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HOW IS AN AUTOMILE LIKE A DUCK TOUR? THINK GENERIC.

Posted in Copyright, Intellectual Property, Trademarks

Co-Authored By: Robert J. Morgan
For those businesses that might be tempted to enjoin another’s use of a common name, be advised: you might be inviting unexpected grief.  In a “where the rubber hits the road decision,” the Cuyahoga County (Ohio) Court of Appeals ruled recently in the case of Bedford Auto Dealers Ass’n v. Mercedes Benz of North Olmsted, 2012-Ohio-927, 2012 WL 760626 (Cuyahoga App. March 8, 2012), that the relatively common term “automile” is generic and not entitled to trademark protection.

Co-Authored By: Robert J. Morgan

For those businesses that might be tempted to enjoin another’s use of a common name, be advised: you might be inviting unexpected grief.  In a “where the rubber hits the road decision,” the Cuyahoga County (Ohio) Court of Appeals ruled recently in the case of Bedford Auto Dealers Ass’n v. Mercedes Benz of North Olmsted, 2012-Ohio-927, 2012 WL 760626 (Cuyahoga App. March 8, 2012), that the relatively common term “automile” is generic and not entitled to trademark protection.

At issue in the case was whether a car distribution center in North Olmsted, Ohio, a southwest suburb of Cleveland, could name itself the “North Olmsted AutoMile.”  When the North Olmsted AutoMile advertisements began to be aired in 2008, car dealers from Bedford, Ohio, a neighboring Cleveland suburb approximately 22 miles east of North Olmsted, became road enraged.  The Bedford car dealers claimed it was they who coined the term “automile” in the mid-fifties, and registered it as a trade name with the state of Ohio in 1987.  They demanded the dealers in North Olmsted cease using the term “automile” on the grounds that this use would confuse consumers in the northeastern Ohio automobile market, leading them to believe that “there [was] an identity, affiliation, or relationship between” the Bedford dealers and the North Olmsted dealers.
The Court of Appeals wasn’t confused and wasn’t persuaded by the Bedford dealers’ arguments; the court affirmed the trial court’s summary judgment ruling in favor of the North Olmsted defendants.  Whether the term “automile” tends to confuse or not, the court of appeals determined that the term was generic and therefore simply not subject to trademark protection.  In support of its ruling, the court relied upon a parallel and interesting case out of Boston. In  Boston Duck Tour case.  See Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008), the First Circuit Court of Appeals held that the term “duck tours” represented a generic name that “refer[s] to amphibious, sightseeing tours.”  (If you have occasion to visit Boston in the summer months, do treat yourself to a duck tour.  They are the best way to see Beantown.)  In support of its ruling, the First Circuit noted that the Boston Globe had published articles making reference to duck tours generically, without any apparent objection by the Boston Duck Tours group.  Moreover, the First Circuit found that there are more than 36 such tours around the U.S. and world, most of which refer to themselves as duck tours. Implicitly, the court concluded that if it rides like a duck (tour) and quacks like a duck (tour), it is a duck (tour), it is generic, and the name cannot be trademarked.

In the automile case, the Cuyahoga Court of Appeals similarly noted that “automiles” exist in assorted locations throughout the U.S. and Canada.  (Doesn’t every town have one?)  The court even made reference to an article in a local newspaper that spoke of automiles in a general sense.  Recognizing the generic nature of the term, the court concluded that even if the term “automile” had gained some notoriety or recognition in the Cleveland area, it didn’t save the Bedford dealers’ case.  Nor did it matter that car buyers might somehow be confused.  A generic term simply cannot function as a trademark, and is not entitled to protection under the Lanham Act, or Ohio’s corresponding state laws.
As with most cases, there is a lesson here.  Just because you open the first “automile,” “duck tour,” “crab house” (Hunt Masters, Incorporated, d/b/a Charleston Crab House v. Landry’s Seafood Restaurant, Incorporated, 240 F.3d 251(4th Cir. 2001)),  or “ale house” (Ale House Mgmt., Inc. v. Raleigh Ale House, Inc., 205 F.3d 137, 140 (4th Cir. 2000)) in town, does not necessarily mean you have an exclusive right to the name or term.  It is perhaps notable that the Bedford Auto Dealers registered “automile” as a trade name in Ohio, but apparently did not seek to register it as a trademark under either Ohio or federal law.  The process of trademark registration (state or federal), and the analysis of the availability and registrability of a mark which should proceed an attempt at registration, will often disclose not only prior users of a mark, but also whether the mark is descriptive or otherwise widely used by others.  Had the Bedford dealers attempted to register a trademark for “automile” with the PTO in the 1980′s, they may have been refused registration on the basis of descriptiveness.  Such a refusal might have alerted them even then that they were not likely to be able to claim an exclusive right to “automile” as a mark.  Think: kicking the tires. Conversely, had they managed to register “automile” as a trademark back in the 1980′s and then actively sought to prevent others from using the mark, they may have managed to prevent “automile” from becoming a widely used, generic term.
In any case, we strongly recommend undertaking a full analysis of the strength of a mark before taking on the expense of filing an infringement lawsuit.  Though an availability and enforceability analysis will involve its own costs, those costs will almost certainly be less than the cost of litigating a claim – and will avoid the buyers remorse of an unfavorable final judgment.