The Flower Wars of Wooster -- Why Trademarks Matter
This week, the Ohio Supreme Court issued a decision which affirmed the Ninth District Court of Appeals decision which, in turn, affirmed the Wayne County Court of Common Pleas decision dismissing the lawsuit between competing florists.
The case turned on domain names. Wooster Floral & Gifts was a flower and gift shop in Wooster, Ohio. It owned the domain name woosterfloral.com. The business ceased operations, sold some of its assets to an employee, and allowed the domain name to expire. Green Thumb Floral & Garden Center then registered the woosterfloral.com domain name. In the meantime, the employee who bought some of Wooster Floral’s assets registered her new floral business with the Ohio Secretary of State and secured the tradename “Wooster Floral LLC”
Wooster Floral attempted to buy woosterfloral.com from Green Thumb. Green Thumb wanted $2,500 for it, in response to which Wooster Floral sued Green Thumb claiming deceptive trade practices and trademark infringement.
The trademark infringement case claim was dismissed because Wooster Floral did not register (and, therefore, did not own) the trademark on Wooster Floral.
The deceptive trade practices claim was dismissed because, as the Ohio Supreme Court ruled, Wooster Floral did not provide sufficient evidence to show that there was confusion about who was actually selling the products. As the Court noted, when a consumer used the woosterfloral.com domain name, it took them to a website clearly titled “Green Thumb Floral”:
Because of that straight forward nature and the lack of evidence, the deceptive trade practices claim failed.
The Court’s standard is different than what federal law calls for. Federal law, as Justice French noted in her dissent, uses an “initial interest confusion” test as part of an 8-factor test to analyze the likelihood of confusion.
What is left unstated, though, is that having a trademark on the name Wooster Floral would have (1) allowed Wooster Floral to pursue its trademark infringement claim further and (2) allowed it to bring a cybersquatting case with ICANN against Green Thumb and, under the terms of UDRP, force the domain name to be surrendered by Green Thumb.
Your takeaway as a business leader?
Trademark your business name (and associated names) with the United States Patent and Trademark Office. (Note: The Entrepreneurial General Counsel name is registered, as is the logo)
Always make sure your domain name registration is up to date and renewing automatically.
To read the Court’s opinion, click here.