The President and Trustees of Colby College v. Colby College-New Hampshire
508 F.2d 804, 1975 U.S. App. LEXIS 16653, 185 U.S.P.Q. (BNA) 65 (1975)
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Rule of Law:
An entity can obtain tradename protection for a non-fanciful name by demonstrating it has acquired secondary meaning, meaning the name has become primarily associated with that entity in the minds of the relevant public. A competitor's use of a confusingly similar name constitutes infringement, even if done in good faith, if it is likely to increase public confusion.
Facts:
- Since 1899, the plaintiff, located in Waterville, Maine, has operated as a four-year liberal arts college under the name 'Colby College'.
- The defendant, located in New London, New Hampshire, was originally a secondary school and in 1878 changed its name to 'Colby Academy' in recognition of a benefactor.
- In 1933, the defendant ceased secondary education, became a two-year institution for women, and changed its name to 'Colby Junior College for Women'.
- Over the subsequent decades, the defendant began offering a limited number of baccalaureate degrees.
- In October 1972, the defendant's board of trustees voted to change its name to 'Colby College-New Hampshire' to reflect its decision to admit men and its expanded curriculum, with the change to be effective July 1, 1973.
Procedural Posture:
- The President and Trustees of Colby College sued the defendant institution in the U.S. District Court for the District of New Hampshire.
- The plaintiff sought an injunction to prevent the defendant from using the name 'Colby College-New Hampshire'.
- The district court denied the plaintiff's motion for a preliminary injunction.
- Following a trial, the district court dismissed the complaint, finding the plaintiff had not established secondary meaning or a likelihood of increased confusion.
- The plaintiff (appellant) appealed the dismissal to the U.S. Court of Appeals for the First Circuit.
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Issue:
Does an educational institution's name change to 'Colby College-New Hampshire' infringe upon the established tradename of 'Colby College' when the latter has acquired secondary meaning and the name change is likely to increase public confusion between the two institutions?
Opinions:
Majority - Aldrich, Senior Circuit Judge
Yes. The defendant's name change infringes on the plaintiff's tradename because 'Colby College' has acquired a secondary meaning and the new name, 'Colby College-New Hampshire,' is likely to increase confusion. The district court erred by requiring proof of 'exclusive' secondary meaning; the correct standard is 'primary significance' in the minds of the consuming public. Plaintiff established secondary meaning through long and exclusive use of the name 'Colby College,' its size and prominence, its promotional efforts, expert testimony from the academic community, and survey evidence showing a strong public association of the name with the Maine institution. The court also found it was clear error to conclude the new name would not increase confusion. The name 'Colby College-New Hampshire' is facially more similar to 'Colby College' than 'Colby Junior College for Women,' and the geographic suffix '-New Hampshire' is insufficient to prevent confusion and may even suggest affiliation. Evidence showed the new name was already being shortened to the identical 'Colby College,' exacerbating the problem. The defendant's good faith is not a defense where likelihood of confusion is established.
Analysis:
This decision clarifies the standard for proving secondary meaning in tradename infringement cases, rejecting a strict 'exclusivity' requirement in favor of a 'primary significance' test. It demonstrates the weight courts give to various forms of evidence, including consumer surveys and expert testimony, in establishing this significance within a specific 'public,' such as the academic community. The ruling reinforces the principle that good faith is not a defense to infringement if a likelihood of confusion exists. For future cases, it emphasizes that adding a geographic modifier to a well-established name may increase, rather than decrease, confusion and is unlikely to shield the user from an infringement claim.
