You don’t see a trademark infringement action in the Business Court every day, let alone a TRO decision, but a case with both came along last Friday in SCI Carolina Funeral Services, LLC v. McEwen Ellington Funeral Services, Inc. Moreover, this was a common law trademark case, with no federal registration — or even a state registration — involved.
The Defendants had previously operated funeral homes under the McEwen name in the Charlotte, North Carolina area. In 1986, they sold those funeral homes, and their trademarks and trade names, to the Plaintiffs.
Then, notwithstanding their agreement, the Defendants opened a funeral home under the McEwen name and began advertising under that name as well. They also registered a trade name with the North Carolina Board of Funeral Services as McEwen Ellington Funeral Services.
There’s very little North Carolina state law on trademark infringement, but Judge Murphy found enough to enter a temporary restraining order against the Defendants.
He held, relying on a 1907 North Carolina Supreme Court decision, that "North Carolina common law protects corporations’ trade names," stating that
It is well settled that an exclusive right may be acquired in the name in
which a business has been carried on, whether the name of a partnership or
of an individual, and it will be protected against infringement by another
who assumes it for the purpose of deception, or even when innocently
used without right, to the detriment of another; and this right, which is in
the nature of a right to a trade-mark, may be sold or assigned.
Op. ¶9 (quoting Blackwell’s Durham Tobacco Co. v. American Tobacco Co., 145 N.C. 367, 374, 59 S.E. 123, 127 (1907).
Then, although there’s no reported state court decision on when a trademark infringement plaintiff has shown the likelihood of confusion necessary to prevail, Judge Murphy relied on a federal decision from the Western District of North Carolina holding that the factors to be considered are:
1) the strength or distinctiveness of the mark; 2) the similarity of the two
marks; 3) the similarity of the goods/services the marks identify; 4) the
similarity of the facilities the two parties use in their businesses; 5) the
similarity of the advertising used by the two parties; 6) the defendant’s
intent; and 7) actual confusion.
Op. ¶10 (quoting Wachovia Bank & Trust Co. v. Crown Nation Bancorporation, 835 F. Supp. 882, 886(W.D.N.C. 1993)).
If that standard sounds familiar, that’s because it is, and drawn from the Fourth Circuit Court of Appeals’ often cited opinion in Pizzeria Uno v. Temple, 747 F.2d 1522, 1527 (4th Cir. 1984)).
Given that the Plaintiffs had shown that their McEwen mark was distinctive, the marks in question appeared to be similar, the funeral services provided by the parties were identical, the parties use similar facilities, the parties’ advertising is similar, and that one of the Defendants had registered and operated under the challenged mark with the intent to cause confusion among the consuming public, it was any easy step to enjoin the Defendants from using the McEwen name in connection with funeral services.
It’s hard to tell how the Defendants defended this pretty clear case of infringement, given that they didn’t even file a brief in opposition to the motion for a TRO.