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Security Center, Ltd. v. First National Security Centers - 750 F.2d 1295 (5th Cir. 1985)

Rule:

The inquiry used in determining trademark infringement is whether the plaintiff has a protectable property right in the name it seeks to defend from use by others. The second question -- and the ultimate issue -- is infringement, as judged by likelihood of confusion. Only when a trademark rises to the level of trademark protectability -- either by a showing that it is sufficiently distinctive or has acquired secondary meaning -- does the question of likelihood of confusion become relevant.

Facts:

Plaintiff Security Center opened in downtown New Orleans in the fall of 1980, and received nationwide publicity focusing on its fortress-like building, formerly the Federal Reserve Bank building. In May 1982, defendants began using the name First National Security Centers. In January 1983, a sign appeared at a construction site in Metairie, Louisiana, announcing to the public that the building under construction would house First National Security Centers. The services to be offered by First National were virtually identical with those of the Security Center. Plaintiff Security Center sought to enjoin First National from using "security center(s)" in its name. A preliminary injunction was granted. On February 10, 1984, the district court issued a judgment and opinion stating that the mark "The Security Center" was suggestive, and that it was liable to be confused with "First National Security Centers." The court therefore permanently enjoined First National from using the phrase "security center(s)" in its name. Defendant First National Security Centers sought appellate review.

Issue:

Was the name “The Security Center” a protectable mark, thereby warranting the injunction granted in favor of Security Center?

Answer:

No.

Conclusion:

Finding that the name was not a protectable mark, the Court of Appeals for the Fifth Circuit reversed judgment of lower court. The Court looked into actual and likely use of the mark in order to determine whether its protection interfered with competition among providers of the same product or service. The Court reasoned that the more users there were of a term, the more its protection in a given case would be commercially disruptive and unfair to competitors. The Court held that trade name was merely descriptive and not suggestive and thus was not inherently protectable. Further, the name had not gained protection by the acquisition of secondary meaning. The Court found appellee failed to prove imaginativeness or likelihood of confusion and as a result, dismissed the suit.

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