Seattle Trademark Lawyer

Like the Gallo name in the wine business, the Korum name is well known in the car dealership business — in the south Puget Sound area, at least.

And like the Gallos, the Korums may differ as to who has rights to the family name in connection with the family business.

The Ninth Circuit famously laid the Gallos’ dispute to rest twenty years ago in E. & J. Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280 (9th Cir. 1992).

The Western District of Washington may be just getting started with respect to the Korums.

Korum Automotive Group, Inc., owns a number of car dealerships in Puyallup under the KORUM trademark and trade name. The company was founded by Jerry Korum, who has used the mark for 41 years.

Salstrom Motors Inc. sells used cars under the name “Korum’s Auto Outlet” in Tacoma. Salstrom is owned in part by Andrew Jacobs.

In September, Korum Automotive sued Salstrom and Mr. Jacobs for trademark infringement, and moved for a preliminary injunction. On Jan. 17, Western District Judge Benjamin Settle granted the motion, finding that defendants’ use of KORUM has caused actual confusion and that Korum Automotive is likely to succeed on the merits of of its trademark infringement claim.

What’s interesting is that defendants argued that Bill Korum — who appears to be connected with defendants — shares ownership rights in KORUM with Jerry Korum, which undercuts Korum Automotive’s rights and/or gives rise to defenses of laches or acquiescence. Apparently, Bill Korum has used KORUM in connection with his own Nissan dealership located in Puyallup.

Still, those arguments didn’t sway the court. 

“Even if the Court were to agree with Defendants’ argument that Bill Korum shares some kind of right in the KORUM mark,” the court found, “Korum Auto Group has shown that Bill Korum’s interest in the mark likely extends only to the Puyallup Nissan dealership at which he has been using the Korum mark.”

The court added: “[E]ven assuming the Defendants have shown that Bill Korum has a laches and/or an acquiescence defense to trademark infringement, he is not a defendant in this case and Defendants have failed to show that his defense would extend to the use of the mark in connection with Salstrom or Defendants’ use of the KORUM mark.”

The case cite is Korum Automotive Group, Inc. v. Salstrom Motors Inc., No. 11-5690 (W.D. Wash. Jan. 17, 2012) (Settle, J.).