This is a case of alleged infringement of a trade name and trade symbol, and also of unfair competition. The plaintiffs, the Greyhound Corporation and its affiliate, Pennsylvania Greyhound Lines, Inc., ask that the three defendants, doing business under a partnership known as the Greyhound Cab Co., be permanently restrained from using the trade-name “Greyhound” and the figure of a running greyhound dog as a symbol on their taxicabs in Baltimore.
Most of the material facts in the case have been stipulated by the parties. The plaintiffs conduct a nationwide passenger motor bus service. One of them, the Greyhound Corporation, incorporated in Delaware, with principal offices in Chicago, has been engaged since 1926 in passenger motor bus service, both directly and through ownership or management of twenty-three subsidiary and affiliate corporations, including the other plaintiff in this suit, namely, Pennsylvania Greyhound Lines, Inc., which is also a Delaware corporation with principal offices in Cleveland, Ohio. This latter company has been in existence since 1930. It was originally formed to carry out an arrangement between the Greyhound Corporation and the Pennsylvania Railroad whereby the former’s motor bus lines operating in the territory served by the Railroad became merged under the management of the Greyhound Corporation, which, with its various subsidiary and affiliate corporations including the other plaintiff, Pennsylvania Greyhound Lines Inc., has always been managed and operated as a single, *236 continuous system of motor bus transportation, known as the Greyhound System. It first afforded service to and from Baltimore in 1928, and for many years past has served virtually the entire United States. Since the establishment of the Greyhound System travelers have been able to purchase tickets at any point served by the System, for transportation to any other point served. It- operates its own terminals. From 1928 to 1934, it rented terminal facilities in Baltimore but since 1934, it has operated its own terminals there.
Shortly after its formation in 1926, the Greyhound Corporation acquired, through stock ownership, the Safety Motor Coach Lines, Inc., a Michigan corporation operating passenger motor bus service between Chicago and Muskegon, Michigan. For two years prior thereto, that is, since 1924, all the buses operated by this Michigan Company which called itself the Greyhound Line, were painted blue and white, and they displayed the name “Greyhound” and the figure of a running greyhound dog. Thereafter, as the Greyhound Corporation acquired or organized and managed other subsidiary or affiliate companies, it required all of them to use the name “Greyhound” and the dog symbol on their buses, terminals, lunchrooms and related facilities, drivers’ uniforms, tickets, stationery, schedules, advertising, etc., in a uniform manner. All buses operated by the Greyhound System have always been substantially uniform as to type and also color, i. e., blue and white.
In May,. 1928, the Greyhound System initiated through servipe between Baltimore, Pittsburgh, Cleveland and other points west, via the Blue Ridge Transportation Company which previously had operated as an independent line between Baltimore and other points in Maryland and also some in Pennsylvania. As early as July, 1928, the Greyhound System advertised this service in the Baltimore press, and in October, 1928, the Greyhound Corporation, through a . wholly owned subsidiary, Greyhound Lines, Inc., an Indiana corporation, inaugurated its own direct service between Baltimore, Washington and Pittsburgh via Gettysburg. Thereafter, up to the present time, the Greyhound Corporation, through .the Greyhound Lines, Inc., and the latter’s successor, the Pennsylvania Greyhound Lines; Inc., that is, the other plaintiff in the present suit, has, without interruption, maintained this same service to and from Baltimore which, with the growth of traffic, has increased from two arrivals and departures a day in October, 1928, to 106 a day at the present time.
The first appearance of the name “Greyhound” and the running dog symbol on or in connection with any transportation in Baltimore other than that afforded by the Greyhound System, occurred in the year 1932 when one Ralph Adelman, who was then operating four taxicabs in the city, adopted this name and insignia as a result of having seen them on a Greyhound bus. Adelman used both name and figure until December 31, 1933, when he discontinued his taxicab business, upon refusal of the Public Service Commission of Maryland to renew his permit. On January IS, 1934, he gave to one William H. Rothman, one of the defendants in the present case, who, with the other defendants as partners-was organizing the Greyhound Cab, Inc., a written authorization “to use the name Greyhound in connection with the title of the corporation you are to form for the taxicab business.” No consideration was given Adelman for this permission. On January 16, 1934, the present defendants incorporated the Greyhound Cab Inc. under the Maryland law, and shortly thereafter began to operate twenty-three taxicabs in Baltimore under permits from the Public Service Commission, prominently displaying the name “Greyhound” and the running dog figure on the sides of these taxicabs. These three- individual defendants had previously been separately ' engaged in the taxicab business in Baltimore under the respective trade names of University Cab Co., Peerless Cabs, and Mt. Royal Cab Co., Inc.
