September 2009 Issue

Civil Cases

Hensley Mfg., Inc. v. ProPride, Inc.,
2009 WL 2778220 (6th Cir. Sept. 3, 2009)

ABSTRACT
The Sixth Circuit Court of Appeals held that a trailer-hitch company that used the surname of its competitor’s former designer to advertise hitches designed by the same man made noninfringing fair use of the name.  The court also found that there was no likelihood of consumer confusion because the defendant used the designer’s name to identify him as a designer of its trailer hitches rather than using his name as a trademark.

CASE SUMMARY

FACTS
Plaintiff Hensley Manufacturing, Inc. (“Hensley Mfg.”) manufactures and sells the “Hensley Arrow,” a trailer hitch designed by Jim Hensley.  Jim Hensley licensed his hitch business to Hensley Mfg. in 1994.  Hensley Mfg. owns trademark registrations for the marks HENSLEY and HENSLEY ARROW.  Defendant ProPride, Inc. (“ProPride”), founded by former Hensley Mfg. employees, also makes trailer products.  After Jim Hensley left Hensley Mfg. in 2007, ProPride hired him to design a new trailer hitch called the “ProPride Pivot Point Projection Hitch” or “3P Hitch.”  ProPride promoted the new hitch in print and mail advertisements identifying Jim Hensley as the designer and touting the new hitch as an improved design.  ProPride’s website included a section on “The Jim Hensley Hitch Story” explaining Jim Hensley’s background and relationship with ProPride.  ProPride also used the domain name jimhensleyhitch.com, which redirected users to ProPride’s website.  Finally, ProPride advertised on eBay under a listing stating “Used Hensley Arrow Hitch?  Buy New J. Hensley Design.”  Hensley Mfg. sued ProPride and Jim Hensley for federal and common-law trademark infringement and unfair competition, among other claims.  Both defendants moved to dismiss the complaint. 

The district court granted ProPride’s motion, finding that its use of the Hensley name constituted a descriptive fair use of an individual’s name, other than as a mark, to fairly and in good faith describe ProPride’s goods under 15 U.S.C. § 1115(b)(4) (the district court also granted Jim Hensley’s motion to dismiss).  The district court determined that ProPride had not marked its goods with the Hensley name, but rather used the Hensley mark only to describe its own goods and in comparative advertising.  Even assuming Jim Hensley sold the rights to his name to Hensley Mfg., he sold only the right to use his name as a trade name and trademark.  The district court found that he could still take advantage of his individual reputation by advertising his affiliation with a new company if not done in an “overly intrusive manner.”  Although the district court viewed ProPride’s domain name jimhensleyhitch.com as “somewhat questionable,” it ultimately found that the domain name was permissible because the “use [of] defendant Hensley’s whole name distinguish[ed] it from Plaintiff’s product,” the domain name related directly to Jim Hensley’s affiliation with ProPride, and ProPride did not otherwise attempt to link itself with Hensley Mfg. 

ANALYSIS
The Sixth Circuit affirmed the district court’s holding that ProPride did not use the Hensley name in a trademark sense.  Hensley Mfg. argued that the district court improperly granted ProPride’s motion to dismiss because Hensley Mfg.’s complaint sufficiently stated that ProPride’s use of the Hensley marks was likely to cause confusion. 

The court disagreed and stated that a likelihood-of-confusion analysis only applies if a defendant is using the challenged mark in a way that identifies the source of its goods.  In this case, Hensley Mfg.’s complaint did not allege facts sufficient to show that ProPride’s use of the Hensley name created a likelihood of confusion regarding the source of its products.  ProPride’s advertisements identified Jim Hensley as the designer of their new 3P Hitch, and each advertisement stated that Jim Hensley is no longer affiliated with Hensley Mfg.  The advertisements also clearly identified ProPride as the source of the 3P Hitch by including ProPride’s website domain name and several other references to ProPride.  The Sixth Circuit found that the advertisements did not identify Hensley Mfg. or even “Hensley” as the source of ProPride’s products, and did not suggest any current association between Hensley Mfg. and Jim Hensley or ProPride.  Therefore, the court found no likelihood of consumer confusion regarding the source of ProPride’s products. 

The Sixth Circuit held further that even if Hensley Mfg.’s complaint had shown a likelihood of confusion, ProPride’s affirmative defense of fair use barred Hensley Mfg.’s infringement claims.  Fair use allows for the use of a protected mark in a descriptive sense, if used in good faith.  Hensley Mfg. admitted that the law allows ProPride to use Jim Hensley’s name in a descriptive sense to advertise his affiliation with ProPride, and the court stated that this is exactly what had occurred.  ProPride’s advertisements only used Jim Hensley’s name to identify him as a designer of trailer hitches, describe his relationship with ProPride, and detail the story of his success in the industry.  The court also noted that Hensley Mfg. assumed some risk of consumer confusion by registering Jim Hensley’s own personal last name as a trademark.

CONCLUSION
The Sixth Circuit’s decision highlights that a defendant must be using a protected mark in a trademark sense in order for a court to undertake a likelihood-of-confusion analysis.  It also explores how the use of a surname as a trademark interacts with the well-known doctrine that the use of a party’s protected mark to describe its goods, rather than to falsely suggest the party as the source of the goods, is a noninfringing fair use of a mark.