Men of Measure Clothing, Inc. v. Men of Measure, Inc.
1986 Tenn. App. LEXIS 2910, 228 U.S.P.Q. (BNA) 777, 710 S.W.2d 43 (1986)
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Rule of Law:
The first party to appropriate and use a strong, arbitrary trade name in commerce acquires common law rights to that name and can prevent a subsequent user from using it if there is a likelihood of confusion, even if the parties are not in direct competition.
Facts:
- In 1979, Ralph Grossberg's Missouri corporation (Defendant) began a wholesale business selling surplus big and tall men's clothing under the name 'Men of Measure'.
- Defendant sold merchandise to retailers in nearly every state, including Tennessee, and advertised through fliers sent to most big and tall men's retailers in the U.S.
- In August 1983, Henry Barker's Tennessee corporation (Plaintiff) opened two retail stores in Knoxville and Johnson City selling big and tall men's clothing, also using the name 'Men of Measure'.
- Plaintiff also labeled some of its merchandise, including socks and shirts, with the 'Men of Measure' name.
- The big and tall men's clothing industry is a highly specialized and relatively small market.
- There was evidence of actual confusion, as two orders intended for the Defendant in Missouri were mistakenly delivered to the Plaintiff in Tennessee.
Procedural Posture:
- Plaintiff, the Tennessee retail corporation, filed a declaratory action against Defendant, the Missouri wholesale corporation, in the Tennessee Chancery Court (trial court).
- The chancellor found for the Defendant and permanently enjoined the Plaintiff from using the name 'Men of Measure'.
- Plaintiff, as appellant, appealed the chancellor's decision to the Tennessee Court of Appeals.
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Issue:
Does a subsequent user's use of an identical trade name in the same specialized market infringe upon the common law rights of the first user, even if the parties are not in direct competition and the name is not registered?
Opinions:
Majority - Franks, Judge
Yes. A subsequent user's use of an identical trade name in the same specialized market infringes on the first user's common law rights where there is a likelihood of confusion. Trade name rights are established by prior appropriation and use in trade, not by registration. The name 'Men of Measure' is an arbitrary and fanciful mark, which is inherently strong and requires no proof of secondary meaning for protection. The ultimate test for infringement is the likelihood of confusion, which is determined by factors such as the strength of the mark, similarity of the goods and marks, and evidence of actual confusion. Here, the mark is strong, the goods are in the same specialized market, the names are identical, actual confusion occurred, and the plaintiff adopted the name with knowledge of the defendant's prior use. Even though the parties are not in direct competition (wholesaler vs. retailer), infringement can occur if consumers are likely to be confused about the source or affiliation of the businesses.
Analysis:
This decision reaffirms the common law principle that rights in a trademark or trade name are established by first use, not registration. It highlights that strong, arbitrary marks receive the highest level of protection and do not require a showing of secondary meaning. The court's broad application of the 'likelihood of confusion' test to non-competitors within the same specialized industry is significant. This precedent strengthens the position of senior users against junior users, even if they operate in different market segments (e.g., wholesale vs. retail), and cautions that adopting a known name, even in a different geographic area, carries substantial legal risk.
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