Indianapolis, Indiana — Hallmark Home Mortgage, LLC of Fort Wayne, Indiana sued Hallmark Rentals & Management, Inc. of Bloomington, Indiana seeking a declaration that its uses of “Hallmark,” including an application for the trademark “Hallmark,” Serial No. 85/937,259, which is currently pending with the U.S. Trademark Office, are non-infringing.
Hallmark Home Mortgage was founded in February 2007. It operates a mortgage-lending business under the trademark “Hallmark Home Mortgage,” which currently operates in 11 locations in Indiana, Ohio and Florida. It asserts that it has plans to expand its business into other states. Hallmark Home Mortgage focuses on financial services for residential real estate.
In its complaint, Hallmark Home Mortgage states that it began using the Hallmark Home Mortgage trademark in connection with its home mortgage lending business in February 2007. Since then, it claims that it has continuously and prominently used the trademark in connection with its home-mortgage lending business.
Hallmark Home Mortgage has a pending application for trademark registration with the U.S. Patent and Trademark Office for the “Hallmark” mark (word only), in International Class 036 and used in connection with the following: Financial services, namely, mortgage planning; Financial services, namely, mortgage refinancing; Housing services, namely, real property acquisition and consumer financing to facilitate home ownership; Insurance agencies in the field of home, vehicles, personal property; Insurance brokerage in the field of home insurance; and Mortgage brokerage.
In addition to the application pending with the U.S. Patent and Trademark Office, Hallmark Home Mortgage is also the owner of the Trademark “Hallmark Home Mortgage,” Registration No. 2013-0263, which is registered with the State of Indiana. This mark is registered for use in connection with residential mortgage financing, settlement of mortgage loans, mortgage insurance and related services.
Hallmark Rentals & Management, the Defendant, operates one location in Bloomington, Indiana, at which it provides commercial and residential property management services under the brand name “Hallmark Rentals & Management.”
In May 2013, Hallmark Rentals & Management sent a cease-and-desist letter to Hallmark Home Mortgage claiming that the latter was infringing on Hallmark Rentals & Management’s intellectual-property rights in the “Hallmark” mark and, further, was engaging in unfair competition. In its communications, it claimed to own “common law trademark rights, common law service mark rights, and trade name rights . . . with regard to the Hallmark name.” It further indicated that it uses the Hallmark name in “activities hav[ing] to do with real estate.” Finally, it stated that it would sue Hallmark Home Mortgage if Hallmark Home Mortgage did not immediately cease and desist from any use of the term “Hallmark.”
In response, Hallmark Home Mortgage sued Hallmark Rentals & Management for declaratory judgment. It seeks a judgment of non-infringement of common law trademark rights under the Lanham Act, common law and the laws of Indiana.
In the complaint for declaratory relief, intellectual-property lawyers for Hallmark Home Mortgage listed the following:
· Count I: Declaratory Judgment of Non-Infringement
· Count II: Declaratory Judgment of No Unfair Competition
Hallmark Home Mortgage asks for a judgment that its use of the “Hallmark” trademark does not infringe upon any trademark rights of Hallmark Rentals and Management; a judgment that its use of the “Hallmark” trademark does not constitute unfair competition; an injunction preventing Hallmark Rentals and Management from interfering with Hallmark Home Mortgage’s use and registration of the trademark “Hallmark,” and from opposing, seeking to cancel, or otherwise objecting to any registration applications to the “Hallmark,” trademark; attorney’s fees and costs.
Practice Tip: Rights to a trademark may be limited to a particular segment of trade, on the theory that consumers would not be confused by two entities with similar names that engaged in significantly dissimilar businesses. For example, consumers are not likely to confuse Delta Airlines and Delta Faucet. Concurrent trademark registrations may also be allowed for marks that are geographically separate.