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Because multiple individuals can possess the same surname, and thus might need use of the surname in a business capacity, Michigan courts generally do not give legal protections to surnames used as marks. However, if a surname-mark acquires "secondary meaning"—i.e., the consuming public comes to associate the mark with the product of some particular person or factory or business—the surname-mark may be entitled to protection under MCL 429.42. MCL 429.32(e). The burden of showing a mark's validity usually falls on the plaintiff, but if the plaintiff registers his mark under the Michigan Trademark Act, then the burden shifts to the defendant to demonstrate the plaintiff's surname-mark is not valid, i.e., that plaintiff has either not used the mark, or that it is not distinctive because it lacks secondary meaning to consumers.
Plaintiff owned a restaurant and has used a surname, “Travis,” as a mark in connection with the food-service industry since the 1940s. It registered the “TRAVIS” mark with the state in 1996 under MCL 429.34. In 2011, the defendant began to operate a restaurant called "Travis Grill" in the same geographical area as plaintiff's restaurant and licensees. Plaintiff sued defendant for trademark infringement under MCL 429.42 in Macomb Circuit Court, and the court granted an injunction under MCL 429.43 against defendant's further use of "Travis"-related marks. Defendant appealed, arguing that the injunction should be reversed because plaintiff's trademark was not valid.
Under the circumstances, did the court properly award permanent injunction to the plaintiff?
The court affirmed the judgment of the lower court. Because the mark was registered, it was defendant's burden under MCL 429.34(3) to show that the mark lacked secondary meaning, and defendant failed to meet that burden. According to the court, plaintiff had priority in the mark, as plaintiff's predecessors had used the mark in connection with restaurants since 1944. Moreover, plaintiff had shown that not only a likelihood of confusion, but actual confusion existed, as the name of defendant's restaurant was almost identical to plaintiff's mark and there was evidence that customers believed that defendant was somehow affiliated with plaintiff.