STATE OF FLORIDA

DIVISION OF ADMINISTRATIVE HEARINGS

STEPPIN' OUT SUNCOAST )

EDITION, INC., )

)

Petitioner, )

)

vs. ) CASE NO. 81-1676

)

STEPPIN' OUT, INC. and )

DEPARTMENT OF STATE, )

DIVISION OF CORPORATIONS, )

)

Respondents. )

)

RECOMMENDED ORDER

This case was heard pursuant to notice on August 25, 1981, in St.

Petersburg, Florida, by Stephen F. Dean, assigned Hearing Officer of the Division of Administrative Hearings. This case arose upon the denial of Petitioner's application for use of the service mark, "Steppin' Out," by the Department of State.

By Stipulation dated August 20, 1981, the Department gave notice of its intention not to appear at the formal hearing. A copy of this stipulation was sent to Ivan S. Benjamin, Esquire, as agent for Steppin' Out, Inc. Steppin' Out, Inc. and the Department did not attend the hearing.

ISSUE

At the formal hearing, Petitioner filed its Motion to Clarify Case Issues and to Amend Identity of Petitioner. This motion was granted, and the petitioner was permitted to amend the style of the case to: Steppin' Out Suncoast Edition, Inc., Petitioner. Further, the issues stated in the Motion to Clarify are:

1. Whether Steppin' Out Suncoast Edition, Inc. is entitled to the sole right and use of the service mark, "Steppin' Out," under common law and for registration as a service mark with the Department of State under Section 495.021(1)(3)3, Florida Statutes; and

   
   

2. Whether a conflict of name exists between the issuance of corporate charters by the Division of Corporations, Department of State, to Respondent Steppin' Out, Inc. on February 9, 1981, and to Petitioner Steppin' Out Suncoast Edition, Inc. on October 1, 1979.

The Petitioner, Steppin' Out Suncoast Edition, Inc., presented the only evidence received at the proceeding. In summary, this evidence showed that from 1977 until 1979, Raymond Martino did business and published a weekly entertainment guide advertising restaurants and similar businesses in St.

Petersburg and Tampa, Florida, and later in Orlando and Fort Lauderdale. On October 1, 1979, Martino chartered as a Florida corporation, Steppin' Out

Suncoast Edition, Inc. This corporation continued publication of said weekly magazine. Publication of this magazine has been continuous from 1977 to the present with the use of the name "Steppin' Out" and the same logo on its magazine. On January 29, 1981, Petitioner filed its application for the reservation of the service mark of "Steppin' Out." On February 9, 1981, Steppin' Out, Inc. was granted a corporate charter by the Department of State. The application of Petitioner for the service mark "Steppin' Out" was denied by the Department by letter dated February 12, 1981. The Petitioner and the Department stipulated that the grounds for denial were Section 495.021(1), Florida Statutes, and Rule 10-1.05(8), Florida Administrative Code.

The issue as defined by the facts is whether there is a conflict between the service mark, "Steppin' Out," and the corporate name, Steppin' Out, Inc., when Steppin' Out Suncoast Edition, Inc. was incorporated before Steppin' Out, Inc.; and when Steppin' Out Suncoast Edition, Inc. applied for registration of "Steppin' Out" as a service mark before Steppin' Out, Inc. was incorporated.

FINDINGS OF FACT

1. In 1977, Raymond Martino began and solely owned a business publishing an entertainment and restaurant magazine on a biweekly and, shortly thereafter, weekly basis entitled Steppin' Out. Various exhibits, Exhibits I through XXI, were introduced showing that Martino engaged in the business of publishing this magazine for profit from 1977 until October 1, 1979.

   
   

2. On October 2, 1979, Martino was granted a corporate charter for Steppin' Out Suncoast Edition, Inc., which has continued the publication of this magazine.

   
   

3. Exhibits I through XXI show that from 1977 to the present the magazine has been entitled Steppin' Out, and the same distinctive logo has been used on the magazine, its letterhead and similar printed material.

   
   

4. On January 29, 1981, Petitioner applied for the service mark and distinctive logo, "Steppin' Out," which has been used by Petitioner and Martino since 1977.

   
   

5. On February 9, 1981, Steppin' Out, Inc. was granted a corporate charter by the Department of State.

   
   

6. On February 12, 1981, the Department denied the Petitioner's application for the service mark, "Steppin' Out," because of a conflict with the corporate name of Steppin' Out, Inc.

   
   

7. Independent inquiry by Martino confirmed that Steppin' Out, Inc. was engaging in the publishing and advertising business similar to that of Steppin' Out Suncoast Edition, Inc.

   
   

   CONCLUSIONS OF LAW

   
   

8. The Notice of Hearing in this cause was sent to the agent for Steppin' Out, Inc. and the Department of State. The issue as stated in the Notice of Hearing is: Whether there is a conflict between Steppin' Out, Inc. and granting of a service mark by the name "Steppin' Out."