Some time in the early part of the year 1940 officials of the plaintiff companies first learned of this use of the name “Greyhound” and the running dog symbol by the Greyhound Cab Inc. and through their counsel, requested that this practice be stopped. By this time the business of the *237 Greyhound Cab Inc. had materially increased and it was operating approximately seventy-five taxicabs in Baltimore.
In February, 1941, the present plaintiffs being unsuccessful in their endeavor to get the Greyhound Cab, Inc., voluntarily to stop using the name “Greyhound” and the running dog symbol, filed suit in this Court asking for an injunction against the Greyhound Cab, Inc. While this suit was pending, that is, on April 1, 1941, the cabs of the Greyhound Cab, Inc., were transferred to a partnership consisting of the three present defendants trading as Greyhound Cab Company. The Maryland Public Service Commission reissued permits to this partnership. Thereupon, the defendants placed their taxicabs under the so-called Diamond Cab Company system, which was an organization in Baltimore of various taxicab owners who operated their cabs jointly as one system but retained title to the individual cabs. The defendants’ cabs were repainted to conform to the Diamond colors and scheme of decoration. The figure of the running dog was eliminated from defendants’ cabs and a red diamond symbol, with the words “Diamond Cab,” appeared conspicuously on their rear doors, although on their front doors where, pursuant to requirement of the Maryland Public Service Commission, the owner’s name must be inscribed, the words “Greyhound Cab” did appear but in three-inch black lettering — much smaller than the “Diamond Cab” lettering.
Relying upon the aforegoing, the plaintiffs on January 29, 1942, entered a voluntary dismissal without prejudice of their suit in this Court against the Greyhound Cab, Inc. However, in the Fall of 1943, the defendants, without informing the plaintiffs, withdrew their taxicabs from the Diamond System and continued to operate them directly under their partnership name, Greyhound Cab Co. The cabs were repainted and redecorated to eliminate all reference to the Diamond System. The word “Greyhound” was placed on the sides of the cabs in even larger display lettering than the defendants had used on their cabs before entering the Diamond System, and the figure of the running greyhound dog, illuminated at night, was featured on the front part of the roof of each taxicab. All of this insignia the defendants have continued to use up to the present time.
In the Summer of 1947 officials of the plaintiffs learned for the first time that defendants had withdrawn from the Diamond System, although some of defendants’ cabs had been seen from time to time on the streets of Baltimore with this changed insignia by representatives of plaintiff companies. Plaintiffs thereupon, in the Summer of 1947, made a formal protest through counsel against defendants again using the name “Greyhound” and the running dog symbol. They contend that their reason for this protest being so delayed was primarily the War and the very heavy pressure of emergency service on which they had to concentrate all their attention and efforts. Being unsuccessful with this protest, the present suit was filed by plaintiffs on July 20, 1948.
Defendants, in denying the right of the plaintiffs to enjoin them from use of the name “Greyhound” and the running dog symbol, rely primarily upon the defense of abandonment, acquiescence, laches and estoppel in not making timely objection to such use by the defendants. Clearly, if defendants have any sound defense to the plaintiffs’ suit it must be upon one or more of these grounds, because there can be no doubt on the stipulated facts and the testimony that the plaintiffs were the first to use the name and symbol in question in Baltimore. Use by the plaintiffs began in the year 1928, whereas the defendants did not begin until 1934, and neither the name nor symbol was used by anyone else in Baltimore except the Greyhound System prior to 1932.
