Opinion
No. 4103913
September 5, 2007
MEMORANDUM OF DECISION
On March 7, 2006, the plaintiff, William Engdall, filed a three-count complaint against the defendants, John Wadsworth, Robert Wadsworth, and Mago Point Marina, LLC. Therein, the plaintiff alleges that, in November 1992, he entered into a lease agreement with "Wadsworth Enterprises and Wadsworth Family Trust . . . to lease certain buildings and parcels of land, together with docks, gas and fuel tanks and appurtenant equipment for the use and operation" of a marina. The plaintiff further alleges that at the time of the signing of the lease agreement the marina was known by the name "Waddy's Mago Point Marina," and that upon commencement of possession and operation of the premises he "discontinued the use of the term `Waddy's' and the marina was thereafter known as Mago Point Marina." The plaintiff further contends that, on July 11, 1997, the defendants sold the marina property, that they were then leasing to the plaintiff, to D.E.W. Enterprises, LLC, of which the defendant, John Wadsworth, is a managing member. The plaintiff alleges that the "defendants' predecessor in title attempted to evict the plaintiff from the leased property" and that subsequent to the commencement of the summary process action, counsel for the predecessor in title attempted to procure the use of the name "Mago Point Marina" on behalf of the defendants. The plaintiff contends that he refused to acquiesce. The plaintiff further alleges that, on March 13, 2000, he entered into a new lease agreement with D.E.W. Enterprises, LLC. The plaintiff claims that subsequent thereto, "[o]n or about September 13, 2004, the [p]laintiff registered [the service mark] `Mago Point Marina'" with the Secretary of the State of Connecticut pursuant to General Statutes § 35-11a. The plaintiff contends that he solely "developed a customer and client base that associated his name, efforts and services with the name `Mago Point Marina'" from the time he took possession until the end of 2004, when the second lease terminated. The plaintiff alleges that after vacating the leased premises he continued to use, and presently uses, the name "Mago Point Marina" for a boat storage business that he operates on a property in close proximity to the one he previously leased from the defendants. In summation, the plaintiff claims that the defendants have used and currently use the name "Mago Point Marina" in violation of his service mark registration, that he has "no adequate remedy at law," and that the defendants "have committed unfair or deceptive acts of practices" in violation of Connecticut's Unfair Trade Practices Act (CUTPA), General Statutes § 42-110a.
FACTS
The court hereby finds the following facts.
The marina located at 20 First Street in Waterford, CT, which is the setting of this dispute, was constructed by Earle Wadsworth (defendant John Wadsworth's father) with the help of defendant John Wadsworth, in the early 1960s. (Testimony of John and Robert Wadsworth, Defendant's Exhibits A, B, C, Q and R.)
Upon completion of the construction of the marina it was called "Mago Point Marina" and a sign was erected on the property with the name inscribed thereon. (Testimony of John and Robert Wadsworth, Defendant's Exhibits A, B, Q and R.)
In the years that followed the construction of the marina, Earle Wadsworth was also commonly referred to by his nickname "Waddy," and accordingly the marina was also referred to by the names "Waddy's Dock" and "Waddy's Mago Point Marina." (Testimony of John and Robert Wadsworth, Defendant's Exhibit Q.)
By way of a lease agreement, dated November 11, 1992, the plaintiff leased the subject marina property from Wadsworth Enterprises and the Wadsworth Family Trust. (Plaintiff's Exhibit 2.)
The term of the lease was for five years, commencing on January 1, 1993. (Plaintiff's Exhibit 2.)
At the time of the signing of the lease agreement, the defendants used the service mark and trade name, "Waddy's Mago Point Marina," in their operations of the subject marina property. (Testimony of John and Robert Wadsworth, Plaintiff's Exhibits 2, 3, 4a, 4b.)
In 1993, when the plaintiff took possession of the marina property to carry out and manage the business' operations, he continued to use the service mark "Waddy's Mago Point Marina" in association with the services of the marina business. (Testimony of William Engdall, Defendant's Exhibits S, Y, DD.)
