302 F. Supp. 1121 | D. Maryland | 1969
MEMORANDUM OPINION
This is a suit for trademark infringement and unfair competition. The plaintiff, Prestwick, Inc., is the .holder of the trademark “Tantallon”, United States Patent Office Principal Register No. 855,715, registered August 27, 1968.
A hearing for a preliminary injunction was held, but upon presentation of meager testimony the court declined to grant the injunction because of the paucity of the evidence and the lack of harm or threat of harm to the plaintiff. Prior to trial counsel for the parties agreed on a stipulation of facts which constituted the total factual record at trial.
According to the stipulation, Tantallon is an exclusive, planned community developed by the plaintiff out of raw acreage in Prince George’s County, Maryland. The community is located on Fort Washington Road with substantial water frontage on Swan Creek, a tributary of the Potomac River. Prestwick’s primary business is selling building lots created out of its undeveloped land, but it has occasionally built and sold houses on its land. Prestwick also maintains a country club, golf course, and a marina for the planned community.
Purchasers of lots in Tantallon select their own builder; however, prior to construction, all plans for homes to be built in Tantallon must be submitted to plaintiff for review and approval. In conjunction with this review, it should be noted that all lots sold in Tantallon are subject to extensive deed covenants. The custom-built homes provide a variety and balance of architectural design and incorporate, as much as possible, natural surroundings, such as trees, into the homesite. In sum, Tantallon does not seek and does not have the image of a mass-developed suburb. Plaintiff serves its purchasers by preparing each lot for the construction of the home including such tasks as dedicating roads, providing utilities, and grading and clearing. In addition, plaintiff represents that it offers purchasers continuing services in maintaining Tantallon community including the country club, golf course, and marina, and other facilities available.
At present, lot prices in Tantallon range from $15,000 to $58,000. Prestwick’s officers testified that in their opinion the minimum cost of a home built in Tantallon would be $85,000.
It is stipulated that prior to April 15, 1961, the raw acreage now developed as Tantallon had no significant geographical name. Plaintiff’s predecessors adopted the name Tantallon in April of 1961, and the name has been in continuous use by them since that time.
According to the stipulation, Tantallon is the name of a castle in Scotland which is adjacent to a famous golf course; however, prior to its use by Prestwick it had no geographic significance and no known identification with any other development or planned community in the United States.
It is agreed that some time in 1966 the predecessors in title to Don Kelly recorded in the Land Records of Prince George’s County, Plat Book WW 60, Folio 65, a plat of land on the east side of Fort Washington Road slightly north of Tantallon. The plat refers to the land as Section 1, Tantallon Square. While it is not known who named the plat, Tantallon Square, the name may have been chosen by the county engineers who prepared the plat. This plat was recorded without the knowledge or consent of the plaintiff.
This suit had its genesis in January of 1968, when Don Kelly placed signs on Fort Washington Road and elsewhere advertising residential property for sale with improvements known as Tantallon Square.
While the defendant’s subdivision was still in its embryonic stages, Prestwick filed an application for registration of the service mark Tantallon in the United States Patent Office. Notice was duly published as required by the Trademark Law of 1946 and no notice of opposition was filed to the application. On August 28, 1968, Prestwick, having proved to the Patent Office that it owned and used the mark continuously for at least five (5) years, Certificate of Registration No. 855,715 was issued to it for the service mark Tantallon.
In conjunction with its trademark proceedings, Prestwick sent several letters of warning to the defendant. The first of these was on January 30, 1968, twenty (20) days after the application had been filed. However, Don Kelly apparently ignored the letter and began advertising Tantallon Square in April of 1968. Another letter of warning was sent on August 30, 1968, after the Certificate of Registration was issued, but defendant continued to advertise in the Washington-area papers and continues to maintain road signs on Fort Washington Road and elsewhere which advertise “Tantallon Square”. While not truly proper matter for a stipulation of fact, the parties have stipulated that “there is some likelihood of confusion between the use of the name Tantallon and the name Tantallon Square by the Defendant.”
These are the facts which have been adduced by stipulation of the parties. From them and the exhibits, as well as the argument of counsel, the court has concluded that the defendant has not rebutted the prima facie proof of the validity of the service mark which
If a term has a general geographic meaning it may, nonetheless, be registered if it has acquired a secondary meaning. As explained by Vandenburg, Trade-Mark Law and Procedure (1959), p. 85:
If the subject matter, even though geographically descriptive, has more trademark significance with respect to the goods [or services] it is not primarily geographically descriptive and it is registerable.
Speaking in the context of an unfair-competition action brought to enjoin use of a similar name which had geographic significance, the Court of Appeals of Maryland, in Baltimore Bedding Corp. v. Moses, stated:
There is nothing abstruse or complicated about this theory [“secondary meaning”], however difficult its application may sometimes be. It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark. So it was said that the word had come to have a secondary meaning * * * 182 Md. 229, 238, 34 A.2d 338, 343 (1944); see also Edmondson Village Theater v. Einbinder, 208 Md. 38, 116 A.2d 377 (1955).
Using this test, it is clear that any geographical significance which the term Tantallon may have acquired is minor to the association that name has gained in the public’s mind with the plaintiff’s operation.
In recent years service marks have been issued to such products and services as Disneyland, Leisure World, and Marineland, but the court is aware of no cases construing the validity of these marks. However, it seems plain from the purposes of the general law of unfair competition and from the Lanham Trademark Act that where an entrepreneur has successfully marketed a product, services, or combination of both, other business enterprises should not be permitted to usurp his good name and reputation or to confuse the public into misassociating the two. The use of the term Tantallon Square by Defendant, Don Kelly, to describe his development is an infringement of the plaintiff’s valid service mark and constitutes unfair competition for it attempts to usurp the good name and reputation of the plaintiff’s service mark Tantallon
Counsel will submit an appropriate injunction order for the consideration of the court.
. 15 U.S.C. § 1053 provides that marks which identify services may be registered as well as trademarks which identify tangibles.
. Don Kelly and Tantallon Square are not the only adjoining subdivisions to use the plaintiff’s name Tantallon, but it is the understanding of this court that its decisión in this matter may be dispositive of the other suits.