South Bend, Indiana — Trademark lawyers for North American Van Lines, Inc. of Ft. Wayne, Indiana sued North American Master Lines, Inc. of Hallandale, Florida alleging infringement of two trademarks for NORTHAMERICAN, Registration Nos. 0917431 and 0915264, which have been registered by the U.S. Trademark Office.
North American Van Lines asserts that, as early as 1946, it has used the mark “northAmerican” in conjunction with its packing and transportation services and that it has provided such services in all fifty states and the District of Colombia. It owns two registrations for the mark, both of which were issued in 1971.
North American Master Lines provides packing and transportation services across the United States. It offers local and interstate services for residential, business and military customers.
North American Van Lines claims that North American Master Lines previously did business as “1st Choice Van Lines, Inc.” and that it changed its name to North American Master Lines in October 2012. North American Master Lines also registered and is using the “NorthAmericanMasterLines.com” domain name.
North American Van Lines has filed a lawsuit alleging trademark infringement, unfair competition and cybersquatting. It states in its complaint that North American Master Lines was aware of the “northAmerican” marks and used them to profit from the consumer goodwill related to those marks. It claims that it has received complaints from consumers who were confused regarding whether North American Master Lines was affiliated with North American Van Lines. It also asserts that it sent a cease-and-desist letter to North American Master Lines but received no response.
The complaint lists the following counts:
· Count I: Cybersquatting Under 15 U.S.C. § 1125(d) with Respect to the NORTHAMERICAN Marks
· Count II: Trademark Infringement of the NORTHAMERICAN Marks Under 15 U.S.C. § 1114(1)
· Count III: Unfair Competition and False Designation of Origin of NORTHAMERICAN Marks Under 15 U.S.C. § 1125(a)
· Count VI [sic]: Unfair Competition and Trademark Infringement of the NORTHAMERICAN Marks Under Common Law
North American Van Lines asks for a judgment that North American Master Lines has infringed upon the “northAmerican” marks; the transfer of the domain name “NorthAmericanMasterLines.com”; an injunction; an order directing North American Master Lines to engage in corrective advertising; an accounting and disgorgement of profits resulting from unlawful acts; damages, including treble damages; statutory damages up to $100,000 for domain-name infringement; and attorney fees and costs.
Practice Tip: Under U.S. trademark law, geographic terms or signs cannot be registered as trademarks if they are geographically descriptive of where the goods (or services) originate. However, a geographical indication, as defined by the World Trade Organization, can also identify a particular good, not merely a geographic area. In such a case, a geographic term has been used to identify the provider of a good and, over time, consumers begin to use that geographic term not only as a descriptor of the geographic source, but also of a particular company. In such a case, the term has acquired “secondary meaning” — the capacity to identify the provider of the good — and can be protected as a trademark.