{ "id": 5366007, "name": "ROSARIO D. SALERNO'S SONS, INC., d/b/a Salerno Funeral Home, Plaintiff-Appellee, v. ROSEMARY SALERNO BUTTA, a/k/a Rosemary Salerno, Defendant-Appellant", "name_abbreviation": "Rosario D. Salerno's Sons, Inc. v. Butta", "decision_date": "1994-04-25", "docket_number": "No. 1\u201493\u20143155", "first_page": "42", "last_page": "53", "citations": [ { "type": "official", "cite": "263 Ill. App. 3d 42" } ], "court": { "name_abbreviation": "Ill. App. Ct.", "id": 8837, "name": "Illinois Appellate Court" }, "jurisdiction": { "id": 29, "name_long": "Illinois", "name": "Ill." }, "cites_to": [ { "cite": "764 F.2d 62", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 378110 ], "weight": 4, "pin_cites": [ { "page": "67" }, { "page": "67" }, { "page": "67" }, { "page": "67" } ], "opinion_index": 0, "case_paths": [ "/f2d/764/0062-01" ] }, { "cite": "569 F.2d 731", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1423229 ], "weight": 2, "year": 1985, "pin_cites": [ { "page": "734" }, { "page": "734" } ], "opinion_index": 0, "case_paths": [ "/f2d/569/0731-01" ] }, { "cite": "45 Cal. Rptr. 546", "category": "reporters:state", "reporter": "Cal. Rptr.", "pin_cites": [ { "page": "553" } ], "opinion_index": 0 }, { "cite": "235 Cal. App. 2d 549", "category": "reporters:state", "reporter": "Cal. App. 2d", "case_ids": [ 2155662 ], "pin_cites": [ { "page": "560" } ], "opinion_index": 0, "case_paths": [ "/cal-app-2d/235/0549-01" ] }, { "cite": "499 F.2d 1183", "category": "reporters:federal", "reporter": "F.2d", "case_ids": [ 1171027 ], "opinion_index": 0, "case_paths": [ "/f2d/499/1183-01" ] }, { "cite": "357 F. Supp. 127", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 3476476 ], "weight": 7, "year": 1974, "pin_cites": [ { "page": "131" }, { "page": "131" }, { "page": "132" }, { "page": "132" }, { "page": "132" }, { "page": "131" } ], "opinion_index": 0, "case_paths": [ "/f-supp/357/0127-01" ] }, { "cite": "4 F. Supp. 613", "category": "reporters:federal", "reporter": "F. Supp.", "case_ids": [ 4126660 ], "weight": 3, "year": 1973, "pin_cites": [ { "page": "620-21" }, { "page": "623" }, { "page": "617" } ], "opinion_index": 0, "case_paths": [ "/f-supp/4/0613-01" ] }, { "cite": "257 Ill. App. 571", "category": "reporters:state", "reporter": "Ill. App.", "case_ids": [ 3263623 ], "weight": 2, "pin_cites": [ { "page": "583" }, { "page": "571" } ], "opinion_index": 0, "case_paths": [ "/ill-app/257/0571-01" ] }, { "cite": "489 N.E.2d 319", "category": "reporters:state_regional", "reporter": "N.E.2d", "weight": 2, "pin_cites": [ { "page": "320" }, { "page": "320" } ], "opinion_index": 0 }, { "cite": "140 Ill. App. 3d 1074", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3532015 ], "weight": 3, "pin_cites": [ { "page": "1076" }, { "page": "1076" }, { "page": "1078" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/140/1074-01" ] }, { "cite": "466 N.E.2d 1004", "category": "reporters:state_regional", "reporter": "N.E.2d", "pin_cites": [ { "page": "1010" } ], "opinion_index": 0 }, { "cite": "126 Ill. App. 3d 99", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3598584 ], "pin_cites": [ { "page": "105" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/126/0099-01" ] }, { "cite": "215 N.E.2d 443", "category": "reporters:state_regional", "reporter": "N.E.2d", "pin_cites": [ { "page": "446" } ], "opinion_index": 0 }, { "cite": "34 Ill. 2d 257", "category": "reporters:state", "reporter": "Ill. 2d", "case_ids": [ 2879591 ], "pin_cites": [ { "page": "262" } ], "opinion_index": 0, "case_paths": [ "/ill-2d/34/0257-01" ] }, { "cite": "453 N.E.2d 740", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1966, "pin_cites": [ { "page": "742" } ], "opinion_index": 0 }, { "cite": "117 Ill. App. 3d 353", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3481169 ], "year": 1966, "pin_cites": [ { "page": "355" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/117/0353-01" ] }, { "cite": "466 N.E.2d 620", "category": "reporters:state_regional", "reporter": "N.E.2d", "year": 1983, "pin_cites": [ { "page": "623" } ], "opinion_index": 0 }, { "cite": "125 Ill. App. 3d 781", "category": "reporters:state", "reporter": "Ill. App. 3d", "case_ids": [ 3632062 ], "year": 1983, "pin_cites": [ { "page": "786" } ], "opinion_index": 0, "case_paths": [ "/ill-app-3d/125/0781-01" ] } ], "analysis": { "cardinality": 997, "char_count": 29025, "ocr_confidence": 