Ashland Inc. v. Randolph

Summarized by:

  • Court: Intellectual Property Archives
  • Area(s) of Law: Trademarks, Injunction
  • Date Filed: 10-25-2013
  • Case #: 3:13-21768
  • Judge(s)/Court Below: United States District Court for the Southern District of West Virginia, Huntington Division
  • LexisNexis Citation: 2013 U.S. Dist. LEXIS 153316
  • Westlaw Citation: 2013 WL 5777172
  • Full Text Opinion

A permanent injunction was granted to Valvoline when an automobile repair shop displayed Valvoline trademarks but used other products.

Opinion (Chambers): Defendant Jeff Randolph, d/b/a Kwik Lube (“Randolph”), leased and operated an automobile repair store where he advertised his store to the general public through signs and displays. Randolph’s signs prominently displayed several Valvoline® logos and other trademarks. Ashland Licensing and Intellectual Property, LLC, is the owner of the Valvoline® registered trademark. Plaintiff Ashland, Inc. (“Ashland”) is the exclusive licensee of these trademarks within the United States. The display of the Valvoline® logo and trademark is reserved to businesses under an agreement with Ashland authorizing the display. Randolph was not under any such agreement. To prevail on a trademark infringement claim, the plaintiff mark holder must prove: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant's use of the mark occurred "in commerce"; (4) that the defendant used the mark "in connection with the sale, offering for sale, distribution, or advertising" of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers. The main purpose of protection against trademark infringement is to "secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers." Ashland asserted that although Randolph advertised the use of Valvoline® products, he used products other than Valvoline® and thus misrepresented to the general public that he used Valvoline® branded products. Ashland argued that Randolph injured Valvoline's® business reputation. Despite two letters and repeated phone calls, Randolph refused to take down the trademarked displays.Because Randolph used the Valvoline® marks in commerce in a manner likely to cause confusion among consumers, the court permanently ENJOINED Randolph and ordered Randolph to remove any and all of Ashland’s registered trademarks.

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