A reader forwarded me this item on Quaker Steak & Lube Restaurant. The author must have had motor oil on the mind because the article contains the seemingly unprovoked quote:
“Quaker Steak & Lube says it doesn’t have problems with trademark infringement with the Pennzoil-Quaker State Co., manufacturer of Quaker State oil and parent company of Jiffy Lube oil change shops. Quaker Steak & Lube is a registered name.”
True, not only does it have a registration but the registration is 22 years old, meaning Quaker State lost the chance to cancel it on infringement grounds approximately a decade and a half ago (registrations achieve incontestable status after five years of continuous use – see section 15 of the Lanham Act).
Now, turning away from this specific fact pattern (so as to avoid nasty letters from lawyers for the involved parties), say that 15 years ago, there wasn’t a Federal Trademark Dilution Act so a famous mark owner couldn’t stop a non-infringing but none the less dilutive use. What happened when the FTDA was passed in 1996 – was it retroactive? Section 43(c) didn’t say explicitly one way or the other. There were some domain name cases where the FTDA was applied retroactively but I think that those were result-oriented decisions where the Dilution Act was mangled in ordered to get at cyber-squatters. In the case of 25 years of coexistence, barring compelling circumstances (i.e. the trademark owner was in a coma during that time), it’s something it just has to live with.
Thanks to the blogger formerly known as Tuffy Stone for this.