At the time the plaintiff leased the subject marina property, he also owned and operated, through his corporation entity, a separate marina business located at 8-10 River Street, named "Niantic Bay Marina, Inc." (Testimony of William Engdall, Defendant's Exhibits G, N.)
The plaintiff currently owns and operates the "Niantic Bay Marina, Inc." (Testimony of William Engdall.)
At some point during 1997, while operating "Waddy's Mago Point Marina," the plaintiff discontinued using the word "Waddy's" in the service mark and used the service mark, "Mago Point Marina," in connection with the business. (Defendant's Exhibits S, W.)
On April 16, 1997, defendant John Wadsworth registered "Mago Point Marina, LLC" with the Secretary of the State as a domestic limited liability company. (Testimony of John Wadsworth, Defendant's Exhibit V.)
By deed, dated July 11, 1997, the marina was sold within the Wadsworth family to D.E.W. Enterprises LLC, of which defendant John Wadsworth was a managing member. (Defendant's Exhibit Z.)
Thereafter, a dispute arose over possession of the marina property and a summary process action was brought to evict the plaintiff. On August 12, 1998, the action was resolved by a judgment in favor of the plaintiff. (Plaintiff's Exhibit 38.)
Following the adjudication of the summary process action the parties engaged in negotiations for a new lease agreement, during which a dispute arose over the use of the service mark, "Mago Point Marina." The plaintiff and defendant John Wadsworth each claimed the exclusive right to use the service mark. (Testimony of William Engdall and John Wadsworth, Plaintiff's Exhibits 8, 9.)
After extensive negotiations, on March 13, 2000, the parties entered into a new lease agreement with an expiration date of December 31, 2004. (Plaintiff's Exhibit 10.) The new lease, however, did not address use of the service mark, "Mago Point Marina."
The plaintiff continued to operate the subject marina property/business in association with the service mark, "Mago Point Marina," until the expiration of the new lease in December 2004. (Testimony of William Engdall.)
Prior to the expiration of the new lease, in August 2004, the parties each drafted a letter, and mailed them out together to existing customers of the subject marina advising them that the plaintiff was to cease operating/managing the "Mago Point Marina" on December 31, 2004. (Plaintiff's Exhibit 11.)
At trial there was conflicting testimony as to whether the letters were mailed out of the plaintiff's office without his prior review.
Thereafter, on September 13, 2004, the plaintiff registered the service mark, "Mago Point Marina" with the Connecticut secretary of the state office, and received a Certificate of Registration. (Plaintiff's Exhibits 12, 13.)
During that period of time, the defendants continued to use the name, "Mago Point Marina LLC," their registered corporate name, in association with the subject marina property.
On September 30, 2004, the plaintiff sent a fax to the defendant, John Wadsworth. (Plaintiff's Exhibit 14.) The fax stated that the plaintiff was currently using the name "Mago Point Marina" for, or in connection with, his business (presumably his Niantic Bay Marina business) and that he intended to continue to do so in the future. The plaintiff's fax further stated that the name, "Mago Point Marina," was a registered trademark, and requested defendant John Wadsworth to cease using the name. (Plaintiff's Exhibit 14.)
Thereafter, the defendants continued to market the services of the subject marina business/property using the service mark and trade name, "Mago Point Marina, LLC," and the plaintiff continued to utilize the service mark, "Mago Point Marina," to promote his manna business on Niantic Bay. (Plaintiff's Exhibits 16a, 16b, 17, 36.)
The plaintiff has filed the present action contending that he has appropriated the rights to exclusively use the service mark "Mago Point Marina" and that the defendants' current use of the service mark and trade name entitled "Mago Point Marina, LLC" is in violation of this right.
The parties stipulate that concurrent use of the names "Mago Point Marina" and "Mago Point Marina, LLC" could cause confusion in the minds of the public. (Court Exhibit 1.)
