Tradenames. Divided court affirms common law right to expired tradename, now registered to another.

TLOC Senior Living, LLC v. Bingham, 2016 VT 44 (filed April 8, 2016)

SKOGLUND, J. Defendant appeals from the trial court's declaratory judgment that, although defendant had been able to register a business name after plaintiff' failed to re-register the name, defendant was not entitled to use the name without violating plaintiff’s established common law rights. We affirm.

The court did not err in granting plaintiff the declaratory relief requested and denying the counterclaim. It was undisputed that plaintiff had been using and operating under the name for over five years, and that prior to that time, plaintiff's parent company and other affiliates had also used the tradename. Common-law rights in a trademark or tradename are created and preserved by use and not by registration. Nat'l Bank of Milwaukee v. Wichman, 270 N.W. 2d 168, 171 (Wis. 1978).

The law requiring companies to register any business aliases serves only to provide notice to those doing business with such companies. Thus defendant did not acquire superior rights by registering the name with the Secretary of State.

DOOLEY, J., dissenting. I agree with the proposition that rights to a trademark or trade name are established and ensured not by registration, but by use. But the result from the trial court is gridlock -- defendant is barred from using the name by virtue of plaintiff's common law rights to the tradename, and plaintiff also cannot use the name in commerce without violating the requirements of 11 V.S.A. § 1623. I would remand for consideration of the remedy of cancellation of plaintiff’s registration by the court. I am authorized to state that Justice Eaton joins this dissent.