9. A Prehearing Order was entered with the Notice of Hearing which directed, among other things, that the parties identify the legal and factual issues and determine which are disputed. The Department and Steppin' Out Suncoast Edition, Inc. entered into a stipulation stating that the Department denied the Petitioner's application under Section 495.021(1), Florida Statutes, and Rule 10-1.05(8), Florida Administrative Code; and stating that the Department did not intend to appear at the hearing. A copy of this stipulation was provided to Ivan S. Benjamin, Esquire, agent for Steppin' Out, Inc. The Petitioner responded to the Prehearing Order by letter with copies to the other parties stating the issues later set forth in its Motion to Clarify. These issues are:

   
   

   1. Whether Steppin' Out Suncoast Edition, Inc. is entitled to sole right and use of the service mark, "Stepping Out," under common law and for registration as a service mark with the Department of State under Section 495.021(1)(3), Florida Statutes; and

      
      

   2. Whether a conflict of name exists between issuance of corporate charters by the Department of State, Division of Corporations, to Respondent Steppin' Out, Inc. on February 9, 1981, and to Petitioner Steppin' Out Suncoast Edition, Inc. on October 1, 1979.

      
      

10. With regard to the issues and the relief sought, Chapter 495, Florida Statutes, makes it clear that only a court of competent jurisdiction may adjudicate the rights of individuals to ownership and use of trade and service marks. See Section 495.101(4), Florida Statutes. However, the Department may adjudicate matters related to corporate names on the basis of an administrative hearing. See Section 607.027, Florida Statutes. The record of this case does not reflect that Steppin' Out, Inc. has registered "Steppin' Out" as a service mark. The Department has jurisdiction to adjudicate the issue as framed by the Hearing Officer based upon the facts:

    
    

    Whether there is a conflict between the service mark, "Steppin' Out,"

    and the corporate name, Steppin' Out, Inc., when Steppin' Out Suncoast Edition, Inc. was incorporated before Steppin' Out, Inc.; and when Steppin' Out Suncoast Edition, Inc. applied for registration of "Steppin' Out"

    as a service mark before Steppin' Out, Inc. was incorporated.

    
    

11. The stipulation between Steppin' Out Suncoast Edition, Inc. and the Department of State indicates the application of Petitioner for the service mark was denied because of the similarity between the service mark for which Petitioner applied and the corporate name of Steppin' Out, Inc. Section 495.021(1)(b), Florida Statutes, would preclude registration of a service mark which might be confused with an existing corporate name. However, Steppin' Out Suncoast Edition, Inc. was incorporated more than a year before Steppin' Out, Inc. and made application for registration of the service mark, "Steppin' Out, "prior to the date of incorporation of Steppin' Out, Inc.

    
    

12. Both Steppin' Out Suncoast Edition, Inc. and Steppin' Out, Inc. are engaged in the publishing business related to entertainment advertising. The names are so similar as to cause confusion to the public. Section 607.024, Florida Statutes, prohibits confusingly similar corporate names. Under this

    provision, Steppin' Out, Inc. should not have been permitted to incorporate under that name after Steppin' Out Suncoast Edition, Inc. had been incorporated for more than a year.

    
    

13. The scope of this hearing is limited to the registration of the service mark, "Steppin' Out," and it is not necessary to consider any action against the corporate name of Steppin' Out, Inc. Similarly, this forum lacks authority to adjudicate matters related to common law ownership of or rights to service marks. The Petitioner may seek appropriate judicial remedies with regard to these collateral matters. It is sufficient to find as a matter of fact that Steppin' Out Suncoast Edition, Inc. was incorporated first and applied for registration of the subject service mark prior to the incorporation of Steppin' Out, Inc. in order to determine that it is Steppin' Out, Inc. which conflicts with "Steppin' Out." The fact that Steppin' Out, Inc. was permitted a corporate charter under that name should not prevent Steppin' Out Suncoast Edition, Inc. from registering "Steppin' Out" and its logo as its service mark. Steppin' Out Suncoast Edition, Inc. is entitled to registration of "Steppin' Out" and its distinctive logo as its service mark based upon the record in this case.

RECOMMENDATION

Based on the foregoing Findings of Fact and Conclusions of Law, the Hearing Officer recommends that Steppin' Out Suncoast Edition, Inc. be permitted to register "Steppin' Out" and its distinctive logo as its service mark.

DONE and ORDERED this 17th day of September, 1981, in Tallahassee, Leon County, Florida.

STEPHEN F. DEAN

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 17th day of September, 1981.

COPIES FURNISHED:

L. C. Schowe, Esquire Post Office Box 360

St. Petersburg, Florida 33731

Stephen Nall, Esquire

Office of the General Counsel Department of State

The Capitol

Tallahassee, Florida 32301

Ivan S. Benjamin, Esquire 10661 North Kendall Drive, Suite 218

Miami, Florida 33176

George Firestone, Secretary Department of State

The Capitol

Tallahassee, Florida 32301

Docket for Case No: 81-001676

Orders for Case No: 81-001676