Trademark Infringement: Mackenzie-Childs LLC and Mackenzie-Childs Aurora LLC v. Mackenzie-Childs

Trademark Infringement

Mackenzie-Childs LLC and Mackenzie-Childs Aurora LLC v. Mackenzie-Childs
06-CV-6107
Judge Telesca

Background: Plaintiffs MacKenzie-Childs LLC and MacKenzie-Childs Aurora LLC, manufacturers and sellers of ceramic goods and housewares, bring an action pursuant to the Declaratory Judgment Act, the Lanham Act and state law claiming the defendants Victoria MacKenzie-Childs, Richard MacKenzie-Childs and V&R Emprise Ltd. have infringed the plaintiffs’ trademarks and engaged in unfair competition. Specifically, the plaintiffs contend they are the owners of the trademark “MacKenzie-Childs” and its derivatives, and that the defendants have infringed on that mark. The plaintiffs seek a declaration that they are the owners of the “MacKenzie-Childs”mark  and damages for the defendants’ infringement of the plaintiffs’ marks. The defendants deny that the plaintiffs own the “MacKenzie-Childs” mark and claim they have not infringed on that mark. The defendants further contend that, because they own the rights to the “MacKenzie-Childs” mark, the plaintiffs and third-party defendants are infringing.

Ruling:  The court grants the plaintiffs’ motion for a declaratory judgment that it is the rightful owner of the marks “MacKenzie-Childs” and “MacKenzie-Childs Ltd.” and their derivatives. The court further grants the plaintiffs’ motion for summary judgment with respect to the defendants’ counterclaims. The defendants’ request for a declaratory judgment that they are entitled to use of the mark “Victoria and Richard” is denied, as is their motion for summary judgment with respect to the plaintiffs’ claims of trademark infringement and unfair competition.
Among the court’s findings is that evidence in the record shows Victoria and Richard attempted to cause confusion in the marketplace by selling their products alongside the plaintiffs’ products, and personally appearing at a location near a sale held by the plaintiffs for the purpose of signing purchased products. There also was evidence showing the defendants have held themselves out as the source of “the real MacKenzie-Childs work.”

Richard D. Rochford of Nixon Peabody LLP for the plaintiffs, and Linda T. Prestegaard of Phillips Lytle LLP for the defendants