SW Legal Educational Publishing

A Trademark May Be Distinguished from a Trade Name
Description Competitor brothers both used the name "Boney's Marketplace" in reference to private label goods. Just because one brother had the right to use that trade name on his grocery stores does not necessarily mean he has sole right to that name as a trademark on private label goods.
Topic Intellectual Property
Key Words Trademark, Trade Name, Infringement
C A S E   S U M M A R Y
Facts The Boney brothers independently ran grocery stores, and produced private label goods, using the name "Boney's Marketplace." Brothers Stan and Scott Boney were sued by their brother Steve Boney for trademark infringement for using "Boney's Marketplace" on private label goods. In complex litigation, the key point is the court of appeals discussion regarding a trademark and a trade name claim.
Decision "The right to use a term as a trade name for grocery stores is not necessarily co-terminous with the right to use that terms as a trademark for goods." A trade name such as "Boney's Marketplace" in reference to the grocery stores, symbolize the reputation of a business as a whole. Trademarks, such as "Boney's Marketplace" in reference to private-label goods, identify and distinguish a company's goods. "As with the right to the trade name, the right to control use of the trademark depends on priority of use." The district court must review such factors as:
  1. " which party first developed and affixed the trademark onto the products in question;
  2. which party's name first appeared in connection with the products;
  3. which party has maintained the quality and uniformity of the products;
  4. with which party does the public identify the products; and
  5. which party has the goodwill associated with the products."
Citation Stephen W. Boney, Inc. v. Boney Services, Inc., ---F.3d--- (1997 WL 597971, 9th Cir.)
127 F.3d 821 (9th Cir., 1997)

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