The court now turns to the determinative issue of which party has the right to the exclusive use of their service mark.
DISCUSSION
Although the mark, which is the focus of this case, was registered as a service mark, the terms "service mark" and "trademark" will be used interchangeably herein as the standards of validity and law of infringement discussed in this memorandum of decision are interchangeable.
I. Trademarks and Service Marks Establishing Ownership
"A trademark is intended to designate distinctively the origin or ownership of the product [or service] to which it attaches. In other words, a trademark is designed to give the public notice of the identity of the producer [or service provider]." Covenant Radio Corporation v. Ten Eighty Corp., 35 Conn.Sup. 1, 5, 390 A.2d 949 (1977); see also Boardman v. Meriden Britannia Co., 35 Conn. 402, 413 (1868). Under General Statutes § 35-11a(2), a "service mark" is defined as "any word, name, symbol, or device or any combination thereof used by a person to identify the services of one person, including a unique service, to distinguish them from the services of others, and to indicate the source of the services, even if that source is unknown" "Our statutes provide a legal mechanism for protecting service marks against the unauthorized use of similarly styled marks in General Statutes Ch. 621a, § 35-11a through § 35-11m." Treat v. Tomaszewsky, Superior Court, judicial district of Tolland at Rockville, Docket No. CV 06 4006097 (January 11, 2007, Sferrazza, J.) [ 42 Conn. L. Rptr. 661]. The purpose of Chapter 621a is "to give . . . protection from infringement or unauthorized use." Metro Bulletin Corp. v. Soboleski, 30 Conn.App. 493, 499, 620 A.2d 1314, cert. granted, 225 Conn. 923, 625 A.2d 823 (1993). Chapter 621a of the General Statutes, however, is not the only authority upon which parties may rely in seeking protection from the unauthorized use of their mark. Parties may also rely upon their common-law trademark rights.
General Statutes § 35-11k provides: "Nothing in this chapter shall adversely affect the rights or the enforcement of rights in marks or trade names acquired in good faith at any time at common law."
"To prevail on a statutory or common law trademark [or service mark] infringement claim a plaintiff must demonstrate . . . that [the mark is] owned by [the] plaintiff . . ." Pirone v. MacMillan, Inc., 894 F.2d 579, 581-82 (2d Cir. 1990). Generally, it is not registration, but only actual use of a designation as a mark that creates rights and priority over others. See J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 16:1. Accordingly, ownership and priority in a mark belongs to the party who was "first-to-use" the mark. Id. General Statutes § 35-11a(8) provides: "[t]he term `use' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For the purposes of this chapter, a mark shall be deemed to be in use . . . on services when it is used or displayed in the sale or advertising of services and the services are rendered in this state."
The Model State Trademark Bill, which was originally drafted and endorsed by the International Trademark Association, is used to promote uniformity among state trademark offices. The Model Bill has served as the foundation for the trademark laws of a majority of the states, and Connecticut's trademark statutes have been adopted in conformity with this Model Bill. "Since the Model Bill is patterned after the Lanham Act, it is appropriate for a court in interpreting . . . state law to rely upon federal case law interpreting the Lanham Act." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 22:7.
Based on the facts in the present case, the defendants created the service mark, "Mago Point Marina" in the early 1960s to identify their marina services, and to distinguish their marina services from the services of other marinas. During that same time period, the defendants established ownership in their service mark by being the first to "use" the service mark. By constructing and erecting a highly visible sign on the marina property, inscribed with the name "Mago Point Marina," the defendants used and displayed their service mark in the advertising of their services. Thus, the defendants' common-law rights to the exclusive use of their service mark commenced, limited to the geographic area in which the service mark was used.
As the first "users" of the service mark, "Mago Point Marina," it is the defendants, and not the plaintiff, who hold the right to register the mark in the state of Connecticut. Therefore, the plaintiff cannot prevail on either a common-law or statutory service mark infringement claim because the plaintiff is unable to establish that he is the owner of the mark.
