{ "id": 3532015, "name": "THE WILTON MORTUARY, INC., Plaintiff-Appellee, v. WOOLSEY-WILTON FUNERAL HOME, LTD., Defendant-Appellant", "name_abbreviation": "Wilton Mortuary, Inc. v. Woolsey-Wilton Funeral Home, Ltd.", "decision_date": "1986-01-06", "docket_number": "No. 3\u201485\u20140676", "first_page": "1074", "last_page": "1079", "citations": [ { "type": "official", "cite": "140 Ill. App. 3d 1074" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "499 F.2d 1183", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1171027 ], "opinion_index": 0, "case_paths": [ "/f2d/499/1183-01" ] }, { "cite": "257 Ill. App. 571", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 3263623 ], "opinion_index": 0, "case_paths": [ "/ill-app/257/0571-01" ] }, { "cite": "149 N.E. 787", "category": "reporters:state_regional", "reporter": "N.E.", "opinion_index": 0 }, { "cite": "313 Ill. 106", "category": "reporters:state", "reporter": "Ill.", "case_ids": [ 2435048 ], "opinion_index": 0, "case_paths": [ "/ill/313/0106-01" ] }, { "cite": "736 F.2d 1153", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 587587 ], "opinion_index": 0, "case_paths": [ "/f2d/736/1153-01" ] }, { "cite": "389 N.E.2d 1300", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "72 Ill. App. 3d 285", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 5582513 ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/72/0285-01" ] }, { "cite": "413 N.E.2d 187", "category": "reporters:state_regional", "reporter": "N.E.2d", "weight": 2, "opinion_index": 0 }, { "cite": "90 Ill. App. 3d 572", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3159255 ], "weight": 2, "opinion_index": 0, "case_paths": [ "/ill-app-3d/90/0572-01" ] }, { "cite": "229 N.E.2d 536", "category": "reporters:state_regional", "reporter": "N.E.2d", "opinion_index": 0 }, { "cite": "37 Ill. 2d 599", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 2864136 ], "opinion_index": 0, "case_paths": [ "/ill-2d/37/0599-01" ] } ], "analysis": { "cardinality": 638, "char_count": 11415, "ocr_confidence": 0.759, "pagerank": { "raw": 6.665651525889828e-08, "percentile": 0.4058850535301479 }, "sha256": "a9faf18ac804cb8fb507d9917ccf08eb43f1504b0656278d3ba9334c86e5cc57", "simhash": "1:8f8be9f7a34b8eee", "word_count": 1835 }, "last_updated": "2023-07-14T21:56:30.289204+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "THE WILTON MORTUARY, INC., Plaintiff-Appellee, v. WOOLSEY-WILTON FUNERAL HOME, LTD., Defendant-Appellant." ], "opinions": [ { "text": "JUSTICE WOMBACHER\ndelivered the opinion of the court:\nDefendant Woolsey-Wilton Funeral Home, Ltd. (Woolsey-Wilton), appeals the granting of a preliminary injunction that prohibited it from using the name or mark \u201cWilton\u201d in connection with its business within a 25-mile radius of Peoria. We reverse.\nRichard Wilton, president of Woolsey-Wilton, was fired by plaintiff, the Wilton Mortuary, Inc. (the mortuary), in September 1984. The mortuary had been run by the Wiltons in Peoria since 1884. Richard\u2019s father, Ralph Wilton, Sr., died in 1981. Ralph\u2019s wife, Lillian, Richard\u2019s stepmother, became chairman of the board of the mortuary. Robert Wilton, Richard\u2019s half-brother, is the current president of the mortuary, while Ralph, Jr., Richard\u2019s other half-brother, is also an employee.\nUpon his termination, the mortuary tendered a severance agreement to Richard. The agreement provided for cash payments, insurance, and pension and profit-sharing in exchange for a covenant not to compete in the Peoria area for a six-month period. Richard rejected the offer and looked for other employment.\nRichard met with Baird Woolsey and obtained employment with Woolsey\u2019s Pekin funeral home. In February 1985, Richard and Baird Woolsey discussed the possibility of creating a new business in Peoria. They found a location on the northwest side of Peoria, some seven miles from the mortuary\u2019s location.\nOn April 29, 1985, the mortuary obtained as a registered trademark \u201cWilton\u201d to cover various burial items. The mortuary also obtained a registered service mark on the name \u201cWilton\u201d relating to funeral services. Both the trademark and the service mark were obtained pursuant to \u201cAn act to provide for the registration and protection of trademarks, service marks, and trade names ***\u201d (Trademark Act) Ill. Rev. Stat. 1983, ch. 140, par. 8 et seq.\nOn April 30, Richard Wilton and Baird Woolsey incorporated their business. Woolsey owns 75% of the stock in the corporation, while Richard Wilton owns 25%. Richard Wilton is the president of the corporation, and Baird Woolsey is the secretary-treasurer. WoolseyWilton planned to construct a new funeral home on the earlier-mentioned site. In conjunction with this, a press conference was held to announce the corporation and the new building.