• The Family Name

    by  • January 16, 2017 • trademark • 0 Comments

    This case is not just a trademark suit with a domestic relations background; it is a domestic relations dispute over the ownership of marital property, which happens to be a trademark.

    It is a marital settlement that makes any trademark attorney’s heart sink. While they were married, exes Randy Zweifel and Linda Smith held equal ownership interest in the business Lawn Managers, Inc. As part of the divorce Linda assigned her shares of Lawn Managers stock to Randy and the decree stated that he was to “retain the corporate name of Lawn Managers, Inc.” Linda was to start a new company called “Progressive Lawn Managers, Inc. doing business as Lawn Managers.” She could use “Lawn Managers” for two years after that, but then had to “discontinue using the name Lawn Managers.”

    No trademark lawyer would have thought this was a good idea even under the best of circumstances, with good-faith parties who truly don’t want confusion between each others’ businesses and so are motivated to avoid it. To think this is ever going to work between divorcing parties is insanity.

    Of course Linda didn’t stop using “Lawn Managers” when she was supposed to, even after an agreed-to extension. The parties have had “a number of contempt motions in the state court based on alleged breaches of the divorce agreement, as well as motions to modify the divorce agreement,” which are still ongoing.

    Randy registered the LAWN MANAGERS trademark in word and design form:

    While the state court post-divorce proceedings were ongoing he also sued his ex-wife’s company in federal court for trademark infringement. The court described the claim this way:

    In February 2016, Lawn Managers brought the instant federal trademark infringement suit against Progressive Lawn Managers under the Lanham Act, 15 U.S.C. § 1114, alleging that defendant’s logo was too similar to its own and confusing consumers because the phrase “Lawn Managers” was the largest text of the logo.

     

     

    In the opinion, the court sua sponte evaluated whether it had subject matter jurisdiction (hence the opening quote) or whether it should abstain. It decided that it should abstain, under both the Younger and Colorado River abstention doctrines. Part of the reasoning was

    [T]he present action seeks to modify the divorce decree: while Linda was awarded the right to use the name “Progressive Lawn Managers” in that decree, this suit seeks not merely to enforce the divorce decree’s time limitation on her use of the name “Lawn Managers” alone, but seeks to prohibit her use of the phrase “lawn managers” in any form. Federal courts may enforce final judgments related to divorce or alimony, but they do not have authority to hear and decide suits seeking the granting or modification of a divorce or alimony decree.

    So it appears Randy has come to realize how inadvised the original intended co-existence was and is trying to strike a new deal. Indeed a matter for the divorce court, not federal court.

    However the court only stayed the federal lawsuit until after final adjudication of the state court on the trademark issue, should there be any remaining issues of federal law after that.

    Lawn Managers, Inc. v. Progressive Lawn Managers, Inc., No. 4:16 CV 144 DDN (E.D. Mo. Jan. 9, 2017).
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