II. Geographically Descriptive Terms as Trademarks and Service Marks
The parties in this case have also posed the question as to whether the service mark, "Mago Point Marina," is capable of protection because of its alleged inherent geographically descriptive nature. "A `geographically descriptive [service mark]' is any noun or adjective that designates geographical location and would tend to be regarded by buyers as descriptive of the geographic location of origin of the . . . services." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 14:2. "A geographically descriptive [service mark] can indicate any geographic location on earth, such as . . . regions . . . areas of cities . . . and any other location referred to by a recognized name." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 14:3. Here, the defendants have established that "Mago Point" is a geographical location. According to the testimony provided by the defendants: "Mago Point" is the name of a point of land in the Town of Waterford; there are road signs which direct motorists to Mago Point; the town of Waterford has a park located on "Mago Point" which is called "Mago Point Park"; there is a sign located at the entrance to "Mago Point" which designates it as "Mago Point Waterfront District"; and "Mago Point" is located on nautical charts and land maps. (Testimony of John and Robert Wadsworth, Defendant's Exhibits D, E, F.) Therefore, the service mark, "Mago Point Marina," qualifies as a geographically descriptive mark because it is descriptive of the geographic location of origin of the marina's services — Mago Point in Waterford.
Nevertheless, geographically descriptive service marks are generally not protectable against unauthorized uses, unless they have acquired a certain degree of distinctiveness. This is due to the fact that "[service marks] that are descriptive of the geographic location or origin of . . . services are regarded by the law as not being `inherently distinctive' marks. Since geographically descriptive [service marks] are not inherently distinctive, they can be protected as [service marks] only upon proof that through usage, they have become distinctive. Such an acquisition of distinctiveness is referred to as `secondary meaning.'" J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 14:1. See also 74 Am.Jur.2d Trademarks and Tradenames § 52; Forschner Group, Inc. v. Arrow Trading Co. Inc., 30 F.3d 348 (2d Cir. 1994). Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149-43 (2d Cir. 1997). "`[S]econdary meaning' attaches when, in the public mind, the name or mark is associated with the particular business rather than with . . . the location of [the] business." (Internal quotation marks omitted.) Arian Enterprises, LLC v. Lawson, Superior Court, judicial district of Middlesex, Docket No. X04 CV 05 4004655 (March 7, 2006, Beach, J.); see Mohegan Tribe of Indians of Connecticut v. Mohegan Tribe Nation, Inc., 255 Conn. 358, 367, 769 A.2d 34(2001). More specifically, a service mark acquires secondary meaning "when it has been so used that the primary significance of the term . . . in the minds of the . . . public is not the generic . . . service . . . but the particular . . . service and its . . . supplier . . ." (Internal quotation marks omitted.) Covenant Radio Corp. v. Ten Eighty Corp., 35 Conn.Sup. 1, 7, 390 A.2d 949 (1977).
As this concept of "secondary meaning" pertains to the present case, the inquiry required is mainly factual in nature. The question is whether the service mark, "Mago Point Marina," has become distinctive enough to identify and distinguish the marina's services from those of other marinas, so as to indicate a particular source in consumers' minds. The defendants first used the service mark, "Mago Point Marina," in the early 1960s on an advertisement/sign at the property, which still stands today. They have continued to utilize the mark, albeit in slightly altered forms, via different advertising efforts, throughout a wide group of prospective customers; letterhead, leases, and other business forms. Furthermore, the defendants' service mark, "Mago Point Marina," has acquired a widespread reputation, by virtue of being in existence and use for many years before the plaintiff ever began to use the service mark, so as to cause the general public to associate "Mago Point Marina" with the particular and distinctive service offered at 20 First Street in Waterford, CT. Therefore, due to the circumstantial evidence establishing the defendants' exclusive, lengthy and wide-spread use of the service mark for over forty years, the court finds that the defendants' mark has acquired the requisite distinctiveness, and is protected against unauthorized use.
