One Haas impersonating another is TM infringement, false advertising

Haas Door Co. v. Haas Garage Door Co., No. 3:13 CV 2507, 2016
WL 1047242 (N.D. Ohio Mar. 16, 2016)
 
A family-owned business split, and split a trademark, and
then things went bad.
 
Founded in 1953, Haas Door Sales eventually became Haas Door
Company and Haas Garage Door Company. Haas Door Sales focused exclusively on
retail sales and installation of garage doors; Haas Door Company was incorporated
for the purpose of manufacturing garage doors. 
Haas Garage Door Company took over retail sales; both Haas Door
(manufacturing) and Haas Garage Door (retail sales, installation, and repair)
used the HAAS mark.  In 1989, the owners
sold Haas Door, leaving them with no right to make garage doors, under the HAAS
mark or otherwise, pursuant to a noncompete agreement—though those owners
subsequently retired.  Haas Garage Door
was an authorized dealer of Haas Door, but a dispute arose between the companies
and Haas Door terminated Haas Garage Door’s authorized dealership.  Haas Door has a registration for HAAS for
garage doors and hardware.
 
The court found that the parties each had separate and
distinct rights in the HAAS mark. “The HAAS mark is connected to two
distinctively different goods and services.”  (That strikes me as a bit of an overstatement,
from a consumer perspective—it was not the greatest idea to split them like
that.)
 
While not resolving the core trademark infringement claims
based on HAAS, the court granted partial summary judgment to Haas Door based on
Haas Garage Door’s use of the AMERICAN TRADITIONS SERIES mark, which Haas Door
had used for high end garage doors since 2005. 
Haas Garage Door assembled doors and sold them under the name AMERICAN
TRADITIONS SERIES, using the HAAS mark. 
The court found likely confusion, as well as actual confusion.  An architect was deceived into buying from
Haas Garage Door, “[d]espite doing due diligence and meeting with [Haas Garage
Door] on multiple occasions.”  He was
misled into believing that both Haas Door and Haas Garage Door produced the
same product, but at different locations, and then noticed quality differences
in the door he bought.  Likewise, the
owner of a retail garage door sales, installation, and repair business
mistakenly contacted Haas Garage Door and “was misled into believing he was
engaging in a business relationship where he was obtaining doors directly from
the manufacturer, i.e. Haas Door.”  When
he found out the truth, he ended his relationship with Haas Garage Door.  These events showed likely confusion even
among sophisticated purchasers.
 
In addition, the court found Haas Garage Door liable for
false advertising for using a label on the garage doors that said HAAS GARAGE
DOOR COMPANY [contact info] MANUFACTURERS OF: RESIDENTIAL, COMMERCIAL &
INDUSTRIAL OVERHEAD DOORS & ELECTRIC OPENERS.  Haas Garage Door isn’t a manufacturer, but it
used the label on every door it installed or serviced for years. This was a
literally false claim, so the court presumed actual deception and
materiality.  There was also a causal
link to harm to Haas Door. “This misrepresentation harms Haas Door by depriving
the company of the opportunity to offer customers its products, made to its
standards, policies, and warranties.”

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