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04/25/94 ROSARIO D. SALERNO'S SONS v. ROSEMARY

April 25, 1994

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.



Appeal from the Circuit Court of Cook County. Honorable JOHN H. HOURIHANE, Judge Presiding.

Rehearing Denied June 21, 1994. As Modified on Denial of Rehearing June 27, 1994.

Buckley, O'connor, Jr., Manning

The opinion of the court was delivered by: Buckley

MODIFIED ON DENIAL OF REHEARING

JUSTICE BUCKLEY delivered the opinion of the court:

Plaintiff, Salerno's Sons, filed a complaint for preliminary injunction against defendant, Rosemary Salerno, to prevent her from advertising her funeral business under the name "Rosemary Salerno." The trial Judge granted Salerno's Sons requested relief, but permitted defendant to advertise her business under the name "Butta-Salerno" in conjunction with a disclaimer of any association with Salerno's 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's injunction is overbroad because it violates the rule that injunctions in "personal name" trademark cases should be drawn as narrowly as possible.

This case presents a family dispute over the use of the family name, Salerno, to advertise and promote funeral-related businesses. Salerno's Sons has provided funerals and related services in and around the Chicago area since' 1902. Salerno's Sons does business under the registered service marks "ROSARIO D. SALERNO FUNERAL HONE," "SALERNO FUNERAL HONE," AND "SALERNO'S GALEWOOD CHAPEL." The name "SALERNO" has been used prominently in Salerno's Sons business, advertising, letterhead, and mailings. Defendant concedes that the name "SALERNO" alone andas part of the registered service marks has acquired substantial secondary meaning, goodwill, and distinctiveness in the funeral business.

Defendant began to work with her father, uncles, and cousins at Salerno's Sons in 1958. She became a licensed funeral director in 1961 and worked full time in that capacity until 1972. In 1964, defendant's father died and her uncles obtained her father's ownership interest in Salerno's 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." Defendant was divorced in 1972, but did not legally change her name from "Butta" at that time. It was not until May 1992, that defendant legally changed her name from "Rosemary Salerno Butta" to "Rosemary Butta Salerno."

According to her affidavit attached to her responsive pleadings, however, defendant maintains that upon her divorce in 1972 she ceased using her husband's name in social situations. She also asserts that she never used the name "Butta" professionally in the funeral service business. In support of this assertion she points to the following facts: (1) her Illinois funeral director's license has always been registered under her full given name "Rosemary Theresa Salerno;" (2) she was prominently identified as Rosemary Salerno on promotional calendars distributed each year during the 1960's by Salerno's 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's 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.

It is uncontested that in 1972, the year of her divorce, defendant ceased working as a full time funeral director at Salerno's 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" at Salerno's Sons between 1972 and 1986. Salerno's 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.

In 1986, defendant returned to Salerno's Sons as a full time funeral director. In 1990, the sons of Joseph Salerno, the president of Salerno's Sons, joined the business. According to defendant, JosephSalerno 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's Sons in September 1992, and start her own business as a funeral director. Salerno's Sons, on the other hand, asserts that she "became dissatisfied with her financial compensation and voluntarily resigned."

Upon leaving Salerno's 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." Before the trial court issued the preliminary injunction, defendant had included in her advertisements the disclaimer that she was "formerly of Salerno Galewood Chapel." 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" inquiring about wakes being conducted at Salerno's Galewood Chapel. She asserts, however, that in those instances she did not deceive the callers and gave them the correct number.

On March 2, 1993, Salerno's Sons filed a four-count complaint against defendant and, on March 4, 1993, moved for a preliminary injunction. Salerno's Sons contends that defendant's use of the name "Rosemary Salerno" to promote her funeral business is impermissibly confusing with Salerno's Sons' 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.

Without conducting a full evidentiary hearing and based solely on the pleadings and affidavits, the Judge made the following findings: (1) that Salerno's Sons' service marks were valid and thus entitled to protection; (2) that the use of these marks by Salerno's Sons and defendant in connection with funeral related services are virtually identical; (3) that there is a likelihood of confusion as demonstrated by several instances of actual confusion; (4) that defendant utilized her married name of Butta while employed at Salerno's Sons and only recently adopted the family name when she left Salerno's Sons and began to advertise for her own business. Based upon these findings the Judge concluded that Salerno's Sons satisfied the elements necessary to establish its right to a preliminary injunction. Therefore, he preliminarily enjoined defendant from using thesurname 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;" (2) she must accompany any formal ...


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