0.763, "pagerank": { "raw": 4.03580807328026e-08, "percentile": 0.15848086123940044 }, "sha256": "a6fde691de9c35d72092585e54141c79a3bf30bfcc229f140cb9f62da9c63a61", "simhash": "1:eaa381be3cab0567", "word_count": 4702 }, "last_updated": "2023-07-14T21:36:39.761555+00:00", "provenance": { "date_added": "2019-08-29", "source": "Harvard", "batch": "2018" }, "casebody": { "judges": [], "parties": [ "ROSARIO D. SALERNO\u2019S SONS, INC., d/b/a Salerno Funeral Home, Plaintiff-Appellee, v. ROSEMARY SALERNO BUTTA, a/k/a Rosemary Salerno, Defendant-Appellant." ], "opinions": [ { "text": "JUSTICE BUCKLEY\ndelivered the opinion of the court:\nPlaintiff, Salerno\u2019s Sons, filed a complaint for preliminary injunction against defendant, Rosemary Salerno, to prevent her from advertising her funeral business under the name \"Rosemary Salerno.\u201d The trial judge granted Salerno\u2019s Sons\u2019 requested relief, but permitted defendant to advertise her business under the name \"Butta-Salerno\u201d in conjunction with a disclaimer of any association with Salerno\u2019s Sons. Defendant then filed this interlocutory appeal. On appeal, defendant contends: (1) that the trial judge erred in not conducting an evidentiary hearing; and (2) that the court\u2019s injunction is overbroad because it violates the rule that injunctions in \"personal name\u201d trademark cases should be drawn as narrowly as possible.\nThis case presents a family dispute over the use of the family name, Salerno, to advertise and promote funeral-related businesses. Salerno\u2019s Sons has provided funerals and related services in and around the Chicago area since 1902. Salerno\u2019s Sons does business under the registered service marks \"ROSARIO D. SALERNO FUNERAL HOME,\u201d \"SALERNO FUNERAL HOME,\u201d AND \"SALERNO\u2019S GALEWOOD CHAPEL.\u201d The name \"SALERNO\u201d has been used prominently in Salerno\u2019s Sons business, advertising, letterhead, and mailings. Defendant concedes that the name \"SALERNO\u201d alone and as part of the registered service marks has acquired substantial secondary meaning, goodwill, and distinctiveness in the funeral business.\nDefendant began to work with her father, uncles, and cousins at Salerno\u2019s Sons in 1958. She became a licensed funeral director in 1961 and worked full time in that capacity until 1972. In 1964, defendant\u2019s father died and her uncles obtained her father\u2019s ownership interest in Salerno\u2019s Sons. In 1965, defendant married Andrew Buttacavoli. In 1968, her husband shortened his name to Butta and defendant legally changed her name to \"Rosemary Salerno Butta.\u201d Defendant was divorced in 1972, but did not legally change her name from \"Butta\u201d at that time. It was not until May 1992 that defendant legally changed her name from \"Rosemary Salerno Butta\u201d to \"Rosemary Butta Salerno.\u201d\nAccording to her affidavit attached to her responsive pleadings, however, defendant maintains that upon her divorce in 1972 she ceased using her husband\u2019s name in social situations. She also asserts that she never used the name \"Butta\u201d professionally in the funeral service business. In support of this assertion she points to the following facts: (1) her Illinois funeral director\u2019s license has always been registered under her full given name, \"Rosemary Theresa Salerno\u201d; (2) she was prominently identified as Rosemary Salerno on promotional calendars distributed each year during the 1960\u2019s by Salerno\u2019s Sons; and (3) she has signed every death certificate for funerals she has conducted over the past 35 years as Rosemary Salerno. Consequently, she contends that she is widely and favorably known in the funeral business to members of the public who are likely to use her services as Rosemary Salerno. Salerno\u2019s Sons, however, contends that she had identified herself as Rosemary Butta because she allegedly received mail addressed to Rosemary Butta at the funeral home and she filed her W-2 tax forms as Rosemary Butta.\nIt is uncontested that in 1972, the year of her divorce, defendant ceased working as a full-time funeral director at Salerno\u2019s Sons apparently because the funeral home could not afford to retain her on a full-time basis. She took a full-time position in the restaurant business for the next 14 years. Defendant asserts in her affidavit, however, that she worked \"as needed\u201d at Salerno\u2019s Sons between 1972 and 1986. Salerno\u2019s Sons, on the other hand, maintains that she did not work at the funeral home during those years and contends that it never paid her for any services from 1972 through 1985.