Field Moot Court 1999

This case was initiated by Tires Galore of Albany, NY (TGNY) against Tires Galore of Springfield, MA (TGMA) to enjoin TGMA’s operating a retail tire store in Pittsfield, MA. Subsequently, when TGNY mounted a page on the world wide web and opened its own Pittsfield store, TGMA filed a reciprocal action. Those actions have been joined.

Products sold by both parties carry brands such as “Goodyear” or “Uniroyal.” Hence, “Tires Galore” is a service mark, but “trademark” or “mark” will be used for simplicity.

In 1990, TGNY began selling tires from its only store under the name, “Tires Galore.” It also advertised on TV and radio, reaching an audience within about a 60 mile radius, including Pittsfield, MA (40 miles). Still, there is no evidence of any Pittsfield consumer’s ever going to Albany. Until recently, TGNY’s only Pittsfield sales were to other retailers.

In 1975, TGMA began as “Tires Galore” in Springfield, 40 miles east of Pittsfield. By late 1996, it had spread in every direction except west and had twenty stores throughout New England. Although it advertised, e.g., on Boston and Springfield TV and radio, the Berkshires blocked Pittsfield reception. In February 1997, it opened a Pittsfield store and began advertising west of the Berkshires. Although TGMA has not used Albany stations, many people between Albany and Pittsfield now receive two sets of boradcast ads. A few have gone to the wrong store in search of advertised specials.

After protesting TGMA’s ads, TGNY filed an action in mid-March 1997. Meanwhile, TGMA had adopted “New England Tires Galore” (NETG) in Pittsfield. Soon thereafter, it also registered NETG and “Tires Galore” in Massachusetts. About the same time, TGNY put up a “Tires Galore—Albany” web page and opened a Pittsfield store.

Neither party holds federal registration. Both have since applied, but proceedings in the U.S. Patent and Trademark Office have been stayed.

This court has jurisdiction under § 43 of the Lanham Act [15 U.S.C. § 1125] and 28 U.S.C. § 1338. Any effect on interstate commerce needed to support these actions is amply met.

Generally, rights in non-descriptive and non-functional source indicators, other than surnames, are acquired in a given geographic area by the first to use them on particular products or services. See, e.g., Two Pesos, Inc. v. Taco Cabana, Inc. 505 U.S. 763 (1992). Thus, TGMA’s rights east of the Berkshires are clear. Moreover, even though it was the first to use “Tires Galore” anywhere, its failure to do so in Albany means that TGNY has unquestioned rights in that market.

The first issue is who was the first to use “Tires Galore” in Pittsfield? TGNY claims this by virtue of both sales and broadcast ads. The former is irrelevant; no Pittsfield consumer ever associated it with tires. Also, the latter is problematic in view of, e.g., Western Stove Co. v. George Roper Corp., 82 F.Supp. 206 (S.D. CA 1949). Still, in these circumstances, I find that TGNY has the right to exclude TGMA from using “Tires Galore” in areas previously covered by its broadcasts. See, e.g., Premier Pabst Corp. v. Elm City Brewing Co., 9 F.Supp 754 (D. CT 1935).

The second issue is whether TGMA may use the altered name in Pittsfield. The distance between Albany and Pittsfield, the weakness of the basic mark, the price of tires and other factors have led to little confusion, and it should lessen over time. Thus,TGMA may use its altered name in Pittsfield.

This leaves TGNY’s web site and its retail store in Pittsfield for consideration. On balance, I conclude that the bulk of consumers who reside outside of Albany, not to mention those in Pittsfield, are poorly served by two different firms using essentially the same mark.

The upshot is that TGMA cannot expand, even as TGNE, in the direction of Albany. Also, it cannot advertise on media that significantly penetrates TGNY’s primary market area except as TGNE or something more clearly distinct. Converesely, TGNY, cannot use “Tires Galore” in markets where the mark has indicated only TGMA for nearly 25 years or in Pittsfield where TGMA first opened a retail store.

Counsel may submit proposed final orders within 15 days. If required to resolve differences, a hearing will be scheduled shortly thereafter. Meanwhile, TGNY is ordered to cease use of “Tires Galore” in Pittsfield and on the web.

TGMA first asserts that the district court erred in according TGNY any priority in Pittsfield. Second, it complains of being able neither to use its original mark west of the Berkshires nor to expand as TGNE toward Albany. Third, it urges that being essentially foreclosed from any potential web presence as “Tires Galore” is unsupportable.

While TGNY agrees that TGMA should be precluded from using “Tires Galore” west of the Berkshires, it urges that permitting only TGMA to use any version of “Tires Galore” in Pittsfield is inconsistent with the court’s finding of TGNY’s prior presence. Moreover, it complains of being unable to use its common law mark on web pages that prominently note its location.

MootCourt