A federal district court in Wisconsin has granted a franchisor’s motion for a preliminary injunction against a former franchisee who continued to use a variation of the franchisor’s trademark after entering into a Franchise Termination Agreement. Dent Doctor, Inc. v. Dent Clinic, Inc., 2014 WL 7139831 (E.D. Wis. Dec. 12, 2014). Dent Clinic operated a Dent Doctor franchise from 1993 to 2012 until the parties entered into the termination agreement. The agreement required Dent Clinic to cease using the trademark DENT DOCTOR. In response, it replaced the mark DENT DOCTOR with DENT DR. on their trucks, business cards, and website. Dent Doctor sought a preliminary injunction against Dent Clinic to enjoin the use of DENT DR. Dent Clinic argued that it obtained retroactive licensing rights to use the mark DENT DOCTOR and DENT DR. from nearby Dent Doctor Auto Specialists, a third-party company in Augusta, Wisconsin, that has used the mark DENT DOCTOR since 1984. Dent Clinic argued that Auto Specialists had superior rights in the geographical area where it operated.
The Wisconsin court held that Dent Doctor was likely to demonstrate a likelihood of success on the merits, which required it to show that it owned a protectable mark and that a “likelihood of confusion” existed between the marks or products of the parties. Despite the retroactive licensing agreement, the court found Dent Doctor was likely to show that Auto Specialists’ superior rights did not extend to Dent Clinic’s geographic location. The court further held that Dent Doctor was likely to succeed in showing a likelihood of confusion because DENT DR. is an abbreviated version of DENT DOCTOR. In addition, the court found confusion was particularly likely in this case because Dent Clinic used to be affiliated with Dent Doctor as a franchisee, and customers may not realize they are no longer affiliated. The termination agreement served as important evidence in the court’s finding.
Maisa Frank represents clients in a variety of litigation matters. Whether conducting pre-dispute investigations, navigating litigation, or negotiating resolutions, Maisa’s advice and strategy is vital to clients facing ...
The information contained in this post is provided to alert you to legal developments and should not be considered legal advice. It is not intended to and does not create an attorney-client relationship. Specific questions about how this information affects your particular situation should be addressed to one of the individuals listed. No representations or warranties are made with respect to this information, including, without limitation, as to its completeness, timeliness, or accuracy, and Lathrop GPM shall not be liable for any decision made in connection with the information. The choice of a lawyer is an important decision and should not be based solely on advertisements.
About this Publication
The Franchise Memorandum is a collection of postings on summaries of recent legal developments of interest to franchisors brought to you by Lathrop GPM LLP.
To subscribe to monthly emails for The Franchise Memorandum, please click here.