\nIn 1986, defendant returned to Salerno\u2019s Sons as a full-time funeral director. In 1990, the sons of Joseph Salerno, the president of Salerno\u2019s Sons, joined the business. According to defendant, Joseph Salerno then made it clear that she was no longer needed. She asserts that he reduced her pay and took other steps to force her to leave the funeral home. She claims that, as a result, she had no choice except to leave Salerno\u2019s Sons in September 1992 and start her own business as a funeral director. Salerno\u2019s Sons, on the other hand, asserts that she \"became dissatisfied with her financial compensation and voluntarily resigned.\u201d\nUpon leaving Salerno\u2019s Sons, defendant became associated with the Adinamis and Cuneo Columbian Funeral homes in Chicago. She also established her own funeral business out of her \"Wheaton home and began advertising and obtaining telephone listings under the name \"Rosemary Salerno.\u201d Before the trial court issued the preliminary injunction, defendant had included in her advertisements the disclaimer that she was \"[fjormerly of Salerno Galewood Chapel.\u201d At the time this lawsuit was filed, defendant had conducted two funerals, one of which was in Chicago. She admitted in her affidavit that she had received several telephone calls from people on her suburban phone number or on her 1-800 number, which was listed as \"Rosemary Salerno, Funeral Director,\u201d inquiring about wakes being conducted at Salerno\u2019s Galewood Chapel. She asserts, however, that in those instances she did not deceive the callers and gave them the correct number.\nOn March 2, 1993, Salerno\u2019s Sons filed a four-count complaint against defendant and, on March 4, 1993, moved for a preliminary injunction. Salerno\u2019s Sons contends that defendant\u2019s use of the name \"Rosemary Salerno\u201d to promote her funeral business is impermissibly confusing with Salerno\u2019s Sons\u2019 trademarks. Defendant filed her verified answer on April 3, 1993. After the submission of affidavits by both parties and a full briefing of the issues, a hearing on the motion for preliminary injunction was held on May 3, 1993.\nWithout conducting a full evidentiary hearing and based solely on the pleadings and affidavits, the judge made the following findings: (1) that Salerno\u2019s Sons\u2019 service marks were valid and thus entitled to protection; (2) that the use of these marks by Salerno\u2019s Sons and defendant in connection with funeral-related services is virtually identical; (3) that there is a likelihood of confusion as demonstrated by several instances of actual confusion; and (4) that defendant utilized her married name of Butta while employed at Salerno\u2019s Sons and only recently adopted the family name when she left Salerno\u2019s Sons and began to advertise for her own business. Based upon these findings the judge concluded that Salerno\u2019s Sons satisfied the elements necessary to establish its right to a preliminary injunction. Therefore, he preliminarily enjoined defendant from using the surname Salerno to advertise or promote her funeral business except in the following manner: (1) she may operate her business under the name \"Butta-Salerno Funeral Services\u201d; (2) she must accompany any formal advertising with a disclaimer explaining that she is not affiliated with the Salerno Funeral Home; (3) she may not use her first name \"Rosemary\u201d because of its similarity to \"Rosario\u201d; and (4) all her telephone listings must be in the name of \"Butta-Salerno Funeral Services.\u201d\nOn June 2, 1993, defendant filed a motion to reconsider and asked the court to either dissolve or modify the preliminary injunction. On August 12, 1993, the judge denied defendant\u2019s motion to reconsider. Defendant then filed this interlocutory appeal.\nDefendant\u2019s first contention on appeal is that the trial judge erred in granting the preliminary injunction without conducting an evidentiary hearing. She asserts that contested issues of material fact exist and that, in such a situation, a court cannot issue a preliminary injunction without first conducting an evidentiary hearing. Salerno\u2019s Sons, on the other hand, argues that any questions of fact which do exist are not \"material\u201d and are irrelevant to the issue of whether a preliminary injunction should have been granted against defendant\u2019s alleged trademark infringement.