\nIn May, the mortuary made a request of Woolsey-Wilton that they not use the name \u201cWilton\u201d in connection with the new business. Woolsey and Wilton did not comply with the request. On May 31, the mortuary filed a two-count complaint seeking a declaration of rights and injunctive relief. The claim was based on the alleged confusion with and dilution of the mortuary\u2019s service mark.\nUpon the mortuary\u2019s request for a preliminary injunction, a hearing was held. The injunction issued October 8, 1985, barring WoolseyWilton from using the name \u201cWilton\u201d in regard to its funeral home or services within a 25-mile radius. Woolsey-Wilton brings this interlocutory appeal under Supreme Court Rule 307 (87 Ill. 2d R. 307).\nIn reviewing a case on a preliminary injunction, we must decide whether there has been an abuse of the trial court\u2019s sound discretion in granting or not granting the injunction. (Lonergan v. Crucible Steel Co. of America (1967), 37 Ill. 2d 599, 229 N.E.2d 536.) In order to obtain a preliminary injunction, the movant must show the possession of a right which needs protection, irreparable injury without the protection, lack of an adequate remedy at law, and the probability of success on the merits. (U-Haul Co. v. Hindahl (1980), 90 Ill. App. 3d 572, 413 N.E.2d 187.) The movant must prove these requirements by a preponderance of the evidence, not such that relief on the merits is warranted, but that the party would probably be entitled to relief if the proof sustains the allegations. (U-Haul Co. v. Hindahl (1980), 90 Ill. App. 3d 572, 413 N.E.2d 187.) Substantive issues will be considered as needed to determine the propriety of the trial court\u2019s decision. Donald McElroy, Inc. v. Delaney (1979), 72 Ill. App. 3d 285, 389 N.E.2d 1300.\nThe Trademark Act authorizes the circuit courts to issue an injunction in cases where claims of dilution and confusion are made. Thus, an injunction is an appropriate remedy. However, the central issue in this appeal is the mortuary\u2019s likelihood of success on the merits. The mortuary\u2019s argument is two-fold.\nThe first claim is made on the allegation that Woolsey-Wilton\u2019s use of the name \u201cWilton\u201d would dilute the distinctive quality of the mortuary\u2019s name and mark. This is based on section 15 of the Trademark Act, which reads in pertinent part, \u201c[T]he circuit court shall grant injunctions, to enjoin use by another *** of any similar mark *** if there exists a likelihood of dilution of the distinctive quality of the mark ***.\u201d Ill. Rev. Stat. 1983, ch. 140, par. 22.\nThe second claim is that Woolsey-Wilton\u2019s use of \u201cWilton\u201d would cause confusion, based on section 12 of the Act. That section makes liable one who colorably imitates a mark. The claim is, also, based on section 13, which allows the circuit court to enjoin such use. Ill. Rev. Stat. 1983, ch. 140, pars. 19, 20.\nThere are several cases pertinent to the present situation to which the parties have directed our attention. The first is Hyatt Corp. v. Hyatt Legal Services (7th Cir. 1984), 736 F.2d 1153. While not dis-positive, the Hyatt case provides an instructive analysis of whether dilution exists under the Trademark Act. The court first examined the distinctiveness of the mark, finding the hotel\u2019s tradename to be distinct. \u201cHyatt\u201d was used by the hotel to indicate the source and quality of the service provided. The second examination concerned whether the use of the mark diluted it. Factors to be considered included the similarity between the marks and the extent of the marketing effort by the second user.\nThe court found the denial of the requested injunction to be an abuse of discretion. It remanded with directions for Hyatt Legal Services to determine the distinction or limitation to be placed on their use of \u201cHyatt.\u201d The court preliminarily approved of either \u201cJoel Hyatt Legal Services\u201d or a combination of the last names of the partners. The court noted that the latter was common among law firms. During oral argument, counsel for Woolsey-Wilton suggested that a combination of partner names, such as \u201cWoolsey-Wilton\u201d was customary in undertaking businesses.\nNestor Johnson Manufacturing Co. v. Alfred Johnson Skate Co. (1924), 313 Ill. 106, 149 N.E. 787, presents a situation very similar to the present case. Nestor and Alfred were brothers. Nestor was a famous skating star. They formed the plaintiff company which manufactured a specific style of ice skate. Alfred then withdrew from the Nestor Johnson company and formed his own company that manufactured the same type of ice skate. Nestor brought suit in an effort to enjoin his brother\u2019s company from using \u201cJohnson Skates.