Retailer held liable for selling knock-off furniture

In Turner Greenberg Associates Inc v C&C Imports Inc, 2004 US Dist LEXIS 9197, the US District Court for the Southern District of Florida has found furniture dealer Turner Greenberg Associates liable for, among other things, trademark infringement, unfair competition and false designation of origin as a result of selling unauthorized copies of designer furniture.

The defendant in the case, C&C Imports Inc, is a company owned by furniture designer Nancy Corzine. Corzine manufactures and sells her designs under the mark NANCY CORZINE through a network of designer showrooms in the United States. In the early 1990s she entered into an agreement with Turner Greenberg, a furniture retailer based in Florida, under which Turner Greenberg could present Corzine's designs to customers, place orders with Corzine and earn a commission based on sales. However, rather than place orders for Corzine's products with her, Turner Greenberg created a separate catalogue that used Corzine's pictures and unique product numbering system, and diverted customer orders to different, less expensive manufacturers, resulting in higher commissions to Turner Greenberg.

Turner Greenberg later sued Corzine and her company for commissions owed on sales of Corzine's furniture. After learning that Turner Greenberg was filling orders for her furniture with unauthorized and inferior copies, Corzine counterclaimed for, among other things, trademark infringement, unfair competition and false designation of origin.

In finding for Corzine, the US District Court for the Southern District of Florida determined that she held valid ownership of the NANCY CORZINE trademark as a result of her use of the mark since 1983. By virtue of her sales and advertising, she had established secondary meaning in the mark, thereby entitling it to a broad scope of protection. Moreover, applying the US Court of Appeals for the Eleventh Circuit's seven-point test for likelihood of confusion, the district court found that:

  • the NANCY CORZINE mark was highly regarded in the field of design;

  • Turner Greenberg used an identical mark on its knock-off furniture;

  • the two parties' products, sales methods and advertising media were the same; and

  • Turner Greenberg had adopted the NANCY CORZINE mark in order to obtain the benefit of Corzine's business reputation.

These facts, together with the presence of evidence of actual confusion from two Turner Greenberg customers, provided the court with proof that there was a likelihood of confusion for which, Turner Greenberg was liable.

Jenning Kohlberger and Tim Kelly, Fitzpatrick Cella Harper & Scinto, New York

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