UNITED STATES: Local Mississippi ‘Midtown’ Battle Resolved

A recent case provided a rare look into state law infringement proceedings and confirmed that the analysis closely tracks that in U.S. federal courts.

Ruling exclusively under Mississippi state law, the Court of Appeals of Mississippi affirmed the denial of a liquor store’s trademark and trade name infringement claims over the use of the word “Midtown” by a similarly named liquor store. T.M.T., LLC v. Midtown Market Wine & Spirits, LLC, No. 2019-CA-01199-COA (Miss. Ct. App. Jan. 19, 2021).

In its decision, the court analyzed the factors disputed by the parties under the seven-factor test established by the Fifth Circuit for federal trademark infringement. The court upheld the lower court’s decision that one business is not allowed the sole use of the generic and geographical term “Midtown” in its service mark.

The dispute arose in 2018 between plaintiff T.M.T., LLC’s “Midtown Wine & Spirits” and defendant Midtown Market Wine & Spirits. Both businesses were located in the “midtown” area of Hattiesburg, Mississippi. The plaintiff began using its MIDTOWN WINE & SPIRITS mark in February 2017 but did not register it with the Mississippi Secretary of State until September 2018. In the meantime, in May 2018, the defendant formed, registered as a business name, and began using “Midtown Market Wine & Spirits LLC.” After several instances of alleged confusion, the plaintiff sued for injunctive relief. The lower court held a trial and denied its claim, and the plaintiff then appealed.

On appeal, the court focused on the lower court’s analysis of three factors—the type of trademark, the defendant’s intent, and actual confusion—and utilized both Mississippi state and federal court precedent in its review. The court found no error in the determination that the plaintiff’s mark was weak given that “midtown” was a common geographical term that had not acquired secondary meaning and the extensive third-party use of “midtown” in business names.

The court also affirmed the finding on intent based on the lack of evidence of passing off. It further found no error in the determination of no actual confusion, given that the relatively few instances of alleged confusion did not concern business transactions with likely customers. Given the lack of a showing of success on the merits, injunctive relief was not warranted.

Author Insight

While the majority of trademark disputes in the United States occur at the federal level, businesses should be aware of state trademark regimes. The issues and infringement analysis often parallel that in federal court, but state law can vary, including in the remedies available. Most notably, although punitive damages are not available under the Lanham Act, such damages are available under some state statutes.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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