The holidays ended strongly for Erise’s trademark group, with a win after a bench trial on the issue of trademark ownership on behalf of Shoemaker Tow.
Shoemaker Tow sued R&L Shoemaker Towing for trademark infringement in Missouri state court, along with claims of unfair competition, dilution, tortious interference, and defamation in 2023. R&L Shoemaker Towing counterclaimed for trademark infringement, trademark invalidity, unfair competition, and dilution.
This case was one for the law school textbooks as an illustration for the importance of carefully reviewing contract language and engaging IP counsel when a business acquisition could potentially implicate IP, whether it be trademarks, patents, trade secrets, or copyrights.
Here, the defendants’ surname is Shoemaker, and the family, including two brothers, had previously run salvage and towing businesses. Originally, one brother offered heavy-duty tows and truck repair services under the name “Larry’s Wrecker Service and Truck Repair.” The other brother ran a small and medium-sized towing business under the name “Shoemaker Tow” with a salvage yard known as “Shoemaker Auto.” After growing tired of his towing business, he sold it, along with the name “Shoemaker Tow,” to the plaintiff, who continued to use the business name and mark on the tow trucks.
But about a year or two after the sale of the business, the brother offering heavy-duty tow services decided he wanted to use “Shoemaker” as part of his business name since his brother was no longer using it. So, he renamed his business “R&L Shoemaker Towing.” As expected, confusion arose in the market.
At the bench trial, the defense challenged the reliability of the purchase agreement for the sale of the Shoemaker Tow business and further challenged the authenticity of the Seller’s signatures on both the purchase agreement and receipts for payments made over a year. Ultimately, the Court did not find that testimony credible, and instead found that the purchase agreement was enforceable and that plaintiff had acquired all rights in the Shoemaker Tow mark.
Plaintiff Shoemaker Tow, LLC was represented by Erise shareholders Carrie Bader, Cliff Brazen, and Erise associate Caroline McCord.
