STATE OF FLORIDA

DIVISION OF ADMINISTRATIVE HEARINGS

GIFT CHEQUES, INC., )

)

Petitioner, )

)

vs. ) CASE NO. 83-3293

) GIFT CHECK & DEPARTMENT OF STATE ) DIVISION OF CORPORATIONS, )

)

Respondent. )

)

RECOMMENDED ORDER

Pursuant to notice, the Division of Administrative Hearings, by its duly designated Hearing Officer, Sharyn L. Smith, held a formal hearing in this case on December 30, 1983, in Tallahassee, Florida. The following appearance was entered: 1/

APPEARANCES

For Petitioner: J. Frank Diamond

2770 East Atlantic Boulevard Pompano Beach, Florida 33062

The issue for determination at the final hearing was whether the corporate name "Gift Cheques, Inc." and the service mark "Gift Check" are deceptively or falsely similar.

Petitioner's Exhibits 1 and 2 were offered and admitted into evidence at the final hearing. Additionally, in order to determine the issues, Hearing Officer Exhibits 1-8 are hereby admitted.

FINDINGS OF FACT

1. On February 26, 1982, the Respondent Division of Corporations, issued Charter No. F68782 permitting the use of the corporate name "Gift Cheques, Inc." to the Petitioner in accordance with Chapter 607, Florida Statutes.

   
   

2. On September 20, 1982, the Respondent Division of Corporations, issued Charter No. 927750 permitting the use of the service mark "Gift Check" to the Respondent. The mark was first used in Florida by the Respondent on February 10, 1983.

   
   

3. On June 28, 1983, the Respondent Department of State informed the Petitioner that a conflict of names did not exist since "Gift Check" is a registered service mark used in connection with direct mail advertising.

   
   

4. Petitioner Gift Cheques, Inc. is located in the South Florida area and is involved in advertising and fund raising.

5. Respondent Gift Check is involved in the marketing of time share condominiums in Florida through advertising.

   
   

   CONCLUSIONS OF LAW

   
   

6. The Division of Administrative Hearings has jurisdic- tion over the parties and subject matter of this proceeding. Section LA Florida Statutes.

   
   

7. The Petitioner Gift Cheques, Inc. has asserted that the Respondent Gift Check should not have been registered by the Secretary of State since the Petitioner's corporate name and the Respondent's mark are deceptively similar.

   
   

8. Any mark may be registered by the Secretary of State unless it, inter alia, consists of, comprises or includes matters which may disparage or falsely suggest a connection with persons, living or dead, corporations, firms, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute, or consists of or comprises a mark which so resembles a mark registered in this state or a mark or trade name previously used in this state by another and not abandoned, as to be likely, when applied to the goods or services of the applicant, to cause confusion or mistake or to deceive. See Section 495.021(1) (b) and (f), Florida Statutes.

   
   

9. In the instant case, the mark registered to the Respondent was issued on September 20, 1982 and was first used in Florida on February 10, 1983. It is noteworthy that the issue in this case involves two differing principals, the Petitioner's corporate name and the Respondent registered mark. The Respondent appropriated the mark Gift Check prior to the Petitioner's incorporation, and as such has acquired colorable priority to the use of such name.

   
   

10. Under these circumstances, the Petitioner has failed to carry its burden of proving that the registration of the mark Gift Check was in violation of Section 495.021, Florida Statutes. See Consolidated Electrical Distributors Southeast, Inc., 355 So.2d 853 (Fla. 3 DCA 1978); Weiner v. Weisberg, 342 So.2d (Fla. 3 DCA 1977) and 74 Am Jur.2d, 315 Trademarks and Tradenames.

RECOMMENDATION

Based on the foregoing findings of fact and conclusions of law, it is RECOMMENDED:

That a Final Order be entered by the Secretary of State finding that the Respondent Gift Check was properly registered as a service mark under Chapter 495, Florida Statutes.

DONE and ORDERED this 13th day of March, 1984, in Tallahassee, Florida.

SHARYN L. SMITH

Hearing Officer

Division of Administrative Hearings The Oakland Building

2009 Apalachee Parkway

Tallahassee, Florida 32301

(904) 488-9675

Filed with the Clerk of the Division of Administrative Hearings this 13th day of March, 1984.

ENDNOTE

1/ The Respondent Department of State, Division of Corporations, notified the Division of Administrative Hearings on December 19, 1983, that it did not intend to appear at the final hearing in this cause. The Department requested that its response to the Petition for Hearing be included as part of the record in this case. The Respondent Department's response is admitted as Respondent Department's Exhibit I.

COPIES FURNISHED:

J. Frank Diamond

2770 East Atlantic Boulevard Pompano Beach, Florida 33062

Richard G. Heywood, Esquire ROBBINS & HEYWOOD

314 North Broadway

St. Louis, Missouri 63102

Carole J. Barice, Esquire General Counsel Department of State

The Capitol

Tallahassee, Florida 32301

George Firestone Secretary of State The Capitol

Tallahassee, Florida 32301

Docket for Case No: 83-003293

Orders for Case No: 83-003293