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News | October 4, 2023
3 minute read

Warner Scores Victory for Use of Common Words in Trademark Lawsuit

Warner Norcross + Judd LLP’s Intellectual Property Enforcement and Litigation Practice Group just secured a federal court victory that protected the rights of businesses to use common descriptive words without undue interference from trademark owners.

The lawsuit was brought by McKeon, which owns the MACK’S brand of earplugs. These are foam, consumer-level earplugs that one can buy at drug stores by the hundreds and that cost pennies per earplug. Warner’s client is a major supplier of illumination tools and tactical equipment to military, law enforcement and high-end consumers. This supplier produces a line of professional hearing protection products, each of which is sold under its own individual registered trademark. There are several products in this line, selling in the range of $12.00 - $30.00 for a single pair, and some of those that offer the maximum amount of protection in their class include the adjective “MAX” in their product name.

On this basis, and this basis alone, McKeon sued for trademark infringement, arguing that consumers were likely to confuse MACK’S foam earplugs with our client’s high-end devices that append the word “MAX” to their own registered marks. Warner moved to dismiss these claims as a matter of law. The United States Court of Appeals for the Sixth Circuit, whose law governed here, requires trademark plaintiffs to first show that the allegedly infringing mark is being used in a “trademark way.” Words function as trademarks when they distinguish the goods and services of one company from those of others. If, instead, the defendant is using the word in a merely descriptive manner, it does not violate trademark law, and the court will not proceed to the next step of assessing whether it causes a likelihood of confusion with the plaintiff’s mark. That is because, even though a company may own the right to use a word as a trademark, they do not own the word itself and cannot prevent others from using the word in its common manner. For example, Apple Computers cannot prevent a grocery store from calling the fruit of an apple tree an “apple,” no matter how famous the company’s trademark may be.

A federal judge of the United States District Court for the Eastern District of Michigan agreed with us and granted our motion to dismiss the case as a matter of law. “Context matters,” says the court’s opinion. “When considered in their entirety, the listings make plain that their focus is the [client’s] trademark ... not, as McKeon urges, the word ‘Max.’ [The client’s trademark] is visually and textually the source of the earplugs. ‘Max’ is unmistakably being used as a modifier, describing the strength of the products — not their source.”

This decision is important because it reinforces the freedom of businesses to use common descriptive words such as “Max,” “Plus,” “Ultra” and the like. McKeon’s arguments to the contrary sought to extend the power of trademark law much too far into controlling everyday language. This plaintiff certainly took trademark bullying to the max — but Warner successfully stood up to it.

Warner’s legal team was led by Brian Wassom and included Mark Zuccaro.

Warner’s Intellectual Property Enforcement and Litigation Practice Group
Warner’s Intellectual Property Enforcement and Litigation Practice Group drives results for clients seeking protection for a variety of advertising, copyrights, patents, publicity rights and trademark ideas and innovations. Our attorneys have immersed themselves in technology and industry trends to proactively advocate for your rights – and seek swift resolution both in and out of the courtroom. We partner with clients to determine the merits and risks of each case to design a litigation strategy to best fit your needs.