On Monday a federal judge denied a request from E.B. Horn, one of America’s oldest jewelry stores located in downtown Boston that she order rival Horn’s Jewelers to immediately stop using that name because the venerable Boston jeweler waited two years after its downtown competitor opened to file a trademark lawsuit and is still in business, demonstrating it is not suffering “irreparable harm”.
The lawsuit filed last March by E.B. Horn, which has been in business since 1839 at 429 Washington Street, alleges that Horn’s Jewelers, another jewelry store located nearby at 339 Washington Street and which was formerly known as K Horn Jewelers, is violating its trademark. In addition to forcing Horn’s Jewelers to find another name, E.B. Horn wants all the profits its rival has earned with that name, in addition to other unspecified economic damages and attorneys’ fees.
In denying E.B. Horns’ request for a temporary order barring Horn’s Jeweler from continuing to use that name, US District Court Judge Indira Talwani also noted that Horn’s Jewelers has posted a sign in its shop and a message on its Web site indicating it has no connection with E.B. Horn.
Where the business names are similar but not identical but where the businesses compete in the same industry and are located literally feet from one another, the question is whether the use of the Horn name may still amount to an infringement because it is “confusingly similar” to the registered trademark such that a reasonable observer would be led to believe the businesses were related.