|VILLAGE OF PINEHURST, N.C., July 17, 1998 - Resorts
of Pinehurst, Inc., owner of Pinehurst
Resorts and Country Club and the Pinehurst No. 2 golf course, has
received a significant victory in the U.S. Federal Courtof Appeals. In
a unanimous decision, the Fourth Circuit held that Resorts has exclusive
rights to federal marks for"Pinehurst" resort and golf course services
and a District Court judge was correct in holding that two other golfcourses
which used the term "Pinehurst" in their names violated federal trademark
Resorts had charged Pinehurst National and Pinehurst Plantation golf communities with infringement of its Pinehurst marks. Resorts demonstrated that since the turn of the century the public has associated the name "Pinehurst" with its golf resort and its championship golf courses and, in particular, with Pinehurst course No. 2, which is commonly known simply as "Pinehurst." As a result, Resorts claimed that the unauthorized use of the term "Pinehurst" in the name of any golf related goods or services would cause confusion in the marketplace.
In the District Court, Resorts demonstrated that there is substantial
evidence of worldwide recognition of the "Pinehurst" mark, which Resorts
and its legendary predecessor, the Tufts family, have created over the
course of this century. This recognition is a result of the championship
golf courses that Resorts owns, major golf tournaments sponsored by the
Resort and substantial investments in marketing and advertising. Resorts
also introduced a nationwide survey that showed that Pinehurst is one of
the three most well- known golf courses in the U.S. The Court of Appeals
confirmed the defendants were unable to offer any evidence to demonstrate
The Court of Appeals also observed that the defendants' use of the term "Pinehurst" had caused confusion for people calling to make room and golf reservations. Given this confusion and the worldwide recognition of the Pinehurst Resort, the Court held that defendants' use of the term "Pinehurst" in their names had infringed Resorts' federal and common law rights to the use of the name "Pinehurst."
The defendants had argued that they are located in Pinehurst and that because there is a town called "Pinehurst" they were permitted to use the term "Pinehurst" in their names. The Court of Appeals affirmed the District Court's decision rejecting that argument because even if Pinehurst is considered a geographic name it had become associated with Resorts and its predecessors long before the defendants first used that term.
However, the Court of Appeals went even further in ruling in favor of Pinehurst Resorts. The Court held that the District Court erred in refusing to enter an immediate and complete permanent injunction prohibiting the defendants' use of the Pinehurst name in their names and marks. Accordingly, the Court of Appeals reversed in part the District Court's decision and ordered that the District Court enter an immediate injunction in Resorts' favor.
"Resorts is very pleased with the Fourth Circuit's decision. It allows
us the right to have the exclusive control of the reputation and good will
that we have earned for our 'Pinehurst' name," said Resorts President Patrick
Corso. "We are also relieved that we achieved this victory before we host
next year's greatest golf championship, the 1999 U.S. Open," Corso said,
"We have an obligation to ensure the public is not confused about the use
of the term 'Pinehurst,' and this favorable decision permits us to continue
to meet that obligation in the clearest possible way."
Resort Country Club to begin trials of EtherLoop, a high-speed Internet
access solution / June