Seattle Trademark Lawyer

Design house Paul Frank Industries, Inc., brought a trademark infringement action in the Central District of California against its namesake and former designer, Paul Frank Sunich, based on the commercial use of his name. In particular, plaintiff alleged that Mr. Sunich and his companies’ Web sites, www.paulfranksunich.com, www.chasermerch.com, and www.treestitchdesign.com, and defendants’ sale of t-shirts using Mr. Sunich’s full name, “Paul Frank Sunich,” infringe PFI’s rights in its PAUL FRANK trademark.

Plaintiff brought a motion for preliminary injunction to enjoin defendants from using the name “Paul Frank” in any commercial context. Defendants responded that Mr. Sunich has an absolute right to use his full name in any context, including in connection with the sale of t-shirts that he designs.

On August 21, the court granted the motion in part and denied it in part. On one hand, It found: 

“Under trademark law, there is no absolute right to use one’s own personal name where that use would be confusingly similar to an established use of a famous mark that the public has come to associate with another source. Through the extensive efforts of both PFI and Mr. Sunich, the Paul Frank mark has become famous. Mr. Sunich, therefore, has no absolute right to make use of his name in a manner that would be confusingly similar to PFI’s use of the Paul Frank mark. Accordingly, Mr. Sunich, along with the other Defendants, must be enjoined from using his full name in the sale of Defendants’ T-shirts.”

On the other hand, the court also found:

“Mr. Sunich, however, is entitled under trademark law to use his name in other contexts, commercial or otherwise, to identify himself and inform others about his work. PFI has no right to prevent Mr. Sunich and the other Defendants from using Mr. Sunich’s full name in contexts where such use will not result in any confusion with PFI’s use of the Paul Frank mark.”

With regard to defendants’ Web sites, the court declined to enjoin defendants’ use “so long as they maintain their messages explaining that Mr. Sunich does not work for or with PFI” or “sell or link to any other site that would sell clothing using the Paul Frank name in any form on either the product itself or the product’s label.”

The case cite is Paul Frank Industries, Inc. v. Sunich, No. 07-0609, __ F.Supp.2d __, 2007 WL 2376998 (C.D. Cal.).