IP Law Daily, TRADEMARK—DNeb: Omaha Mover Preliminarily Barred from Using Marks Similar to Nationwide Franchisor’s TWO MEN AND A TRUCK Mark, (Nov 8, 2012)

By Thomas Long, J.D.

A moving business franchisor was entitled to a preliminary injunction barring a competitor from infringing its service mark TWO MEN AND A TRUCK, the federal district court in Omaha has determined (Two Men and a Truck/International, Inc. v. Thomas, November 7, 2012, Camp, L.). The competitor’s use of the business name “Two Men and Two Trucks” was likely to confuse consumers, and the complaining company would sustain irreparable harm without preliminary injunctive relief.

The complaining company (Two Men and a Truck/International, Inc.) was the largest local moving company franchisor in the United States. There were over 180 licensed TWO MEN AND A TRUCK locations in 32 different states, with over 1,300 moving trucks displaying the mark. Two of the locations were in Nebraska, one of which served Omaha and its surrounding areas. The company owned two incontestable trademark registrations for TWO MEN AND A TRUCK in standard characters, issued in 1996 and 2005.

The competitor was not, and had never been, a TWO MEN AND A TRUCK franchisee or otherwise affiliated with the complaining company. Without authorization and despite the company’s objections, the competitor had been using the name and mark “Two Men and Two Trucks” in connection with his moving services business that directly competed with the services offered by the plaintiff and its Omaha franchisee.

Likelihood of Confusion

The TWO MEN AND A TRUCK mark was both conceptually and commercially strong, the court said. The mark was at least suggestive and therefore inherently distinctive. The plaintiff’s use of the mark since at least 1998 and its nationwide business success were evidence of commercial strength. The factor of mark strength weighed in favor of a likelihood of confusion.

The plaintiff was likely to succeed in establishing that the marks were confusingly similar, the court said. The difference between the marks was minimal. The confusing effect of the similarity between the marks was heightened by the fact that the parties offered identical services. Moreover, the competitor advertised his services using the same means as the plaintiff, including the telephone directory and the Internet, and he targeted the same customers.

The plaintiff was likely to show that the competitor chose the name “Two Men and Two Trucks” with the intent of causing the public to mistakenly believe that he was associated with the plaintiff. There was evidence that the competitor had represented himself on the phone as representing the Omaha TWO MEN AND A TRUCK franchise.

There had been several reported instances of actual confusion, the court noted. The plaintiff presented statements from consumers who had intended to hire the Omaha TWO MEN AND A TRUCK franchise, but had contacted the defendant’s business instead. The consumers also reported having bad experiences with the defendant’s moving business.

Irreparable Harm

The harm caused to the plaintiff’s goodwill by the competitor’s use of “Two Men and Two Trucks” was demonstrated by the fact that the competitor’s moving services business had received an “F” rating from the Better Business Bureau (BBB), on a scale of “A+” to “F.” In addition, the BBB’s review noted that consumers had reported confusion over the similarity of the name of the company with the name of the plaintiff’s company, which was a BBB-accredited business. The court also noted that the competitor had been operating his business in Nebraska intrastate commerce as a motor carrier without the proper authorization from the Nebraska Public Service Commission.

Preliminary Injunction

The competitor was preliminarily enjoined from using the designation “Two Men and Two Trucks,” the URL www.twomenandtwotrucks.com, and any confusingly similar imitation of the plaintiff’s TWO MEN AND A TRUCK mark, in connection with his services. He was ordered to remove all internal and external signage that bore marks that were confusingly similar to the plaintiff’s mark and to cease using all advertising and promotional materials bearing the marks “Two Men and Two Trucks,” TWO MEN AND A TRUCK, or any confusingly similar brand.

The case is No. 8:12CV340.

Christopher P. Bussert (Kilpatrick Townsend Law Firm) for Two Men and a Truck/International, Inc.

Cases: Trademark NebraskaNews