A recent decision out of the United States District Court for the Eastern District of Pennsylvania highlighted an issue that is often confusing to clients, and possibly non-IP attorneys – the difference between a trade name and trademark.  It is generally understood that a trade name represents the name a company uses for business purposes and a trademark is the distinctive identifier of the source of particular goods or services.  However, can the identification of one versus the other affect a trademark infringement matter?  The short answer is yes.

This case involved the, Plaintiff, the owner of a registered trademark for EVERLINA LAURICE and common law trademark LAURICE in connection with fragrances generally, suing Defendants over its use of “Laurice & Co.” (Saks Fifth Avenue was a named defendant having sold the product).  The Court considered the likelihood of confusion factors in granting Defendant’s Motion for Summary Judgment.  In doing so, it included, in a footnote, that there is indeed a distinction between a trade name and a trademark which shall be considered as part of the overall likelihood of confusion analysis in a trademark infringement matter:

“Defendants assert that they are entitled to summary judgment pursuant to Rule 56 because the undisputed factual record shows that “Laurice & Co.” has only been utilized as a trade or business name, not a trademark, and thus negates the likelihood of confusion element required in Plaintiff’s various trademark infringement and unfair competition claims. See Defs.’ Mem. in Support of Mot. Summ. J., 6–8, ECF No. 83–1. The court agrees that the use of “Laurice & Co.” as a trade name rather than a trademark is a relevant consideration when evaluating likelihood of confusion, but rejects the suggestion that such a distinction is dispositive. While the use of Laurice & Co. in the context of a trade name may suggest that consumer confusion between the parties’ products is less likely, the inquiry does not end there.”

Ultimately, this Court questioned the strength of the Plaintiff’s marks since they corresponded to the personal names of the Plaintiff.  Combined with the fact that Defendant’s name was Laurice and questionable signs of actual confusion since Defendant’s use began over a decade earlier, the Court held that there was no cause of action here.  As such, Defendants prevailed and its use of the Laurice & Co., including as part of a domain name, was not actionable.

Harp v. Rahme, CIV.A. 12-02401, 2013 WL 6169561 (E.D. Pa. Nov. 25, 2013).

 

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