Walgreen’s v. Walgreen Health or “My Name, My Legacy, My Trademark Infringement Lawsuit: Part 2” | Nelson Mullins Riley & Scarborough LLP

The first legal article I wrote after law school was published in the July/August 1996 edition of SC Lawyer (it’s so old I can’t even find it online). The article titled “My Name, My Heritage, My Trademark Infringement Suit” explains how using one’s last name in business has long been considered a fundamental right, but modern trademark law has significantly reduced this practical. Developments in trademark protection have led to situations where individuals may be legally prohibited from using their own surname for commercial purposes if doing so infringes established trademark rights.

A recent Google alert regarding Walgreen Co. v. Walgreen Health Solutions, LLC This case took me back in time to this article and provides a recent and relevant example of how trademark law can restrict an individual’s ability to use their own surname or last name in business. This case illustrates the modern approach to surname-based trademark litigation, highlighting the factors courts consider when weighing trademark rights against an individual’s desire to use their last name for commercial purposes.

In this case, Walgreen Co. sued Walgreen Health Solutions, LLC (WHS) and Charles R. Walgreen for trademark infringement, trademark dilution, misrepresentation or designation of origin, and unfair competition. The dispute centered on WHS’s use of the surname “Walgreen” in its business name and branding. In ruling on a motion to dismiss, the court recognized that Walgreen Co. had sufficiently and plausibly alleged use of its WALGREENS® trademark for more than a century, thereby developing a substantial good name and reputation in the industry of health. This long-standing usage has contributed to the strength, distinctiveness and secondary meaning of the mark. The court also found that WHS’s marks would be very similar to the WALGREENS® mark established by Walgreen Co. and used for related services.

THE Walgreen This case demonstrates that even when an individual has a legitimate right to a surname, they may be prohibited from using it for commercial purposes if they infringe on an established trademark. This is consistent with the modern approach to the personal name rule, which prioritizes consumer protection and the prevention of marketplace confusion over an individual’s unrestricted right to use their surname in the professional context.

Historically, courts have defended an individual’s right to use their name in connection with a business, even if it conflicts with existing trademarks. This principle, known as the “personal name rule”, was illustrated in early cases as Hilton v. Hilton (1918), where the court declared that the use of one’s name in business was an “inalienable right.” However, this absolute right has been eroded as courts recognize the need to protect consumers from confusion and prevent unfair competition.

Today, when evaluating surname-based trademark disputes, the main factors that courts will look at are:

1. Secondary meaning: Has the family name acquired a distinctive association in the public mind with a particular company or product?
2. Risk of confusion: Would another party’s use of the surname be likely to cause confusion among consumers as to the origin of the goods or services?

For entrepreneurs and business owners, the Walgreen This case serves as a cautionary tale, highlighting the importance of conducting thorough trademark research and carefully considering potential conflicts before adopting a surname-based trademark.

It is now well established that a person does not have the absolute right to use their surname as a trade or service mark.