165 Park Row, Inc. v. JHR Dev., LLC

"The Inn at Brunswick Station" was found to cause consumer confusion and thus infringe the trademark belonging to "The Brunswick Inn," even though "The Brunswick Inn" is a strongly descriptive mark.

Opinion (Torresen): Beginning in June 2009, 165 Park Row, Inc. ("Plaintiff") has run The Brunswick Inn in a historic building on in Brunswick, Maine. Two years later, JHR Development, LLC ("Defendant") opened a much larger inn nearby, calling it "The Inn at Brunswick Station." Plaintiff brought a five-count complaint against Defendant, alleging infringement of their trademark under Maine common law and the Lanham Act. The jury determined that Plaintiff’s establishment had acquired enough secondary meaning to be considered a distinctive trademark within the Brunswick, Maine community. Defendants moved for a directed verdict. In determining the acquired distinctiveness of Plaintiff's mark, court considered the length and exclusivity of the mark, the testimony of a regular customer as to the association of the mark to the place, Plaintiff's efforts to advertise, and the instance of unsolicited media coverage as evidence of "regional renown," as well as other efforts Plaintiff made to promote a connection between the mark and its business. The court determined that there was sufficient evidence for a reasonable jury to find that the mark had acquired distinctiveness. Next, the court considered the likelihood of confusion. In assessing the similarity of the marks, the court considered that Defendant's mark contained three out of five of the same words as Plaintiff's mark. In considering the similarity of services and channels of trade, the court looked at geographical distance between each place, the choice of the word "Inn" as well as their respective target customers and vendors in determining that the parties operate the similar service. Further, the court found that the parties run similar advertising campaigns and that there have been several instances of actual confusion. Although the jury found that Defendants did not wilfully infringe Plaintiff's mark, despite testimony by the designer of The Inn at Brunswick Station that he had stayed at the Brunswick Inn several times during the construction of Defendant's inn. The court noted that it was enough that Defendants were aware that their chose name might cause consumer confusion. For these reasons, the court concluded that a reasonable jury could have found sufficient evidence of infringement on each of the eight Pignons factors. The court DENIED Defendant’s motion for judgment notwithstanding the verdict, and ordered judgment in favor of the Plaintiff.