A. Simon & Sons, Inc. d/b/a Simon’s Furniture v. Simonfurniture International Inc. et al. (D. Mass. 21-cv-11254).

A. Simon & Sons accused Simonfurniture of infringing on its “Simon’s” trademark, and sought a preliminary injunction on its common law trademark and trade name infringement claims, as well as its false designation of origin and 93A claims. As A. Simon did not register its marks, it bears the burden of establishing that the marks are entitled to protection, which in the case of a mark based on a personal name, requires a showing of secondary meaning.  While secondary meaning can be demonstrated by direct evidence, such as consumer surveys, no such evidence was submitted.  Instead, A. Simon relied on circumstantial evidence including the length and manner of its use of the marks, degree of advertising of the mark, efforts made to promote a connection between the mark and a particular product, and the like. 

Judge Saris found that A. Simon had established a likelihood of success with respect to its “Simon Furniture” trade name and its “Est. 1911 SIMON’S” marks, determining that both had acquired secondary meaning in the Boston area.  It had been using the first since 1993 and the second since 2007, including prominent use on its website since 2007.  It had spent more than $1.5 million on advertising over the past four years, and sent numerous e-mail advertisements.  Its website has over 100,000 annual visitors and is highly ranked by search engine algorithms.  Evidence of actual confusion was held to be probative of secondary meaning in the mar, based on case law from other Circuit courts.  A. Simon has a large physical presence in Franklin, Massachusetts, but not elsewhere, leading Judge Saris to conclude that the mark had secondary meaning in the Massachusetts area.  Judge Saris determined that A. Simon had not established secondary meaning for its “SIMON’s” Mark standing alone or for its “SIMON’S WAREHOUSE” mark. 

Judge Saris next determined that Defendants’ use of SIMONDREAMER, Simone Warehouse, Inc. and Simonfurniture International Inc. were likely to cause confusion.  She noted that the most salient aspect of the mark was the combination of “Simon” and “Furniture,” and found that Defendants’ use of “SimonFurniture International, Inc.” and other uses of “Simonfurniture” or “Simon Furniture” would likely cause confusion.  Defendants’ “Simon Warehouse, Inc.” trade name and SIMONDREAMER marks, on the other hand, were not sufficiently similar to the “Simon Furniture” mark to result in a likelihood of confusion.  Further, Defendant Simon Warehouse, Inc. does not actually sell furniture, but instead offers shipping and logistics services.

Given the above, and the significant evidence of actual confusion and of harm to S. Simon’s reputation and good will through such confusion, Judge Saris entered an order enjoining the Defendants from using the SimonFurniture International, Inc. trade name and from any use of “Simonfurniture” or “Simon Furniture” in Massachusetts.