\nDefendant filed a verified answer to Salerno\u2019s Sons\u2019 complaint and an affidavit setting forth her version of the relevant facts. As a general rule, when a defendant files a verified answer or affidavits contesting material allegations in a complaint, an evidentiary hearing on those matters is required before a preliminary injunction may be issued. (Proulx v. Illinois High School Association (1984), 125 Ill. App. 3d 781, 786, 466 N.E.2d 620, 623; Peoples Gas Light & Coke Co. v. City of Chicago (1983), 117 Ill. App. 3d 353, 355, 453 N.E.2d 740, 742; Centennial Laundry Co. v. West Side Organization (1966), 34 Ill. 2d 257, 262, 215 N.E.2d 443, 446.) A review of the pleadings demonstrates, however, that no fact material to the judge\u2019s determination that a preliminary injunction should issue was contested.\nIn order to prevail on a trademark infringement claim, a plaintiff must demonstrate: (1) that its service mark is a valid mark entitled to legal protection; (2) that defendant is using a similar mark; and (3) that defendant\u2019s use of the similar mark creates a \"likelihood of confusion\u201d by the consuming public. (Thompson v. Spring-Green Lawn Care Corp. (1984), 126 Ill. App. 3d 99, 105, 466 N.E.2d 1004, 1010.) In order to obtain a preliminary injunction to enjoin a defendant from using an allegedly infringing mark, plaintiff must demonstrate by a preponderance of the evidence \"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.\u201d (Wilton Mortuary, Inc. v. Woolsey-Wilton Funeral Home, Ltd. (1986), 140 Ill. App. 3d 1074, 1076, 489 N.E.2d 319, 320.) We will not disturb a trial court\u2019s decision to grant a preliminary injunction unless the court abused its discretion. Wilton Mortuary, 140 Ill. App. 3d at 1076, 489 N.E.2d at 320.\nDefendant concedes that Salerno\u2019s Sons\u2019 service marks are valid marks entitled to legal protection. Additionally, it is facially apparent that defendant\u2019s mark is identical or virtually identical to Salerno\u2019s Sons\u2019 marks. Moreover, it cannot be contested that defendant is in competition with Salerno\u2019s Sons. Defendant argues, however, that a question of fact exists as to whether there is a \"likelihood of confusion\u201d created by her use of the name \"Salerno.\u201d She asserts, therefore, that the trial judge abused his discretion in granting the preliminary injunction without conducting an evidentiary hearing on the question of confusion.\nDefendant stated in her affidavit, however, that she received several phone calls from people on her suburban phone number or on her 1-800 number, which has her listed as \"Rosemary Salerno, Funeral Director,\u201d inquiring about wakes being conducted by Salerno\u2019s Sons. In light of the fact that defendant has admitted several instances of actual confusion resulting from her use of the name \"Salerno\u201d to advertise her business, no question of fact exists on the issue of likelihood of confusion. Thus, there were no material allegations at issue whose resolution at an evidentiary hearing would have been required before Salerno\u2019s Sons\u2019 right to a preliminary injunction could be established. Accordingly, we believe that Salerno\u2019s Sons established its right to a preliminary injunction by a preponderance of the evidence.\nDefendant\u2019s second contention on appeal, however, is that, assuming Salerno\u2019s Sons is entitled to a preliminary injunction, the trial judge\u2019s injunction is overbroad. Defendant asserts that there exists a \"personal name rule\u201d in trademark cases which provides that a person has an absolute right to use his or her personal name in business and that any injunction against that use must be drawn as narrowly as possible in order to allow that person \"to exploit her identity and reputation in a legitimate manner.\u201d Defendant argues that she has been active in the funeral business for over 30 years and that she is known in the business only as \"Rosemary Salerno.\u201d She maintains, therefore, that the requirement that she use the name \"Butta\u201d to advertise and promote her business has the impermissible effect of absolutely prohibiting her from capitalizing on her personal reputation which she has cultivated over the years.