It is equally clear that the name “Greyhound” and the running dog are within the class of distinctive trade names and symbols to which a wide range of protection is accorded. The word “Greyhound” undoubtedly acquired a secondary significance. See Greyhound Corporation v. Goberna, 5 Cir.,
The principle has been long and firmly established by many decisions that the absence of competition between prior and later users of a distinctive trade name or symbol is no bar to injunctive relief. See, for example, Reid, Murdock & Co. v. H. P. Coffee Co., 8 Cir.,
It is true that the extent of exclusiveness to be accorded a trade name or trade mark varies with their character. If the name or mark is essentially arbitrary, original, or fanciful, it is more peculiarly significant or.suggestive of a particular product than when it is frequently used in many different kinds of business. Such words as “Kodak,” “Aunt Jemima,” “Nujol” are illustrative of the first type. See Aunt Jemima Mills Co. v. Rigney & Co., supra; Standard Oil Co. of New Mexico v. Standard Oil Co. of California, 10 Cir.,
This distinction was made by the Court of Appeals for this Circuit in Arrow Distilleries, Inc., v. Globe Brewing Co.,
“It must be conceded that in some of the cited cases the classification of goods has proceeded on very fine lines, and it should be understood that these instances are used to illustrate a principle rather than as examples to be slavishly followed in the future. Moreover, it -should be borne in mind that the distinctiveness of a mark is only one of the factors to- be taken into account in deciding a question of infringement. Nevertheless the rule that coined or fanciful marks or names should be given a much broader degree of protection than words in common use is sound, for it recognizes not only the orthodox basis of the law of trade-marks that the sale of the goods of one manufacturer or vendor as those of another should be prevented, but also the fact that in modern business the trade-mark performs the added function of an advertising device, whose value may be *239 injured or destroyed unless protected by the courts.”
There can be no- question that the word “Greyhound” and the running dog symbol are distinctive and fanciful — far more so than the word “Arrow” and there is a total lack of proof in the present case that they have ever been used as designations of any other trade or product. The only suggestion before the 'Court to this effect is that contained in the Court’s opinion in Greyhound Corporation v. Goberna, supra, where reference is made to testimony in that case that the word “Greyhound” is used in Miami, Florida, in connection with dog-racing, and as the name of several business establishments. So-, it is clear that Arrow Distilleries Inc., v. Globe Brewing Co., supra, and similar decisions are not controlling in the present case. It is well established that the prior user of a distinctive trade designation is not required to prove actual deception of the public with respect to a non-competing infringer, in order to obtain injunctive relief. It is sufficient if reasonable probability of confusion is proved. See Stork Restaurant v. Sahati, supra; Brooks Bros. v. Brooks Clothing of California, D.C.,
The -case against defendants is not altered by the fact that they never adopted, if or their ¡cabs, the blue and white coloring of -the Greyhound buses. Doubtles-s, deception or confusion in the public mind would have been greater 'had defendants done so-. But infringement need not embrace -complete simulation before the law can intervene.
We thus come to a consideration of the primary argument of the -defendants, which is that even if the plaintiffs be found to have acquired, through prior use o-f the Greyhound name and -symbol, the right to exclude the defendants from using them, they nevertheless have lost this right by -abandonment, laches, -acquiescence -and -estoppel.
In order to determine whether there is -any merit in this contention it is necessary to divide plaintiffs’ user into three separate periods: First, the period from 1932 — when the name “Greyhound” and the -running dog symbol were first used in Baltimore by other than -the Greyhound System, i.e., by Ralph Adelman who, two years later, purported to assign this name -and symbol to *240 William H. Rothman, one of the defendants —until 1940 when the plaintiffs for the first time learned that the defendants were using ¡both name and -symbol in their taxic-ab business in Baltimore; second, the period from 1940 to 1943 when defendants withdrew from the Diamond System; and third, the period from 1943 to 1947 when plaintiffs formally requested defendants to desist from using the Greyhound name and.symbol, asserting this was -an infringement of their -own exclusive -right t-o -same-.
