10th Circuit decision on bad faith use of one's own name as a mark

In The John Allan Company v. The Craig Allen Company, No. 07-3193 (10th Cir. Aug. 28, 2008), the Tenth Circuit reversed and remanded a district court decision where the plaintiff technically won but really didn’t obtain any relief.

JOHN ALLAN apparently is a well-known New York City-based men’s grooming salon. After visiting the Big Apple and the JOHN ALLAN salon, defendant Craig Allen Tatro returned to Wichita, Kansas, and started a CRAIG ALLEN salon offering the same services, providing his graphic designer with the logo from JOHN ALLAN salon. The resulting logo -- surprise! -- looked nearly identical to the plaintiff's.

When John Allen objected, Craig Allen changed the logo completely (shelling out 20K for a new logo design), but kept the name.

After trial, the district court found bad intent, but entered no injunction concerning the logo because Craig Allen had stopped using it. The district court did not enjoin the word mark CRAIG ALLEN because it felt “reluctant” to stop the defendant from using his own name. The plaintiff didn't appeal the order refusing to enjoin the logo, but did appeal the refusal to enjoin the name.

The 10th Circuit reversed and remanded, primarily because of the finding of bad intent. The 10th Circuit indicated that any judicial reluctance to stop a person from using his or her own name as a mark doesn’t apply to intentional infringers. In addition, the 10th Circuit criticized the district court for failing to consider whether the two instances of actual confusion it ignored were relevant to “sponsorship” or “affiliation” confusion.

Finally, the appeals court remanded with instructions to determine if continued use of the word mark CRAIG ALLEN, even with a different logo, required an injunction to alleviate residual likelihood of confusion.