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Beerntsen Candies, Inc. v. Beerntsen’s Confectionary, Inc.

Summarized by: 

Date Filed: 05-24-2012
Case #: 11-C-151
Griesbach
Full Text Opinion: http://docs.justia.com/cases/federal/district-courts/wisconsin/wiedce/1:2011cv00151/55510/90/

Trademarks: Surname rule applies even after the name no longer gives information about the owner of the business.

Opinion (Griesbach): Beerntsen Candies (Candies) alleged trademark infringement against Beerntsen Confectionaries (Confectionaries). The original stores had been opened by brothers in towns 35 miles apart. Candies was founded in 1925, and Confectionaries in 1932. Both companies have developed reputations in their region. Candies stayed in the Beerntsen family, but, in 2003, Confectionaries was sold to Schadrie Chocolates, Inc.. Confectionaries argued that because Confectionaries was no longer owned by a Beerntsen, the general rule that surnames require a secondary meaning to be protectable should apply. The court ruled that even though the surname Beerntsen no longer provides information about the owners of Confectionaries, it does provide information about the continuity of a well-established candy store, and thus the surname rule still applies. The court DISMISSED the trademark claims with prejudice.