As -to the first period, it is of -course true that trade name 'and trademark rights, like other rights that are based upon user, may be -lost by -abandonment, l-aches, •acquiescence or estoppel. But abandonment depends upon ¡intention, expressed or implied, as evidenced by words or conduct. Saxlehner v. Eisner & Mendelson Co.,
On the question of acquiescence and laches -during' the six years between 1934 and 1940, -the testimony -of' the president of each of the plain-tiff companies and -also -of the -general counsel for the whole Greyhound System is th-at none of them, nor any other officials charged with the duty of supervising -competitive matters of this kind, had their attention called to what the -defendants were -doing un-til the year 1940, although Baltimore employees -of the Greyhound System were cognizant -from time to time of the character of the name and insignia carried on defendants’ cabs during -this period. There is no testimony on behalf of defendants that contradicts this testimony of the Greyhound -officials. Accordingly, we find that by -the weight of the credible evidence, there was no acquiescence -on plaintiffs’ part in what defendants were doing between 1934 and 1940, and also th-at pl-ain-tiffs’ l-aches were not of -a kind to create an estoppel.
We turn to the second period, namely, that from 1940 until 1943 when defendants, without notifying the plaintiffs, withdrew from the Diamond System and commenced again, to use the Greyhound name and symbol in the same -conspicuous manner that had led the plaintiffs in 1940, to file suit, which was dismissed two years later ¡because of the fact that defendant-s had become members of the Diamond System in 1941, had abandoned permanently, as plaintiffs thought, the use o.f the running dog -symbol and also, at -least as far as indication to the public was concerned, the use of the name “Greyhound” on -their cabs,, since they had -reduced the lettering to a small and very inconspicuous size on the -cab -doors so that it was -completely dominated 'by the Diamond insignia. During this second period there likewise is no proof of abandonment -or acquiescence on the part of the plaintiffs, or of -any la-che-s that would give rise to an estoppel. Plaintiffs very materially increased the extent -of their advertising in Baltimore during-this period, and expended a half-million dollars on -a new — their present — terminal in Baltimore. As for the defendants, the increase in their advertising was not at all -comparable -to that of the -plaintiffs’.
Lastly, we turn to ¡the third period, from 1943 to 1947 when plaintiffs protested through their Baltimore counsel again-st defendants’ use -of the name “Greyhound” and the running dog insignia, but were unsuccessful and -on July 20, 1948, the present suit was filed.
During this -period -of four years the testimony indicates that certain -of the plaintiffs’ -responsible officials did become aware of the fact that defendants had reverted to using the “Greyhound” name and insignia, a-s they 'had done before they joined the Diamond System in 1941, but made no protest until 1947, that is, -after a lapse of about four years. Plaintiffs give the War *241 as the reason for this delay, i.e., they assert, supported by testimony of their presidents, that their operations were so much a part of the War emergency requirements that -they overlooked for the time 'being the infringements committed iby the defendants.
We believe this is a meritorious answer to defendants’ contention. It is conceded that at no time during this four year period did plaintiffs do anything indicative of abandonment of the name “Greyhound” or the running dog insignia, or of acquiescence in their use. On the contrary, their advertising in and near Baltimore was materially increased, just as it was all ¡over their nation-wide system, and they continued to use their ¡insignia just as they had been doing since 1928.
As to laches and acquiescence we believe that defendants’ conduct was tantamount to fraud when, without notice to plaintiffs, they withdrew from the Diamond System and reverted to the same use of ¡plaintiffs’ trade name and insignia that they had ■followed prior to dismissal ¡of the suit in 1942. While it is true there was, unfortunately, no formal agreement defining precisely what defendants were permitted to do after dismissal of the suit, it is obvious that the -real consideration ¡for the dismissal was defendants’ entrance into the Diamond System and the ¡consequent alteration of the name and insignia on their ■cabs so as to be no longer objectionable.
