Calabrese, Racek & Markos, Inc. v. Racek

Intention to use a mark in commerce was not sufficient to prove infringement.

Opinion (Lioi): Calabrese, Racek & Markos, Inc. ("CRM") provided real estate appraisal services, and asserted that it has used the name CRM for at least twenty years. CRM alleged that certain independent contracters, who were allowed to use the CRM name in dealing with the public and on their business cards violated the Lanham Act when the independent contractors dissolved their relationship with CRM and opened "CRM Real Estate Services, LLC ("CRM Real Estate"). Trade names are protected on the same basis as trademarks and service marks. However, the name must be used in commerce to incur liability. The Sixth Circuit, in Taubman Co. v. Webfeats, determined that use of a trade name not in "connection with the sale . . . or advertising of any goods or services, and not likely to cause confusion is outside the jurisdiction of the Lanham Act. The court rejected CRM's postulation that because there was a potential for future confusion, the Lanham Act should be implicated. The court determined that because CRM's complaint only alleged incorporation of the company and intention of the founders to use the mark in commerce, the Lanham Act was not violated. Accordingly, the court GRANTED CRM Real Estate's motion to dismiss.