What's in a Name? Defense Judgment in Intellectual Property Dispute Involving Names of Tae Kwon Do Facilities
October 1, 2002
On September 24, 2002, in a trademark infringement and unfair competition dispute, Corine Zygelman of Murchison & Cumming's Los Angeles office received a defense judgment for Jimmy Graesser and his businesses, known as "National TKD.com".
In 1999, Mr. Graesser owned and operated a tae kwon do training facility in Laguna Niguel, California under the name "National Tae Kwon Do Studio". In 1996, Plaintiff, Chun Woo Park had opened a tae kwon do training facility, in nearby Aliso Viejo, California using the name "National Tae Kwon Do Academy".
Both training facilities operated under their respective names until October 2000, when Mr. Park sent Mr. Graesser a cease and desist letter claiming that the name "National Tae Kwon Do Studio" was confusingly similar to the name of his facility, "National Tae Kwon Do Academy". After some debate, Mr. Graesser agreed to change the name of his business to "National TKD.com" and the change was officially made in 2001. Mr. Park, unsatisfied with Mr. Graesser's new business name because it still contained the word "National", proceeded with his lawsuit, seeking an injunction requiring Mr. Graesser to further change the name of his business.
During the bench trial, Mr. Park contended that because he had filed a fictitious business name and continually used it since its filing, he in essence owned the name "National Tae Kwon Do Academy". He also claimed that the name of his business and that of Mr. Grasser's, "National TKD.com" were confusingly similar.
After considering all the evidence, the Court ruled that although the initial use of the name "National Tae Kwon Do Studios" was indeed confusingly similar, once the name had been changed to "National TKD.com", there was no likelihood of confusion. In entering judgment in favor of Mr. Graesser, the court found that the testimony did not provide any evidence that there was confusion and refused to issue the requested injunction.
At trial, Plaintiff had attempted to call a "surprise" witness to testify on the issue of whether the names were confusingly similar. Ms. Zygelman was successful in having this witness precluded from testifying altogether. In addition, counsel for plaintiff attempted to introduce audiotapes, which were "created" within 30 days of trial, to allegedly demonstrate customers calling Mr. Park when they intended to contact Mr. Graesser. Once again, Ms. Zygelman was able to preclude the introduction of the tape and any associated testimony.
Through this victory, Ms. Zygelman preserved Mr. Graesser's right to call his business "National TKD.com", thereby avoiding the expenses of phasing in a new name and allowing him to maintain the client base and solid reputation that he had developed.
