Burris Carpet Plus, Inc. v. Jerrod Burris, Derek Burris, and Dan Burris, 2010 ND 118

Summary

The Supreme Court of North Dakota affirmed summary judgment dismissing Burris Carpet Plus, Inc.'s trademark infringement, trade-name infringement, false designation of origin, and unfair competition claims against related defendants. The court held that Burris Carpet Plus did not establish ownership or secondary meaning in the surname "Burris," lacked a registered trade name, and could not pursue the statutory corporate-name claim against noncorporate defendants. The court also held that state courts have concurrent jurisdiction over Lanham Act claims but concluded those claims failed because the plaintiff had no prior right to the mark.

Holdings

1. Burris Carpet Plus did not establish ownership of a valid, protectable trademark in the word "Burris" because it did not show use of the word alone in connection with its goods or services or that the surname had acquired secondary meaning.
2. The district court properly ordered cancellation of Burris Carpet Plus's registration for "Burris (the word)."
3. The registered-business-name claim was properly dismissed because the statutory remedy applies to a corporation using the same or deceptively similar name, and none of the defendants was a corporation.
4. The registered-trade-name claim was properly dismissed because Burris Carpet Plus had not registered "Burris Carpet Plus, Inc." or "Burris Carpet Plus" as a trade name.
5. The district court erred in concluding that it lacked jurisdiction over the federal false-designation and unfair-competition claims because state courts have concurrent jurisdiction over Lanham Act claims.
6. The false-designation and unfair-competition claims failed because they were based on Burris Carpet Plus's alleged ownership of the word "Burris," but Burris Carpet Plus did not own a valid protectable mark in that word.
7. The civil-conspiracy claim failed because Burris Carpet Plus established no underlying tort, and alleged failure to register trade names was not an actionable tort.
8. The district court did not abuse its discretion by dismissing the outstanding discovery issues as moot.
9. The defendants were not entitled to costs or attorney's fees because Burris Carpet Plus's claims and appeal were not frivolous.

Questions Presented

1. Whether the district court properly granted summary judgment against Burris Carpet Plus's common-law and statutory trademark-infringement claims.
2. Whether Burris Carpet Plus owned a protectable trademark in the surname "Burris" and whether its registration should be cancelled.
3. Whether Burris Carpet Plus could pursue registered business-name or registered trade-name infringement claims.
4. Whether the state district court had concurrent jurisdiction over Burris Carpet Plus's Lanham Act false-designation and unfair-competition claims.
5. Whether the false-designation, unfair-competition, and civil-conspiracy claims failed because Burris Carpet Plus lacked a valid, protectable mark or an actionable underlying tort.
6. Whether the district court abused its discretion in limiting or dismissing discovery issues as moot.
7. Whether the defendants were entitled to costs and attorney's fees in the district court or on appeal.

Disposition

affirmed