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A Pennsylvania man who quit his post as a top executive at a hybrid corn seed company founded by his grandfather in the early 1950s has been barred from using his own last name for a competing seed company now that a federal judge has ruled that the family name is entitled to the highest level of trademark protection due to its fame in a niche market. In his 48-page opinion in Doebler’s Pennsylvania Hybrids Inc. v. Doebler, Senior U.S. District Judge James F. McClure Jr. found that DPH is entitled to trademark protection for the Doebler name because it has acquired “secondary meaning.” As a result, McClure ordered Taylor Doebler III to change the new company’s name from “T.A. Doebler Seeds” to “T.A. Seeds.” McClure also found that Taylor Doebler had misappropriated trade secrets and barred his company from marketing 21 hybrid seeds sold by DPH. The ruling is a victory for attorney James J. Kutz of Post & Schell’s Harrisburg, Pa., office who represented DPH and its current top executives, William R. Camerer III, who is also a grandson of the company founder, and Willard L. Jones, who is married to a granddaughter of the founder. Doebler’s lawyer, Rees Griffiths of Barley Snyder in York, Pa., could not be reached for comment. In the suit, DPH alleged that soon after Doebler’s father died in August 2002, he had discussions with his attorney and accountant about reorganizing DPH’s parent company from a partnership to a limited liability company. At the time, Jones and Camerer each held approximately 36 percent of the outstanding shares in DPH, and Doebler held 23 percent. In September 2002, the suit says, Doebler told Jones, who was president of DPH, that he wanted Jones to accept an early retirement which included a buyout by Doebler of Jones’ shares and a plan for him to leave the company. Doebler allegedly told Jones that he was “stupid” and “ignorant,” and that “I don’t want to be your partner.” If Jones had accepted Doebler’s offer, Doebler would have had majority stock ownership and control of DPH. But Jones refused and instead enlisted the help of Camerer. Soon after, Jones stepped down as president of DPH and the board of directors elected Camerer as new president. In October 2002, Camerer placed Doebler on a paid indefinite leave of absence. McClure found that Doebler was never fired, and that he always remained a member of the board of directors and retained his shares in the company. In November and December 2002, Doebler voluntarily resigned as an employee and as a member of the board. Doebler then formed a new company, which he registered with the Pennsylvania Department of State as “Doebler Seeds LLC,” and opened for business in the building next door to DPH in Jersey Shore, Pa., a town in Lycoming County near Williamsport. In 2003, DPH filed suit against Doebler and his company alleging claims of unfair competition, false designation of origin, trademark dilution, breach of fiduciary duty, misappropriation of trade secrets and interference with business relations. In September 2003, McClure granted DPH’s request for a preliminary injunction and enjoined Doebler from using his own last name in the name of his company. The 3rd U.S. Circuit Court of Appeals upheld the preliminary injunction in February 2004. But even before the appellate court had ruled, Doebler filed a series of counterclaims in which he alleged that the Doebler name as a trademark was owned not by DPH, but by T.A. Doebler & Son, or TADS, a company he owned completely after his father’s death. Now McClure has rejected that argument, finding instead that the Doebler trademark is owned by DPH. The evidence, McClure said, shows that after DPH was formed in 1972, it “took over from TADS all of the research, marketing, sales and distribution activities previously performed by TADS.” Since then, McClure found, TADS “has functioned solely as a production company.” Although there was no formal agreement to transfer the Doebler trademark from TADS to DPH, McClure found that “it is clear that the mark belongs to DPH.” McClure found that DPH “has spent more than 30 years setting up a dealer distribution network and using and promoting the Doebler’s mark on and in connection with the agricultural seed products it sold.” DPH has “continuously, extensively and exclusively” used the Doebler’s mark, McClure found, and has spent more than $800,000 in advertising over the past five years. McClure also found that DPH “has come to be known as ‘Doebler’s’ among its customers and dealers.” As a result, McClure concluded that “no reasonable juror could find that the Doebler’s mark does not belong to [DPH].” McClure found that DPH succeeded in its trademark claims because there was “an obvious likelihood of confusion caused by … the proximity of the businesses, the overlapping employees and principals, and the advertising and sale of the same product in the same market.” There was also evidence of “actual confusion,” McClure noted, involving mail, facsimiles, federal express deliveries, customer calls, seed varieties offered and customer orders. DPH also won its claim under the Federal Trademark Dilution Act, McClure said, by proving that the Doebler trademark is “famous” in its niche market. “Plaintiff has used the mark for more than 30 years in connection with the agricultural products it markets. Furthermore, testimony from a myriad of dealers, foundation seed company representatives and wholesale brokers indicates that the industry is well aware of the Doebler’s mark and of its association with plaintiff,” McClure wrote. McClure also concluded that DPH was entitled to summary judgment on its claims of misappropriation of trade secrets. Doebler’s lawyer argued that the information about DPH’s line of 21 hybrid corn seeds was not entitled to trade secret protection because it made the information available to third parties. McClure disagreed, saying the evidence showed that the secrets were shared only with companies related to the family business. “Even though the four ‘family businesses’ were operating separately, we find that they were in practical effect one organization,” McClure wrote.

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