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 lexis.com 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.