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INTELLECTUAL PROPERTY — Trade-Name Infringement A-6339-00T5; Appellate Division; opinion by Hoens, J.A.D.; decided and approved for publication February 6, 2003. Before Judges Wallace, Axelrad and Hoens. On appeal from the Chancery Division, Burlington County, C-118-99. [Sat below: Judge Gottlieb.] DDS No. 53-2-2762 Plaintiff, American Home Mortgage Corporation, commenced this action in August 1999 by order to show cause and verified complaint seeking permanent injunctive relief against defendant, American Home Mortgage Corporation of New York, asserting claims of unfair competition and trade-name infringement. Summary judgment was granted in favor of defendant. Plaintiff currently conducts its business from an office in Moorestown, Burlington County. Its principal means of securing business is through personal contact with real estate professionals and it relies on word of mouth and face-to-face contact in order to maintain a stream of customers. The overwhelming majority of its business is derived from the southern part of the state, and it has no business north of Mercer and Middlesex counties. The largest concentration of its business is in Burlington and Camden counties. Defendant had an office in Parsippany for many years and also maintained office locations in Mount Laurel from January 19, 1998, through November 30, 1999. Its main method of securing business is through advertising, both in newspapers of general circulation, including The Star-Ledger, and in the Yellow Pages for certain northern counties. The great majority of defendant’s business comes from loans originating in counties to the north of Mercer and Middlesex and is heavily concentrated in Bergen, Morris and Essex counties. Not every name under which one elects to do business, however, is entitled to protection against the use of that name or a similar one by one’s competitors. Trade names that are purely arbitrary, in general, are entitled to more protection than those that are merely descriptive or geographical. Mere registration of a name with the secretary of state affords the senior registrant no particular power to prevent others from using the same or similar names. Instead, courts have generally used a multipart test against which to test claims of trade-name infringement. Held: Although plaintiff here amply demonstrated that the name used by defendant is an identical one, and that the character of the two businesses is the same, their mode of business acquisition and marketing is different, their geographic areas of concentration are different, and there is no evidence that the defendant adopted the name in an effort to take advantage of plaintiff’s good name or business reputation. Those facts, all of them undisputed, are fatal to the plaintiff’s claim. Nor is there any evidence that the plaintiff’s name had acquired a secondary meaning sufficient to afford it protection. Because plaintiff’s trade name is merely descriptive and generic, it must demonstrate that the name has acquired a secondary meaning in order to cloak it with protection against use by others. In order to do so, plaintiff must demonstrate that its name, which originally was descriptive or geographical in nature, became uniquely associated with a particular product or service. Plaintiff’s proofs respecting secondary meaning are absent. It has not demonstrated that the purely descriptive name it chose for its business has in any sense become associated with its particular product or service. It is, therefore, unlike other purely descriptive names found deserving of protection. There was no evidence that the descriptive generic name plaintiff chose has risen to that level. Plaintiff’s own officers conceded that they had never heard of plaintiff prior to accepting employment there. Plaintiff stipulated that there are several other entities offering residential mortgages with similar names, including American Home Funding, American Homestead and American Mortgage Source. At most, plaintiff offered the court anecdotal evidence of confusion among customers, but that confusion was evident not only between these parties but as among the other entities with similar names as well. Even so, mere confusion is insufficient to support an injunction based on a claim of unfair competition or trade-name infringement. In the absence of evidence establishing that the entirely generic and descriptive name, “American Home Mortgage,” had achieved secondary meaning, plaintiff was not entitled to an injunction and defendant was properly granted summary judgment. Notwithstanding the foregoing, much of the confusion plaintiff complained of could well have been avoided had defendant used the full name under which its authority to conduct business in this state is permitted. Although there is no ground on which to enjoin defendant from doing business at all, the order appealed from should be amended to require defendant to identify itself in all of its business dealings in this state only by its proper and authorized name, “American Home Mortgage Corp. of New York.” — Digested by Steven P. Bann [The slip opinion is 9 pages long.] For appellant — Jeffrey Baron (Baron, Riefberg & Ward; Michael J. Ward on the brief). For respondent — Henry F. Reichner (Reed Smith).

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