General Statutes § 35-11b, which discusses the application requirements for state trademark registration provides in relevant part: "The Secretary of State may accept as evidence that the mark has become distinctive, as applied to the applicant's goods or services, proof of substantially exclusive and continuous use thereof as a mark by the applicant in this state for the five years next preceding the date of the filing of the application for registration."
III. Changes in the Format of a Trademark or Service Mark: Priority Abandonment
The court has established that the defendants were the initial owners of the service mark, "Mago Point Marina," and that the mark gained protectability by acquiring distinctiveness through its usage. The court, however, must next determine whether the defendants, through altering the wording of the service mark throughout the past several years (i.e., "Waddy's Mago Point Marina"), caused a legal abandonment of the service mark and/or a break in the continuous use of the mark so as to cause a loss in priority of ownership.
The law governing service marks recognizes that "[b]ecause of business decisions and changing advertising styles, a [service mark] may undergo changes in format and appearance over a period of years." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 17:25. Therefore, a service mark owner may "`tack on' the prior use of the old format to the use of the new format to achieve priority of use over a rival." Id. "In general, neither abandonment nor loss of the ability to tack-on to achieve priority will occur if the new form of the mark creates the same commercial impression as did the old form. That is, the change in the form of a mark does not constitute abandonment or a break in continuous use if the change neither creates a new mark nor changes the commercial impression created by the old mark." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 17:26.
"The test is one of continuity. A mark can be modified or changed without abandonment or loss of priority if done in such a way that the continuing common element of the mark retains its impact and symbolizes a continuing commercial impression" J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 17:26. See Restatement (Third) of Unfair Competition Sec. 32, comment b ("A change in the form or appearance of a trademark does not result in abandonment if the new format continues the same commercial impression as the prior format").
Here, the defendants initially utilized the service mark, "Mago Point Marina." In years following their initial use, the defendants at times altered the service mark to the wording, "Waddy's Mago Point Marina." Most recently, upon registering their corporation with the Secretary of the State, the defendants began utilizing the service mark, "Mago Point Marina, LLC," their corporate trade name. Based on the long-standing reputation and existence of the defendants' business within the close-knit local marina industry for over forty years, and the slightness of the wording alterations, it is apparent that the newest form of the service mark, "Mago Point Marina, LLC," creates the same commercial impression as the oldest version. Accordingly, the defendants' prior use of their service mark in the 1960s may be tacked on to their present use in order to establish priority over the plaintiff.
Furthermore, the plaintiff has failed to establish that, in altering the wording of their service mark, the defendants abandoned their service mark, "Mago Point Marina," thereby giving the plaintiff the opportunity to appropriate rights in the mark. "Once held abandoned, a mark falls into the public domain and is free for all to use." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 17:1. General Statutes § 35-11a(9) provides: "[a] mark shall be deemed to be `abandoned' (A) when its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for two consecutive years shall be prima facie evidence of abandonment; (B) when any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin." Additionally, the modern Restatement takes the position that the "intent not to resume use" standard today also governs non-federal law cases concerning the abandonment of common-law marks. See Restatement (Third) of Unfair Competition § 30(2) (1995).
Here, the defendants, with the help of their predecessors of the marina business, constructed and posted a sign with the service mark, "Mago Point Marina," inscribed thereon in the early 1960s. That sign has remained in place for over forty-five years and still stands today. These facts alone establish that the defendants never ceased using the service mark, "Mago Point Marina," and it may be inferred from these circumstances that the defendants never at any point throughout this period of time had the intent to abandon the mark. Furthermore, the defendants' intermittent use of the service mark, "Waddy's Mago Point Marina" did not cause an abandonment of the service mark, "Mago Point Marina," because the altered form of the mark created the same commercial impression as the original mark. Since the facts establish that the defendants' actions did not cause the service mark to lose its significance as an indicator of origin, the court finds that the defendants retained their rights and ownership in the mark throughout the course of the marina's existence.
