelihood of confusion between them. Therefore, the Anti-Dilution Statute is inapplicable to the case.\nThe decision of the circuit court is affirmed.\nAffirmed.\nENGLISH and SULLIVAN, JJ., concur.\nA geographically descriptive name will nevertheless be given trade name protection if it has a secondary meaning. See Elgin Nat\u2019l Watch Co. v, Illinois Watch Co., 179 U.S. 665, 673-674; Pan American Realty Corp. v. Forest Park Manor, Inc., 160 U.S.P.Q. 346, 349 (Sup. Ct. Mo. 1968).\nThe section provides in relevant part:\n\u201cEvery person, ** * * adopting and using a * * * trade name, * * * may proceed by suit, and all courts having jurisdiction thereof shall grant injunctions, to enjoin subsequent use by another of the same or any similar 9 9 9, trade name, 9 9 9 if there exists a likelihood of injury to business reputation or of dilution of the distinctive quality of the 9 9 9, trade name, 9 9 9, notwithstanding the absence of competition between the parties or of confusion as to the source of goods or services;", "type": "majority", "author": "Mr. PRESIDING JUSTICE DRUCKER" } ], "attorneys": [ "Torshen, Cohen & Eiger, Ltd., of Chicago, (Jerome H. Torshen and Robert A. Skirnick, of counsel,) for appellants.", "Springer & Casey, of Chicago, (Donald E. Casey, Gary E. Dienstag, and Barton J. Springer, of counsel,) for appellee." ], "corrections": "", "head_matter": "Edgewater Beach Apartments Corporation, Plaintiff-Appellee, v. Edgewater Beach Management Co., Inc., et al., Defendants-Appellants.\n(Nos. 58261-58375;\nFirst District (5th Division)\nJune 22, 1973.\nRehearing denied July 23, 1973.\nTorshen, Cohen & Eiger, Ltd., of Chicago, (Jerome H. Torshen and Robert A. Skirnick, of counsel,) for appellants.\nSpringer & Casey, of Chicago, (Donald E. Casey, Gary E. Dienstag, and Barton J. Springer, of counsel,) for appellee." }, "file_name": "0526-01", "first_page_order": 546, "last_page_order": 554 }