• A Primer on Michigan State Trademark Law

    by  • August 4, 2014 • trademark • 1 Comment

    There aren’t a lot of cases about state trademark law, so a state appeals court decision—here, Michigan—is worth a mention, if for no other reason than it is about the most thorough explanation of the fundamentals of trademark law that I’ve read in a long time. If you have someone just beginning to study trademark law, give them this case to read.

    It is a restaurant surname case, “Travis.” The name was first used in 1944 and the trademark was registered with the state in 1996. The plaintiff used the name with “various” family-owned restaurants during that time, but we don’t know how many or whether they are all still family-owned.

    In 2011 the defendant bought the “Travis of Chesterfield” restaurant, which had been licensed to use the plaintiff’s TRAVIS mark, but didn’t “negotiate” (the court’s word) the right to keep the license. The defendant then changed the name to “Travis Grill” and continued to have the “famous Travis burger” on its menu.

    The analysis is straightforward. The state registration is prima facie evidence of distinctiveness, which the defendant did not adequately rebut. There was one paragraph on likelihood of confusion, but then there’s not a lot to say about the difference between a burger joint called “Travis” and one called “Travis Grill,” particularly when the latter sells the “famous Travis burger.”

    Unfortunately the lower court documents aren’t online; I’d like to know more about the acquisition of the premises and why there wasn’t a trademark license as part of it—it wouldn’t be unusual to keep a restaurant name, so it would be interesting to see how willful the defendant’s actions might have been. The Court of Appeals said, on one hand, that no license was “negotiated,” suggesting perhaps awareness of the need to obtain a license, but then also immediately thereafter says “it is unclear if defendant checked with the Michigan trademark office before or at the time it purchased its restaurant, as defendant could have easily discovered plaintiff’s registration of the ‘TRAVIS’ mark,” suggesting that the defendant was not otherwise aware of the need for a license. But nothing in the case suggests there was any effort to make an implied license defense, so I’m having a hard time understanding how not only did this happen at all, but that it even got as far as the appeals court. Seems like a slam-dunk.

    Janet Travis, Inc. v. Preka Holdings, L.L.C., Docket No. 315560 (Mich. App. Ct. July 31, 2014).

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    One Response to A Primer on Michigan State Trademark Law

    1. Anthony
      August 4, 2014 at 4:37 pm

      The facts before the trial court were that the owner of the mark ‘Travis’ licensed out the right to use the mark and thereafter provided no products or services to un-associated business in and around Macomb County, Michigan. That is, plaintiff provided only the name. To be fair, at the time the case came to court the plaintiff did own one restaurant and provided products to that location, but the other businesses operated independently for decades. The so called ‘Famous Travis Burger’ was sold in multiple restaurants and it was a different burger, with an independent source, at each location.

      Michigan’s trademark Act, MCL 429.32(e), in pertinent part, prohibits registration of a mark that is a surname unless the applicant can show “a mark used in this state by the applicant which has become distinctive of the applicant’s goods or services.” The Court of Appeals has now held that whether the owner of the mark provides actual products and services is irrelevant.

      Regarding the purchase of the restaurant the defendant bought the restaurant and the right to use the name from the prior owner, (not the plaintiff). The defendant and the prior owner settled a lawsuit arising out of the sale of the restaurant.

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