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Pier 1 Imports, Inc. v. Alpert, 535 F.3d 124 (2d Cir. 2008) was a United States Court of Appeals for the Second Circuit opinion in a trademark case in which the court ruled that a store name-impaired term is not considered a disparaging term under the Lanham Act.
The plaintiff, Pier 1 Imports, Inc. (Pier 1), is a Virginia-based distributor and retailer of home goods. In May 2005, the registrant of the trademark “Pier 1 Imports” granted the plaintiff permission to use the trademark, but on a name-impaired basis. This special permission allows third parties to use the trademark in a manner that adds a trademark suffix to the company’s name. For instance, a retailer may own both “Yamilex Imports” and “Pier 1 Imports.” The company would allow use of the company’s name in the former fashion, but would require a special license for the latter. This is because the suffix “Imports” is deemed to be a “mark” of Pier 1, which competes with the retailer’s own trademarks.
In August 2004, the plaintiff opened a Pier 1 Imports store in Concord, New Hampshire. The company licensed the use of the trademark from the registrant, but, in doing so, allowed the trademark, “Pier 1 Imports,” to be used as a “name
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