\nSalerno\u2019s Sons, on the other hand, asserts that confusion exists irrespective of whether the mark is a personal name or not and that a person can be enjoined from using a protected service mark notwithstanding the fact that the mark also happens to be his or her personal name. Salerno\u2019s Sons contends that defendant used the name \"Butta\u201d for 23 years and did not work in the funeral business from 1972 through 1985. Therefore, Salerno\u2019s Sons argues that there is no basis to infer she has developed any reputation in the business prior to returning to the funeral home in 1986 or under the name \"Salerno.\u201d Accordingly, Salerno\u2019s Sons maintains that the scope of the injunctive relief was not overbroad.\nAlthough it has been stated that a man has an absolute right to use his own name in his own business (Warshawsky & Co. v. A. Warshawsky & Co. (1930), 257 Ill. App. 571, 583), a review of the cases in this area shows \"that often the language used is broader than the facts require, and that the cases were ones in which confusion could effectively be averted if the newcomer were required only to qualify his use of the name by prefix, suffix, or explanation.\u201d (Hat Corp. of America v. D.L. Davis Corp. (D. Conn. 1933), 4 F. Supp. 613, 620-21; see Berghoff Restaurant Co. v. Lewis W. Berghoff, Inc. (N.D. Ill. 1973), 357 F. Supp. 127, aff\u2019d (7th Cir. 1974), 499 F.2d 1183; Warshawsky, 257 Ill. App. at 571.) In fact, courts have completely enjoined the use of a person\u2019s name in his business if there is no way to avoid confusion and injury to the original user of the name. (Hat Corp., 4 F. Supp. at 623.) Thus, there is no \"personal name rule\u201d which gives a person an absolute right to use his name in business. (See MacSweeney Enterprises, Inc. v. Tarantino (1965), 235 Cal. App. 2d 549, 560, 45 Cal. Rptr. 546, 553 (when a person \"cannot use his name without inevitably representing his goods as those of another[,] he may be enjoined from using his name in connection with his business\u201d).) Confusion arises irrespective of whether the mark used is or is not a personal name. Thus, a surname is treated the same as any other trademark because \"[g]ood will established through effort and labor should be deserving of more consideration than the fact that the business name of a competitor happens to be identical with his own family name.\u201d Berghoff, 357 F. Supp. at 131.\nIt must be recognized, however, that in many \"personal name\u201d infringement cases the \"second comer\u201d often has his own background of experience in the particular business and \"is not simply a newcomer.\u201d (Taylor Wine Co. v. Bully Hill Vineyards, Inc. (2d Cir. 1978), 569 F.2d 731, 734.) In such cases, courts have been \"highly solicitous\u201d to the individual\u2019s right to exploit his own identity and reputation in a legitimate manner. (Joseph Scott Co. v. Scott Swimming Pools, Inc. (2d Cir. 1985), 764 F.2d 62, 67; Taylor Wine, 569 F.2d at 734.) Thus, although injunctions should always be as limited as possible, fashioning a proper order in a \"personal name\u201d case where the \"second comer\u201d previously had developed a personal reputation in the business is particularly difficult. In such cases, \"a court must be particularly cautious to enjoin only those uses that are likely to create appreciable confusion ***, no more.\u201d (Joseph Scott, 764 F.2d at 67.) The Joseph Scott court cogently explained the judicial balancing that must take place:\n\"The ultimate aim is to frame an injunction that will avoid confusion in the marketplace, protect a prior company\u2019s property interest in its n\u00e1me, and permit an individual to exploit his own identity and reputation in a legitimate manner.\u201d Joseph Scott, 764 F.2d at 67.\nThe following cases illustrate the application of the above-stated principles. In Hat Corp., H. De Witt Dobbs, a man with much experience in the retail sale of hats, formed a corporation called \"Dobbs & Co.\u201d to engage in the manufacture and sale of headwear. Dobbs & Co. advertised the products as \"Dobbs\u201d hats and, using this mark, developed a very large and successful business. The plaintiff, Hat Corporation of America, was a predecessor company to the original \"Dobbs & Co.