\u201d\nThe supreme court found that \u201cJohnson\u201d had acquired a distinctive name as to ice skates. The court would not completely enjoin Alfred from using his surname in promoting his own business. Yet, the court held that when the use of one\u2019s name on goods would lead the public to believe that it is the product of a well-known concern, the law required that reasonable precautions be taken to prevent deception. The court allowed Alfred to use \u201cJohnson\u201d in promoting his ice skates if \u201cnot connected with the Nestor Johnson Manufacturing Co.\u201d was also used in distribution and advertising.\nAnother similar situation existed in Warshawsky & Co. v. A. Warshawsky & Co. (1930), 257 Ill. App. 571. Arthur Warshawsky opened an auto parts store near his brother Israel\u2019s store. Israel had developed a distinct use of \u201cWarshawsky\u201d in connection with his business that created a widespread reputation. Arthur then erected an electric sign that read \u201cA. Warshawsky & Co.\u201d In the sign, \u201cA.\u201d and \u201c& Co.\u201d were less than a third of the size of \u201cWarshawsky.\u201d Also, the \u201cA.\u201d did not light up. The trial court found that Arthur\u2019s actions were intended to mislead the public and gain an advantage from Israel\u2019s business and good will.\nThe appellate court held that a permanent injunction preventing Arthur from using \u201cA. Warshawsky & Co.\u201d and \u201cWarshawsky\u201d was overbroad. It was also held that while it was proper to restrain Arthur from taking unfair advantage of Israel\u2019s company\u2019s reputation, it could be done by modifying Arthur\u2019s company\u2019s advertising, etc., by including in it \u201cnot affiliated with Warshawsky & Co., a corporation.\u201d\nWe also note Berghoff Restaurant Co. v. Lewis W. Berghoff, Inc. (7th Cir. 1974), 499 F.2d 1183. Lewis had worked in the plaintiff family restaurant in downtown Chicago. He then opened his own restaurant in Elgin, 40 miles from the downtown restaurant. His advertising and menus carried disclaimers. The court observed differences in the two restaurants and that Lewis had significantly contributed to the good will of the \u201cBerghoff\u201d name. The trial court balanced the equities in forming an injunction that was approved on review. The injunction required the use of \u201cLewis\u201d when using his surname in operating a restaurant and disclaimers in advertising and menus.\nWe approve of the positions taken in the above case and find the logic to be most appealing. In applying the Hyatt analysis to the case at hand, the evidence supports, for purposes of an injunction, that \u201cWilton\u201d had become distinct in funeral services. However, examination of the marks leads us to believe that there is not such similarity that \u201cThe Wilton Mortuary, Inc.\u201d would be diluted by defendant\u2019s use of \u201cWoolsey-Wilton Funeral Home, Ltd.\u201d Further support is provided by analysis of the marks of the parties:\nWe note that Richard Wilton\u2019s employment at the mortuary contributed to the good will that \u201cWilton\u201d carries in the Peoria area. He is thus equitably entitled to some benefit of the surname whose reputation he helped build. This case does differ from those above, however, as it is not Wilton v. Wilton, nor Hyatt v. Hyatt, nor Warshawsky v. Warshawsky. We find that \u201cWoolsey-Wilton\u201d sufficiently distinguishes \u201cWilton\u201d so that the average consumer would not be confused.\nThus, the injunction, as formed by the trial court, is improper. Regardless of the registered status of \u201cWilton,\u201d to prevent Richard Wilton the use of his surname, in connection with Woolsey-Wilton, is an abuse of discretion. If the trial court feels that, after the hearing on the merits, and suggestions by the parties, an injunction similar to those described above is needed to prevent confusion or dilution, it shall cause one to issue.\nFor this reason, we do not believe that the mortuary successfully made a preliminary showing of likelihood of success on the merits. Sufficient distinction exists, unless proven otherwise, that there would be no dilution nor confusion. Therefore, the grant of the preliminary injunction, being an abuse of discretion, is hereby reversed. The cause is remanded for further proceedings.\nReversed and remanded.\nHEIPLE, P.J., and SCOTT, J., concur.", "type": "majority", "author": "JUSTICE WOMBACHER" } ], "attorneys": [ "Burt L. Dancey, of Elliff, Keyser, Oberle & Davies, P.C., of Pekin, for appellant.", "William R. Kohlhase and Jeffrey Alan Ryva, both of Davis & Morgan, of Peoria, for appellee." ], "corrections": "", "head_matter": "THE WILTON MORTUARY, INC., Plaintiff-Appellee, v. WOOLSEY-WILTON FUNERAL HOME, LTD., Defendant-Appellant.\nThird District\nNo. 3\u201485\u20140676\nOpinion filed January 6, 1986.\nBurt L. Dancey, of Elliff, Keyser, Oberle & Davies, P.C., of Pekin, for appellant.\nWilliam R. Kohlhase and Jeffrey Alan Ryva, both of Davis & Morgan, of Peoria, for appellee." }, "file_name": "1074-01", "first_page_order": 1096, "last_page_order": 1101 }