Laches in the sense of mere delay are not in and of themselves necessarily a ground ¡for denying injunctive ¡relief- — although they may be ground for ¡denying ¡an accounting for profits, which plaintiffs are not seeking in the present suit. McLean v. Fleming,
Under ¡all the circumstances, w<e ¡feel -the most that could possibly be said -for defendants’ ¡position is that by 1942, when the original suit against them in this ¡Court was dismissed, they had acquired the ¡right to use the word “Greyhound” only — ■ not the ¡running dog symbol — in small letters as part of their firm name, Greyhound Cab Co., on the doors of their ¡cabs, as in the nature of a 'sub-title, -an explanation of their status ¡in the Diamond System ; and similarly, that they had acquired the same right with respect to their letterheads, checks, etc. However, they clearly lost this right through their failure to confine their use of the name “Greyhound” to this very limited extent after plaintiffs dismissed the suit in 1942 on the understanding-clcarly implied-that ¡such limitation would be permanently adhered to, otherwise plaintiffs would have the right to reopen the whole matter, and ¡contest defendants’ right to use the word “Greyhound” in any manner.
Thus, delay ¡in ¡protesting, or acquiescence implied by silence, in order to constitute ground for denial of ¡relief by injunction, must ¡be ¡accompanied by ¡circumstances non-existent here. These defendants did not begin their use of plaintiffs’ name and insignia ¡innocently, or in ignorance of plaintiffs’ long user. On the contrary, when defendants began using the name “Greyhound” and the running ¡dog symbol, they were fully aware of the ¡fact that plaintiffs had been using them for a number of years. Defendants did not begin their user in a remote territory, or in a business unrelated to that ¡of plaintiffs. On the ¡contrary, defendants, while not competing with plaintiffs, were nevertheless in the same general field of business, i.e., transportation, and supplied part of ¡a well recognized and, in fact, indispensable adjunct to plaintiffs’ business, i.e., service to and from ¡the ¡plaintiffs’ bus terminals in Baltimore. During the periods that plaintiffs *242 did not protest against what defendants were doing, the growth of the latter’s business was in no -sense -comparable to the growth of plaintiffs’ business. In 1947 the Greyhound System -s-pent $26,000 for advertising in the Baltimore area -alone, and since 1934, through most of 1948, it ha-s spent over $200,000 for the same purpose; whereas for the same period the defendants have -spent approximately only $18,000. Today, Greyhound’s total capital investment in Baltimore is about $2,500,000, while the defendants’ is about $125,000. In the face of these circumstances, coupled with the distinctive, unusual character of plaintiffs’ name and symbol, it is -clea-r that defendants’ -conduct constituted a deliberate, unfair trade practice which plaintiffs are entitled to have enjoined in spite o-f, their ■tardiness in seeking such relief.
Where infringement is deliberate and fraudulent, the elements essential to estoppel are lacking, and the protection of a plaintiff’s rights by injunction should not be denied. Thus, the Supreme Court in Saxlehner v. Eisner & Mendelson Co., supra, while holding that inexcusable delay had been established in connection with rights in the word “Huny-adi” which the defendants and other infringers had been using in -good faith for -twenty years while the plaintiff took no action, nevertheless granted an injunction against the copying o-f plaintiff’s foot-tie and label with respect to which the infringers -had not acted in good faith. >
The' -following statements in Chief Justice Fuller’s opinion in Menendez v. Holt, supra,
“So far as the act complained -of is completed, acquiescence may defeat the remedy on the principle applicable when action is taken on the strength of encouragement to do -it, but so far as -the -act is in progress and -lies in the future, the Tight to the intervention of equity c.r not generally lost by previous delay, in respect to which 'the elements of an estoppel could rarely arise. * $ *»
Obviously no standard or -rule can be -stated in terms of years that will -apply to every ease. The -particular facts as disclosed in each case must control. It is, therefore, scarcely necessary to cite more than -a few cases in this -branch of the law where decisions are legion. Suffice it to point out that in the following -cases the delay -complained o-f varied from one and a -hal-f -to twelve years, and yet .the circumstances were held to justify the granting of permanent injunctive relief: Dr. Peter H. Fahrney & Sons Co. v. Ruminer, 7 Cir.,
For the reasons herein given a decree will be signed permanently enjoining the defendants ¡from using either the word “Greyhound” or the picture or symbol of a greyhound dog upon t'heir taxicabs in or about the City of Baltimore, or in connection with any phase of the operation of such taxicab business; with the proviso, however, that such decree shall not become effective until sixty days after its date in order that the defendants may have a reasonable time within which to take such ■steps as may he necessary to comply with the decree.