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By Lisa Okasinski, Esq.
Demorest Law Firm, PLLC
Royal Oak, Michigan

Most people understand that they cannot open a hotel called “Holiday Inn” nor could they make their own computer and market it with the logo of an apple.  This is because of trademark law.

Trademark law has been around Michigan since the nineteenth century, initially to prevent unfair competition.  As society and innovation progressed, so did trademark law, and trademark law was eventually codified in statutes to protect both businesses and consumers.  Trademark law protects businesses by preventing others from using the trademark of another to reap monetary rewards, and protects consumers from deceptive business practices.

Protecting words and symbols that had no great significance before they were branded with a product or service makes sense, as is the case with “Holiday Inn” and the apple logo.  But what happens if a person wants to open a business using his/her surname, but someone else has already used that surname?  Would it be fair to prevent someone from opening a business using his/her surname in that situation?

Although the courts generally do not give legal protections to surnames because multiple individuals can possess the same surname, the Michigan Court of Appeals in Janet Travis, Inc. v. Preka Holdings, L.L.C. (dba Travis Grill), found that a surname could be protected under trademark law if it had a “secondary meaning.”  A “secondary meaning” exists when a consuming public comes to associate a mark with the product of some particular person or factory or business (i.e. McDonald’s).

The plaintiff in Travis was a restaurant owner who had used the surname, “Travis,” as a mark in connection with the food-service industry since the 1940’s.  The Plaintiff brought a trademark infringement claim against the Defendant after the Defendant opened a restaurant using the “Travis” name.

In order to succeed on a trademark infringement case, the Plaintiff had to prove:

1)   a valid mark;
2)   priority in the mark;
3)   the infringing mark was likely to confuse consumers as to the source of Defendant’s products/services; and
4)   Defendant used the mark.

With regards to whether or not the “Travis” mark was a valid mark, the Court noted that this requirement was met because the Plaintiff had registered the mark in 1996.  However, the Court noted that the validity of the mark could be voided if the Defendant was able to establish that the mark did not have a “secondary meaning.”  Since the Defendant in Travis failed to establish that the “Travis” name did not have a “secondary meaning,” the validity of the mark was unquestioned.  In addition, because Plaintiff established the other 3 elements, the Court affirmed the lower court’s grant of an injunction that prevented the Defendant from using the “Travis” name.

As a tool to determine if a particular name is available to use, the Michigan Department of Licensing and Regulatory Affairs (“LARA”) has provided a Name Availability search available at the link below:

http://michigan.gov/lara/0,4601,7-154-35299_61343_35413-267825--,00.html

However, LARA warns that this search is only an aid for finding an available name and that “final determination of whether a name is available for use is made during the review process when a document is submitted for filing.”

For more information about the Demorest Law Firm, PLLC, please visit the International Society of Primerus Law Firms.