Kielbasa makers battle over family name. TARNOWSKI KIELBASA v. TARNOWSKI BROS KIELBASA

Kielbasa makers battle over family name. TARNOWSKI KIELBASA v. TARNOWSKI BROS KIELBASA

A trademark is a word, phrase, symbol, or design that identifies and distinguishes the products of one party from competing products.  Trademark rights in the United States come from actual use of the mark in commerce. A trademark can last forever as long as you continue to use the mark in commerce to indicate the source of goods and services.  Registering the trademark with the United States Patent and Trademark Office is not mandatory to have a right to a trademark. Common law rights to a trademark can be gained to a trademark based solely on use of the trademark in commerce, without registration with the United States Patent and Trademark Office. However, federal registration of a trademark with the United States Patent and Trademark Office grants the owner of the trademark several advantages.

15 U.S.C. §1052 of the United States Trademark law states that – No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… (e) Consists of a mark which… (4) is primarily merely a surname.  This is not a complete ban on registering a personal name as a trademark, but it creates a barrier that must be over come.  To over come 15 U.S.C. §1052(e)(4) it must be shown that the the trademark has a secondary meaning to the public; that the public associates the goods and services of the applicant with the trademark.

A person’s name is the most valuable piece of intellectual property that a person owns.  A person’s good name is integral to their standing in society.  Many people use their personal name as their business name as well. Use of a business name does not necessarily qualify as trademark use, though use of a business name as the source of product or services may qualify it as both a business name and a trademark. Many states and local jurisdictions register business names as part of obtaining a certificate to do business as a corporate entity.   A state’s authorization to form a business with a particular name does not necessarily grant trademark rights and states do not require proof of a trademark on a name to form a business.  A persons may use their personal name in business, and by using their personal name in business gain trademark rights.  However just because a person is allowed to form a company using their name does not mean they are immune from trademark infringement suits.  A senior user of a trademark may claim that a junior use is committing trademark infringement.

JOHN T. WISHNEFSKI t/d/b/a TARNOSKI’S KIELBASA INC., v. MARK TARNOWSKI d/b/a TARNOWSKI BROS KIELBASA,  3:20-cv-00175 (M.D.PA 2020) is a case that revolves around a surname being used as a trademark.

Plaintiff in this case operates TARNOSKI’S KIELBASA.  Kielbasa is a type of spiced sausage that originated in Poland.  Plaintiff’s products have received several awards for their quality.  Plaintiff registered the business name as a trademark in 2017 with a claim of first use in 2011.  The trademark was placed on the supplemental trademark registry in 2018.

Defendant operates a competing business near the Plaintiff that also sells kielbasa.  The men that operate the businesses have no relationship.  It is not clear when TARNOWSKI BROS KIELBASA began using the name to sell products.  Plaintiff filed suit against Defendant for trademark infringement in February 2020, without an attorney.

At first glance this may seem like an open and shut case.  However the fact that Plaintiff’s trademark was registered on the supplemental register complicates things.  It is often difficult to prove infringement of a trademark listed on the Supplemental Register, because such registration is an admission by the trademark’s owner that the trademark is insufficiently distinctive to be placed on the Principal Register.  The Supplemental Register does not grant a presumption of validity nor does it grant a presumption of ownership.  Plaintiff will need to prove these things before the issue of consumer confusion can be evaluated.

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