Rally Round the Trade Name

Rally Round the Trade Name

Tony Morgan

Professor Gus Weekley

Law, Ethics, and Corporate Governance, LEG 500-029-VA-016-1118-001

March 5, 2012

Explain whether or not the fact that Gabby’s surname is Rally gives her the right to use it any way she wishes.

While Gabby does have the right to use her surname as part of her business name, she cannot use the surname if it infringes on another trademarked business. Surnames typically are not given protection as trademark until they achieve secondary meaning through advertising or long use (Tyvser, 2008). Rally Pizza hasn’t established itself as recognizable beyond the surname as evident by the phone calls that Rally Motors receives. On the other hand, Rally Motors is a well established business that has been in existence for 40 years. They spend hundreds of thousands of dollars on a yearly basis advertising the brand name. Rally Pizza could be accused of the Law of Unfair Competition, where economic injury to Rally Motors can occur through a deceptive or wrongful business practice (Cornell University, 2012). The two most common examples of unfair competition are trademark infringement and misappropriation. In order to sue Rally Pizza under Trademark Infringement Law, Rally Motors would have to already possess a protectable trademark right for their name, and prove that Rally Pizza has created confusion about the origin of their goods and services (Tysver, 2005).

It’s obvious that consumers have not been able to easily identify Rally Motors from Rally Pizza. The confusion can lead to injury for either business. In determining trademark infringement, courts typically look at eight factors in analyzing likelihood of confusion. They are (1) similarity in the overall impression created by the two marks; (2) similarities of the good and services involved; (3) strength of the plaintiff’s mark; (4) evidence of actual confusion by consumers; (5) intent of the defendant in adopting its mark; (6) physical...