Lizzie Borden took an ax
And gave her mother forty whacks,
And when she saw what she had done,
She gave her father forty-one.
In 1892, parents Abby and Andrew Borden were murdered in Fall River by Andrew’s 32 year-old daughter Lizzie, who allegedly struck Andrew 11 times and Abby 18 times with a hatchet (of note, Lizzie was acquitted, but the crime has been associated with her ever since).
In the time since the murders, US Ghost Adventures began operating an inn in the house in which the murders occurred, utilizing the “Lizzie Borden” trademark in connection with the inn. This summer, Joseph Pereira opened a coffee shop adjacent to the inn, which he named “Miss Lizzie’s Coffee.” Ghost Adventures brought suit for federal and state law trademark infringement, false designation of origin, unfair competition and trademark dilution, and sought a preliminary injunction precluding use of the “LIZZIE BORDEN” trademark and a “hatchet logo” in the trade name.
Judge Sorokin denied the motion today, finding that Miss Lizzie’s hatchet was not sufficiently similar to Ghost Adventures’ hatchet mark. Miss Lizzie’s hatchet included a handle and blood on the blade and lacked a notch in the blade, while the Ghost Adventure hatchet had no handle was an image of a blade with no handle, no blood, and a notch along the bottom of the blade. This was sufficient in Judge Sorokin’s eye to preclude the accused mark from being deemed a colorable imitation of Ghost Adventures’ hatchet mark.
Judge Sorokin further found that Miss Lizzie’s use of a portion of Ghost Adventures’ “Lizzie Borden” mark (Miss Lizzie did not use the surname “Borden”) was not enough to constitute infringement. He noted that Ghost Adventures does not (and cannot) claim ownership over the historical story of Lizzie Borden, and that Miss Lizzie’s use of the name “Lizzie” was associated with the historical story of Lizzie Borden and not with Ghost Adventures’ mark. He noted that Miss Lizzie did not utilize the “Lizzie Borden” mark with the Ghost Adventures hatchet, and that Ghost Adventures had failed to show that its mark qualifies for secondary meaning reach that other historical names such as “Sam Adams” for beer might carry. He further noted that the limited examples of “actual confusion” proffered by Ghost Adventures likely showed confusion, if any, brought about by the close proximity of each business to the historical site of the actual Lizzie Borden murders rather than trademark-based confusion. He finally noted that Ghost Adventures sells tours and a bed-and-breakfast experience, which differs from Miss Lizzie’s coffee shop offerings.
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