EGAN EQUIPMENT INC v. POLYMAG TEK INC (2001)

Plaintiffs commenced this action alleging causes of action for trade name infringement and unfair competition based on defendants' use of the name “Polymag”.   Supreme Court erred upon renewal in granting defendants' motion for summary judgment dismissing the fourth cause of action, the only remaining cause of action in the complaint, and for summary judgment on the fifth counterclaim, declaring that plaintiffs' use of the name “Polymag” would constitute trade name infringement and permanently enjoining and restraining plaintiffs from using that name.   Even assuming, arguendo, that defendants met their initial burden, we conclude that plaintiffs raised an issue of fact whether the Estate of Robert Donadio (Estate) abandoned the trade name (see generally, Zuckerman v. City of New York, 49 N.Y.2d 557, 562, 427 N.Y.S.2d 595, 404 N.E.2d 718).   In opposition to the motion, plaintiffs submitted evidence that Eileen Donadio, the executrix of the Estate, had attempted to sell the trade name to defendants for $20,000, which is evidence that the Estate had not abandoned the trade name (see, Defiance Button Mach. Co. v. C & C Metal Prods. Corp., 759 F.2d 1053, 1059-1060, cert. denied 474 U.S. 844, 106 S.Ct. 131, 88 L.Ed.2d 108).   Consequently, we modify the order by denying defendants' motion in its entirety, reinstating the fourth cause of action and vacating the fourth and fifth ordering paragraphs.   In light of our determination, we do not address plaintiffs' remaining contentions.

Order unanimously modified on the law and as modified affirmed without costs.

MEMORANDUM: