Not So Common Law

by Anthony J. Spotora, Esq.

So you’re surfing around the internet one day and you decide to type in the name of your business, followed by “.com”, to see what comes up. To your surprise and horror, there is another company in the same line of business as you located only a few zip codes away! NOW, you’re anxiously clicking, clicking, clicking around the internet to determine if the other business has already registered a trademark on the name or if you can register for it first???

You perform a Boolean search on the United States Patent & Trademark Office (“USPTO”) web site and it appears that they have NOT registered a trademark on it! Phew! Without delay, you call your I.P. attorney and ask him to quickly file an application for principal registry on your company name. Once you’ve secured the rights to your tradename, you will then be able to formally demand that the other business cease and desist from using your name further. You will be able to do this because federally registered trademarks have rights that trump trademarks governed only by common law. . . right? Sometimes.

First, it is important to recognize that both registered and non-registered trademarks are eligible for protection under the Lanham Act. As you’ve probably gathered, the Lanham Act defines the statutory and common law boundaries to trademarks and service marks.1 As such, while rights can and do differ between registered versus non-registered marks, what is all-important is the date of first use of a mark in commerce, irrespective of its registration, or lack thereof.

So let’s look to the common law. What is “common law”? In this context, the term “common law” indicates that trademark rights have developed as a result of the use of a trademark in commerce. (cont. from e-newsletter) Unlike a federally registered trademark, a common law mark is not governed by statute, but rather, by the state your mark is used in via a judicially created scheme of rights.2 Subsequently, these rights are available to you without the need for registration of any kind.

However, and significant, common law trademark rights are limited to the geographic area in which the mark is used.3 A federally registered trademark, on the other hand, can provide rights on a national scope. Keep in mind, I said “can” and not “will.” If a trademark is registered with the USPTO after another person or business has acquired common law rights to the same or similar mark in a certain geographic location or locations, then the owner of the federal registration would have rights to the use of that mark in all territories but for the ones where the common law rights holder uses the mark. For example, if an energy drink without federal registration was being sold under the name, “NRG”, but only in California, then the rights to that name would exist only in California. If another company began to advertise another sports drink under that same, yet federally registered name in Florida, there would be no trademark infringement. However, if the Florida company decided to distribute its product on a nationwide basis, it could do so in 48 other states without issue. If and when it entered into California however, it could face a claim of trademark infringement without a proper licensing agreement or other arrangement with the California trademark owner.

So, how do you know if someone has common law rights to a trademark or service mark similar or the same as a mark you wish to file? Well, as you can imagine, without registration of any kind being necessary, it can be very difficult to determine if a mark is already being used. Consequently, when you’re calling your I.P. attorney to ask that he secure rights to a particular mark, you should first request that a comprehensive trademark search be performed. The results of such will provide you information on the same and similar marks in a number of categories including, (1) federal registries; (2) state registries; (3) common law data bases and; (4) domain names. Not only will a thorough review of the findings allot you a significantly enhanced idea as to whether you will infringe upon another’s rights, but it can potentially save you a great deal of time and money (i.e., circumvent potential infringement actions; avoid the high costs associated to redoing marketing and advertising campaigns; etc.).

An ounce of prevention is worth a pound of cure!

1See http://legal.web.aol.com/resources/legislation/tradeact.html
2See http://www.bitlaw.com/trademark/common.html
3See id.

What if someone told you that you could not use your name? What if that “someone” was in fact a court of law and their “telling” you actually amounted to enjoining you from using your name? Do you even think that’s possible? Is it possible to be precluded from using your very own name? Yes!

Take this example: Event planner, John Starz, partnered up with his longtime friend, Jane Doe, in a business they named, “John Starz Productions”. After nearly 10 years in business and the growth of a widely accredited reputation in their local of Hollywood, California, the two were no longer able to see eye-to-eye and so John left the partnership. Jane, however, continued to operate “John Starz Productions”. Within a few months, she learned that John had opened, “John Starz Presents”. Consequently, Jane sued to enjoin John from using his name. Who wins the use of John’s name? It is John’s surname after all. Does this matter?

First, a person generally has the right to use his name in a business, even when it is the same name used by a competitor.1 However, when the business that is incorporating the name of a person has acquired a secondary meaning, “the subsequent use of that name by another person which is calculated to deceive and confuse the public, although it is the name of the latter, will be enjoined under the law which prohibits unfair competition.”2 SAY WHAT?

→ A person will not be allowed to use his/her own name in a business if that name is already identified by the public as relating to another business.

“Secondary meanings” are created when there is a long association between a name and a business and the primary meaning of the name which identifies a person subsequently submerges in favor of its meaning as a word that now identifies a business.3

An injunction issues not because of the use of that person’s name in the business, but rather because of the “deception and confusion which may result from such use because it then lawfully and singularly identifies another, similar pre-existing business.” 4

(cont. from e-newsletter) The factors considered in determining deception or confusion are (1) whether the two businesses are competitive and (2) whether they are confined to a certain geographical area.5 Actual fraud does not have to be shown. This argument has been proffered to the courts and rejected by them as follows:

“. . . in determining what constitutes an unfair business practice, the essential test is whether the public is likely to be deceived or confused . . .; that a business may be unfair even though not inspired by a fraudulent intent; and that the subsequent use of a business name which previously has acquired secondary meaning will be enjoined if a natural consequence of that use may be to deceive or confuse the public, even though no actual intent to defraud is present.”6

In short, it has been held that “an element of fraud is present in all unfair practice situations involving use of a name that has acquired secondary meaning, although the fraud involved may be constructive rather than actual.”7 Thus, even though there might not be any actual intent to deceive or confuse, deception and confusion are the natural consequence of using another’s name which has acquired secondary meaning to the public and therefore it “constitutes a constructive fraud upon the public.”8

If a person “cannot use his own name without inevitably representing his goods as those of another he may be enjoined from using his name in connection with his business.”9 In affirming an order granting an injunction against the use of a family name to identify a product, where that name previously had acquired a secondary meaning by which it identified a restaurant, the court said, “It is not essential to prove fraudulent intent. An injunction is proper if the natural consequences of [the] defendant’s conduct are such as to cause deception.”10

Thus, in Visser, supra, the court affirmed an injunction against a defendant from using his own name in a proposed florist business. He attempted to open his floral business in his own name in the same location where the plaintiffs, who had bought the rights to the name, had been conducting their floral business. The court found that the name had acquired secondary meaning in that location, that the defendant’s use of the same name would confuse and deceive the public and in fact, it had. Consumers had been calling defendant’s business thinking that it was the plaintiff’s business.

Also relevant to this discussion is the California Supreme Court’s decision in Dodge Stationery Co. v. Dodge, et al. (1904) 145 Cal. 380, 78 P. 879. In that case the court enjoined the defendant from using his surname, Dodge, to engage in the stationary business because it was deceptive and confusing with regard to the name of a similar company engaged in the same business which the defendant himself had initially created. In that decision the court noted that,

“. . . a person comes naturally by his name from his parents, and it is a thing personal to himself, which in truth and in justice he has the right to use, provided he does not resort to artifices calculated to produce deception or confusion in the public mind between him and some other person, to the injury of the latter . . . .”11

So, when you’re getting ready to launch that business you’ve dreamed about for so long . . . so you can leave a legacy behind by the mere use of your family’s surname. . . make sure someone else hasn’t already beat you to it!

1Visser v. Macres (1963) 214 Cal.App.2d 249, 253, 29 Cal.Rptr. 367.
2Id. at 253 citing Academy of Motion Picture, etc., v. Benson, 15 Cal.2d 685, 688-690, 104 P.2d 650; Hair v. McGuire, 188 Cal.App.2d 348, 352-353, 10 Cal.Rptr. 414; MacSweeney Enterprises v. Tarantino, 106 Cal.App.2d 504, 510, 235 P.2d 266; Jackman v. Mau, 78 Cal.App.2d 234, 239, 177 P.2d 599; Winfield v. Charles, 77 Cal.App.2d 64, 70, 175 P.2d 69; Hoyt Heater Co. v. Hoyt, supra, 68 Cal.App.2d 523, 527, 157 P.2d 657; J. A. Dougherty’s Sons v. Dougherty, D.C., 36 F.Supp. 149, 151.)
3Id.
4Id.
5Id.
6Id. at 255, emphasis added, citing D & W Food Corp. v. Graham, supra, 134 Cal.App.2d 668, 676, 286 P.2d 77; Karsh v. Haiden, supra, 120 Cal.App.2d 75, 83, 260 P.2d 633; MacSweeney Enterprises v. Tarantino, supra, 106 Cal.App.2d 504, 513, 235 P.2d 266; Jackman v. Mau, supra, 78 Cal.App.2d 234, 240, 177 P.2d 599; Hoover Co. v. Groger, 12 Cal.App.2d 417, 419, 55 P.2d 529; Lane Bryant, Inc. v. Maternity Lane, Ltd., of California, 173 F.2d 559, 564.
7Id. at 256.
8Id.
9Hoyt Heater Co. v. Hoyt, supra, 68 Cal.App.2d 523, 527, 157 P.2d 657, 659,
10MacSweeney Enterprises v. Tarantino, supra, 106 Cal.App.2d 504, 513, 235 P.2d 266, 272. 11Dodge Stationary Co., supra at 388.