V. Landlord Tenant Arrangements — Ownership of Service Marks
The plaintiff also contends that he appropriated the rights in, and ownership of, the service mark, "Mago Point Marina," through his professional achievements in strengthening the reputation and customer base of the marina during the several years he possessed and managed the property pursuant to a lease agreement.
"Ownership of a service mark identifying a business carried on at rented premises will depend on a weighing of the policies of customer perception and contractual provisions between landlord and tenant. Some marks will be local, in the sense that they primarily identify a place and the business carried on there." For example, where a landowner's premises are long known by a business name and the owner leases the premises to several tenants who operate the same type of business there, the landowner, not the tenants, is the owner of the service mark for the business. J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 16:38. See Norden Restaurant Corp. v. Sons of Revolution, 51 N.Y.2d 518, 434 N.Y.S.2d 967, 415 N.E 2d 956, 210 U.S.P.Q. 584 (1980), cert. denied, 454 U.S. 825 (1981) (lease permits licensed use only; tenant cannot assert ownership).
Here, the defendants' marina property was long known by the service mark, "Mago Point Marina," for years prior to the plaintiff taking possession. The defendants leased the marina property/business to the plaintiff, in 1993, in order to have him continue to operate the same type of business, a marina. Therefore, the defendants, the landowners, and not the plaintiff, tenant, are the owners of the service mark.
Furthemore, "the fact that [a] tenant, by good management, increased the reputation of the name is not a reason to permit [a] tenant to use the same name in another location in competition with the owner." Id. See Plitt Theatres v. American Nat. Bank and Trust, 697 F.Sup. 1031 (N.D.Ill. 1988) (The court held that the property owner, not the tenant, of the ESQUIRE theater in Chicago is the owner of the name and is entitled to use the name on a new theater to be erected on the site of the demolished theater. The tenant was enjoined from using the name on a theater to which he moved one block away).
In the present case, the plaintiff argues that, from the time he took possession of the marina in 1993 until the time his second lease ended in 2004 he solely developed an extensive customer and client base for the "Mago Point Marina." The fact that the plaintiff, by good management, increased the customer and client base, however, is not a legally sufficient ground to permit the plaintiff to use the service mark, "Mago Point Marina," in another location in competition with the defendants. Therefore, the plaintiff did not appropriate any ownership rights in the service marks of the subject marina by utilizing such marks throughout his lease and occupancy of the marina.
VI. Registration of a Corporate Trade Name with the Secretary of the State
The defendants registered the name "Mago Point Marina, LLC," which had been used by the defendants as both a corporate trade name and as a service mark, with the Secretary of the State on April 16, 1997. Accordingly, the defendants have brought forth the argument that since "Mago Point Marina, LLC" was registered as an existing legal entity prior to the plaintiff's registration of "Mago Point Marina" as a service mark on September 13, 2004, the plaintiff's registration was in violation of General Statutes § 35-11b.Ownership of a service mark, however, turns on priority of use. "Since use is the basis for obtaining exclusionary rights, obtaining a corporate charter under a corporate name does not [confer] rights in the name without actual usage." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 9:2. Furthermore, "the vast majority of courts have stated that the acceptance of a corporate name by a state agency will be given no judicial weight at all in litigation over rights to the name." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 9:8. "Since rights to a service mark, arise from prior usage, the fact that another has a corporate charter for the name is no defense." Id.
Therefore, the defendants' state incorporation and/or registration has no effect in the present case. The defendants' position, that they are the owners of the service mark "Mago Point Marina," is not supported by the fact that they registered the mark as a corporate trade name prior to the plaintiff's registration of the name as a service mark. The defendants' priority usage of the mark in commerce, however, does establish their exclusive rights in the mark.
"The Patent and Trademark Office can rely on prior use of corporate trade names to refuse registration for a trademark or service mark that is confusingly similar to another party's trade name. Similarly, an opposer's use of a business name as a trade name is a proper ground for opposition to the registration of a similar term as a trademark or service mark." J. McCarthy, McCarthy on Trademarks and Unfair Competition (4th Ed.) § 9:17.