\u201d In 1931, after plaintiff and its predecessors had spent over 30 years cultivating its market and developing a reputation for producing quality headwear under the name \"Dobbs,\u201d defendant began to market headwear under the name \"Wm. H. Dobbs.\u201d Defendant acquired the right to use this name by getting the permission of Wm. H. Dobbs, the son of H. De Witt Dobbs.\nThe court in Hat Corp. reasoned that, at the time Wm. H. Dobbs gave defendant permission to use his name in the manufacture and sale of hats, Wm. H. Dobbs\u2019 name did not have any established good will associated with it nor had Wm. H. Dobbs acquired any particular reputation in the hat business. In fact, the court concluded that the only commercial value of the name \"Wm. H. Dobbs\u201d was its likelihood to confuse the public into mistaking it for the plaintiff\u2019s product, which was known in the marketplace under the name of \"Dobbs\u201d alone. Additionally, the court noted that this was not a case where Wm. H. Dobbs had tried for years to establish himself in the business and was now transferring his name to a partnership of which he was a member with a pecuniary interest. Wm. H. Dobbs did not manufacture or design the hats. In fact, he did nothing more than the duties of any manufacturer\u2019s sales manager. Therefore, the court in Hat Corp. held that no disclaimer would be able to cure the confusion and wholly enjoined defendant from any use of the name \"Dobbs\u201d in connection with its products.\nIn Joseph Scott, Joseph M. Scott, Sr., started a company called \"Scott Swimming Pools, Inc.\u201d (SSPI), which, over a number of years, developed a reputation for building quality swimming pools. Joseph, Sr.\u2019s sons, James and Joseph, Jr., both worked in the family business as youths, but James\u2019 participation was more constant. Thus, James eventually took over the business from his father. After 10 years away from the business, Joseph, Jr., returned to SSPI as a salesman and customer relations representative. Almost immediately, the two brothers disagreed about the operation of the company and Joseph, Jr., left SSPI to start his own company called \"AquaScapes.\u201d SSPI agreed that AquaScapes would be its sole residential sales agent in Fairfield County, Connecticut. Over the next 10 years, AquaScapes promoted and sold SSPI swimming pools. At the same time, Joseph, Jr., developed his own reputation in the business as a designer of quality custom pools. Joseph, Jr., then decided to terminate the relationship between AquaScapes and SSPI. He changed the name of his company to the \"Joseph Scott Company\u201d and included in his slogan the following words: \"Swimming Pool Craftsmen & Landscape Designers for Three Generations.\u201d Testimony from experienced professionals in the landscape business established that the name Joseph Scott, Jr., was synonymous with SSPI in Fairfield County and that there existed confusion regarding the affiliations of the Scott brothers to their respective firms.\nThe Joseph Scott court concluded that it was appropriate to enjoin defendant from using the word \"Scott\u201d in the name of his company in light of the fact that his use caused actual confusion in the marketplace. The court reasoned, however, that where the \"second comer\u201d owns the company and shows a genuine interest in establishing a business in which he has already developed some skill and knowledge, if possible, he should be able to exploit his reputation as a person by using his own name, albeit in some restricted fashion. The court noted that Joseph, Jr., had a \"legitimate and compelling interest\u201d in using his name in connection with his pool business because, over the previous 12 years, he had developed a reputation as a designer of quality custom built pools. The court held, therefore, that, although he could not use the name \"Scott\u201d in the name of his corporation, Joseph, Jr., could use his full name in connection with his business to describe his past accomplishments and expertise, as long as he attached a disclaimer which made it clear that his company was not associated with SSPI. The court reasoned that this would be sufficient to prevent him from trading on SSPI\u2019s good will and from competing unfairly.\nIn Berghoff Restaurant, plaintiff was a family owned and run restaurant business which had existed in Chicago since 1898 under the name \"Berghoff.