“Sir/Ma’am, could you please step out of the car?!”

Dreaded words heard by millions after a night out on the town and after being pulled over by the police.

Naturally, anyone hearing this fears what will come next and; many know in advance, that even if they had not been drinking, their heart is beating so fast there is no way they will be able to pass a physical sobriety test anyway.

So, what should you expect and, what should you do?

DUI evidence falls into five categories:

1. Driving symptoms (weaving, lane straddling, etc.)
2. Personal symptoms (slurred speech, bloodshot eyes, etc.)
3. Field Sobriety Tests (“walk-the-line”, reciting the alphabet, etc.)
4. Incriminating statements (“I only had six beers”)
5. Blood-Alcohol Evidence – Usually a breath test but sometimes a blood test. (Urine tests are now given in California only when breath or blood are not available.)1

This article focuses on the third category, “Field Sobriety Tests”. Field Sobriety Tests (“FSTs”) are a series of exercises developed and administered by police agencies and subsequently, their officers, to test a driver’s balance, coordination and divided attention (i.e., the ability to do two things at once).2 “A motorist’s alleged poor performance on field evaluations may provide the ‘probable cause’ an officer needs to arrest a person for impaired driving and may also become a part of the proof used to later convict the person at trial.3

There are more than a dozen FSTs; although studies conducted by the National Highway Traffic & Safety Administration have indicated that only three are effective to indicate potential intoxication. As such, many states have begun following these federally-approved, “standardized” FSTs (“SFSTs”). These tests are the: (cont. from e-newsletter)

(1) Heel-to-Toe (aka, the “walk-and-turn”);
(2) One-leg Stand; and
(3) Horizontal Gaze Nysagmus (driver’s eyes are tested by following a moving object).

As you might imagine, there has been and continues to be considerable debate over the accuracy and reliability of all FSTs. Opponents of the tests, often times, scientific experts, argue that FSTs are “designed to fail”.4 Furthermore, many credible scientists are unwilling to categorize FSTs as ‘scientific’ at all because “too many variables are involved… to ever eliminate pure chance and non-controlled circumstances from the equation…” 5

SO WHAT DO YOU NEED TO KNOW?

First, California has largely ignored the above-referenced SFSTs and therefore, California officers often use whatever methods they choose. The point here → although certain tests are common; be prepared for anything.

Secondly, FSTs are VOLUNTARY. You read correctly. You are under no obligation to perform any of the tests requested of you as they are, in fact, being requested and are not actually required.

Third, and with exception to the SFSTs, the tests are subjective. In other words, the officer will subjectively determine if your performance warrants a pass or fail to the requested tests. As for the SFSTs, the difference is that these tests are scored objectively. Here, the officer assigns a numerical score to your performance based on specific errors or “clues”. However, and again, the numeric scores are insufficient evidence on their own to secure a conviction; rather, they too are more likely for the purpose of establishing ‘probable cause’.

Fourth, and in light of the FSTs, particularly the SFSTs, keep in mind that the officer’s training included specific criteria and you should try, as best you can, to pay attention to how well they are administering their own tests.

For example, in order to perform the One-leg Stand test, it much be performed on a hard, dry, non-slippery surface. The motorist should be allowed which leg to stand on. The officer requesting this test should observe the motorist from at least three feet away and must remain as motionless as possible. A person over 65 years of age, more than 55 pounds over weight or with physical impairments, should not be requested to perform this test. There are two stages to this test: (1) the “Instruction Stage”; and (2) the “Balance and Counting Stage”. Both “stages” must be accompanied by demonstrations performed by the officer. Moreover, the officers are also instructed on scoring protocol which includes, when and where they should avoid being overly critical (keeping in mind that, under these conditions, even someone sober might not be able to pass these tests).

As you can see, DUI defense is a detailed, convoluted and highly subjective area of law. You can assist yourself, however, by merely having a better understanding of your rights, prior to contacting your lawyer. Knowledge is power and in this arena, it may serve to save you time, stress and a lot of money! 1See http://www.california-drunkdriving.org/field_sobriety_tests.html
2See id.
3See http://www.drunkdrivingdefense.com/general/field-sobriety-evaluations-or-tests.htm
4See id.
5See id. at 4.