I’m only blogging about this case because I grew up within walking distance of the venue for the antique show with the disputed name, the Valley Forge Military Academy. The magistrate’s reasoning wasn’t so hot, but the district court managed to get it cleaned up.
Bottom line is that the plaintiffs, the Gemmers, volunteered for several years to run the Main Line Antiques Show (held on the grounds of the military academy) for defendant Surrey Services for Seniors. The Gemmers then got the not-so-bright idea that they would still run the show but find a new benefactor. They didn’t exactly tell that to Surrey, though; they just said they weren’t going to run it the next year. Surrey went ahead with planning the show without the Gemmers and the Gemmers planned on running a show of the same name too. Dueling trademark applications filed; lawsuit ensued.
It really was a slam-dunk for Surrey. The magistrate in excruciated detail related how Surrey had signed all contracts relating to the show, had paid all costs, and had sent out the marketing materials under its name. The Gemmers argued they were the first to use the mark because Mrs. Gemmer sent out letters soliciting dealers for the first show, but the magistrate decided this wasn’t enough to establish first use in commerce, which is what Surrey Services later did. Since Surrey Services had first use in commerce, it was owner of the mark.
I’m not fond of using this as the basis for the decision, since it was merely a matter of happenstance that Mrs. Gemmer’s use was one that wasn’t a “use in commerce.” She could have done more acts that would have been considered a “use in commerce,” but she still shouldn’t have owned the mark. Luckily for Surrey the district court cleaned the matter up on its review:
| Based on this significant factual record, the Report properly concludes that the Gemmer’s actions were performed in the capacity of volunteers for Surrey. As volunteers, the Gemmer’s use of the MLAS mark would be more appropriately attributed to Surrey rather than vice versa. |
The Gemmers argument that section 5 of the Lanham Act creates ownership rights in marks was also rejected. This is not a case where there is a licensor-licensee relationship, or two separate entities using the mark, so the section has no applicability.
Unfortunately, between the magistrate’s fairly poor grasp of trademark law and the district court’s quick fix, it’s an ugly decision. Ugly enough to appeal.
Gemmer v. Surrey Services for Seniors, Inc., No. 10-610 (Sep. 7, 2010) (Report and Recommendation)
Gemmer v. Surrey Services for Seniors, Inc., No. 10-610 (Dec. 13, 2010) (Order)
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