\u201d The defendant, Lewis W. Berghoff, worked for the plaintiff corporation for 14 years before leaving to form his own restaurant in Elgin, Illinois, under the name \"Lewis Berghoff Inn.\u201d The court reasoned that, although a surname should be accorded the same protection as any other trademark, \"this is not a case where the defendant has contributed nothing to the good will of the surname he seeks to use.\u201d (Berghoff, 357 F. Supp. at 131.) The court noted that defendant worked for plaintiff for 14 years and, therefore, his contribution to the good will of the Berghoff name \"was more than insignificant.\u201d (357 F. Supp. at 132.) A very \"delicate balancing of the equities,\u201d therefore, was required. (357 F. Supp. at 132.) Accordingly, the court held that defendant was enjoined from using the name \"Berghoff\u201d unless it was preceded by his given name, \"Lewis,\u201d in the same size lettering as his surname and accompanied by a disclaimer that his business was \"[n]ot affiliated with the Berghoff Restaurants in Chicago.\u201d 357 F. Supp. at 132.\nFinally, in Wilton Mortuary, Richard Wilton was fired by the plaintiff, The Wilton Mortuary, Inc. Richard then formed a competing business with a man named Baird Woolsey called the Woolsey-Wilton Funeral Home, Ltd. Richard was president and owned 25% of the business. The court concluded that the marks were not so similar that \"The Wilton Mortuary, Inc.,\u201d would be diluted by defendant\u2019s use of \"Woolsey-Wilton Funeral Home, Ltd.\u201d The court also determined that Richard\u2019s employment at the plaintiff\u2019s corporation contributed to the good will of the name \"Wilton\u201d and thus he was \"equitably entitled to some benefit of the surname whose reputation he [had] helped build.\u201d Wilton Mortuary, 140 Ill. App. 3d at 1078.\nThe above cases show that an element to be considered by the trial judge when determining the scope of an injunction is the extent, if any, of the defendant\u2019s contribution to the good will of the service mark that the plaintiff is seeking to enjoin the defendant from using. An additional factor to consider is whether defendant has developed his or her own reputation in the business. Here, although Salerno\u2019s Sons was clearly entitled to an injunction to prevent defendant\u2019s unlimited use of the name \"Salerno,\u201d we believe the trial judge erred in finding, without holding an evidentiary hearing, that defendant had utilized her married name of \"Butta\u201d while employed at Salerno\u2019s Sons. The evidence was conflicting as to what name defendant used professionally and the resolution of this issue by hearing witnesses on both sides at an evidentiary hearing was necessary before the judge could properly balance the equities.\nAlthough defendant did not legally change her name back to Salerno until May 1992, she avers in her affidavit that she never used the name \"Butta\u201d professionally in the funeral business. In support of this assertion, she asserts that (1) her funeral director\u2019s license has always been registered under her full given name of \"Rosemary Theresa Salerno,\u201d (2) Salerno\u2019s Sons prominently identified her on promotional material as Rosemary Salerno, and (3) she signed every death certificate for funerals she conducted as Rosemary Salerno. She also asserts that she worked \"as needed\u201d at Salerno\u2019s Sons between 1972 and 1986. Thus, she argues that, over a period of 35 years, she has developed a favorable reputation in the funeral business as Rosemary Salerno.\nSalerno\u2019s Sons, however, contests these assertions. Salerno\u2019s Sons maintains that defendant utilized her married name of Butta in the funeral business. In support of its contention, Salerno\u2019s Sons asserts that (1) defendant did not legally change her name from Butta to Salerno until May 1992, (2) she received mail addressed to Rosemary Butta at the funeral home, and (3) she filed her W-2 tax forms as Rosemary Butta. Salerno\u2019s Sons also asserts that defendant never worked at the funeral home between 1972 and 1986.