calling business duration into question could actionably disparage its honesty

Giannone v. Giannone, 2019 WL 6910151, No. 16-cv-911 (E.D. Pa. Dec. 18, 2019)

“A lamentable father-son conflict over a family plumbing business provides the backdrop for this Lanham Act case.” Joseph Giannone, Senior, failed to get summary judgment on his Lanham Act trademark infringement and unfair competition claims against his son, Joseph Giannone, Junior. Although Senior registered the descriptive terms at issue (JOSEPH GIANNONE, JOSEPH GIANNONE PLUMBING & HEATING, and a stylized JOSEPH GIANNONE PLUMBING & HEATING mark with a pipe and wrench logo), Junior timely contested their validity and Senior failed to show secondary meaning sufficiently to win summary judgment.

 

Senior's word + design marks

Junior once worked as Senior’s employee. In 2008, Junior founded his own business—Joseph Giannone Heating & Air Conditioning—operated out of Senior’s Philadelphia business office. Initially, Junior’s business was confined to HVAC work and didn’t compete with Senior’s plumbing business. They shared telephone lines, shop space, repair trucks, and even employees. Both businesses used Senior’s marks. In 2013, after some conflicts with Senior, Junior moved out, expanded into plumbing services that competed with Senior’s business, and advertised using this logo:

 

Junior's mark

Junior advertised heavily within the same Philadelphia zip codes served by Senior’s plumbing business using that logo, and even put it on the side of a building half a mile from Senior’s business. This lawsuit followed.

Of possible interest: Senior argued that his JOSEPH GIANNONE PLUMBING & HEATING and stylized marks were inherently distinctive because of their additional elements. The court found these additions insufficient to confer inherent distinctiveness. As to the standard character mark, “plumbing and heating” were merely descriptive (and, though the court doesn’t mention it, disclaimed in both this and the design plus word mark). (The court also didn’t mention that the PTO apparently didn’t require any evidence of secondary meaning for any of these registrations, which seems weird.) As to the design + word mark, the pipe and wrench logo was also descriptive, especially since “other plumbers in the industry have used the same exact pipe and wrench logo in their marketing.”

Junior’s false advertising counterclaim survived summary judgment based on one statement. Senior sent a letter stating that Junior’s business had only been established for 5 years (2010) when it in fact had been established in 2008, which cast doubt on Junior’s honesty. Senior argued that this was de minimis, but “[a] reasonable jury could find that Senior’s false statement in the letter not only strips Junior’s business of two years of experience, but more importantly implies that Junior’s business misrepresents itself. This false statement could reasonably cause a household consumer of plumbing services to choose a different service provider, thereby causing Junior to lose sales.” Also possible evidence of false advertising: Senior’s website incorrectly states that (1) Joseph Giannone Plumbing & Heating was founded in 1929; (2) Senior took over his father’s business in 1978; (3) and the business has served the Philadelphia region for more than 85 years. Senior admitted that he founded his business in 1983 (not 1929) and so all these statements regarding Senior’s plumbing business were facially false. “A reasonable jury could find that these statements were intended to deceive the consumer public into believing that Senior’s business was more established than it was. A reasonable jury could also find that such a belief could likely influence purchasing decisions, including away from Junior’s more recently established business.”