Developments In NC State Trademark Law

Developments In NC State Trademark Law

When I last wrote about SCI North Carolina Funeral Services, LLC v. McEwen Ellington Funeral Services, Inc., Judge Murphy had entered a TRO against the Defendants for trademark infringement over their use of the McEwen name in their funeral home business.  The case seemed cut and dried then, and it looked like that the Defendants had no defense to the infringement claim.

Last week, Judge Murphy entered a preliminary injunction in the same case in 2013 NCBC 11, this time over the Defendants' vigorous defense.  The second time around was a much closer call. 

The case involves the McEwen name, which is the middle name of Defendant Carl Ellington. When the Defendants sold the funeral homes that they had operated under the McEwen name to the Plaintiffs, they included in the sale the rights to all "trademarks, tradenames (including all trade names under which [they] did business."  McEwen was the last name of Carl J. McEwen, the founder of McEwen Funeral Services, Inc.

Several years after their sale, the Defendants opened a new, competing funeral home under the McEwen name and this trademark infringement lawsuit ensued.

Although Judge Murphy had entered a TRO in the first round of litigation, this time he was confronted with a 99-year old North Carolina Supreme Court decision, Zagier v. Zagier, 167 N.C. 616, 83 S.E. 913 (1914) [an enhanced version of this opinion is available to subscribers] which held that "[a]s a rule, a trade-mark cannot be taken in a surname. . . ."  Id. at 617, 83 S.E. at 913.

But Zagier also held that the seller operating a business under his surname can "conclude himself from the further use of it in a similar way."

Read this article in its entirety on North Carolina Business Litigation Report, a blog for lawyers focusing on issues of North Carolina business law and the day-to-day practice of business litigation in North Carolina courts.