Janet Travis, Inc. v. Preka Holdings, LLC
856 N.W.2d 206
Mich. Ct. App.2014Background
- Plaintiff (and predecessors) used the surname mark "TRAVIS" for restaurants since 1944 and registered the mark with Michigan in 1996 (registration valid through 2016).
- In 2011 defendant purchased a restaurant in the same area, changed its assumed name to "Travis Grill," advertised a "famous Travis burger," but did not secure a license from plaintiff to use the mark.
- Plaintiff sued under Michigan's Trademark Act, MCL 429.31 et seq., seeking a permanent injunction under MCL 429.43 for infringement under MCL 429.42.
- Defendant moved for summary disposition, arguing the surname "Travis" lacked secondary meaning and thus was not a valid trademark; it also asserted distinctions between the marks.
- The trial court found the registered "TRAVIS" mark had acquired secondary meaning, denied defendant's motion, and granted a permanent injunction; the court of appeals affirmed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Validity / secondary meaning of surname mark | "TRAVIS" acquired secondary meaning through long use, consumer affidavits, and marketplace recognition | "Travis" is a surname (descriptive) and lacks secondary meaning; registration not dispositive | Registration creates prima facie validity; defendant failed to rebut. "TRAVIS" has secondary meaning and is valid. |
| Priority | Plaintiff used the mark in commerce since 1944 | Defendant began using "Travis Grill" only after purchasing the restaurant in 2011 | Plaintiff has priority; earlier continuous use establishes superior rights. |
| Likelihood of consumer confusion | Defendant's "Travis Grill" and menu "famous Travis burger" are nearly identical and caused consumer confusion (affidavits) | Asserts no likelihood of confusion (unsupported) | Court found strong evidence of actual and probable confusion; likelihood of confusion established. |
| Defendant's "use" of infringing mark | Defendant actively used the marks in advertising and on menus in Michigan | (No meaningful contest on use) | Defendant used the marks in sale/advertising of services in Michigan; element satisfied. |
Key Cases Cited
- Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205 (2000) (distinguishing inherent distinctiveness categories and source-identifying function)
- Abercrombie & Fitch Co. v. Hunting World, 537 F.2d 4 (2d Cir. 1976) (familiar taxonomy: generic, descriptive, suggestive, arbitrary/fanciful)
- Interstate Brands Corp. v. Way Baking Co., 403 Mich. 479 (1978) (trademark rights arise from use and cover area of use)
- Boron Oil Co. v. Callanan, 50 Mich. App. 580 (1973) (secondary-meaning factors: length of use, advertising, promotion)
- Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (non-exhaustive factors for likelihood-of-confusion analysis)
- Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (state and federal likelihood-of-confusion tests align)