VII. The Plaintiff's State Registration of the Service Mark "Mago Point Marina"
The plaintiff argues that his service mark certificate of registration establishes his ownership rights in the subject mark. The plaintiff's state certificate of registration of the service mark, "Mago Point Marina," is, however, admissible only as "evidence of" his alleged ownership in the service mark. General Statutes § 35-3b provides in relevant part: "A certificate of registration of a mark . . . shall be prima facie evidence of the validity of the registration, the registrant's ownership of the mark, and the registrant's exclusive right to use the mark . . ." The presumption of validity and ownership may be rebutted by evidence of another's prior usage of the mark in commerce. It is priority of use, not priority of state registration, which controls the ownership of service mark rights.
Here, the service mark registered by the plaintiff with the Connecticut secretary of state was registered in violation General Statutes § 35-11b because the registered service mark consists of or comprises a mark which resembles the service mark previously used by the defendants and deemed protectable at common law.
General Statutes § 35-11g provides in relevant part: "The Secretary of State shall cancel from the register, in whole or in part . . . any registration concerning which a court of competent jurisdiction orders cancellation after finding . . . that the registrant is not the owner of the mark . . . [or] that another person has rights in the state of Connecticut superior to those of the registrant . . ." Here, the court finds that the plaintiff, registrant, is not the owner of the service mark, "Mago Point Marina," and that the defendants have superior rights in the mark. Therefore, the court shall order the cancellation of the plaintiff's registration of the mark "Mago Point Marina" pursuant to General Statutes § 35-11g.
VIII. Connecticut Unfair Trade Practice Act (CUTPA) Claims
The plaintiff has also claimed that the defendants have violated the Connecticut Unfair Trade Practices Act (CUTPA), General Statutes §§ 42-110a et seq. The success of his CUTPA claim, however, hinges on the success of his service mark infringement claim. Therefore, since the court rejects the plaintiff's service mark infringement claim, the plaintiff's CUTPA claim also fails.
The defendants, by way of a counterclaim, have also alleged that the plaintiff has violated CUTPA. CUTPA provides in relevant part that "[n]o person shall engage in unfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce." General Statutes § 42-110b(a). In order to enforce this prohibition, CUTPA provides a private cause of action to "[a]ny person who suffers any ascertainable loss of money or property, real or personal, as a result of the [prohibited act]." General Statutes § 42-110g(a). Accordingly, "in order to prevail in a CUTPA action, a plaintiff must establish both that the defendant has engaged in a prohibited act and that, `as a result of' this act, the plaintiff suffered an injury. The language `as a result of' requires a showing that the prohibited act was the proximate cause of [the] harm to the plaintiff." (Internal quotation marks omitted.) Abrahams v. Young Rubicam, Inc., 240 Conn. 300, 306, CT Page 15289 692 A.2d 709 (1997). Here, the defendants' CUTPA counterclaim fails to establish, or even articulate, that "as a result of" the alleged prohibited acts of the plaintiff, the defendants have suffered an ascertainable loss or injury. Therefore, the defendants' CUTPA counterclaim also fails.
CONCLUSION
Based on the foregoing, the court hereby enters judgment for the defendants and specifically denies the plaintiff's request for injunctive and monetary relief. Furthermore, the court hereby grants the defendants' request for the cancellation of the plaintiff's service mark registration pursuant to General Statutes § 35-11g(3)(B). The court, however, concludes that there is insufficient evidence to support the defendants' CUTPA counterclaim, and to support the conclusion that the defendants have suffered an ascertainable loss as a result of the plaintiff's conduct.
ORDER
The court enters the following order:
1. Cancellation of the service mark registration number 22172 for the service mark "Mago Point Marina," pursuant to General Statutes § 35-11g(3)(B), is hereby ordered. Attorneys fees requested by the defendant are denied.