IP Law Daily, TRADEMARK—E.D. Mo.: Homebuilder can pursue state anti-dilution claim against competitor, (Nov 8, 2021)

By Kevin M. Finson, J.D.

A homebuilding company stated a claim under Missouri’s anti-dilution statute against a competing company with a similar name expanding into the same geographic area.

A St. Louis-based homebuilder plausibly alleged a claim under the Missouri anti-dilution statute against a Kentucky home builder with a similar name that was expanding into the St. Louis market, the federal district court in St. Louis has held. The statute could be applied to direct competitors and the parties’ marks were similar enough and had caused enough actual confusion for the claim to survive dismissal (Fischer & Frichtel Custom Homes, LLC v. Fischer Management, LLC, November 4, 2021, Schelp, M.).

Fischer & Frichtel Custom Homes, LLC (Fischer & Frichtel) was a homebuilding company that had worked in the St. Louis area for more than 75 years. Fischer Management, LLC (Fischer), a homebuilding company from Kentucky, recently acquired a homebuilding business in St. Louis and intends to operate that business under the name “Fischer Homes.” After receiving congratulatory messages from confused clients and members of the public, Fischer & Frichtel filed suit against Fischer for trademark infringement, unfair competition, and violation of Missouri’s anti-dilution statute. Fischer moved to dismiss the anti-dilution claim.

Direct competitiveness. Fischer argued that the anti-dilution statute did not apply because the parties were direct competitors, and the statute was limited to use of similar marks in different, non-competitive industries. The court held that case law existed showing application of the statute to direct competitors. In any event the degree of competition was a fact question not suitable for resolution on a motion to dismiss.

Similarity of marks. The court noted that actual confusion suggested similarity, but also determined that similarity was a fact-intensive question not suitable for a motion to dismiss.

Distinctiveness. The anti-dilution statute only applied to marks that were unique or distinctive, and the marks in question were simply surnames, which are generally considered “descriptive” marks. However, Fischer and Frichtel alleged that their mark had acquired distinctiveness through long and exclusive use over the course of more than 75 and extensive public recognition. The court determined that these allegations were sufficient at the motion to dismiss stage.

The Court denied Fischer’s motion to dismiss the anti-dilution claim.

The Case is No. 4:21-cv-00470-MTS.

Attorneys: B. Scott Eidson (Stinson LLP) for Fischer & Frichtel Custom Homes, LLC. John E. Petite (Greensfelder Hemker PC) for Fischer Management, LLC and Fischer Homes, Inc.

Companies: Fischer & Frichtel Custom Homes, LLC; Management, LLC; Fischer Homes, Inc.

Cases: Trademark MissouriNews GCNNews