\nIn fashioning the scope of the injunction, the trial judge made no determination as to whether defendant worked at Salerno\u2019s Sons between 1972 and 1986. He did conclude, however, that she utilized her married name of \"Butta\u201d and only recently adopted Salerno when she started her own business. We cannot agree that the fact that her legal name was Butta establishes as a matter of law that she was known in the business as Rosemary Butta. Thus, without making a judgment on the ultimate propriety of the scope of the injunction, we believe the trial judge was premature in fashioning the injunction without holding an evidentiary hearing on the extent of defendant\u2019s previous use of the name \"Salerno\u201d and the length of her involvement with the funeral home.\nIf, after an evidentiary hearing, the judge determines that defendant has been known professionally under the name \"Salerno\u201d and/or that she was employed by the funeral home between 1972 and 1986, then she will have contributed considerably to the good will of the name which Salerno\u2019s Sons is attempting to prevent her from using. (See Berghoff Restaurant, 357 F. Supp. at 131.) Additionally, she will have established that she has developed a reputation over the years in the funeral business as \"Rosemary Salerno.\u201d Thus, she would have a \"legitimate and compelling interest\u201d in using the name \"Salerno\u201d in connection with her business. (See Joseph Scott, 764 F.2d at 67.) Consequently, to require her to use the name \"ButtaSalerno\u201d to identify her business may have the impermissible result of preventing her from exploiting her reputation and the good will she has helped to develop over the years because the public which knows her will not identify her with the name \"Butta.\u201d In such a case, allowing her to use her full name \"Rosemary Butta Salerno\u201d in conjunction with a disclaimer that she is not affiliated with Salerno\u2019s Sons may be sufficient to avoid confusion and, at the same time, allow her to capitalize on her reputation.\nOn the other hand, if she has used the name \"Butta\u201d in the funeral business and/or she did not work for Salerno\u2019s Sons between 1972 and 1986, she would have contributed much less to the good will of the name Salerno and would not have developed her reputation in the funeral business as a Salerno. Thus, the greatest commercial value of the name Salerno to defendant would not be to identify her with her services, but rather would be its likelihood to confuse the public into mistaking her services for those of Salerno\u2019s Sons. See Hat Corp., 4 F. Supp. at 617.\nConsequently, we find that the trial judge was correct in determining that Salerno\u2019s Sons has established its right to a preliminary injunction. We must conclude, however, that an evidentiary hearing was required before the scope of the injunction could be defined. Therefore, we reverse the trial judge\u2019s ruling and remand for an evidentiary hearing on the disputed facts relevant to the extent of defendant\u2019s involvement over the years with Salerno\u2019s Sons and the extent of her use of the name Butta. After hearing the witnesses and viewing the evidence, the trial judge should then use his discretion to enter an order which will strike a delicate balance between Salerno\u2019s Sons\u2019 right to protect its service mark and defendant\u2019s right to exploit any reputation and good will she may have developed in the business.\nAccordingly, for the foregoing reasons, we reverse the decision of the circuit court of Cook County, and remand for proceedings consistent with this opinion.\nReversed and remanded.\nO\u2019CONNOR and MANNING, JJ., concur.", "type": "majority", "author": "JUSTICE BUCKLEY" } ], "attorneys": [ "Jenner & Block (Thomas P. Sullivan, Bradford P. Lyerla, and Daniel J. Winters, of counsel) and Edward W. Williams, both of Chicago, for appellant.", "Keck, Mahin & Cate, of Chicago (Malcolm McCaleb, Jr., Robert M. Kluchin, and Wayne L. Tang, of counsel), for appellee." ], "corrections": "", "head_matter": "ROSARIO D. SALERNO\u2019S SONS, INC., d/b/a Salerno Funeral Home, Plaintiff-Appellee, v. ROSEMARY SALERNO BUTTA, a/k/a Rosemary Salerno, Defendant-Appellant.\nFirst District (1st Division)\nNo. 1\u201493\u20143155\nOpinion filed April 25, 1994.\n\u2014 Rehearing denied June 21, 1994. \u2014 Modified opinion filed June 27, 1994.\nJenner & Block (Thomas P. Sullivan, Bradford P. Lyerla, and Daniel J. Winters, of counsel) and Edward W. Williams, both of Chicago, for appellant.\nKeck, Mahin & Cate, of Chicago (Malcolm McCaleb, Jr., Robert M. Kluchin, and Wayne L. Tang, of counsel), for appellee." }, "file_name": "0042-01", "first_page_order": 60, "last_page_order": 71 }