False advertising of a connection without trademark infringement?

L. & J.G. Stickley, Inc. v. Cosser, 2006 WL 1390468 (N.D.N.Y.)

Plaintiff sued for false advertising under federal and state law based on defendants’ misrepresentations about its furniture polish, specifically that someone working at defendants’ shop had experience with plaintiff or another Stickley entity and that there is a connection between the furniture polish and plaintiff or another Stickley entity. (See ad here: “Ron Cosser's 100 Year Old Formula Furniture Polish Comes From The Cabinet Shop Of Gustav Stickley.” The description on the Cosser website now says the polish dates “from the time of Gustav Stickley.”)

The “another Stickley entity” indicates why this isn’t a straight-up trademark infringement case: The Stickley name has another meaning than designating plaintiff; it also designates the historical craftsman Gustav Stickley, whose trademark significance cannot be attributed to plaintiff given that plaintiff didn’t manufacture the Mission furniture for which Gustav was famous for over 60 years. The Second Circuit held as much in 1996; though its decision focused on the trade dress of Stickley reproductions, its emphasis on the distinction between plaintiff and Gustav Stickley applies equally to the descriptive use of the name.

According to a state decision ordering the defendants’ insurance company to defend them under their “advertising injury” coverage, they allegedly formed a partnership with a former Stickley employee with access to the Stickley furniture polish secret formula, then sold the polish themselves, then marketed the polish for two decades. This gave rise to false advertising, trade secret, and trademark claims, only the first of which was resolved by the recent federal decision. As it appears, plaintiff’s decision to seek summary judgment on the false advertising claims alone was a wise one.