Michael Atkins - Seattle Trademark Lawyer

In Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC — a trademark case involving companies with the same name — the Northern District of California found that northern California is big enough for both parties.

In reaching this conclusion, the court found:

“Sand Hill” in the Silicon Valley is primarily geographically descriptive;
As a descriptive trademark, secondary meaning is required to give plaintiff trademark rights;
Even if Section 2(f) applied to an unregistered trademark, it didn’t entitle plaintiff to a presumption of secondary meaning because defendant’s existence meant that plaintiff’s use was not “substantially exclusive” for more than five years; and
Plaintiff’s advertising and marketing efforts alone did not establish secondary meaning.

Therefore, the court found plaintiff did not have any trademark rights to enforce against defendant.

For good measure, the court also found no likelihood of confusion — independent grounds to grant defendant’s motion for summary judgment.

“All but one of the Sleekcraft factors strongly favor Defendant, and none favor Plaintiff,” the court said. “Although Plaintiff and Defendant share the same mark, they offer completely distinct services to distinct consumers in separate markets. Plaintiff’s assertion that the parties overlap in the area of real estate services paints with too broad a brush. The record unequivocally establishes that Plaintiff and Defendant’s respective businesses share little, if anything, in common. The lack of overlap is underscored by the paucity of evidence of actual confusion, which consists of nothing more than a few misplaced calls and a misdelivered package over the course of the last ten years. Viewing the record in a light most favorable to Plaintiff, the Court finds that no reasonable jury could find that the parties’ common use of the ‘Sand Hill Mark’ is sufficient to create a likelihood of confusion.”

The case cite is Sand Hill Advisors, LLC v. Sand Hill Advisors, LLC, __ F.Supp.2d __, 2010 WL 308728, No. 08-5016 (N.D. Calif. Jan. 26, 2010).